Mighty Finev.Sayaka W. Draper

Trademark Trial and Appeal Board

Jul 29, 2002

No. 91119943 (T.T.A.B. Jul. 29, 2002)

Mailed: July 29, 2002
Paper No. 19
csl

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
______

Mighty Fine

v.

Sayaka W. Draper
_____

Opposition No. 119,943
against Application No. 75/831,116,
filed October 22, 1999
_____

Jill M. Pietrini of Manatt, Phelps & Phillips, LLP for
Mighty Fine.

Matthew Miller for Sayaka W. Draper.
______

Before Simms, Cissel and Quinn, Administrative Trademark
Judges:

Opinion by Simms:
Mighty Fine (opposer), a California corporation, has
opposed the application of Sayaka W. Draper (applicant), a
California sole proprietorship, to register the mark
MIGHTYFINE for various items of men’s, women’s and
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT
OF THE TTAB
Opp. No. 119,943
2
children’s apparel.1 Applicant has submitted an answer.
Only opposer took testimony and submitted evidence.2 Only
opposer filed a brief, and no oral hearing was requested.
In the notice of opposition, opposer asserts that it
has used the mark FINE since as early as June 6, 1994, for
T-shirts, sportswear, and active wear; that it has used the
trade name and trademark MIGHTY FINE for clothing since
June 6, 1994; that it has filed applications to register
those marks; that opposer has developed extensive goodwill
in those marks; and that applicant’s mark so resembles
opposer’s trade names and marks as to be likely to cause
confusion, to cause mistake or to deceive. In its answer,
application has denied these allegations, but has asserted

1 Application Serial No. 75/831,116, filed October 22, 1999, based upon
applicant’s allegation of a bona fide intention to use the mark in
commerce. The specific goods listed in the application are “hats,
caps, visors, hoods, berets, head bands, sweat bands, ear muffs,
gloves, mittens, wrist bands, suspenders, belts, socks, stockings,
pantyhose, bodysuits, leotards, leggings, sweat socks, thermal socks,
shoes, sneakers, galoshes, waders, boots, sandals, slippers, kerchiefs,
scarves, mufflers, bandannas, neckerchiefs, vests, pajamas, robes,
kimonos, caftans, smocks, aprons, boxer shorts, briefs, underpants,
corsets, corselets, girdles, brassieres, bustiers, chemises, teddies,
camisoles, slips, negligees, peignoirs, shirts, blouses, knit tops,
dresses, skirts, jumpsuits, pant suits, rompers, swimming trunks, wet
suits, thermal underwear, undershirts, tunics, tank tops, cotton woven
shirts, knit shirts, polo shirts, T-shirts, sweat shirts, crew neck
sweaters, v-neck sweaters, turtleneck sweaters, cardigans, suits,
jogging suits, shorts, sweat shorts, jeans, pants, slacks, trousers,
sweat pants, ski suits, ski pants, ski bibs, capes, shawls, blazers,
waistcoats, rain coats, overcoats, top coats, sport coats, parkas,
bolero jackets, jackets, wind resistant jackets, outer jackets, leather
jackets, ski jackets, flannel jackets, wool jackets, polyester woven
shirts, rayon woven shirts, wool woven shirts, leather coats, elastic
waist shorts, fixed waist shorts, denim shorts, and denim jackets.”

2 On the last day for taking testimony, applicant submitted a motion to
extend its testimony period. The Board denied that motion.
Opp. No. 119,943
3
that the mark FINE is common in the clothing field, with
many third-party registrations and uses, and that it cannot
be a distinctive trademark of opposer. Further, applicant
asserts that opposer has no proprietary rights in the mark
MIGHTY FINE and that applicant’s interstate use and filing
date precedes opposer’s use of this mark.3
Opposer has submitted the testimony of its president
and a notice of reliance on applicant’s discovery
responses, printed publications and official records,
including its own applications.
According to the testimony of Stacy Lynn Kitchin,
opposer’s president, opposer began business as a sole
proprietorship under the trade name Fine in Hawaii in 1992
or 1993. Kitchin dep., 9. At that time, opposer sold T-
shirts under the trademark FINE. When Ms. Kitchin moved to
California in June 1994, she began selling T-shirts at
(night)club events and raves (music parties for young
adults). Later, opposer sold other goods under the mark
FINE such as skirts, dresses, pants, lingerie and
accessories. Opposer obtained orders for merchandise at
trade shows held in 1994 or 1995. Kitchin dep., 32.

