Lotto Sport Italia S.p.A.v.Ukeje Agu, Jr.

Trademark Trial and Appeal Board

May 20, 2019

91229796 (T.T.A.B. May. 20, 2019)

This Opinion is not a
Precedent of the TTAB

Mailed: May 20, 2019

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

Lotto Sport Italia S.p.A.
v.
Ukeje Agu, Jr.
_____

Opposition No. 91229796
_____

James J. Bitetto and Susan Paik of Tutunjian & Bitetto PC
for Lotto Sport Italia S.p.A.

Ukeje Agu, Jr., pro se.
_____

Before Kuhlke, Wellington and Heasley, Administrative Trademark Judges.

Opinion by Kuhlke, Administrative Trademark Judge:

Applicant, Ukeje Agu, Jr., seeks registration of the composite mark
for “Headgear, namely, hats and caps; Jerseys; Pants; Shirts;
Sweaters; Tank tops,” in International Class 25 on the Principal Register.1
Opposer, Lotto Sport Italia S.p.A., has opposed registration of Applicant’s mark
on the ground that, as applied to Applicant’s goods, the mark so resembles

1 Serial No. 86849691, filed December 15, 2015, based on an allegation of first use and use
in commerce on July 1, 2014 under Section 1(a), 15 U.S.C. § 1051(a).
Opposition No. 91229796

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Opposer’s previously used and registered marks LOTTO in typed form2 for a variety
of clothing items in International Class 25 and , also for a
variety of clothing items in International Class 25, in addition to various bags,
briefcases, wallets etc. in International Class 18, games and playthings in
International class 28 and retail and wholesale store services featuring a variety of
items in International Class 35, as to be likely to cause confusion under Section 2(d)
of the Lanham Act, 15 U.S.C. § 1052(d). By his answer, Applicant denies the salient
allegations and asserts “affirmative defenses” that are more in the nature of
amplifications of its denials.3
The parties filed briefs on the case.
I. RECORD
The record includes the pleadings and, by operation of Trademark Rule
2.122(b)(1), 37 C.F.R. § 2.122(b)(1), the file of the application subject to the notice of
opposition.
Opposer submitted the testimony declaration of Andrea Tomat, Opposer’s
President and CEO, with accompanying exhibits 1 through 14, including TSDR
printouts of Opposer’s pleaded registrations.4

2 Prior to November 2, 2003, “standard character” drawings were known as “typed”
drawings. A typed mark is the legal equivalent of a standard character mark. TMEP §
807.03(i) (October 2018).

3 Applicant’s allegation that Opposer’s mark “is or has become generic” is an impermissible
collateral attack absent a counterclaim against the pleaded registrations and has been
given no consideration.

4 16-18 TTABVUE.
Opposition No. 91229796

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Opposer also submitted with its notice of reliance5: (1) Applicant’s responses to
Opposer’s Interrogatory Nos. 1-28; and (2) Applicant’s responses to Opposer’s
Requests for Production of Documents Nos. 1-38.6
Applicant did not submit trial evidence. In his brief, Applicant refers to various
“facts” and arguments that are not based on evidence submitted during the trial
period. See Trademark Rule 2.121, 37 C.F.R. 2.121. Opposer’s motion to strike
Applicant’s trial brief is granted to the extent that we have not considered those
portions of the brief that discuss or rely on material not of record, in particular, the
references to third-party applications and registrations. Saul Zaentz Co. v. Bumb,
95 USPQ2d 1723, 1725 n.7 (TTAB 2010) (assertions in brief not evidence unless
supported by evidence introduced at trial or except as admission).
II. STANDING AND PRIORITY
Opposer’s pleaded and proven registrations are summarized below:

5 19 TTABVUE.
6 Applicant’s responses to the document requests indicating no documents exist are
properly of record. See City National Bank v. OPGI Management GP Inc./Gestion OPGI
Inc., 106 USPQ2d 1668, 1674 n.10 (TTAB 2013) (responses to document production
requests are admissible solely for purposes of showing that a party has stated that there
are no responsive documents); ShutEmDown Sports Inc. v. Lacy, 102 USPQ2d 1036 n.7
(TTAB 2012) (written responses to document requests indicating that no documents exist
may be submitted by notice of reliance). However, the responses that consist of website
links have not been considered. Documents served in response to document requests may
not be made of record by notice of reliance alone, except to the extent that they are
admissible by notice of reliance under Trademark Rule 2.122(e) (printed publications,
official records); or unless the documents have been authenticated by an admission or
stipulation from the producing party. Syndicat Des Proprietaires Viticulteurs De
Chateauneuf-Du-Pape v. PasquierDesVignes, 107 USPQ2d 1930, 1932 n.7 (TTAB 2013);
ShutEmDown Sports Inc. v. Lacy, 102 USPQ2d 1036 at n.8 (TTAB 2012). Further, website
links are not proper matter for submission under notice of reliance and are insufficient to
make information from the site of record. Edom Laboratories Inc. v. Lichter, 102 USPQ2d
1546, 1550 (TTAB 2012); In re Olin Corp., 124 USPQ2d 1327, 1332 n.15 (TTAB 2017).

