No Fear, Inc.v.Wallace Martin Eggert

Trademark Trial and Appeal Board

Aug 5, 1998

No. 91106990 (T.T.A.B. Aug. 5, 1998)

THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF
THE TTAB 8/5/98
Bottorff
Opposition No. 106,990
No Fear, Inc.
v.
Wallace Martin Eggert
Before Cissel, Hairston and Walters, Administrative
Trademark Judges. By the Board.
This case now comes up on applicant’s October 15, 1997
motion for summary judgment. Opposer has filed a brief in
opposition to applicant’s motion as a well as an alternative
request for discovery under Fed. R. Civ. P. 56(f).
Applicant has filed a reply brief in support of his summary
judgment motion which the Board, in its discretion, has
considered. The Board has carefully considered all of the
parties’ arguments and submissions, and decides as follows.
Applicant has applied to register the mark NOSFERATU
for goods identified in the application as "men’s, women’s,
and children’s wearing apparel, namely, shirts, T-shirts,
sweatshirts, jackets, coats, vests, dresses, skirts, pants,
UNITED STATES DEPARTMENT OF COMMERCE
Patent and Trademark Office
Trademark Trial and Appeal Board
2900 Crystal Drive
Arlington, Virginia 22202-3513
Opposition No. 106,990
2
shorts, jeans, underwear, scarves, bandannas, ties, caps,
hats, belts, caps1, footwear and headwear." The application
was filed on October 3, 1996, and is based on the intent-to-
use provisions of Trademark Act Section 1(b), 15 U.S.C.
§1051(b).
Opposer filed a timely notice of opposition to
registration of applicant's mark. As grounds therefor,
opposer alleges that it is the owner of the mark NO FEAR;
that it has used that mark since at least as early as August
1990 on a variety of goods, including clothing items
essentially identical to those identified in applicant's
application; that it owns numerous registrations2 of the
mark NO FEAR, depicted both in typed form and in various
stylized forms, covering a variety of goods including the
types of clothing items identified in applicant's
application; that its NO FEAR mark is well-known; and that
applicant's mark, NOSFERATU, as applied to applicant's
goods, is confusingly similar to opposer's previously-used

1 The word "caps" appears twice in the application’s
identification of goods.
2 Opposer has attached to its notice of opposition copies of
fifteen registrations, cumulatively covering goods including
Class 25 clothing, Class 16 decals, Class 14 jewelry, Class 28
sporting goods, toys and video games, Class 3 fragrance products,
Class 5 bandages, Class 10 compression bandages and wraps for
medical use, Class 12 bicycles, Class 9 sunglasses and
eyeglasses, and Class 42 retail store services. The copies are
not status and title copies, but applicant, for purposes of his
summary judgment motion, has conceded opposer’s ownership of the
registrations.
Opposition No. 106,990
3
NO FEAR mark, and thus is barred from registration under
Opposition No. 106,990
4
Trademark Act Section 2(d), 15 U.S.C. §1052(d).
Applicant filed a timely answer, by which he has denied
the allegations of the notice of opposition which are
essential to opposer's Section 2(d) claim. Applicant
subsequently filed a timely motion for summary judgment,
which is supported by applicant's declaration and attached
exhibits.
For purposes of his motion for summary judgment,
applicant has conceded that priority rests with opposer in
this case, and that various of the du Pont3 likelihood of
confusion evidentiary factors would weigh in favor of a
finding of likelihood of confusion. Thus, for purposes of
applicant's motion for summary judgment, it is undisputed
that applicant's goods, as identified in the application,
are, in part, identical to the goods covered by some of the
registrations pleaded by opposer; that these goods would
travel through the same trade channels and be marketed to
the same classes of purchasers; that opposer has
continuously used its NO FEAR marks throughout the United
States since at least as early as August 1990 in connection
with clothing products; that opposer's NO FEAR clothing
products are well-known and recognized among the purchasing
public and that opposer's NO FEAR mark has come to be known

3 In re E.I. du Pont de Nemours & Co., 476 F.2d 1356, 177 USPQ
563 (CCPA 1973).
Opposition No. 106,990
5
to the trade and to the consuming public to refer to
products originating with opposer; and that there are no
third-party marks which are identical to or similar to those
of opposer in the clothing products field such that any
"weak mark" defense could be raised by applicant.
Applicant argues, however, that it also cannot be
reasonably disputed in this case that the parties’
respective marks, i.e., NOSFERATU and NO FEAR, are
completely dissimilar in terms of appearance, sound,
connotation and commercial impression, under the first du
Pont likelihood of confusion evidentiary factor. NOSFERATU
and NO FEAR do not look alike or sound alike, argues
applicant, nor are their respective connotations similar.
