Li & Fung (B.V.I.) Limitedv.Lelania Cher Farrenkopf, d/b/a Black Cat Lucky

Trademark Trial and Appeal Board

Dec 16, 2011

No. 91187214 (T.T.A.B. Dec. 16, 2011)

Mailed: December 16, 2011

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
______

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

v.

Lelania Cher Farrenkopf, d/b/a Black Cat Lucky
_____

Opposition No. 91187214
to application Serial No. 77243696
_____

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

Bruce T. Margulies of Neifeld IP Law PC for Lelania Cher
Farrenkopf, d/b/a Black Cat Lucky

______

Before Rogers, Chief Administrative Trademark Judge, and
Cataldo and Wolfson, Administrative Trademark Judges.

Opinion by Wolfson, Administrative Trademark Judge:

On July 31, 2007, Lelania Cher Farrenkopf, d/b/a Black
Cat Lucky, (“applicant”) filed an application for the mark
depicted below,

THIS OPINION IS NOT A
PRECEDENT OF THE T.T.A.B.
Opposition No. 91187214
2
for “jewelry” in International Class 14 and “shirts; hats;
shorts; pants” in International Class 28, on the basis of
applicant’s bona fide intent to use the mark in commerce.
Li & Fung (B.V.I.) Limited (“opposer”) opposes the
registration of applicant’s mark on the ground of priority
of use and likelihood of confusion under Section 2(d) of the
Trademark Act of 1946, 15 U.S.C. §1052(d). Specifically,
opposer alleges that it is the owner of registrations for
the marks BLACK CAT,1 BLACK CAT AND DESIGN,2 BLACK CAT GOLD
COLLECTION,3 BLACK CAT GOLD COLLECTION AND DESIGN,4 and
BLACK CAT X SERIES AND DESIGN,5 and that applicant’s mark
BLACK CAT LUCKY so resembles opposer’s registered marks as
to be likely to cause confusion, mistake, or deception among
purchasers.6

1 Registration No. 2999953 for “fireworks and fire crackers”;
issued September 27, 2005; Sections 8 and 15 combined declaration
has been accepted and acknowledged.
2 Opposer alleges ownership of two registrations for BLACK CAT
AND DESIGN: Registration No. 828730 for “firecrackers and
fireworks”; issued May 16, 1967; renewed, and Registration No.
3455269 for “invitation cards and writing pads, paper napkins and
tablecloths, paper disposable carrier bags; paper party
decorations, namely, bats, monsters, skeletons, scarecrows,
spiders, vampires, witches” in International Class 16 and “toy
figures, namely, toy glow-in-the-dark spiders, insects, bats;
party favors in the nature of small toys; party favors in the
nature of party poppers; balloons; false teeth, toy broomsticks,
toy swords and toy weapons” in International Class 28.
3 Registration No. 2999612 for “firework and fire crackers”;
issued September 27, 2005; Sections 8 and 15 combined declaration
has been accepted and acknowledged.
4 Registration No. 3107457 for “fireworks and fire crackers”;
issued June 20, 2006.
5 Registration No. 3087068 for “fireworks and fire crackers”;
issued May 2, 2006.
6 Opposer further alleged ownership of trademark application
Serial No. 78619418, discussed below; trademark application
Opposition No. 91187214
3
Applicant has denied the salient allegations in the
notice of opposition.
The Record
By rule, the record includes applicant’s application
file and the pleadings. Trademark Rule 2.122(b), 37 CFR
§2.122(b).
In addition, opposer has filed testimony in this
proceeding and both parties have filed evidence under notice
of reliance.
Opposer’s Record
Opposer filed a notice of reliance to introduce the
following evidence into the record during its testimony
period:
1. Certified copies showing the current status and
title of five of opposer’s six U.S. trademark
registrations referenced above.

