Pacific Sunwear of California, Inc.v.Pepperdine University

Trademark Trial and Appeal Board

Mar 8, 2005

No. 91159978 (T.T.A.B. Mar. 8, 2005)

Butler Mail date: March 8, 2005

Opposition No. 91159978

Pacific Sunwear of California,
Inc.

v.

Pepperdine University

Before Quinn, Walters and Bottorff, Administrative Trademark
Judges.

By the Board:
Applicant seeks to register the following mark

for “clothing, namely, tee-shirts, sweatshirts, sweatpants, hats,
caps, sweaters, jackets, boxer shorts, socks, tanktops, and
shorts.”1
As grounds for the opposition, opposer alleges that
applicant’s mark, when used on the identified goods, so resembles
opposer’s following mark

1 Application Serial No. 76523318, filed on June 17, 2003, claiming a
bona fide intention to use the mark in commerce.
UNITED STATES PATENT AND TRADEMARK
OFFICE
Trademark Trial and Appeal Board
P.O. Box 1451
Alexandria, VA 22313-1451
THIS DISPOSITION IS
NOT CITABLE AS
PRECEDENT OF THE TTAB
Opposition No. 91159978
2

for a wide variety of clothing items2 as to be likely to cause
confusion, mistake or to deceive. (This mark may be referred to
as KIRRA and wave design at times in this decision.)
In its answer, applicant denies the salient allegations of
the notice of opposition.
Discovery was last set to close on December 17, 2004, per
opposer’s consented motion, filed September 7, 2004, to extend
discovery and trial dates. Such motion to extend dates was
granted by the Board in an order dated October 19, 2004. This
case now comes up on the following matters and motions:

2 Such mark is the subject matter of application Serial No. 78234683,
filed on April 7, 2003, claiming a bona fide intention to use the mark
in commerce. The goods identified therein are “men’s, women’s and
children's apparel, namely, 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.”
Opposition No. 91159978
3
1) applicant’s fully briefed motion, filed November
15, 2004, for summary judgment in its favor;3
2) opposer’s fully briefed motion, filed November 22,
2004, to compel additional discovery depositions
of applicant’s witnesses on the ground that the
single witness deposed was not able to answer
questions in numerous areas;
3) opposer’s fully briefed motion, filed December 13,
2004, for discovery pursuant to Fed. R. Civ. P.
56(f), seeking the same discovery as that sought
by its November 22, 2004 motion to compel; and
4) opposer’s fully briefed motion, filed November 19,
2004, for leave to file an amended notice of
opposition to include reliance on opposer’s
following marks:

(This mark may be referred to as the wave in circle design at
times in this decision.)4

and

3 Opposer responded by seeking Fed. R. Civ. P. 56(f) discovery and,
alternatively, addressing the merits of applicant’s summary judgment
motion.
4 Such mark is the subject matter of application Serial No. 78478221,
filed on September 2, 2004, claiming use and use in commerce since
December 31, 2003. The goods identified in the pending application
are “men’s, women’s and children's apparel, namely, hats, caps,
visors, belts, socks, shoes, sneakers, sandals, slippers, shirts, knit
tops, swimming trunks, tank tops, cotton woven shirts, knit shirts,
polo shirts, t-shirts, sweat shirts, crew neck sweaters, v-neck
sweaters, shorts, jeans, pants, jackets, wind resistant jackets, outer
jackets, leather jackets, fixed waist shorts.”
The USPTO status database indicates that the application has not yet
been assigned to an Examining Attorney. The Board notes in passing
that the status record for the application lists far fewer clothing
items than opposer lists in its proposed amended notice of opposition,
where opposer lists the same goods for this mark as it does for the
originally pleaded KIRRA and wave design mark.
Opposition No. 91159978
4

(This mark may be referred to as KIRRA and wave in circle design
at times in this decision.)5