Opposition No. 91229796

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Registration No. 2347644 for the typed mark LOTTO for
“pullovers, gloves, cardigans, jerseys, neckwear, sweaters,
socks, stockings, tops, tights, trousers, leggings, skirts,
jackets, jerkins, shirts, vests, waistcoats, jumpers, track
suits, blouses, blousons, jeans, sweat pants, gym suits,
knickers, pants, shorts, t-shirts, sweat-shirts, suits and
dresses, overcoats, coats, anoraks, raincoats, belts,
suspenders, loungewear, under-wear, beachwear,
sleepwear, footwear, headwear,” in International Class
25, issued on May 2, 2000, 1998, renewed;
Registration No. 4148339 for the mark
for, inter alia, “Clothing, namely, shirts, body shirts, tank
shirts, camp shirts, dress shirts, sweatshirts, t-shirts, knit
shirts, long-sleeved shirts, short-sleeved shirts, moisture-
wicking sports shirts, polo shirts, shirts for suits, sports
shirts, wind shirts, pants, padded pants, gym pants,
jogging pants, lounge pants, sports pants, moisture-
wicking sports pants, petti-pants, stretch pants, sweat
pants, tap pants, track pants, wind pants, Bermuda
shorts, jackets, men's and women's jackets, outer jackets,
padded jackets, sleeved or sleeveless jackets, sports
jackets, sweat jackets, waterproof jackets, wind-jackets,
athletic uniforms, coats, trousers, vests, skirts, dresses,
jumpers, socks, stockings, tights, ties, underwear,
pajamas, bathing suits, swim trunks, gloves, footwear,
headgear, namely, hats, caps, caps with visors,
bandannas, head scarves, sun visors, berets,” in
International Class 25, issued on May 29, 2012.
Because Opposer has made its pleaded registrations properly of record, Opposer has
established its standing to oppose registration of Applicant’s mark and its priority is
not in issue with respect to the marks and goods in those registrations.7 See
Empresa Cubana Del Tabaco v. Gen. Cigar Co., 753 F.3d 1270, 111 USPQ2d 1058
(Fed. Cir. 2014); Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842

7 Applicant challenges Opposer’s standing based on another application that is not of
record. This argument has no merit because the application is not of record and absent a
counterclaim the pleaded and proven registrations enjoy the presumptions afforded under
Section 7 of the Trademark Act, 15 U.S.C. § 1057.
Opposition No. 91229796

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(Fed. Cir. 2000); Ritchie v. Simpson, 170 F.3d 1092, 50 USPQ2d 1023 (Fed. Cir.
1999); Lipton Indus., Inc. v. Ralston Purina Co., 670 F.2d 1024, 213 USPQ 185
(CCPA 1982); and King Candy Co., Inc. v. Eunice King’s Kitchen, Inc., 496 F.2d
1400, 182 USPQ 108 (CCPA 1974).
III. THE PARTIES
Opposer’s predecessor was formed in 1973 and began by manufacturing sports
footwear. Tomat Decl. ¶¶ 9 -10, 16 TTABVUE 4. The brand name LOTTO derives
from the founder’s surname Caberlotto. Id. In 1999, Opposer’s predecessor assigned
all its rights in the LOTTO marks to Opposer. Id. ¶ 13, 16 TTABVUE 5. Over the
years, the product offerings have expanded to a variety of apparel and accessories
for men, women and children. Id. ¶¶ 8, 10, 16 TTABVUE 4. Opposer’s goods and
services are sold through various types of retail stores and online. Id. ¶ 19, 16
TTABVUE 7.
Examples of Opposer’s use of its mark in connection with its goods as displayed
online and on its goods are set forth below:8