2. Certified copies showing the current status and
title of opposer’s three U.S. trademark
applications referenced above. 7

Serial No. 78408562 for the mark BLACK CAT for “clothing and
headgear, namely t-shirts, hats, 6-panel caps, visors, polo
shirts, denim shirts, sweatshirts, jackets, casual pants, boxers,
shorts and aprons; footwear,” filed April 27, 2004; and trademark
application Serial No. 78408650 for the mark BLACK CAT AND DESIGN
for “clothing and headgear, namely t-shirts, hats, 6-panel caps,
visors, polo shirts, denim shirts, sweatshirts, jackets, casual
pants, boxers, shorts and aprons; footwear,” filed April 27,
2004. Although during his deposition, Mr. Chang identified this
latter application as being “currently owned by William Fung,”
Chang Dec., p. 28, ln. 16, he also stated, at ln. 4, that Li &
Fung (B.V.I.) Limited is the name of the applicant, which is
reflected in the application.
7 Opposer’s notice of reliance identifies application Ser. No.
78619418 as “now registered as 3,455,269,” which is the sixth of
opposer’s registrations. However, no copy showing current status
(as registered) or title in opposer has been submitted.
Opposition No. 91187214
4
3. The testimonial deposition of Harrison Chang,
opposer’s corporate manager, with accompanying
exhibits.

Applicant’s Record
Applicant filed a notice of reliance to introduce the
following evidence into the record during its testimony
period:
1. A copy of a fictitious name statement for Black
Cat Lucky dated March 19, 2004;

2. A copy of an application for an employer
identification number for Black Cat Lucky
submitted on or about March 19, 2004;

3. A copy of a seller’s permit for Black Cat Lucky
issued May 1, 2009 by the California State Board
of Equalization;

4. Print outs from the website www.blackcatlucky.com;
and

5. Applicant’s April 13, 2010 responses to opposer’s
discovery requests.8

Evidentiary Objections and Motion to Strike

On June 19, 2011, applicant moved to strike portions of
opposer’s reply brief on two grounds. First, applicant
argues that opposer improperly attempts to object to
applicant’s notice of reliance. Second, applicant contends
that opposer’s reply brief contains matter constituting

8 Although applicant’s notice of reliance identifies website
printouts and discovery documents, no such documents were filed
under applicant’s January 11, 2011 notice of reliance.
Accordingly, we have not considered any such evidence. Moreover,
we note that responses to interrogatories may be submitted and
made part of the record by only the inquiring party, Trademark
Rule 2.120(j)(5), and documents produced in response to a
discovery request may be submitted only under notice of reliance
Opposition No. 91187214
5
improper rebuttal. Although opposer did not file a response
to the motion, we have exercised our discretion to consider
applicant’s motion on its merits.
Applicant’s Notice of Reliance
Opposer has objected to applicant’s introduction of all
documents filed under applicant’s notice of reliance as
failing to be in compliance with Rule 901 of the Federal
Rules of Evidence.9 Applicant argues that opposer’s
objection is untimely, having been raised for the first time
in its reply brief. We agree. An alleged defect in a
notice of reliance that is procedural in nature must be
raised promptly, preferably by motion to strike, to allow
the offending party a chance to cure the defect. See TBMP §
707.02(b) and authorities cited in that section. Opposer
did not timely object to the introduction of applicant’s
evidence. Moreover, opposer presented arguments on the
merits against applicant’s fictitious name registration in
opposer’s main trial brief, effectively waiving its right to
object to such evidence.

if such documents are otherwise eligible to be submitted under
notice of reliance. See TBMP § 704.10 (3d ed. 2011).
9 That Rule provides: “To satisfy the requirement of
authenticating or identifying an item of evidence, the proponent
must produce evidence sufficient to support a finding that the
item is what the proponent claims it is.” Example 7 discusses
evidence about public records, and the Advisory Committee Notes
explain that: “public records are regularly authenticated by
proof of custody, without more.”