Regarding the connotation of his mark, applicant has
presented evidence establishing that "nosferatu" is a
synonym for "vampire" and is a well-known term in vampire
literature and mythology, not least as a result of the 1922
classic silent film "Nosferatu, Eine Symphonie des Garuens"
("Nosferatu, a Symphony of Horror"), and the 1979 remake of
that film, "Nosferatu the Vampyre." Applicant, in his
declaration in support of his motion for summary judgment,
asserts that he is interested in vampire lore and mythology
and that he selected and adopted the mark NOSFERATU because
of the term’s "vampire" connotation. Applicant also argues
Opposition No. 106,990
6
that to purchasers who are not aware of the "vampire"
connotation of the term NOSFERATU, the term would have no
particular meaning but would be viewed simply as an unknown
foreign word. By contrast, applicant argues, opposer’s mark
NO FEAR does not connote vampires, nor would it be viewed as
an unfamiliar foreign term. Rather, opposer’s mark is a
phrase comprised of two commonly recognized English words,
connoting an absence of apprehension, anxiety or dread.
Applicant argues that this indisputable dissimilarity
between the parties’ respective marks, under the first du
Pont evidentiary factor, is dispositive of the likelihood of
confusion analysis in this case, outweighing all of the
other undisputed facts of record which would otherwise
support a finding of likelihood of confusion. That is,
applicant argues, the parties’ marks are so dissimilar that
no confusion is likely, notwithstanding the undisputed
identity of the parties’ respective goods, trade channels,
and classes of customers, and notwithstanding the undisputed
fame of opposer’s mark and the absence of similar third-
party marks.
Opposer has not submitted any affidavits or other
evidence in opposition to applicant’s motion for summary
judgment. However, opposer has filed a twenty-page brief,
the first sixteen pages of which are devoted to opposer’s
arguments on the substantive merits of applicant’s motion,
Opposition No. 106,990
7
and the last four pages of which comprise opposer’s
arguments in support of its alternative request for
discovery under Fed. R. Civ. P. 56(f). Opposer also has
submitted the Rule 56(f) affidavit of its counsel, Darren S.
Rimer.
On the merits, opposer argues that, as applicant has
conceded for purposes of its motion, many of the du Pont
evidentiary factors, i.e., the similarity of goods,
similarity of trade channels and classes of purchasers, the
strength of opposer’s mark, and the absence of similar
third-party marks, all favor a finding of likelihood of
confusion in this case and accordingly are sufficient to
defeat applicant’s motion for summary judgment. Opposer
further argues that its NO FEAR mark is a strong and famous
mark, entitled to a wide scope of protection, and also that
there is a genuine issue of material fact as to applicant’s
intent in adopting his mark, issues of intent generally
being unsuitable for determination on summary judgment.
Opposer also argues that there are genuine issues of
material fact in this case as to the similarity or
dissimilarity of the parties’ respective marks, under the
first du Pont evidentiary factor. Specifically, opposer
argues that applicant’s analysis of the similarity of the
marks is based on an improper and overly simplistic side-by-
side comparison of the marks, and that there is no evidence
Opposition No. 106,990
8
that the relevant purchasing public for applicant’s goods is
aware of the "vampire" connotation of NOSFERATU asserted by
applicant. According to opposer, opposer’s NO FEAR mark and
applicant’s NOSFERATU mark actually are similar in terms of
appearance and potential connotation, in that:
[t]he first two letters of Applicant’s mark are the
letters "NO" followed by the letters "FER" in close
proximity thereto. Thus, the mark NOSFERATU could be
associated with Opposer and Opposer’s family of NO
FEAR trademarks, depending upon the actual usage of
the mark and the commercial impression created
thereby, which are issues of fact.
Opposer’s brief, at pp. 12-13. Opposer argues that the
commercial impression of applicant’s mark depends on the
totality of circumstances surrounding how the mark is used
by applicant and perceived by the purchasing public,
including whether applicant uses a type style or font which
is substantially similar to one used by Opposer, and that
there is no evidence of record with respect to those
circumstances.
Opposer argues, alternatively, that in the event that
the Board finds that opposer has failed, by the arguments
made in its brief, to demonstrate the existence of a genuine
issue of material fact sufficient to defeat applicant’s
summary judgment motion, then summary judgment nonetheless
should not be granted to applicant because opposer is
entitled to discovery under Fed. R. Civ. P. 56(f). Opposer
Opposition No. 106,990
9
asserts, in this regard, that it has not received
applicant’s responses to opposer’s previously-served
discovery requests, and that additional discovery will be
needed as well, including interrogatories, requests for
production of documents, requests for admissions, discovery
depositions, and, possibly, consumer surveys.
