91247007 (T.T.A.B. Oct. 4, 2019)

Nike, Inc.v.Dongguan Qisheng Sportswear Co., Ltd.

Trademark Trial and Appeal BoardOct 4, 2019

91247007 (T.T.A.B. Oct. 4, 2019)

Mailed: October 4, 2019 UNITED STATES PATENT AND TRADEMARK OFFICE _____ Trademark Trial and Appeal Board _____ Nike, Inc. v. Dongguan Qisheng Sportswear Co., Ltd. _____ Opposition No. 91247007 _____ Helen Hill Minsker, Audra C. Eidem Heinze, Banner & Witcoff, Ltd. for Nike, Inc. (“Plaintiff”) Dongguan Qisheng Sportswear Co., Ltd. (“Defendant”), pro se _____ Before Thurmon, Deputy Chief Administrative Trademark Judge, Ritchie and Lynch, Administrative Trademark Judges. Opinion by Thurmon, Deputy Chief Administrative Trademark Judge: Defendant, Dongguan Qisheng Sportswear Co., Ltd., seeks registration of the design shown below for “Athletic apparel, namely, shirts, pants, jackets, footwear, hats and caps, athletic uniforms; Athletic sweaters; Cyclists’ jerseys; Gloves; Gym This Opinion Is Not a Precedent of the TTAB Opposition No. 91247007 - 2 - pants; Hats; Hosiery; Neckties; Shoes; Swimming costumes” in International Class 25.1 Plaintiff, Nike, Inc., opposes registration based on the mark shown below which is registered for the following goods: “Tennis footwear; tennis apparel, namely, shorts, shirts, sweat shirts, sweat pants, sweaters, jackets, socks, headwear, bandanas, sweatbands” in International Class 25.2 On June 5, 2019, the parties stipulated to Accelerated Case Resolution (“ACR”), including the following procedural stipulations:3 • disclosures, discovery, and use of expert testimony were waived; 1 Application Serial Number 88126276 was filed on September 21, 2018, based on Applicant’s allegation of use of the mark in commerce under Section 1(a) of the Trademark Act, 15 U.S.C. § 1051(a). “The mark consists of an irregular graphic that looks like a cow's head.” Page references to the application record are to the downloadable .pdf version of the USPTO’s Trademark Status & Document Retrieval (TSDR) system. References to the briefs, motions and orders on appeal are to the Board’s TTABVUE docket system. 2 Registration No. 4112206. This registration issued on Marck 13, 2012, from an application filed on July 13, 2009. “The mark consists of a stylized bull head comprised of two symmetrical lines that are rounded at the top and jagged at the bottom. The symmetrical halves are placed farther apart at the top and almost come to a point at the bottom of the design.” 3 8 TTABVUE. Opposition No. 91247007 - 3 - • evidence that otherwise could be submitted by Notice of Reliance may be submitted with briefs; and, • the Board may resolve disputed issues of fact based on the record submitted. The parties further stipulated to the following facts: • Plaintiff owns the pleaded registration identified above. This registration is valid and subsisting. • Plaintiff has standing. • There is no association, affiliation or connection between the parties. With the exception of the stipulated facts listed above, Defendant denied the salient allegations in the Notice of Opposition.4 The case has been fully briefed. We find the evidence of record establishes a likelihood of confusion and, therefore, sustain the opposition. I. The Record Plaintiff’s submissions include the following:5 • Declaration of Jennifer Reynolds, Associate General Counsel at NIKE, which sets forth facts relating to NIKE’s trademark rights in the BULL DESIGN Mark;6 4 4 TTABVUE 2. 5 Plaintiff’s pleaded trademark registration is also in evidence under Trademark Rule 2.122(d)(1), 37 C.F.R. § 2.122(d)(1). As noted above, Defendant also stipulated to the ownership and validity of this registration. 6 11 TTABVUE. Confidential portions of Ms. Reynolds’ testimony were submitted under seal. 12 TTABVUE. We have reviewed the confidential testimony and find that it supports the factual findings made below. We do not find any specific portions of the confidential testimony are necessary to support our decision and for that reason, do not cite to such evidence in this decision. Opposition No. 91247007 - 4 - • Declaration of Timothy J. Haugh, Senior Litigation Paralegal at Banner & Witcoff, Ltd., which sets forth facts relating to products offered for sale featuring the BULL DESIGN Mark, articles from the Internet showing professional tennis player, Rafael Nadal, wearing products bearing the BULL DESIGN