8 Tomat Decl., Exh. 1, 16 TTABVUE 29, 38.
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Applicant began selling hats, caps, jerseys, pants, shirts, sweaters and tank tops
in connection with the applied-for mark on July 1, 2014. Opp. Notice of Reliance, 19
TTABVUE 20. Applicant asserts the term LOTTA is an acronym for “Live Once
Take Time Appreciate.” Id. at 21.
Applicant’s specimen of use of the mark in connection with its
goods is shown below:9

9 Applicant’s specimen of use.
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IV. LIKELIHOOD OF CONFUSION
Our likelihood of confusion determination under Section 2(d) 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 and Co., 476 F.2d 1357, 177 USPQ 563
(CCPA 1973). See also, In re Majestic Distilling Co., 315 F.3d 1311, 65 USPQ2d
1201 (Fed. Cir. 2003). 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 (CCPA 1976). As noted above,
Opposer pleaded and proved two registrations for the LOTTO mark. For purposes of
our likelihood of confusion analysis, we confine our analysis to Opposer’s mark in
pleaded and proven Registration No. 2347644, summarized above, because if we do
not find likelihood of confusion with the mark and goods in this registration, we
would not find it as to the other pleaded and proven registration. See In re Max
Capital Grp. Ltd., 93 USPQ2d 1243, 1245 (TTAB 2010).
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A. Relatedness of Goods, Channels of Trade, Classes of Purchasers
We turn first to a consideration of the goods, channels of trade and classes of
purchasers. We must make our determinations under these factors based on the
goods as they are recited in the registration and application. See Octocom Systems
Inc. v. Houston Computer Services, Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed.
Cir. 1990) (“The authority is legion that the question of registrability of an
applicant’s mark must be decided on the basis of the identification of goods set forth
in the application regardless of what the record may reveal as to the particular
nature of an applicant’s goods, the particular channels of trade or the class of
purchasers to which sales of the goods are directed.”); In re Elbaum, 211 USPQ 639
(TTAB 1981).
The subject application and Opposer’s registration contain identical goods
(jerseys, sweaters, shirts, pants) and legally identical goods (Opposer’s “tops”
encompass Applicant’s “Tank tops” and Opposer’s “headwear” encompasses
Applicant’s “hats and caps”). Considering the channels of trade and classes of
purchasers, because the goods are identical and legally identical and there are no
limitations as to channels of trade or classes of purchasers in either the application
or Opposer’s registration, we must presume that Applicant’s and Opposer’s goods
will be sold in the same channels of trade and will be bought by the same classes of
purchasers. See In re Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1908 (TTAB
2012); Hewlett-Packard Co. v. Packard Press Inc., 281 F.3d 1261, 62 USPQ2d 1001
(Fed. Cir. 2002); Canadian Imperial Bank v. Wells Fargo Bank, 811 F.2d 1490, 1
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USPQ2d 1813 (Fed. Cir. 1987); Genesco Inc. v. Martz, 66 USPQ2d 1260, 1268
(TTAB 2003).
In view of the above, the du Pont factors of the similarity of the goods, the
channels of trade and classes of purchasers favor a finding of likelihood of confusion.
B. Conditions of Sale
In considering this factor, we must look at the goods as identified and base our
determination on the least sophisticated consumer. Stone Lion Capital Partners, LP
v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1163 (Fed. Cir. 2014) cited
in In re FCA US LLC, 126 USPQ2d 1214, 1222 (TTAB 2018) (“Board precedent
requires our decision to be based on the least sophisticated potential purchasers.”).
Because Applicant’s identification of goods is unrestricted and because
the clothing items in the cited registration are also unrestricted, we must assume
that these goods are sold to ordinary purchasers who exercise ordinary care in their
purchase. See In re Fabfitfun, Inc., 127 USPQ2d 1670, 1673 (TTAB 2018) (no
restriction of price). Applicant’s unsupported statements in his brief that his goods
have a “high-end price point” (21 TTABVUE 7) is not relevant, in view of the
unrestricted identification of goods in the application. Here, the class of consumers
for the respective goods consists of the general public, namely all types of consumers
(men, women, and children). There is no evidence that this segment of the general
public would necessarily exercise a higher degree of care when encountering the
goods. We further note that Opposer’s goods sell in a range between $7-$100 dollars.
Tomat Decl. ¶ 21, 16 TTABVUE 8. Moreover, to the extent some consumers may
take more care in their clothing purchase, as noted above, the standard of care for