Opposer’s Rule 56(f) affidavit includes a recitation of
the thirteen du Pont factors and an assertion that opposer
seeks discovery as to those factors. More specifically,
opposer’s counsel (at paragraph 10 of his affidavit) asserts
as follows:
Additional issues of fact which may be discovered
will relate to visual and phonetic similarities
between the marks, the nature and extent of use of
NOSFERATU by Applicant and whether such use is in any
particular channels of trade, as well as discovery
regarding other issues relevant to a finding of a
likelihood of confusion between marks. With respect
to the latter, such discovery would involve the
strength of Applicant’s [sic] marks, in light of
alleged third party usages, as well as the intent of
Applicant in selecting and adopting its trademark.
Turning first to opposer’s alternative request for Rule
56(f) discovery, we find that opposer has failed to show
that it is entitled to such relief. Initially, we doubt the
procedural propriety of opposer’s attempt to use Rule 56(f)
as a "fallback position" in case its (sixteen pages of)
arguments on the merits of applicant’s summary judgment
motion fail. Cf. Dyneer Corp. v. Automotive Products plc,
Opposition No. 106,990
10
37 USPQ2d 1251 (TTAB 1995). More fundamentally, however, we
find that opposer has failed to establish its entitlement to
Rule 56(f) discovery in any event.
Opposer’s Rule 56(f) affidavit essentially consists of
a recitation of certain of the du Pont evidentiary factors,
a statement of the proposition that those factors generally
"are relevant to a finding of a likelihood of confusion
between marks," and a conclusory assertion that opposer
therefore is entitled to discovery pertaining to those
factors prior to responding to applicant’s summary judgment
motion. This mere recitation of du Pont factors, without an
identification of any specific facts that opposer believes
it will be able to prove if it is permitted to take the
requested discovery, is not a sufficient Rule 56(f) showing.
See Keebler Co. v. Murray Bakery Products, 866 F.2d 1386, 9
USPQ2d 1736, 1738 (Fed. Cir. 1989)("We do not imply that a
mere mention of intent and actual confusion in Keebler’s
affidavits would have rendered them adequate under Rule
56(f)"); Strang Corp. v. The Stouffer Corp., 16 USPQ2d 1309
(TTAB 1990). Distinguish Opryland USA, Inc. v. The Great
American Music Show Inc., 970 F.2d 847, 23 USPQ2d 1471 (Fed.
Cir. 1992). See also Fennell v. First Step Designs, Ltd.,
83 F.3d 526, 531 (1st Cir. 1996)(party seeking Rule 56(f)
discovery must articulate a plausible basis for its belief
Opposition No. 106,990
11
that discoverable materials pertaining to trialworthy facts
actually exist).
In addition to the fatal lack of specificity in
opposer’s Rule 56(f) affidavit, the Board notes that the
particular evidentiary factors identified in opposer’s Rule
56(f) affidavit appear to consist, for the most part, of
issues upon which opposer would not need to have discovery
in order to respond to applicant’s motion for summary
judgment. Opposer has not explained why it needs discovery
to present evidence as to the "visual and phonetic
similarities between the marks." Such similarities, vel
non, are apparent from the face of the marks. Likewise,
because applicant’s application is based on intent-to-use,
it is not clear what sort of discovery opposer is seeking
regarding the "nature and extent" of applicant’s use of his
mark. Finally, applicant already has conceded, for purposes
of summary judgment, that the parties’ goods move in
identical trade channels and that opposer’s mark is a strong
mark, not weakened by third party usage of similar marks on
similar goods. Opposer therefore has no need for Rule 56(f)
discovery on those issues.
The only other issue specifically identified by opposer
in its Rule 56(f) affidavit is the issue of applicant’s
intent in adopting his mark. Opposer, citing Dunkin’ Donuts
of America Inc. v. Metallurgical Exoproducts Corp., 840 F.2d
Opposition No. 106,990
12
917, 6 USPQ2d 1026 (Fed. Cir. 1988), argues that intent is
relevant to Section 2(d) claims, and that opposer
accordingly is entitled to discovery on that issue before it
can be required to respond to applicant’s summary judgment
motion.4 However, we do not read Dunkin’ Donuts to stand
for the blanket proposition that a defendant’s intent is
always a material issue in every Section 2(d) case, or that
a Section 2(d) plaintiff is always entitled to Rule 56(f)
discovery on the issue of intent.