Mark, and the presence of the BULL DESIGN Mark on digital media;7 and, • Declaration of Audra C. Eidem Heinze, Attorney at Banner & Witcoff, Ltd., which sets forth facts relating to NIKE’s enforcement of the BULL DESIGN Mark.8 Defendant did not submit any evidence. II. Standing and Priority Defendant stipulated to Plaintiff’s standing, thus resolving this threshold issue. See Empresa Cubana Del Tabaco v. Gen. Cigar Co., 753 F.3d 1270, 111 USPQ2d 1058, 1062 (Fed. Cir. 2014), cert. denied, 135 S. Ct. 1401, 191 L. Ed. 2d 360 (2015); John W. Carson Found. v. Toilets.com Inc., 94 USPQ2d 1942, 1945 (TTAB 2010). Defendant did not counterclaim to cancel Plaintiff’s pleaded registration, which Plaintiff has submitted into the record, and which the parties have additionally stipulated to as being valid and subsisting. So priority is not an issue with respect to the goods identified in that registration. Penguin Books Ltd. v. Eberhard, 48 USPQ2d 1280, 1286 (TTAB 1998) (citing King Candy Co. v. Eunice King’s Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108, 110 (CCPA 1974)). III. Likelihood of Confusion Our determination under Section 2(d) is based on an analysis of all of the probative evidence of record bearing on the likelihood of confusion. In re E.I. du Pont 7 13 TTABVUE. 8 14 TTABVUE. Opposition No. 91247007 - 5 - de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973) (setting forth factors to be considered); see also In re Majestic Distilling Co., 315 F.3d 1311, 65 USPQ2d 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 and services. 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.”). Plaintiff bears the burden of establishing that there is a likelihood of confusion by a preponderance of the evidence. Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1844 (Fed. Cir. 2000). We consider the likelihood of confusion factors about which there is evidence. du Pont, 177 USPQ at 567-68 (consider factors “when of record”); see also Cai v. Diamond Hong, Inc., 901 F.3d 1367, 127 USPQ2d 1797, 1800 (Fed. Cir. 2018) (“Not all of the du Pont factors are relevant to every case, and only factors of significance to the particular mark need be considered.”(quoting In re Mighty Leaf Tea, 601 F.3d 1342, 94 USPQ2d 1257, 1259 (Fed. Cir. 2010)). A. Similarity of the Marks We must consider the marks “in their entireties as to appearance, sound, connotation and commercial impression.” Palm Bay Imps. Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1691 (Fed. Cir. 2005) (quoting du Pont, 177 USPQ at 567). “Similarity in any one of these elements may be sufficient to find the marks confusingly similar.” In re Davia, 110 USPQ2d 1810, 1812 (TTAB 2014); accord Krim-Ko Corp. v. Coca-Cola Bottling Co., 390 F.2d Opposition No. 91247007 - 6 - 728, 156 USPQ 523, 526 (CCPA 1968). The marks at issue here have only design elements, so the similarity of the marks must be decided primarily on the basis of visual similarity and any connotation or commercial impression generated by the designs. In re Vienna Sausage Mfg. Co., 16 USPQ2d 2044, 2047 (TTAB 1990). The test is not whether the marks can be distinguished when subjected to a side- by-side comparison, but rather whether the marks are sufficiently similar in terms of their overall commercial impression so that confusion as to the source of the goods and services offered under the respective marks is likely to result. Cai, 127 USPQ2d at 1801; Midwestern Pet Foods, Inc. v. Societe des Produits Nestle S.A., 685 F.3d 1046, 103 USPQ2d 1435, 1440 (Fed. Cir. 2012). The focus is on the recollection of the average purchaser, who normally retains a general rather than a specific impression of trademarks. See Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106, 108 (TTAB 1975). Defendant’s mark is and Plaintiff’s mark is . The marks are highly similar. The inner shaded area of Defendant’s mark is identical, or very nearly so, to Plaintiff’s mark. The only difference is the outer border on Defendant’s mark, but this border follows the general pattern of the inner element. We find that the similarity of the marks makes confusion more likely. Opposition No. 91247007 - 7 - B. Similarity of Goods, Trade Channels, and Purchasing Conditions We group three of the du Pont factors together because all are based on the goods identified in the application and registration.9 The