3 Because applicant introduced no testimony or evidence and failed to
file a brief, we consider these defenses to have been waived.
Opp. No. 119,943
4
Opposer started using the trade name and mark MIGHTY
FINE in 1999 (Kitchin dep., 17) and it is now the main
trade name under which opposer does business (Kitchin dep.,
250). Opposer first used the mark MIGHTY FINE on T-shirts
in 1999 and expanded its goods to include pants, skirts and
tops. Kitchin dep., 71. Ms. Kitchin identified Exhibit 56
as an item of clothing bearing the mark MIGHTY FINE sold in
1999. Kitchin dep., 263. Opposer displayed its MIGHTY
FINE merchandise at a trade show in June 1999. Kitchin
dep., 83. Opposer now sells its goods under this mark as a
private label (Kitchin dep., 225), and presents this mark
and goods at licensing trade shows (Kitchin dep., 226).
Opposer’s sales under this mark are not as great as those
under the FINE mark. Kitchin dep., 240. Opposer has also
introduced invoices (Exhibit 19) from the spring and summer
of 1999 evidencing sales of MIGHTY FINE merchandise, as
well as a 1999 catalog displaying its MIGHTY FINE goods
(Kitchin dep., 81-2).4
In addition to trade shows, opposer uses its trade
names and marks and promotes its goods by mail-order
catalogs, posters, business cards which use various trade
names (Fine, Mighty Fine, etc.), point-of-purchase

4 Corroborating opposer’s first trade name use is Exhibit 23, an October
1998 permit for an alarm listing Mighty Fine as the applicant.
Opp. No. 119,943
5
displays, letterheads, invoices and magazine
advertisements. Opposer now also sells its goods over the
Internet. Ms. Kitchin also testified that opposer’s
apparel has been the subject of some unsolicited publicity.
Ms. Kitchin stated that in opposer’s application to
register the mark MIGHTY FINE, opposer incorrectly stated
the date of first use to be June 1994.5 Ms. Kitchin
testified that this application was prepared by another
employee, and that this mistake was apparently caused by
confusing the date of first use of this mark with the date
of first use of the mark FINE (June 1994). Kitchin dep.,
87. She testified that this mistake was an honest one not
made with an intent to deceive the Office. Kitchin dep.,
260. She stated that the correct date of first use of the
mark MIGHTY FINE should be 1998 or perhaps January or
February of 1999. Kitchin dep., 70, 88, 202, and 253.
Opposer also testified concerning use of such marks as
DOE BY MIGHTY FINE, used as both a trade name and a
trademark since 2000 (Kitchin dep., 186-87), and the mark
FINETUNING, used since 1997 or 1998 for T-shirts designed
to be worn by deejays. Kitchin dep., 16. Opposer does not
currently display any FINETUNING goods at trade shows.

5 The incorrect date was also pleaded in the notice of opposition.
Opp. No. 119,943
6
Opposer became aware of applicant’s use in 2000 when a
Canadian distributor noticed one of applicant’s
advertisements in Vice magazine, a magazine in which
opposer also advertises. Ms. Kitchin also testified that
she received an invoice from a vendor for a bounced check
fee that was being billed to opposer (Kitchin dep., 179).
Also, two or three customers, after returning from trade
shows, have asked opposer if it was related to applicant.
Kitchin dep., 180. Finally, Ms. Kitchin testified that
people have asked for applicant at opposer’s trade show
booths.
As noted above, only opposer submitted a brief.
Opposer argues essentially that it has priority (use before
applicant’s filing date) and that applicant’s mark is
likely to be confused with all of opposer’s marks--FINE,
MIGHTY FINE, DOE BY MIGHTY FINE and FINETUNING. Opposer
also argues that it has a family of FINE marks. However,
this allegation was not pleaded and we do not believe that
this issue can be considered tried merely by the
introduction of a few advertisements in which some of
opposer’s marks appear. We shall determine this case on
Opp. No. 119,943
7
the basis of opposer’s use of the virtually identical mark
MIGHTY FINE.6
First, the record establishes that opposer began use
of the trade name and mark MIGHTY FINE in 1998 to early
1999, with displays at a trade show in June 1999, prior to
applicant’s filing date, the earliest date which applicant
may claim. See also applicant’s response to Req. for
Admission 21.
As opposer has argued, these marks are virtually
identical in appearance, and are identical in sound and
meaning. Also, some of applicant’s goods are identical to
those on which opposer has previously used its mark MIGHTY
FINE. Other goods of applicant are closely related.
Further, there is no limitation in applicant’s application
as to channels of trade and classes of purchasers.
Moreover, the testimony shows that the parties both offer
their clothing at the same trade shows and have advertised
in the same magazines to the same class of purchasers. In
addition, these items of clothing are relatively
inexpensive and would be purchased without much
consideration by members of general public. The testimony

6 We note that opposer cannot establish use of the mark DOE BY MIGHTY
FINE prior to applicant’s filing date of October 22, 1999. Opposer’s
testimony reveals that opposer began use of this mark in 2000. As to
the mark FINETUNING, while opposer has priority with respect to this
mark, it appears that opposer’s current use of this mark is minimal
with no current promotion of goods under this mark.
Opp. No. 119,943
8
reveals that opposer received at least one piece of
misdirected mail and that individuals at trade shows have
asked whether there was an association between the parties.
While opposer has argued that applicant adopted its
mark with knowledge of opposer’s use of the FINE mark in
order to trade off of opposer’s reputation, suffice it to
say that the testimony and other evidence is not persuasive
in that regard. Nevertheless, we conclude that applicant’s
mark MIGHTYFINE for its items of men’s, women’s and
children’s apparel so resembles opposer’s previously used
trade name and mark MIGHTY FINE used in connection with
similar items of clothing so as to be likely to cause
confusion.
The opposition is sustained and registration to
applicant is refused.