Opposition No. 91187214
6
Accordingly applicant’s motion to strike certain
portions of opposer’s reply brief is granted, and p. 5,
lines 5-7 and p. 7, lines 3-12 of opposer’s reply brief,
which object to the introduction of applicant’s evidence,
have been given no further consideration.
Improper Rebuttal
Applicant further claims that opposer has not confined
its reply brief to rebutting applicant’s main brief, but has
presented new arguments or arguments outside the scope of
applicant’s main brief. Specifically, applicant contends
that p. 5, lines 7-10; p. 7, line 22 through p.8 line 24;
and p. 12, lines 21-26 are improper and should be stricken.
On page 5, in lines 7-10, opposer raises a claim that
applicant’s application is “likely void as naming an
incorrect applicant, and/or the sworn statement made a part
of the application is misleading, incorrect, or fraudulent.”
On page 7, in line 22 through page 8, line 24, opposer
argues that because applicant’s fictitious business name was
filed in the name of a partnership rather than a sole
proprietorship, applicant’s application is void. On page
12, at lines 21-26, opposer contends that the declaration in
applicant’s application is false for the same reason. The
only pleaded ground in this proceeding is likelihood of
confusion under Section 2(d). Petitioner may not rely on an
unpleaded claim. See Kohler Co. v. Baldwin Hardware Corp.,
Opposition No. 91187214
7
82 USPQ2d 1100, 1103 n.3 (TTAB 2007) (raising claim for
first time in plaintiff’s brief is manifestly untimely;
belated fraud claim given no further consideration); and
TBMP § 314 (3d ed. 2011) (“The plaintiff’s pleading must be
amended (or deemed amended), pursuant to Fed. R. Civ. P.
15(a) or (b), to assert the matter”). Because the
statements made on p. 5, lines 7-10; p. 7, line 22 through
p.8 line 24; and p. 12, lines 21-26 of opposer’s reply brief
refer to unpleaded grounds that were not tried by consent of
the parties, they have not been considered. Nonetheless, we
have considered opposer’s arguments regarding the weight, if
any, we should accord applicant’s fictitious business name
filing and her applications for an employer identification
number and seller’s permit, vis-à-vis the only pleaded claim
herein, i.e., likelihood of confusion.
Standing
Because opposer has properly made five of its pleaded
registrations of record, showing opposer as owner and that
the registrations are subsisting, opposer has established
its standing. Cunningham v. Laser Golf Corp., 222 F.3d 943,
55 USPQ2d 1842, 1844 (Fed. Cir. 2000); Lipton Industries,
Inc. v. Ralston Purina Co., 670 F.2d 1024, 213 USPQ 185, 189
(CCPA 1982). Standing is also established by opposer’s
pleading and proving the status of two pending trademark
Opposition No. 91187214
8
applications that have been refused registration due to the
existence of applicant’s application.10
Priority
Because five of opposer’s pleaded registrations are of
record, Section 2(d) priority is not an issue in this case
as to the marks and the goods covered by those
registrations. King Candy Co. v. Eunice King’s Kitchen,
Inc., 496 F.2d 1400, 182 USPQ 108, 110 (CCPA 1974). Opposer
has also proven priority by introducing evidence of common
law use of its mark BLACK CAT and BLACK CAT AND DESIGN on t-
shirts, hats and watches that predates the filing date of
applicant’s application.11
Family of Marks
We first consider opposer’s argument that, in addition
to any confusion vis-à-vis its marks individually, there is
a likelihood of confusion with its family of “BLACK CAT”
marks. Upon careful review of the evidence of use of
opposer’s marks, we find that opposer has not established
ownership of a family of “BLACK CAT” marks.

10 As noted earlier, the third of the pleaded applications
resulted in issuance of the one registration that opposer did not
make of record, i.e., while both the application and the
registration resulting therefrom were pleaded, neither was
proved.
11 Although applicant argues in her brief that she began using the
mark BLACK CAT LUCKY in 2004, none of applicant’s evidence shows
use of BLACK CAT LUCKY, or the mark BLACK CAT LUCKY AND DESIGN.
Opposition No. 91187214
9
The Court of Appeals for the Federal Circuit, our
primary reviewing court, has defined a family of trademarks
as follows:
A family of marks is a group of marks having a
recognizable common characteristic, wherein the
marks are composed and used in such a way that the
public associates not only the individual marks,
but the common characteristic of the family, with
the trademark owner. Simply using a series of
similar marks does not of itself establish the
existence of a family. There must be a
recognition among the purchasing public that the
common characteristic is indicative of a common
origin of the goods. …

Recognition of the family is achieved when the
pattern of usage of the common element is
sufficient to be indicative of the origin of the
family.