Opposer’s motion for leave to amend the notice of opposition
In support of its motion to amend the notice of opposition
to plead ownership of the two marks indicated above, opposer
argues that it did not delay in moving to amend to include the
marks (the applications being filed in September of 2004 and its
motion being brought in November of 2004); that applicant will
not be prejudiced because it previously had an opportunity to
conduct discovery with respect to the marks, though chose not to,
and because discovery had not yet closed at the time the motion
was brought, thus allowing applicant future discovery
opportunities with respect to the marks; and that, if opposer is

5 Such mark is the subject matter of application Serial No. 78478188,
filed on September 2, 2004, claiming use and use in commerce since
December 31, 2003. The goods identified in the application are
“men’s, women’s and children's apparel, namely, hats, caps, visors,
belts, socks, shoes, sneakers, sandals, slippers, shirts, knit tops,
swimming trunks, tank tops, cotton woven shirts, knit shirts, polo
shirts, t-shirts, sweat shirts, crew neck sweaters, v-neck sweaters,
shorts, jeans, pants, jackets, wind resistant jackets, outer jackets,
leather jackets, fixed waist shorts.”
The USPTO status database indicates that the application has not yet
been assigned to an Examining Attorney. The Board notes in passing
that the status record for the application lists far fewer clothing
items than opposer lists in its proposed amended notice of opposition,
where opposer lists the same goods for this mark as it does for the
originally pleaded KIRRA and wave design mark.
Opposition No. 91159978
5
not allowed to amend its notice of opposition, it may be
necessary to file separate proceedings against applicant’s mark.
In response, applicant argues that opposer has delayed
because the additional marks were alleged to be used by opposer
prior to the commencement of this opposition. With respect to
its mark, applicant argues that prejudice to it exists because it
has not had an opportunity for discovery on the marks raised by
the amended pleading; and because opposer’s motion appears to be
“a tactic to avoid Applicant’s summary judgment motion.”
Applicant also contends that opposer’s amendment is futile
because the application filing dates for the marks opposer seeks
to include are subsequent to the filing date of applicant’s
application, and because opposer does not claim to be the prior
user of the marks it seeks now to plead.
Once a responsive pleading is served, a party may amend its
pleading only with the written consent of the adverse party or by
leave of the Board. The Board liberally grants leave to amend
pleadings at any stage of a proceeding when justice so requires,
unless entry of the proposed amendment would violate settled law
or be prejudicial to the rights of the adverse party or parties.
See Fed. R. Civ. P. 15(a); and TBMP §507.02 (2nd ed. rev. 2004).
Opposer’s motion for leave to amend its notice of opposition
to include two additional marks is granted. In view of the
Board’s decision, infra, with respect to applicant’s motion for
Opposition No. 91159978
6
summary judgment, any prejudice to applicant in permitting the
amendment to the notice of opposition is minimal.

