Li & Fung (B.V.I.) Limitedv.Kenosha Ferrell

Trademark Trial and Appeal Board

Oct 17, 2008

No. 91174386 (T.T.A.B. Oct. 17, 2008)

Mailed:
October 17, 2008

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
______

Li & Fung (B.V.I.) Limited

v.

Kenosha Ferrell
_____

Opposition No. 91174386
to application Serial No. 78761667
filed on November 28, 2005
_____

Brent E. Routman of Merchant & Gould, P.C. for Li & Fung
(B.V.I.) Limited.

Kenosha Ferrell, pro se.
______

Before Seeherman, Quinn and Hohein, Administrative Trademark
Judges.

Opinion by Seeherman, Administrative Trademark Judge:

Li & Fung (B.V.I.) Limited has opposed, on the ground
of likelihood of confusion, the application of Kenosha
Ferrell to register the mark Black Cat Beauty (in typed
form, with upper and lower case letters as shown) for the
following goods:
Baseball caps; baseball shoes; bathing
caps; bed jackets; cap visors; capri
pants; caps; caps with visors; denim
jackets; denims; down jackets;
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Opposition No. 91174386
2
fishermen's jackets; fur coats and
jackets; fur jackets; golf caps;
headgear, namely, caps; heavy jackets;
jackets; jogging pants; knitted caps;
leather jackets; leather pants; light-
reflecting jackets; long jackets; men
and women jackets [sic], coats,
trousers, vests; mock turtle-neck
sweaters; nurse pants; pants; rain
jackets; rainproof jackets; short-
sleeved or long-sleeved t-shirts; shower
caps; ski jackets; ski pants; skull
caps; sleeved or sleeveless jackets;
smoking jackets; snow pants; snowboard
pants; sports jackets; suede jackets;
sweat pants; sweaters; swimming caps;
t-shirts; tap pants; toboggan hats,
pants and caps; track pants; turtleneck
sweaters; v-neck sweaters; waterproof
jackets and pants; wind resistant
jackets; wind-jackets.

In particular, opposer has alleged that since prior to the
filing date of applicant’s application, or any date of
actual use on which applicant can rely, opposer has used the
mark BLACK CAT or marks incorporating BLACK CAT in
connection with fireworks and firecrackers; that opposer
owns applications for the marks BLACK CAT and BLACK CAT and
design for various items of clothing, and an application for
the mark BLACK CAT and design for masquerade costumes and
the like; that opposer owns several registrations for BLACK
CAT and BLACK CAT marks for firecrackers and fireworks; that
opposer’s marks are famous; that opposer “has a bona fide
intent to sell clothing and other items in Class 25 as
evidenced by the Opposer’s pending applications and
therefore Opposer has ‘bridged the gap’ in demonstrating its
Opposition No. 91174386
3
interest in preserving avenues of expansion and areas
related to the goods already sold by the Opposer in the
United States”; that applicant’s mark is likely to cause
confusion with opposer’s “previously filed” “BLACK CAT mark”
[sic]; and that applicant’s mark is likely to cause
confusion with opposer’s registrations Nos. 828730, 2999612,
2999953, 3087068 and 3107457.1
Applicant has denied the essential allegations of the
notice of opposition in his answer.
The record includes the pleadings, the file of the
opposed application, and the testimony deposition, with
exhibits, of Harrison Chang, the managing director of Golden
Gate Investment Management, which is a unit of opposer.
Applicant did not submit any evidence. Only opposer filed a
trial brief.
We begin with an evidentiary point. Opposer pleaded
ownership of several registrations in its notice of
opposition, and introduced “soft” copies of those

1 In its brief opposer argued that it has a family of marks.
Opposer, however, did not plead a family of marks in its notice
of opposition, nor do we find that this issue was tried. The
only reference to a “family of marks” was in one of opposer’s
counsel’s questions: “Is it fair to say that in your prior
testimony that other objects also bear the Black Cat family
trademarks,” test. p. 33. The answer went on to list products,
rather than to discuss the different marks. This interchange was
not sufficient to put applicant on notice that opposer was
claiming a family of marks, and thus we cannot conclude that the
issue of a family of marks was tried by consent.
Opposer also argues in its brief that applicant’s mark will
dilute opposer’s BLACK CAT mark. This issue was neither pleaded
nor tried, and we have given it no consideration.
Opposition No. 91174386
4
registrations through the testimony of Mr. Chang. However,
this testimony was not sufficient to make the registrations
of record. Because the registrations submitted as exhibits
were not status and title copies, it was incumbent on
opposer to provide evidence that the registrations were
currently owned by opposer, and that they were “live”
registrations at the time they were introduced. See
Trademark Rule 2.122(d)(2). However, the testimony of Mr.
Chang merely recited what the registrations showed on their
face. Here is a typical interchange:
Q: Do you recognize this document?
A: Yes.
Q: Can you identify what this document
is?
A: This is a Certificate of
Registration from the U.S. Patent
and Trademark Office for the mark
Black Cat X series. And this one
has a design on it, so it’s not
just words.
Q: Is this a true and original copy of
the document?
A: Yes.
Q: What is the date provided on the
registration?
A: May 2nd, 2006.
Q: Who is listed as the owner?
A: Li & Fung (B.V.I.) Limited.
Q: And what goods are covered by this
mark?
A: Fireworks and firecrackers.