J & J Snack Foods Corp. v. McDonald’s Corp., 932
F.2d 1460, 18 USPQ2d 1889, 1891 (Fed. Cir. 1991).
In the case at hand, opposer argues that it has
marketed and promoted a family of BLACK CAT marks through
sponsorships, such as the “Black Cat 200,” a NASCAR racing
event, and through “advertising and promotion of various
goods under the BLACK CAT family of brands.”12 Although
opposer sells a variety of products under the marks BLACK
CAT, BLACK CAT AND DESIGN, BLACK CAT GOLD COLLECTION and
BLACK CAT X SERIES, none of the evidence shows that opposer
promotes its marks as a family or that the public perceives
the marks as a family. As noted above, "[s]imply using a
series of similar marks does not of itself establish the
Opposition No. 91187214
10
existence of a family." J. & J. Snack, 18 USPQ2d at 1891.
The requisite showing of a family of marks has not been
made.
We now turn to the issue of likelihood of confusion
with respect to opposer’s marks. We focus our likelihood of
confusion analysis in this decision on the registered and
previously used marks BLACK CAT, which mark also forms the
dominant word portion of each of opposer’s other marks, and
the BLACK CAT AND DESIGN mark. If applicant’s mark BLACK
CAT LUCKY AND DESIGN so resembles opposer’s marks BLACK CAT
and BLACK CAT AND DESIGN that confusion as to source would
be likely, we need not address whether there is a likelihood
of confusion between applicant’s mark and opposer’s other
pleaded marks, BLACK CAT X SERIES AND DESIGN, BLACK CAT GOLD
COLLECTION, and BLACK CAT GOLD COLLECTION AND DESIGN.
Likelihood of Confusion
Our determination under Section 2(d) is based on an
analysis of all of the probative facts in evidence that are
relevant to the factors bearing on the issue of likelihood
of confusion. In re E. I. du Pont de Nemours & Co., 476
F.2d 1357, 177 USPQ 563, 567 (CCPA 1973). See also, Palm
Bay Imp., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En
1772, 396 F.3d 1369, 73 USPQ2d 1689 (Fed. Cir. 2005); In re
Majestic Distilling Company, Inc., 315 F.3d 1311, 65 USPQ2d

12 Opposer’s Brief, p. 18; Chang Dep., p. 14; Exs. 24-27.
Opposition No. 91187214
11
1201, 1203 (Fed. Cir. 2003). In any likelihood of confusion
analysis, two key considerations are the similarities
between the marks and the similarities between the goods.
See Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d
1098, 192 USPQ 24, 29 (CCPA 1976) (“The fundamental inquiry
mandated by §2(d) goes to the cumulative effect of
differences in the essential characteristics of the goods
and differences in the marks”).
A. The Fame of Opposer’s Mark BLACK CAT
Opposer contends that its BLACK CAT mark is “famous and
must be accorded the greatest protection.”13 Fame, if it
exists, plays a dominant role in the likelihood of confusion
analysis because famous marks enjoy a broad scope of
protection or exclusivity of use. A famous mark has
extensive public recognition and renown. 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).
Fame may be measured indirectly by the volume of sales
and advertising expenditures of the goods and services
identified by the marks at issue, “by the length of time
those indicia of commercial awareness have been evident,”

13 Opposer’s Brief, p. 24.
Opposition No. 91187214
12
widespread critical assessments and through notice by
independent sources of the products identified by the marks,
as well as the general reputation of the products and
services. Bose Corp. v. QSC Audio Products Inc., 63 USPQ2d
at 1305-1306 and 1309. Although raw numbers of product
sales and advertising expenses may have sufficed in the past
to prove fame of a mark, raw numbers alone may be
misleading. Some context in which to place raw statistics
may be necessary (e.g., the substantiality of the sales or
advertising figures for comparable types of products or
services). Bose Corp. v. QSC Audio Products Inc., 63 USPQ2d
at 1309.
In this case, opposer “started selling BLACK CAT
[fireworks and fire crackers] in the U.S. sometime in the
1940s.”14 The first year opposer sold apparel was in 1992,
specifically “some hats and some T-shirts.”15 These hats
and shirts bore the BLACK CAT AND DESIGN mark.16 Opposer
has continuously sold apparel items since 1992 under the
BLACK CAT AND DESIGN mark.17 Opposer commenced selling
“fashion T-shirts” in 2005 to primarily younger customers,
in the “teens and 20-something market,” under the BLACK CAT
AND DESIGN mark,18 and in 2007 opposer started using the