Applicant’s motion for summary judgment
In support of its motion for summary judgment (brought prior
to opposer’s motion for leave to amend its notice of opposition),
applicant argues that, because of the dissimilarities in the
parties’ marks in sight, sound, connotation, and commercial
impression, applicant is entitled to entry of judgment in its
favor on the issue of likelihood of confusion. Applicant argues
that its mark consists of three stacked and spaced, solid
crescent shaped lines with the open portion facing right. With
respect to opposer’s mark, applicant argues that the design
portion consists of a curved, nearly closed ellipse with a
surfboard shaped silhouette at the top, and with the open portion
of the curve facing left. In addition, opposer’s mark includes
the word KIRRA, displayed beneath the design. Applicant contends
that the design portion of opposer’s mark brings to mind surfing
and a surfboard in the ocean, with the word KIRRA, while
applicant’s mark may bring to mind a wave, but just as easily may
bring to mind the concepts of a forward moving force, wind,
swirling, rolling, or a cyclone. Applicant also argues that the
parties’ respective goods travel in different channels of trade
because applicant sells its goods through its campus bookstores,
its athletic department, its university website, and campus
Opposition No. 91159978
7
events. In addition, applicant argues that its intended
consumers primarily include its students, alumni and their family
and friends.
Applicant’s motion is accompanied by the declaration of its
marketing director; and the declaration of its attorney
introducing opposer’s responses to applicant’s first set of
requests for admission and copies from the TARR database of
fifteen registrations for clothing items where the marks consist,
at least in part, of crescent shaped “wave” designs.
In response, opposer argues that genuine issues of material
fact exist with respect to the appearance, connotation, and
commercial impressions of the parties’ respective marks. Opposer
contends that applicant impermissibly made a side-by-side
comparison of the marks, and that the designs in both marks are
waves, facing the opposite directions, with opposer’s mark
including the word KIRRA. According to opposer, the designs in
the parties’ mark are similar, each comprising three curved
shapes along a longitudinal axis having the same angle, spaced
the same width apart. Opposer, acknowledging again the word
KIRRA in its mark, contends that the parties’ marks in their
entireties convey the same connotation, meaning and commercial
impression of a wave. Concerning the parties’ goods, opposer
argues that they both offer clothing and many of the clothing
items are identical. Opposer argues that the parties’ clothing
items, bearing their respective marks, will be encountered in the
Opposition No. 91159978
8
same channels of trade by the same classes of purchasers under
the same conditions. Opposer also argues that, because of its
prior and extensive use of its wave mark and its large investment
therein, and because applicant has admitted it has not yet used
its mark, an issue of fact exists with respect to the commercial
notoriety of opposer’s mark. Opposer argues that genuine issues
of material fact exist with respect to applicant’s intent in the
conceptualization and adoption of its mark because applicant’s
deponent admitted to being aware of third parties who use a wave
mark similar to opposer’s wave mark.
Opposer’s response is accompanied by the declarations of its
president, director of design, and attorney, the latter
introducing, in part, numerous exhibits, including: the
discovery depositions of applicant’s marketing director,
opposer’s president, and opposer’s director of design; excerpts
from opposer’s website showing examples of the goods currently
offered by opposer; and excerpts from applicant’s website showing
the goods currently offered by applicant.
In reply, applicant argues that it has not inadequately
analyzed the likelihood of confusion factors6 as opposer
contends. Applicant maintains, assuming for purposes of its
summary judgment motion only that the factual allegations in the
notice of opposition are true, that there is no likelihood of

6 See In re DuPont de Nemours & Co., 476 F.2d 1357, 177 USPQ 463 (CCPA
1973).

Opposition No. 91159978
9
confusion due to the dissimilarities of the marks. Applicant
contends that opposer has not submitted any evidence showing that
a genuine issue of material fact exists with respect to the
similarities of the marks, including their respective commercial
impressions. Applicant also argues that opposer has not offered
any evidence that the parties’ respective goods are competitive;
and that opposer’s claim of “commercial notoriety” lacks
foundation.
In a motion for summary judgment, the moving party has the
burden of establishing the absence of any genuine issues of
material fact and that it is entitled to judgment as a matter of
law. See Fed. R. Civ. P. 56(c). A genuine issue with respect to
material fact exists if sufficient evidence is presented that a
reasonable fact finder could decide the question in favor of the
non-moving party. See Opryland USA Inc. v. Great American Music
Show, Inc., 970 F.2d 847, 23 USPQ2d 1471 (Fed. Cir. 1992). Thus,
all doubts as to whether any factual issues are genuinely in
dispute must be resolved against the moving party and all
inferences must be viewed in the light most favorable to the non-
moving party. See Olde Tyme Foods Inc. v. Roundy’s Inc., 961
F.2d 200, 22 USPQ2d 1542 (Fed. Cir. 1992).
In the present case, the Board finds that applicant has
established the absence of any genuine issue of material fact and
that it is entitled to judgment as a matter of law. The
circumstances here are similar to those in Champagne Louis
Opposition No. 91159978
10
Roederer S.A. v. Delicato Vineyards, 148 F.3d 1373, 47 USPQ2d
1459 (Fed. Cir. 1998) and Kellogg Co. v. Pack’em Enterprises,
Inc., 14 USPQ2d 1545 (TTAB 1990), aff’d, 951 F.2d 330, 21 USPQ2d
1142 (Fed. Cir. 1991), in that the single DuPont7 factor of the
dissimilarity of the marks in their entireties substantially
outweighs any other relevant factors and is dispositive of the
issue of likelihood of confusion.
In coming to the conclusion that the dissimilarities of the
marks are so great as to avoid likelihood of confusion, the Board
finds or construes the remaining relevant, presented Dupont
factors in opposer’s favor.8
As to its pleaded KIRRA and wave design mark, opposer’s
constructive use date (application filing date of April 7, 2003)
is prior to applicant’s constructive use date (application filing
date of June 17, 2003).9