With that opposer’s attorney had the document entered as
exhibit 6, and went on to elicit similar information for the
next registration exhibit. Thus, there was no testimony
Opposition No. 91174386
5
that the registration was current, or currently owned by
opposer.
Although opposer thus cannot rely on its pleaded
registrations, it has demonstrated common law rights in
BLACK CAT marks. The evidence of record shows opposer began
using the mark BLACK CAT in the United States in 1952 for
fireworks and firecrackers, and since then has also used
variations of this mark, such as BLACK CAT with a cat face
design, BLACK CAT GOLD COLLECTION and design, and BLACK CAT
X SERIES and design. Opposer sells these goods to
wholesalers who in turn sell to retailers, and ultimately
consumers buy the fireworks from retail outlets, including
stores, tents and stands. Opposer sells its fireworks in
the 45 states in which such consumer sales are allowed.
In addition to fireworks, opposer uses or licenses its
various BLACK CAT marks for other items, including mopeds.
In 1992 it began offering, through its catalog, t-shirts and
baseball caps, and subsequently sold denim shirts,
windbreakers, boxer shorts, polo shirts and belt buckles. A
brochure from the Black Cat 200 NASCAR race, which it
sponsored in 2004, shows use in connection with polo shirts,
lady’s tank tops, t-shirts and racing caps. Opposer started
selling fashion t-shirts in 2005. In addition, opposer
entered into a license agreement with Levi Strauss in 2005,
through which BLACK CAT t-shirts were sold in fall 2005 and
Opposition No. 91174386
6
spring 2006. Another licensee sells bicycle racing jerseys
with BLACK CAT and the cat design logo, and opposer had a
previous arrangement with a licensee through which t-shirts
were sold to a mall-based retailer called Hot Topping.
Opposer also sells its clothing items directly to the
consumer through its website, and has been doing so since at
least 2004.
Opposer promotes its BLACK CAT marks and goods through
a newsletter which is sent to retailers and wholesalers; it
will also send the newsletter to ultimate buyers who request
it. Opposer sponsors sweepstakes and contests, and in 2004
it sponsored a race, the above-noted Black Cat 200, at a
NASCAR event in Wisconsin. It does not do direct consumer
advertising itself, but participates in a 50% co-op
advertising program with its fireworks dealers, who in turn
advertise on radio, television, billboards and in theaters
and newspapers. In 2006 opposer spent $325,000 for such co-
op advertising, which meant that its dealers spent at least
that amount as well. When opposer’s expenditures for
sweepstakes and contests and the expenditures of its dealers
are included, a minimum of $750,000 for advertising and
promotion was spent in 2006.
Opposer has established its standing by its evidence of
use of its BLACK CAT marks for fireworks and apparel. See
Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842
Opposition No. 91174386
7
(Fed. Cir. 2000); Lipton Industries, Inc. v. Ralston Purina
Co., 670 F.2d 1024, 213 USPQ 185 (CCPA 1982).
Turning to the issue of likelihood of confusion, we
will confine our analysis to a consideration of opposer’s
word mark BLACK CAT, since this mark is the closest to the
Black Cat Beauty mark of applicant. We will also confine
our comments to opposer’s use of this mark for apparel,
since these goods are closest to those for which applicant
is seeking to register his mark.
The evidence shows that opposer has priority. It has
used the mark BLACK CAT, as well as variations of this mark,
on t-shirts and caps since 1992, and has continued to sell
such goods, while adding other apparel items subsequently.
These uses predate the November 28, 2005 filing date of
applicant’s application which, because applicant has not
submitted evidence of any earlier use, is the earliest date
on which applicant can rely.
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
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, however, two key
considerations are the similarities between the marks and
Opposition No. 91174386
8
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).
With respect to the goods, opposer has shown that it
has used the mark BLACK CAT on goods that are identical in
part to applicant’s identified goods, namely, t-shirts and
caps. We need not discuss the other items of apparel that
are listed in applicant’s application (although it is clear
that opposer’s goods are closely related to many of
applicant’s other goods), because likelihood of confusion
must be found if there is likely to be confusion with
respect to any item that comes within the identification of
goods in the application. Tuxedo Monopoly, Inc. v. General
Mills Fun Group, 648 F.2d 1335, 209 USPQ 986, 988 (CCPA
1981). The du Pont factor of the similarity of the goods
favors a finding of likelihood of confusion.
Because opposer’s rights in its mark are based on
common law, rather than a registration, we must look at the