14 Chang Dec., p. 10.
15 Chang Dec., p. 12; Ex. 18.
16 See Ex. 18.
17 Chang Dec., p. 70.
18 Chang Dec., p. 61.
Opposition No. 91187214
13
mark BLACK CAT on the fashion line without the design.19 A
few years after it started selling t-shirts and hats,
“around the 1997, ’98 time frame,” opposer first used the
mark BLACK CAT on watches.20 The record reflects sales of a
wall clock in the “2005 to 2007 range,”21 and a key ring in
2007.22 These items are shown in opposer’s catalogs as
bearing the BLACK CAT AND DESIGN mark.
Opposer’s products are sold to retailers and
wholesalers,23 and, since 1997-1998, directly to consumers
through opposer’s website.24 Mr. Chang testified that sales
for all BLACK CAT branded products has been “at least a
hundred million U.S. [dollars]” on an annual basis.25
Opposer has not provided a breakdown of its sales figures,
but inasmuch as opposer’s main business is the production
and supply of fireworks, we assume that a significant
portion of opposer’s total sales comes from the sale of
fireworks. The remainder include “accessory items,” which
opposer has described as being such items as belts, tote
bags, golf balls, balloons, a wall clock, fingernail
stickers, beach balls and aprons,26 opposer’s own “fashion

19 Chang Dec., p. 60; Ex. 22.
20 Chang Dec., p. 14. Mr. Chang does not clarify whether opposer
used the design mark and/or the words alone on watches.
21 Chang Dec., p. 54; Ex. 19.
22 Exhibit 24.
23 Chang Dec., p. 12 (clothing) and pp. 14-15 (watches).
24 Chang Dec., p. 35, p. 60. Fireworks are not sold via the
website due to government regulations. Chang Dec., p. 34.
25 Chang Dec., p. 37.
26 Chang Dec., p. 54; Ex. 19
Opposition No. 91187214
14
t-shirt line,”27 and collateral merchandise sold in
connection with sponsored events, such as the Black Cat 200
racing event.28 Inasmuch as opposer has not indicated
otherwise, the stated sales figures are also presumed to
include sales of licensed products, discussed below.
Opposer licenses its BLACK CAT and BLACK CAT AND DESIGN
marks to third-party manufacturers.29 In 2005, opposer
entered into a co-branding agreement with Levi Strauss to
produce T-shirts bearing the BLACK CAT marks.30 In 2006,
opposer licensed the BLACK CAT and BLACK CAT AND DESIGN
marks for use in connection with a motor scooter. 31 In
February 2010, opposer licensed its BLACK CAT marks to The
Retro Image Apparel Co. for use on cycling jerseys.32
Opposer has also sponsored sweepstakes, car races, and
athletes.33 In 2006, opposer sponsored a sweepstakes for
$20,000 worth of prizes, including some motor scooters. The
sweepstakes generated over 300,000 entries from throughout
the United States, and the three grand prize winners came

27 Chang Dec., p. 57.
28 Chang Dec., pp. 55-56; Ex. 20.
29 Chang Dec., p. 41.
30 Chang Dec., p. 45; Ex. 14 (showing t-shirt bearing BLACK CAT X
SERIES AND DESIGN mark).
31 Chang Dec., p. 46 and 50; Ex. 15, opposer’s quarterly
newsletter dated November 1, 2006; Ex. 17 (both exhibits
identifying the “BLACK CAT scooter” and showing the scooter
bearing a BLACK CAT AND DESIGN mark).
32 Chang Dec., pp. 41-42, Ex. 12 and Ex. 23. Schedule A of the
license agreement, Ex. 12, identifying the licensed property,
lists “Black Cat® branded Cycling Jerseys” and “Black Cat®
branded tee shirts.” Exhibit 23 shows a cycling jersey with the
BLACK CAT AND DESIGN mark on the front of the shirt.
Opposition No. 91187214
15
from Ohio, Pennsylvania, and California.34 In 2004, opposer
sponsored a race in Milwaukee called the Black Cat 200, in
connection with which it sold “race gear” such as lanyards,
hats, and shirts under the BLACK CAT and BLACK CAT AND
DESIGN marks.35 Opposer has also sponsored the AMA Dirt
Track Championships.36 In 2006, opposer sponsored the
“Street Warriorz car racing events” and “X-treme Athletes,”
a “sponsorship that we [opposer] did with the Extreme
Games.”37
Opposer advertises under a co-op advertising program,
in which opposer reimburses its retailers a percentage of
their cost of advertising. Opposer also conducts its own
advertising. Mr. Chang testified that “in any given year,”
opposer spends “at least 400 to $600,000” on the co-op
advertising program, and that the aggregate number spent by
opposer or its partners in advertising and promoting the
BLACK CAT brand “would easily be $750,000 to a million” per
year.38
Mr. Chang further testified that “over the years we’ve
done a number of studies and … telephone surveys done by a
third party market research firm.”39 A summary of a July
2008 market research survey shows that over a four-year