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purchasing the goods is that of the least sophisticated purchaser. Alfacell Corp. v.
Anticancer, Inc., 71 USPQ2d 1301, 1306 (TTAB 2004). Accordingly, we find that
this factor slightly favors Opposer.
C. Fame of Opposer’s Mark
Before we compare the marks, we address the fifth du Pont factor, the fame of
Opposer’s mark. In the likelihood of confusion context, fame “varies along a
spectrum from very strong to very weak.” Midwestern Pet Foods Inc. v. Societe des
Produits Nestle S.A., 685 F.3d 1046, 103 USPQ2d 1435, 1440 (Fed. Cir. 2012)
(quoting Palm Bay, 73 USPQ2d at 1689). A famous mark is one that has extensive
public recognition and renown. Bose Corp. v. QSC Audio Prods., Inc., 293 F.3d 1367,
63 USPQ2d 1303, 1305 (Fed. Cir. 2002). Fame, if it exists, plays a dominant role in
the likelihood of confusion analysis. Kenner Parker Toys Inc. v. Rose Art Indus. Inc.,
963 F.2d 350, 22 USPQ2d 1453, 1456 (Fed. Cir. 1992). In view of the extreme
deference that is accorded to 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
prove it clearly. The commercial strength of a mark “may be measured indirectly,
among other things, by the volume of sales and advertising expenditures of the
goods or services traveling under the mark, and by the length of time those indicia
of commercial awareness have been evident.” Bose, 63 USPQ2d at 1305.
Opposer’s predecessor had many sponsorship agreements with various athletes,
including Dino Zoff, Thomas Muster, Martina Navratilova and Boris Becker. Tomat
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Decl. ¶ 11, 16 TTABVUE 5. Opposer’s predecessor also sponsored many national
soccer teams (Holland, Switzerland, Serbia, Croatia and Costa Rica) and soccer
clubs (Juventus, Milan, Queens Park Rangers, Deportive La Coruna, Hoffenheim
and Mainz). Id. ¶ 12. Opposer has continued the sponsorship of athletes, including
Luca Toni, Simone Perrotta, Francesca Schiavone, David Ferrer, Marion Bartoli
and Kevin Anderson. Id. ¶¶ 14, 15. Athletes have worn Opposer’s clothing at high
profile competitions around the world, including the U.S. Open Tennis
Championships and the 1994 Football World Cup in the United States. Id. ¶ 12.
Opposer sells its products throughout the United States in specialty and general
retail stores including, Modells, The Sports Authority, Dick’s Sporting Goods,
Journeys, Famous Footwear, Bobs Stores, Costco, and online, including through
Amazon and Zappos. Id. ¶ 19, 16 TTABVUE 7-8. Opposer also points to its presence
in social media (Facebook, Twitter, Instagram, YouTube); its company profile on
Wikipedia is available in 26 different languages. Id. ¶¶ 25, 26, 16 TTABVUE 9-10.
Applicant counters that Opposer has not provided context for its sales figures
and has only provided specific information for one year. In addition, Applicant
asserts that there is no context to understand the probative value of the “Likes” on
Facebook, the views on YouTube, the number of Twitter followers and “tweets,” or
the followers and posts on Instagram.
The evidence of commercial strength in the United States is limited due to the
lack of context. For example, Opposer provides testimony that since 2010 Opposer’s
sales under the LOTTO mark in the United States have been over $3.5 million and
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in 2013 Opposer’s sales were $1 million. Id. ¶ 22, 16 TTABVUE 8. Based on this
testimony, we do not know whether sales are increasing or decreasing over time, or
the percentage of the market share in that field. In addition, much of the evidence
points to use and events outside the United States (athlete and team sponsorships)
and without more information, we cannot gauge the impact on consumer awareness
in the United States. It is also unclear how long Opposer has offered its goods for
sale in the United States (“Today, Opposer’s goods/services under the ‘LOTTO’
marks are offered for sale and sold to consumers throughout the United States and
have been offered for sale well before the Applicant’s asserted date of first use of
July 1, 2014.” Tomat Decl. ¶ 17, 16 TTABVUE 7). There is a listing of licensing
contracts with six licensees for the United States territory spanning the 2009-2017
time period. Id. ¶ 18, 16 TTABVUE 7, Exh. 4 17 TTABVUE 79. There is also a
listing of catalogues in the United States for the period of 1999-2005 and copies of
the 1999, 2003, 2005 catalogues. ¶ 27, 16 TTABVUE 10; Exh. 11, 18 TTABVUE 29.
However, there is no information as to how much and how widely these were
distributed.
While this record does not support a finding of fame such that it is the dominant
factor, it has been shown that Opposer’s LOTTO mark has acquired substantial
commercial strength warranting a broader scope of protection.10 This factor favors a
likelihood of confusion.