actual channels of trade in which opposer’s goods are sold.
The testimony shows that at least opposer’s licensed apparel
products were sold in department stores such as Kohl’s,
rather than in retail outlets that sell fireworks, and that
they were sold in such stores in the fall of 2005. They
Opposition No. 91174386
9
also continue to be sold in mainstream outlets. Moreover,
even those consumers who encounter opposer’s apparel items
only in fireworks stores would also purchase the general
apparel items that are listed in applicant’s identification
of goods. Thus, the same classes of consumers are likely to
encounter both parties’ goods. This du Pont factor, too,
favors a finding of likelihood of confusion.
The consumers of opposer’s and applicant’s goods are
the public at large, and they cannot be considered to be
sophisticated purchasers. Further, applicant’s identified
goods, as well as the apparel sold by opposer, must be
deemed to be relatively inexpensive items, e.g., caps and t-
shirts, that may be purchased on impulse and without a great
deal of care. The du Pont factor of the conditions of
purchase favors a finding of likelihood of confusion.
This brings us to a consideration of the marks, keeping
in mind that when marks would appear on virtually identical
goods or services, as they do here, the degree of similarity
necessary to support a conclusion of likely confusion
declines. Century 21 Real Estate Corp. v. Century Life of
America, 970 F.2d 874, 23 USPQ2d 1698, 1700 (Fed. Cir.
1992). Opposer’s mark BLACK CAT is an inherently
distinctive mark. It is an arbitrary term for items of
apparel, and there is no evidence of third-party use of
BLACK CAT marks or, for that matter, any CAT marks
Opposition No. 91174386
10
whatsoever. Therefore, opposer’s mark must be considered a
strong mark. Applicant has appropriated opposer’s mark
BLACK CAT in its entirety, and added the laudatory word
BEAUTY to it. This additional word, however, is not
sufficient to distinguish the marks. The words BLACK CAT in
applicant’s mark still retain their significance, such that
the marks are similar in appearance, pronunciation,
connotation and commercial impression. Consumers who are
familiar with opposer’s BLACK CAT marks for items of apparel
are likely to believe, when they view “Black Cat Beauty” on
identical or similar items, that the latter mark is a
variation of opposer’s BLACK CAT mark, to indicate a fashion
line of opposer’s products. The du Pont factors relating to
the similarity of the marks and the strength of opposer’s
mark favor a finding of likelihood of confusion.
Although we have found opposer’s mark to be strong and
distinctive, we do not find it to be famous, as opposer
asserts. We acknowledge that opposer’s argument is that its
mark is famous for fireworks, and our discussion of
likelihood of confusion is confined to opposer’s use of
BLACK CAT for apparel. But considering the fame of the mark
for fireworks, we cannot conclude, based on the evidence of
record, that BLACK CAT is famous for fireworks. In view of
the extreme deference that is accorded to a famous mark in
terms of the wide latitude of legal protection it receives,
Opposition No. 91174386
11
and the dominant role fame plays in the likelihood of
confusion analysis, we think that it is the duty of a
plaintiff asserting that its mark is famous to clearly prove
it. Here, although there is testimony that opposer has used
the mark for fireworks for a long period of time, opposer
has submitted no evidence of its sales, and the evidence
regarding its advertising is relatively meager. For
example, opposer has not submitted any evidence of
advertisements that are directed to ultimate consumers, as
opposed to newsletters that are primarily distributed to
dealers. We acknowledge that opposer’s witness testified
that in the last 2-3 years it has hired a professional
market research firm to conduct surveys to determine the
recognition factor of its mark, with results of an 85-90%
recognition factor based on this data, but opposer has not
submitted either the survey or even the report by the
research firm. The most information we have is a comment in
its August 1, 2006 newsletter (exhibit 9) that said a survey
of 600 consumers of fireworks were asked 25 questions, and
that 82% of respondents (not the 85-90% to which Mr. Chang
testified) were aware of it.
We find the remaining du Pont factors on which there is
evidence or argument to be neutral. In particular, the lack
of evidence of actual confusion has no persuasive value
Opposition No. 91174386
12
because there is no evidence that applicant has actually
used his mark on any goods.
After considering all the relevant du Pont factors, we
find that opposer has established that applicant’s mark, if
used for his identified goods, is likely to cause confusion
with opposer’s mark BLACK CAT for t-shirts and caps.
Decision: The opposition is sustained and registration
to applicant is refused.