33 Chang Dec., p. 14.
34 Chang Dec., pp. 45-48; Ex. 15.
35 Chang Dec., p. 55; Ex. 20.
36 Chang Dec., pp. 14 and 66.
37 Chang Dec., p. 49; Ex. 16.
38 Chang Dec., p. 73; Exhibits 28-38.
Opposition No. 91187214
16
period, a range from 75% to 86% of purchasers who took the
survey recognized BLACK CAT as a brand name for fireworks.40
Because the parameters of the survey have not been
described, the record does not reflect the make-up of the
chosen survey universe, and the questions that were asked of
the respondents are missing from the record, we afford the
survey little weight but have considered it for whatever
probative value it may have.
Opposer’s marks are inherently arbitrary or fanciful
when applied to fireworks, clothing, or jewelry. The words
BLACK CAT have no meaning with respect to these goods, and
nothing in the record showing how opposer has used its marks
suggests that the term BLACK CAT, or the BLACK CAT design,
have any descriptive connotation when applied to fireworks,
clothing or jewelry. Moreover, opposer’s marks have been
registered for fireworks on the Principal Register without a
claim to acquired distinctiveness under Section 2(f). The
inherent potential of the mark BLACK CAT, with and without
the design, is that of a strong mark. See Tea Board of
India v. Republic of Tea Inc., 80 USPQ2d 1881, 1899 (TTAB
2006); 2 J. Thomas McCarthy, McCarthy on Trademarks and
Unfair Competition § 11:83 (4th ed.)(“The first enquiry
focuses on the inherent potential of the term at the time of
its first use. The second evaluates the actual customer

39 Chang Dec., p. 36.
Opposition No. 91187214
17
recognition value of the mark at the time registration is
sought or at the time the mark is asserted in litigation to
prevent another’s use.”).
In considering the commercial strength of opposer’s
BLACK CAT marks, we take into account the evidence of record
relating to opposer’s sales, advertising, and promotion of
the mark, as well as any unsolicited media or other third-
party attention the mark has received. Sales of opposer’s
products reached $100 million for each of the past five
years. Advertising costs for direct advertising and co-op
advertising averaged between $750,000 and one million
dollars annually. While these numbers are significant,
there is no testimony or evidence regarding what percentage
share of the various markets for BLACK CAT products (e.g.,
fireworks, party favors, clothing or jewelry) such products
command, or any direct evidence of brand recognition in the
media or by the general public, other than the inconclusive
summary of opposer’s internal marketing survey. There is no
evidence of record of unsolicited media attention.
On the other hand, opposer’s corporate manager states
that opposer “started selling BLACK CAT”41 on fireworks in
the 1940’s, i.e., for approximately 60 years; the record
shows that it has been used on a wide variety of products;
and there are no third-party uses of similar marks in the

40 Chang Dec., p. 36, pp. 38-40; Ex. 11.
Opposition No. 91187214
18
record. However, because of the extreme deference that we
accord a famous mark in terms of the wide latitude of legal
protection it receives, and the dominant role fame plays in
the likelihood of confusion analysis, it is the duty of the
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). On balance, this record is
sufficient to establish that opposer’s mark is commercially
strong but insufficient to prove that it is famous for
purposes of likelihood of confusion. Nonetheless, to the
extent that we find opposer’s BLACK CAT and BLACK CAT AND
DESIGN marks to be strong and arbitrary as applied to the
goods identified thereby, this factor strongly favors
opposer.
B. The Goods and Channels of Trade.

