Pacific Sunwear of California, Inc.v.Leon P. Hart

Trademark Trial and Appeal Board

Jun 27, 2007

No. 91156593 (T.T.A.B. Jun. 27, 2007)

Mailed: June 27, 2007
PTH

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
______

Pacific Sunwear of California, Inc.
v.
Leon P. Hart
_____

Opposition Nos. 91153356 and 91156593
_____

Matthew D. Murphey and Eric M. Jaegers of Gordon & Rees,
L.L.P. for Pacific Sunwear of California, Inc.

Leon P. Hart, appearing pro se.
______

Before Quinn, Hairston, and Walsh, Administrative Trademark
Judges.

Opinion by Hairston, Administrative Trademark Judge:

Leon P. Hart (applicant) has filed applications to
register the marks IT’S BULL SHIRT and design, as shown
below,

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Opposition Nos. 91153356 and 91156593
2
for “clothing and athletic wear, namely, shirts, shorts,
pants and hats;”1 and IT’S BULL SHORTS (in standard
character form) for “clothing, namely, pants, shorts,
shirts, and hats.”2
Pacific Sunwear of California, Inc. (opposer) opposed
registration in each instance. As grounds for opposition,
opposer alleges, pursuant to Section 2(d) of the Trademark
Act, that applicant’s marks, if used in connection with
applicant’s goods, so resemble opposer’s previously used and
registered mark BULLHEAD for a wide variety of men’s and
women’s clothing;3 and perfume, cologne and scented body
spray,4 as to be likely to cause confusion.
Applicant, in his answers, denied the salient
allegations in the notices of opposition.
The record consists of the files of the involved
applications; the testimony deposition, with exhibits, of
opposer’s president and chief merchandising officer, Timothy
Harmon; and opposer’s notice of reliance on the discovery
deposition, with exhibits, of applicant Leon Hart.
Applicant did not take any testimony or submit any other
evidence in his behalf. Only opposer filed a brief.