Opposer’s mere mention of applicant’s intent in its
Rule 56(f) affidavit does not establish opposer’s
entitlement to discovery on that issue. See Keebler Co.,
supra, 9 USPQ2d at 1738. It is not enough that the issue of
intent is potentially relevant in Section 2(d) cases, in
general. Rather, the determination to be made under Rule
56(f) is whether applicant’s intent in adopting his mark is
a material issue in this particular case. Opposer has not
asserted that it believes, or has any reasonable basis for
believing, that applicant adopted his NOSFERATU mark in bad
faith and that discovery would uncover evidence of such bad
faith. Nor is there anything else in the record which

4 Opposer also cites Copelands’ Enterprises, Inc. v. CNV, Inc.,
945 F.2d 1563, 20 USPQ2d 1295 (Fed. Cir. 1991) for the
proposition that "the factual question of intent is particularly
unsuited to disposition on summary judgment where the issue is
whether misuse of the registration symbol was caused by an honest
mistake or by an intent to deceive." Opposer’s brief, page 7.
Opposition No. 106,990
13
suggests that evidence of bad faith adoption might be found
through discovery. Distinguish the Dunkin’ Donuts case,
wherein the nature of the defendant’s mark itself, DUNKING
DONUT, when compared to the plaintiff’s DUNKIN’ DONUTS mark,
provided a plausible basis for believing that the intent
issue was material to that particular case and that
discoverable materials relating to possible bad faith
adoption might exist.
Opposer’s Rule 56(f) motion amounts to nothing more
than a request for discovery for discovery’s sake, by which
opposer seeks to satisfy its speculative hope of finding
some evidence that might tend to support its complaint. See
Keebler Co. v. Murray Bakery Products, supra; Pure Gold,
Inc. v. Syntex (U.S.A.), Inc., 739 F.2d 624, 222 USPQ 741
(Fed. Cir. 1984). The Court’s characterization of the Rule
56(f) affidavit involved in Keebler Co., supra, is equally
applicable to this case: "Indeed, it is difficult to
interpret Keebler’s affidavit support for its discovery
motions as saying anything more than, ’We have no factual
basis for opposing summary judgment, but, if you stay
proceedings, we might find something’." 9 USPQ2d at 1738
(emphasis in original). Opposer’s Rule 56(f) motion is
denied.

However, whether applicant has misused the registration symbol is
not an issue in this case.
Opposition No. 106,990
14
We turn next to the merits of applicant’s motion for
summary judgment. Summary judgment is appropriate in cases
where the moving party establishes that there are no genuine
issues of material fact which require resolution at trial
and that it is entitled to judgment as a matter of law.
Fed. R. Civ. P. 56(c). An issue is material when its
resolution would affect the outcome of the proceeding under
governing law. Anderson v. Liberty Lobby, Inc., 477 U.S.
242, 248 (1986). A fact is genuinely in dispute if the
evidence of record is such that a reasonable factfinder
could return a verdict in favor of the nonmoving party. Id.
The nonmoving party must be given the benefit of all
reasonable doubt as to whether genuine issues of material
fact exist, and the evidentiary record on summary judgment,
and all inferences to be drawn from the undisputed facts,
must be viewed in the light most favorable to the nonmoving
party. See Opryland USA, Inc. v. Great American Music Show,
Inc., supra; Olde Tyme Foods Inc. v. Roundy’s Inc., 961 F.2d
200, 22 USPQ2d 1542 (Fed. Cir. 1992).
Applicant has conceded, for purposes of its summary
judgment motion, that opposer has priority in this case,
leaving only the issue of likelihood of confusion for
determination on summary judgment. The question of whether
a likelihood of confusion exists in a particular case is a
legal one, the resolution of which is based on underlying
Opposition No. 106,990
15
factual determinations with respect to each of the du Pont
evidentiary factors for which evidence has been made of
record. See Opryland USA, Inc., supra, 23 USPQ2d at 1473.
In this case, we find that there is no genuine issue of
material fact that opposer’s NO FEAR marks and applicant’s
NOSFERATU mark are completely dissimilar in terms of
appearance, sound, connotation and commercial impression,
under the first du Pont evidentiary factor. Contrary to
opposer’s argument, no reasonable factfinder could conclude
that, because the word NOSFERATU contains the letters NO and
FER, NOSFERATU and NO FEAR are similar in terms of
appearance or sound. Furthermore, applicant has presented
persuasive evidence establishing that, just as applicant
intended in adopting the mark, the purchasing public is
likely to perceive NOSFERATU as connoting "vampire."