Opposer holds registrations for its marks BLACK CAT,
BLACK CAT AND DESIGN, BLACK CAT X SERIES AND DESIGN, and
BLACK CAT GOLD COLLECTION (with and without a design) that
cover fireworks and firecrackers.42 In order to further
build its brand awareness, opposer has been using its BLACK
CAT AND DESIGN mark on t-shirts and hats since 1992, and on
watches since at least as early as 1998. Opposer has been
using its BLACK CAT mark on t-shirts since 2007.

41 Chang Dec., p. 10.
Opposition No. 91187214
19
Applicant intends to use her mark BLACK CAT LUCKY AND
DESIGN on shirts, hats, and jewelry. The parties’ goods are
thus identical in part. Applicant’s “jewelry” may include
watches; the Board previously has found that watches and
jewelry are related goods. See Monocraft, Inc. v. Leading
Jewelers Guild, 173 USPQ 506, 507 n.4 (TTAB 1972)(“‘Watches’
include all types thereof including ornamental watches which
can be worn as costume jewelry”); and Gruen Industries, Inc.
v. Ray Curran & Co., 152 USPQ 778, 779 (TTAB 1967)(watches
and men’s jewelry are “clearly so related”). Opposer sells
its clothing through clothing retailers and directly to
consumers through its website.43 Despite applicant’s
argument that opposer’s goods are intrinsically related to
fireworks, opposer has shown that its clothing has been sold
through at least two retail outlets that have no connection
with fireworks or the sale of fireworks.44
Q. And when you say retailers, you’re not specifically
referring only to fireworks and firecracker retailers,
you’re also talking about general merchandisers?

A. Yes. So for instance, we’ve had our T-shirts sold to a
chain called Hot Topic, which is a teen-oriented retailer,
and in several months’ time, actually some of our shirts
will be selling in a store called Urban Outfitters. Neither
one of these, neither Hot topic or Urban Outfitters, would
be classified as a fireworks store.

Q. In fact, do either of those stores sell fireworks at
all?

42 As noted supra, Reg. No. 3455269, one of the registrations for
the mark BLACK CAT AND DESIGN and covering goods in International
Classes 16 and 28, has not been made of record.
43 Chang Dec., p. 12.
44 Chang Dec., pp. 12-13.
Opposition No. 91187214
20
A. No.

Given the in part legally identical nature of the
goods, and the fact that there are no restrictions in the
identification of goods in applicant’s application, we must
presume that applicant sells its clothing through normal
channels of trade for such goods, including opposer’s
channels of trade. Accordingly, we must assume that
opposer’s t-shirts, hats and watches could be sold by the
same distributors or stores, and, given that they are
identical goods, side-by-side on the same shelves as
applicant’s goods.
For these reasons, we find that the goods for which
opposer has shown priority of use, including clothing items
and watches, are related to the goods of applicant. This
factor favors opposer.
C. The Similarity or Dissimilarity of the Marks.

In a likelihood of confusion analysis, we compare the
marks for similarities and dissimilarities in appearance,
sound, connotation and commercial impression. Palm Bay, 73
USPQ2d at 1692. In a particular case, any one of these
means of comparison may be critical in finding the marks to
be similar. In re White Swan Ltd., 9 USPQ2d 1534, 1535
(TTAB 1988); In re Lamson Oil Co., 6 USPQ2d 1041, 1042 (TTAB
1988). Where, as in the present case, the marks are used on
identical goods (at least in part), the degree of similarity
Opposition No. 91187214
21
between the marks that is necessary to support a finding of
likely confusion declines. Century 21 Real Estate Corp. v.
Century Life of America, 970 F.2d 874, 23 USPQ2d 1698 (Fed.
Cir. 1992).
While the marks must be compared in their entireties
when analyzing their similarity or dissimilarity, there is
nothing improper in stating that for rational reasons, more
or less weight has been given to a particular feature of a
mark. In re National Data Corporation, 753 F.2d 1056, 224
USPQ 749, 751 (Fed. Cir. 1985). In the case at hand, the
dominant portion of applicant’s mark is the words BLACK CAT.
The design of the black cat in applicant’s mark serves to
reinforce the meaning of the words, as does the Chinese
character, which is translated as “good luck”.45 Even if no
translation comes to mind, the words nonetheless dominate
over the design element inasmuch as it is the words by which
consumers will call for the goods in selecting and making
their purchase. In re Appetito Provisions Co. Inc., 3
USPQ2d 1553, 1554 (TTAB 1987); see also In re Comexa Ltda.,
60 USPQ2d 1118 (TTAB 2001) (in applicant's mark AMAZON and
parrot design, AMAZON considered the most significant
origin-indicating feature); Kabushiki Kaisha Hattori
Tokeiten v. Scuotto, 228 USPQ 461 (TTAB 1985) (applicant's