1 Application Serial No. 76288973, filed July 23, 2001, and
asserting a bona fide intention to use the mark in commerce.
2 Application Serial No. 76448053, filed September 9, 2002, and
asserting a bona fide intention to use the mark in commerce.
3 Registration No. 1833388.
4 Registration No. 2194135.
Opposition Nos. 91153356 and 91156593
3
The oppositions were consolidated by the Board in an
order dated April 6, 2005.
Priority and Standing
Opposer introduced plain copies of its pleaded
registrations during the testimony of its president, Mr.
Harmon. Although Mr. Harmon testified with respect to
certain aspects of the registrations, he did not testify as
to the current status and title of the registrations. Thus,
for purposes of priority, opposer may not rely on its
pleaded registrations, but rather must rely on its common
law rights in the mark BULLHEAD. In this regard, Mr. Harmon
testified that opposer’s first retail sales of BULLHEAD
products occurred in February 1993 in connection with jeans,
T-shirts, and boxers, and that opposer has continuously used
the mark on clothing items since that date. This is
sufficient to establish opposer’s use of the mark BULLHEAD
since prior to the filing date of applicant’s application,
the earliest date on which applicant is entitled to rely for
purposes of priority in the absence of any evidence of use.
Further, we find that opposer, by virtue of its common law
rights arising from use of the mark BULLHEAD on clothing
items, has established its standing to challenge the
involved applications. Lipton Industries, Inc. v. Ralston
Purina Co., 670 F.2d 1024, 213 USPQ 185 (CCPA 1982).
Opposition Nos. 91153356 and 91156593
4
Likelihood of Confusion
Our determination of the issue of likelihood of
confusion 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 & Co., 476 F.2d 1357, 177
USPQ 563 (CCPA 1973). See also, In re Majestic Distilling
Co., Inc., 315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir. 2003).
The du Pont factors deemed pertinent to this proceeding are
discussed below.
The first factor we consider is the relatedness of the
parties’ goods. We observe that the shirts, shorts, and
pants in applicant’s applications are legally identical and
otherwise closely related to opposer’s jeans, T-shirts, and
boxers. This factor weighs in opposer’s favor.
With respect to the factors of trade channels and
classes of purchasers, the record shows that opposer’s
products are sold in its “PacSun” retail and outlet clothing
stores primarily to teenagers. In the absence of any
limitations in the applicant’s identifications of goods, we
must presume that applicant’s goods will move through all
reasonable channels of trade for such goods to all usual
classes of consumers for such goods. Octocom Systems Inc.
Opposition Nos. 91153356 and 91156593
5
v. Houston Computer Services Inc., 918 F.2d 937, 16 USPQ2d
1783 (Fed. Cir. 1990). Thus, it must be presumed that the
applicant’s goods will be sold by retail and outlet clothing
stores, including opposer’s “PacSun” stores, to ordinary
consumers, including teenagers. The factors of similar
trade channels and classes of purchasers also weigh in favor
of opposer.
The next du Pont factor is fame, because fame of the
prior mark, if it exists, plays a dominant role in
likelihood of confusion cases. Recot, Inc. v. M. C. Becton,
214 F.3d 1322, 54 USPQ 1894 (Fed. Cir. 2000). Opposer
argues that its BULLHEAD mark is a famous mark entitled to a
broad scope of protection. However, we find that the
evidence falls short of establishing the fame of opposer’s
mark. Opposer offered its sales figures for BULLHEAD
clothing for the years 2003 and 2004 (63 million and 66
million dollars, respectively), and its total advertising
figures for the period between 2002-2004 (approximately 1
million dollars). While the sales figures, in particular,
indicate that opposer has enjoyed some success, the sales
and advertising figures are not extraordinarily large.
Moreover, while opposer’s president, Mr. Harmon, testified
that among the clothing brands sold at opposer’s “PacSun”
stores, BULLHEAD ranks 6th or 7th, he never testified as to
the ranking of BULLHEAD among all clothing brands marketed
Opposition Nos. 91153356 and 91156593
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to teenagers. We cannot conclude on this scant record that
the BULLHEAD mark is famous. Compare: Bose Corp. v. QSC
Audio Products, Inc., 293 F.3d 1367, 63 USPQ2d 1303 (Fed.
Cir. 2002); and Kenner Parker Toys v. Rose Art Industries,
963 F.2d 350, 2 USPQ2d 1453 (Fed. Cir. 1992). Thus, the
factor of fame is neutral.
The next du Pont factor we consider is the similarity
or dissimilarity of the marks when compared in their
entireties in terms of appearance, sound, connotation and
commercial impression. The test under this factor 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 that confusion as to the source of the goods
offered under the respective marks is likely to result. 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 (TTAB 1975). Furthermore, while marks must be
considered in their entireties, it is well settled that one
feature of a mark may be more significant than another, and
it is not improper to give more weight to this dominant
feature in determining the commercial impression created by
the mark. In re National Data Corp., 753 F.2d 1056, 224
USPQ 749 (Fed. Cir. 1985). Finally, in cases such as this,
Opposition Nos. 91153356 and 91156593
7
where the applicant’s goods are identical in part to
opposer’s goods, the degree of similarity between the marks
which is necessary to support a finding of likelihood of
confusion is less than it would be if the goods were not
identical. Century 21 Real Estate Corp. v. Century Life of
America, 970 F.2d 874, 23 USPQ2d 1698 (Fed. Cir. 1992).
Applying these principles in the present case, we find
that when considered in their entireties, each of
applicant’s marks IT’S BULL SHIRT and design and IT’S BULL
SHORTS is more dissimilar than similar to opposer’s mark
BULLHEAD in appearance, sound, connotation and commercial
impression. The only common element of the parties’ marks
is the word “BULL.” Each of applicant’s marks, which
consists of/includes a phrase, looks different and sounds
different from opposer’s single word mark. Moreover, the
connotations of each of applicant’s marks is different from
opposer’s mark. Each of applicant’s marks suggests a slang
phrase and a particular clothing item. Opposer’s mark, on
the other hand, suggests a bull’s head. While one of
applicant’s marks includes the image of a bull’s head, it is
well settled that when a mark consists of a word portion and
a design portion, the word portion is more likely to be
impressed upon a purchaser’s memory and to be used in
calling for the goods or services. In re Appetito
Provisions Co., 3 USPQ2d 1553 (TTAB 1987). Thus, in this
Opposition Nos. 91153356 and 91156593
8
case, it is the word portion of applicant’s mark IT’S BULL
SHIRT and design that is the dominant portion of this mark.
In addition, the image of the bull’s head in this mark
serves to reinforce the word BULL, rather than connoting a
bull’s head. In short, the respective marks project
different meanings and commercial impressions. See, e.g.,
In re British Bulldog, Ltd., 224 USPQ 854 (TTAB 1984) [The
mark PLAYERS for men’s underwear versus the mark PLAYERS for
shoes were found to project different meanings as applied to
the respective goods].
In view of the foregoing, we find that the appearance,
sound, connotation and commercial impression of each of
applicant’s marks is dissimilar from opposer’s mark. We
conclude therefore that, notwithstanding the parties’
identical and closely related goods, and the identical trade
channels and purchasers, each of applicant’s marks is so
dissimilar from opposer’s mark that purchasers are unlikely
to be confused.
Decision: The oppositions are dismissed.