parties’ goods overlap. Plaintiff’s registration identifies, “Tennis footwear; tennis apparel, namely, shorts, shirts, sweat shirts, sweat pants, sweaters, jackets, socks, headwear, bandanas, sweatbands.” The following items identified in Defendant’s application overlap with Plaintiff’s goods: “Athletic apparel, namely, shirts, pants, jackets, footwear, hats and caps …” Tennis apparel is a subset of athletic apparel, and tennis footwear is a subset of athletic footwear. See In re Hughes Furniture Indus., Inc., 114 USPQ2d 1134, 1137 (TTAB 2015) (“Applicant's broadly worded identification of ‘furniture’ necessarily encompasses Registrant’s narrowly identified ‘residential and commercial furniture.’”). When the goods are legally identical, even in part, the likelihood of confusion increases significantly. See, e.g., Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012); Century 21 Real Estate Corp. v. Century Life of Am., 970 F.2d 874, 23 USPQ2d 1698, 1700 (Fed. Cir. 1992). There are no trade channel limitations in the application or registration. We, therefore, presume the parties goods will flow through the same trade channels and be purchased by the same class of consumers under similar conditions. Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1163- 54 (Fed. Cir. 2014); Octocom Sys, Inc. v. Houston Comput. Servs. Inc., 918 F.2d 937, 9 Our analysis here covers the second, third and fourth du Pont factors. Opposition No. 91247007 - 8 - 16 USPQ2d 1783, 1787-88 (Fed. Cir. 1990); Paula Payne Prods. v. Johnson Publ’g Co., 473 F.2d 901, 177 USPQ 76, 77 (CCPA 1973). We find the parties’ goods are legally identical, in part, and that such goods are likely to use the same trade channels and be purchased under similar conditions. These facts make confusion more likely. C. Strength of Plaintiff’s Mark We treat two of the du Pont factors together to assess whether Plaintiff’s mark is strong.10 “A mark’s strength is measured both by its conceptual strength (distinctiveness) and its marketplace strength (secondary meaning).” In re Chippendales USA, Inc., 622 F.3d 1346, 96 USPQ2d 1681, 1686 (Fed. Cir. 2010)); see also Top Tobacco, L.P. v. North Atl. Operating Co., Inc., 101 USPQ2d 1163, 1171-72 (TTAB 2011); Tea Bd. 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 (5th ed. 2019). Market strength “varies along a spectrum from very strong to very weak.” Joseph Phelps Vineyards, LLC v. Fairmont Holdings, LLC, 857 F.3d 1323, 122 USPQ2d 1733, 1734 (Fed. Cir. 2017). Evidence of widespread third-party use of the mark, or of the same elements found in the mark, will reduce the strength of a mark. Juice Generation, Inc. v. GS Enters. LLC, 794 F.3d 1334, 115 USPQ2d 1671, 1674-5 (Fed. Cir. 2015); Jack Wolfskin Ausrustung Fur Draussen GmbH & Co. 10 In du Pont, the court identified the following two related factors: “the fame of the prior mark” and “the number and nature of similar marks in use on similar goods.” In re E.I. du Pont de Nemours & Co., 177 USPQ at 567. These two factors go to the strength of the Plaintiff’s mark and, therefore, are treated together here. Opposition No. 91247007 - 9 - KGAA v. New Millennium Sports, S.L.U., 797 F.3d 1363, 116 USPQ2d 1129, 1136 (Fed. Cir. 2015). The record contains no evidence of third-party use of similar marks. To evaluate the conceptual strength of word marks, we place the mark along the spectrum of the following classes: “(1) generic, (2) descriptive, (3) suggestive, and (4) arbitrary or fanciful. The lines of demarcation, however, are not always bright.” Abercrombie & Fitch Co. v. Hunting World, Inc., 537 F.2d 4, 9 (2d Cir. 1976). We find Plaintiff’s mark has substantial conceptual and market strength. It is an arbitrary design with no clear connection to the goods that bear the mark. Plaintiff submitted evidence showing extensive marketing and promotion of its mark, particularly through tennis player Raphael Nadal.11 Plaintiff’s evidence shows that its mark has received a great deal of exposure. We find the strength of Plaintiff’s mark makes confusion more likely. D. Actual Confusion or the Lack Thereof We also combine the two du Pont factors that relate to actual confusion.12 There is no evidence of actual confusion. Defendant’s application claims a first use date of February 1, 2018, but Defendant presented no evidence showing the extent of its 11 Much of the evidence submitted by Plaintiff shows the fame of Mr. Nadal, who in some instances is seen wearing items bearing the BULL DESIGN mark. See, e.g., 13 TTABVUE 44-45, 107, 115-18, 172-73, 184-85, 191-92, 241. Ms. Reynolds testifies that this mark is often used by Mr. Nadal. 