7 Id.
8 In presenting its motion, applicant urges the Board, for purposes of
the motion for summary judgment, to assume the truth of the factual
allegations of the notice of opposition. Applicant then advocates
that no likelihood of confusion exists due to the complete
dissimilarity of the marks at issue. Despite this apparent concession
of the remaining Dupont factors, applicant nonetheless presents
arguments with respect to the connotations of the marks, the channels
of trade for the goods, and the classes of purchasers for the goods.
9 It is true that, based on the status of applicant’s application and
the pending applications for opposer’s wave in circle design mark and
KIRRA and wave in circle design mark, priority cannot be found or
construed in opposer’s favor. That is, opposer’s applications for
these now pleaded marks have a filing date subsequent to applicant’s
filing date. In addition, opposer’s alleged dates of use for these
marks are also subsequent to applicant’s filing date. See Jimlar
Corp. v. The Army and Air Force Exchange Service, 24 USPQ2d 1216 (TTAB
1992); and Zirco Corp. v. American Telephone and Telegraph Co., 21
USPQ2d 1542 (TTAB 1991). However, even if opposer’s applications were
to register, and opposer was able eventually to prove priority,
Opposition No. 91159978
11
Genuine issues of material fact are not found in the
parties’ arguments concerning the nature of the goods, channels
of trade and consumer markets. The identification of goods in
applicant’s application and opposer’s pending applications (as
well as opposer’s amended notice of opposition) are all for the
same and related clothing items; and are unrestricted as to
channels of trade, class of purchasers and method of
distribution. 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. See Octocom Systems, Inc. v.
Houston Computer Services, Inc., 918 F.2d 937, 16 USPQ2d 1783
(Fed. Cir. 1992); and Bongrain International (American) Corp. v.
Moquet Ltd, 230 USPQ 626 (TTAB 1986). Accordingly, the Board
must presume that the goods identified by applicant and by
opposer in its pleaded applications, and as pleaded in its
complaint, encompass all goods of the type described, move in all
normal channels of trade and under all normal methods of
distribution, and are available to all classes of purchasers.
See also In re Diet Center, Inc., 4 USPQ2d 1975 (TTAB 1987); and
In re Americor Health Services, 1 USPQ2d 1670 (TTAB 1986).

applicant’s mark and opposer’s marks are so dissimilar that proof of
any such priority would not result in raising a genuine issue of
material fact as to the similarities of the parties’ respective marks.
Opposition No. 91159978
12
The Board understands opposer’s arguments concerning the
“commercial notoriety” of its marks to amount to a claim of fame,
and, for purposes of applicant’s summary judgment motion, has
construed this factor in opposer’s favor.
To the extent that a genuine issue of material fact with
respect to applicant’s intent in the conceptualization and
adoption of its mark may have been raised by applicant’s
knowledge of opposer’s mark,10 this fact is not material to the
Board’s decision because the same conclusion on likelihood of
confusion is warranted in view of the dissimilarities of the
parties’ respective marks. See Presto Products Inc. v. Nice-Pak
Products Inc., 9 USPQ2d 1895 (TTAB 1988). That is, a factor
listed in DuPont is not made material by submission of evidence
on the point; rather, the factor must be shown to be material or
relevant in the particular case before any evidence offered on
the factor should be considered. See Octocom Systems Inc. v.