10 As discussed above, we have not considered the listing of purported third-party
applications and registrations in Applicant’s brief. We further note that while third-party
use is relevant in the context of du Pont factor 6 to show weakness of a mark, even were we
to consider the listing, it would have no probative value.
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D. Similarity of the Marks
We now consider the similarity or dissimilarity of Applicant’s mark
and Opposer’s mark LOTTO when compared in their entireties in terms of
appearance, sound, connotation and commercial impression, keeping in mind that
“when marks would appear on virtually identical goods or services, the degree of
similarity necessary to support a conclusion of likely confusion declines.” Century 21
Real Estate Corp. v. Century Life of Am., 970 F.2d 874, 23 USPQ2d 1698, 1701 (Fed.
Cir. 1992). See also Bridgestone Americas Tire Operations LLC v. Fed. Corp., 673
F.3d 1330, 102 USPQ2d 1061, 1064 (Fed. Cir. 2012); Citigroup Inc. v. Capital City
Bank Grp. Inc., 637 F.3d 1344, 98 USPQ2d 1253, 1260 (Fed. Cir. 2011).
The marks are composed of five letters, both beginning with the same letters
LOTT. The only difference in the literal portions is one letter; Opposer’s mark ends
with the vowel O and Applicant’s ends with the vowel A. Applicant’s stylization in
its mark blurs that distinction because the letter A vaguely approaches the shape of
the letter O. In addition, because Opposer’s mark in the registration is in typed
form, we must consider all depictions of the marks including the same manner of
depiction regardless of the font style, size, or color in use. See In re Viterra, 101
USPQ2d at 1910; Citigroup v. Capital City Bank Group, 98 USPQ2d at 1259. Such
depictions would include those that emphasize the similarities in the marks―such
as appearing in a similar font or stylization. The design in Applicant’s mark does
not sufficiently serve to distinguish the marks. In general, “in a composite mark
comprising a design and words, the verbal portion of the mark is the one most likely
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to indicate the origin of the goods to which it is affixed.” CBS, Inc. v. Morrow, 708
F.2d 1579, 218 USPQ 198, 200 (Fed. Cir. 1983). In addition, here, the design is in a
subordinate position, being very small and appearing at the end of the literal
portion. Herbko Int’l Inc. v. Kappa Books Inc., 308 F.3d 1156, 64 USPQ2d 1375,
1380 (Fed. Cir. 2002) (“Because the impact of the design in the overall commercial
impression is minor when compared with the words, a consumer viewing Herbko’s
mark would attach greater significance to the words CROSSWORD COMPANION
than to the crossword puzzle design.”).
Applicant’s argument that his mark is short for “lot of,” which would lead the
consumer to associate the mark with luxury, is not supported by evidence. To the
extent such a meaning would be perceived by some consumers, it does not overcome
the strong similarities in sound, appearance and overall commercial impression.
We find the marks to be similar in appearance, sound, meaning and overall
commercial impression. This factor weighs in Opposer’s favor.
E. Actual Confusion
While the absence of actual confusion may weigh against a finding of likelihood
of confusion, the absence of any reported instances of confusion is meaningful only if
the record indicates a reasonable opportunity for confusion to have occurred.
Barbaras Bakery, Inc. v. Barbara Landesman, 82 USPQ2d 1283, 1287 (TTAB 2007).
Applicant contends that there is no evidence of actual confusion. However, there is
no evidence of Applicant’s actual use in the market and the extent of use of
Applicant’s mark is unknown. We have insufficient evidence on which to determine
whether there have been meaningful opportunities for confusion to occur. See
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Cunningham v. Laser Golf Corp., 55 USPQ2d at 1847; Gillette Canada Inc. v. Ranir
Corp., 23 USPQ2d 1768, 1774 (TTAB 1992). Moreover, evidence of actual confusion
is not necessary to establish a likelihood of confusion. Herbko v. Kappa Books, 64
USPQ2d at 1380; Han Beauty, Inc. v. Alberto-Culver Co., 236 F.3d 1333, 1338 (Fed.
Cir. 2001). We find this factor to be neutral.
F. Balancing the Factors
We have considered all of the evidence pertaining to the relevant du Pont
factors, as well as the parties’ arguments with respect thereto (including any
evidence and arguments not specifically discussed in this opinion). In balancing the
relevant factors, we conclude that because the goods are identical and legally
identical, the trade channels and classes of customers are identical, Opposer’s mark
is strong, and the marks are similar, confusion is likely.
Decision: The opposition is sustained.