Opposer has presented absolutely no evidence upon which a
reasonable factfinder might base any other conclusion
regarding the connotation of applicant’s mark, nor any
evidence from which it might reasonably be inferred that
NOSFERATU and NO FEAR have similar connotations.
Opposer argues that there is a genuine issue of
material fact as to the similarity of the commercial
impressions of the respective marks, inasmuch as applicant
might display his mark in a typestyle similar to the
typestyle used by opposer. We disagree. Regardless of the
Opposition No. 106,990
16
manner in which applicant’s mark is displayed, and even if
applicant’s mark were to be displayed in a typestyle similar
to the typestyle in which opposer’s marks appear, the
commercial impression of applicant’s mark would be dominated
by the word NOSFERATU itself, a word which is highly
distinctive, unusual, and evocative. The word NOSFERATU is
so dissimilar to the words NO FEAR in terms of appearance,
sound and connotation that, even if they were to appear in
the same typestyle, the commercial impressions of the two
marks, when viewed in their entireties, would be dissimilar
as a matter of law.
In short, we find that there is no genuine issue of
material fact as to the dissimilarity of the marks under the
first du Pont evidentiary factor.
Furthermore, in view of applicant’s evidentiary
concessions (made for purposes of his summary judgment
motion), we find that there is no genuine dispute that
applicant’s goods are identical to opposer’s goods, that the
parties’ goods move through the same trade channels and are
marketed to the same classes of purchasers, that opposer’s
mark is famous, and that there are no third-party marks
which are identical to or similar to those of opposer in the
clothing products field which might dilute the strength of
opposer’s mark.
Opposition No. 106,990
17
Because there are no genuine issues of material fact as
to opposer’s priority or as to any of the du Pont
evidentiary factors for which there is evidence in the
record, the issue to be determined is whether, on the basis
of those undisputed facts, applicant is entitled to judgment
as a matter of law in its favor on opposer’s Section 2(d)
claim. See Fed. R. Civ. P. 56(c). We find that it is.
It is settled that, in a particular case, a single du
Pont evidentiary factor may be dispositive of the likelihood
of confusion determination. See Kellogg v. Pack’em
Enterprises, Inc., 951 F.2d 330, 21 USPQ2d 1142 (Fed. Cir.
1991); Pure Gold v. Syntex (U.S.A.), Inc., supra. This is
such a case. The utter dissimilarity between the parties’
respective marks, under the first du Pont evidentiary
factor, is a sufficient basis, in itself, to warrant summary
dismissal of opposer’s likelihood of confusion claim.
In reaching this conclusion, we are mindful that when,
as we presume to be the case here, the parties’ respective
goods are identical in kind and are marketed in the same
trade channels to the same classes of purchasers, the degree
of similarity required between the marks to sustain a claim
of likelihood of confusion is less than that otherwise
needed in situations involving dissimilar, non-competing
products. See Jules Berman & Associates, Inc., v.
Consolidated Distilled Products, Inc., 202 USPQ 67 (TTAB
Opposition No. 106,990
18
1979). We also have taken into account that opposer’s NO
FEAR mark is entitled to a relatively broad scope of
protection in view of its presumed strength and fame. See
Kenner Parker Toys Inc. v. Rose Art Industries Inc., 963
F.2d 350, 22 USPQ2d 1453 (Fed. Cir. 1992).
However, as a matter of law, the scope of protection to
which opposer’s mark is entitled, even though expanded due
to the fame of the mark and the identity of the parties’
goods, does not extend so far as to warrant a finding that
applicant’s use of the totally dissimilar mark NOSFERATU is
likely to cause confusion. Applicant’s NOSFERATU mark is so
dissimilar to opposer’s NO FEAR mark that purchasers who
encounter clothing items bearing the NOSFERATU mark, and who
are aware that opposer uses its various NO FEAR marks on
similar sorts of clothing items, are not likely to be
confused, mistaken or deceived into thinking that there is
any source, sponsorship, approval, or other connection
between opposer and applicant’s goods bearing the mark
NOSFERATU.
No genuine issues of material fact exist for trial, and
applicant is entitled to judgment as a matter of law.
Accordingly, applicant’s motion for summary judgment is
Opposition No. 106,990
19
granted. See Fed. R. Civ. P. 56(c). The opposition is
dismissed with prejudice.
R. F. Cissel
P. T. Hairston
C. E. Walters
Administrative Trademark Judges
Trademark Trial and Appeal Board