11 TTABVUE 7-8. From the record, it appears this mark is directly linked to Mr. Nadal, as there is little evidence of it being worn by other prominent professional athletes. We find the fame and success of Mr. Nadal, which is clear from the evidence of record, has helped create market strength for the BULL DESIGN mark. We note that even without this conclusion on fame, the outcome of the decision would remain the same. 12 In du Pont, the court listed two factors about actual confusion: “the nature and extent of any actual confusion” and “the length of time during and conditions under which there has been concurrent use without evidence of actual confusion.” In re E.I. du Pont de Nemours & Co., 177 USPQ at 567. Opposition No. 91247007 - 10 - actual trademark use. Plaintiff claims it has been unable to find Defendants’ goods on the market.13 The absence of actual confusion is not always evidence that confusion is unlikely. Citigroup Inc. v. Capital City Bank Grp., Inc., 94 USPQ2d 1645, 1660 (TTAB 2010), aff’d, 637 F.3d 1344, 98 USPQ2d 1253 (Fed. Cir. 2011); Gillette Canada Inc. v. Ranir Corp., 23 USPQ2d 1768, 1774 (TTAB 1992). For the absence of actual confusion to be probative, there must have been a reasonable opportunity for confusion to have occurred. Barbara’s Bakery Inc. v. Landesman, 82 USPQ2d 1283, 1287 (TTAB 2007) (the probative value of the absence of actual confusion depends upon there being a significant opportunity for actual confusion to have occurred); Red Carpet Corp. v. Johnstown Am. Enters. Inc., 7 USPQ2d 1404, 1406-1407 (TTAB 1988); Central Soya Co., Inc. v. North Am. Plant Breeders, 212 USPQ 37, 48 (TTAB 1981) (“the absence of actual confusion over a reasonable period of time might well suggest that the likelihood of confusion is only a remote possibility with little probability of occurring”). There is not enough evidence to reach any conclusion concerning the absence of actual confusion evidence in this case. These factors, therefore, will be given no weight in the likelihood of confusion analysis. See Tao Licensing, LLC v. Bender Consulting Ltd. d/b/a Asian Pacific Beverages, 125 USPQ2d 1043, 1063 (TTAB 2017) (citation omitted) (actual confusion du Pont factors neutral because “Respondent’s limited use and sales created ‘little opportunity for confusion to have occurred’”). 13 10 TTABVUE 29-30. Opposition No. 91247007 - 11 - E. Bad Faith The thirteenth du Pont factor allows us to consider any other relevant facts, including bad faith adoption of a mark by the Defendant. See, e.g., L'Oreal S.A. v. Marcon, 102 USPQ2d 1434, 1441 (TTAB 2012) (citing L.C. Licensing Inc. v. Berman, 86 USPQ2d 1883, 1890 (TTAB 2008) and J & J Snack Foods Corp. v. McDonald's Corp., 932 F.2d 1460, 18 USPQ2d 1889, 1891 (Fed. Cir. 1991)). Plaintiff argues that Defendant adopted its mark in bad faith.14 Plaintiff cites to no evidence to support this argument, but instead argues that the similarity of the marks “cannot be a coincidence.”15 The marks are similar, but that was the subject of the first du Pont factor discussed above. We will not bootstrap a finding of bad faith onto our finding that the marks are similar without additional evidence of the Defendant’s intent. There is no such evidence in the record.16 F. Weighing and Balancing the Factors Plaintiff has proven that confusion is likely. The marks are similar, the goods are legally identical (in part), and we presume the same trade channels and purchasing conditions exist for the parties’ goods. Plaintiff’s mark is strong, which makes confusion more likely. None of the likelihood of confusion factors favors Defendant. The opposition must be sustained under Section 2(d). 14 10 TTABVUE 30-31. 15 Id. at 30. 16 The only substantive argument Defendant made in its brief is that it did not adopt the mark in bad faith. 15 TTABVUE 5-6. Plaintiff responded in its Rebuttal Brief with more reasons why it does not believe Defendant. 16 TTABVUE 4. We make no finding as to the intent of Defendant given the lack of evidence in the record. Opposition No. 91247007 - 12 - Decision: The opposition is sustained.