10 In support of this factor, opposer’s directs the Board to p. 13:1-2
of applicant’s Rule 30(b)(6) witness, Mr. Hardman, in support of
opposer’s position that the witness “… did not know how the mark was
designed, and whether the designer used Pac Sun’s mark or other third
party marks as a basis for his design.” However, a review of that
portion of the deposition, including several preceding and subsequent
pages, indicates that the witness described a development process
resulting in the subject mark, in which he participated. In addition,
it does not appear that the witness was asked specifically about this
information of which opposer argues the witness had no knowledge.
Opposer also directs the Board to p. 42:14-21 of the deposition in
support of its position that the witness “… did admit being aware of
third party marks who use a wave similar to Pac Sun’s Wave Mark.” A
review of that page of the deposition indicates that the witness
admitted being familiar with the wave mark of a single third party
(O’Neill), but there is no statement or admission that this single
third party wave mark is similar to opposer’s wave mark.
Opposition No. 91159978
13
Houston Computers Services Inc., 918 F.2d 937, 16 USPQ2d 1783
(Fed. Cir. 1990).
The Board now turns to the marks in this case, looking first
at applicant’s mark and opposer’s wave in circle design,11 and
considering the marks in their entireties. See In re National
Data Corp., 753 F.2d 1056, 224 USPQ 749 (Fed. Cir. 1985); and In
re Dixie Restaurants, Inc., 105 F.3d 1405, 41 USPQ2d 1531 (Fed.
Cir. 1997).
Applicant’s wave design consists of three, stacked, crescent
shapes, opening to the right as one views the mark, forming a C-
shape angled slightly downward. The middle crescent is separated
by a space from the upper and lower crescent.
Opposer’s wave in circle design consists of two stacked,
elliptical waves, opening to the left as one views the mark. The
lower swing of the top wave merges into the elliptical border
that encloses the design element. The lower part of the bottom
wave almost closes an ellipse by nearly touching the upper swing
of the top wave. In addition, the surfboard element is readily
apparent in opposer’s wave in circle design.
Similarity of appearance between marks is really nothing
more than a subjective "eyeball" test; and similarity of
appearance is controlling where designs are involved. See 3
McCarthy on Trademarks and Unfair Competition § 23:25 (4th ed.

11 In viewing all inferences in favor of opposer, the parties’
respective designs have been considered “waves.”

Opposition No. 91159978
14
2004), and cases cited therein. Each party has expended
considerable energy discussing their respective designs, and
making comparisons to the designs of its adversary. The issue of
the similarity of these design marks focuses primarily on the
visual similarity of the parties’ respective marks. In this
case, although the designs in question may be characterized as
waves, they are vastly different visually. The suggestive
connotation of the different involved wave designs may be common
in a broad sense, but this is quite different from concluding
that they are the same or similar wave designs. See, for
example, Red Carpet Corp. v. Johnstown American Enterprises Inc.,
7 USPQ2d 1404 (TTAB 1988) where the parties’ respective house
designs were found to be dissimilar.
The inclusion of the term KIRRA in both opposer’s KIRRA and
wave design and KIRRA and wave in circle design contributes a
significant audio-literal component to these mark and, in view of
the dissimilarity of the parties’ respective wave designs,
further serves to emphasize the differences in the involved
marks. The absence of the elliptical carrier in opposer’s KIRRA
and wave design does not negate the dissimilarities of the
parties’ marks. The elliptical carrier encloses the
distinguishing wave design in opposer’s KIRRA and wave in circle
design mark and the wave floats free in opposer’s KIRRA and wave
design mark. Applicant’s design mark is not enclosed in a
carrier. The parties’ respective wave designs are so dissimilar
Opposition No. 91159978
15
in appearance, connotation and commercial impression that the
presence or absence of a carrier does not result in applicant’s
mark and the design portion of opposer’s KIRRA and wave design
mark being suddenly similar such that a genuine issue of material
fact exists with respect to the similarities of said marks.
Accordingly, applicant’s motion for summary judgment is
granted, and the opposition is dismissed with prejudice.12
☼☼☼

12 In view of the disposition rendered in this case, opposer’s motion
to compel and opposer’s motion for discovery pursuant to Fed. R. Civ.
P. 56(f) are deemed moot.