45 Trademark application Ser. No. 77243696.
Opposition No. 91187214
22
mark SEYCOS and crown design is dominated by the word
SEYCOS).
In addition, likelihood of confusion is often found
where the entirety of one mark is incorporated within
another. The Wella Corp, v. California Concept Corp., 558
F.2d 1019, 194 USPQ 419, 422 (CCPA 1977) (CALIFORNIA CONCEPT
and surfer design for men’s cologne, hair spray, conditioner
and shampoo is likely to cause confusion with the mark
CONCEPT for cold permanent wave lotion and neutralizer);
Coca-Cola Bottling Co. v. Seagram & Sons, Inc., 526 F.2d
556, 188 USPQ 105, 106 (CCPA 1975) (BENGAL LANCER and
soldier design for club soda, quinine water and ginger ale
is likely to cause confusion with BENGAL LANCER for gin).
Applicant has taken opposer’s entire mark BLACK CAT and
added the word LUCKY and a visual component, namely, a
design of a black cat and a Chinese character (meaning good
luck). As noted, the design of a black cat merely
reinforces the meaning of the mark, and the Chinese
character merely reinforces the English word “lucky.” These
additional features, not found in opposer’s mark, are not
sufficiently distinctive or prominent to obviate the likely
confusion between the marks. Although the differences may
be seen when the marks are compared side-by-side, the test
is not whether the marks can be distinguished when subjected
to a side-by-side comparison. Under actual marketing
Opposition No. 91187214
23
conditions, consumers do not necessarily have the luxury of
making side-by-side comparisons between marks, and must rely
upon their imperfect recollections. See Dassler KG v.
Roller Derby Skate Corp., 206 USPQ 255, 259 (TTAB 1980).
Applicant argues that opposer took an inconsistent
position during the prosecution of its trademark application
for the mark BLACK CAT for clothing by arguing that its mark
was not likely to be confused with cited registrations for
other marks containing the words BLACK CAT (or KAT).46 The
doctrine of “file wrapper estoppel” does not apply in
trademark cases. Giant Food, Inc. v. Standard Terry Mills,
Inc., 229 USPQ 955, 963 (TTAB 1986). Nor does opposer’s
opinion regarding the potential for confusion between its
mark and an unrelated third-party’s mark rise to the level
of an admission against interest. Interstate Brands Corp.
v. Celestial Seasonings, Inc., 576 F.2d 926, 198 USPQ 151,
153-154 (CCPA 1978) (likelihood of confusion is a legal
conclusion, therefore, it cannot be an admission because
only facts may be admitted). Nonetheless, we have
considered opposer’s earlier opinion as “merely illuminative
of shade and tone in the total picture confronting the
decision maker.” Interstate Brands, 198 USPQ at 154.

46 Applicant’s Brief, p. 8, referring to trademark application
Serial No. 78408650.

Opposition No. 91187214
24
Taking into account all relevant evidence and arguments
of the parties, we find that the marks are closer in their
overall similarities than in their differences. This factor
favors opposer.
D. Balancing the factors.
In view of the facts that opposer’s marks BLACK CAT and
BLACK CAT AND DESIGN are commercially strong, the marks are
similar, and the goods legally identical in part and
available through channels of trade that must be presumed to
be identical, we find that applicant’s registration of the
mark BLACK CAT LUCKY AND DESIGN for jewelry and clothing is
likely to cause confusion with opposer’s marks BLACK CAT and
BLACK CAT AND DESIGN as used on t-shirts, hats and watches.
Decision: The opposition is sustained under Trademark
Act Section 2(d) and registration to applicant is refused.