Playboy Enterprises International, Inc.v.Diane Dickson dba Bunny

Trademark Trial and Appeal Board

Sep 21, 2010

No. 92047717 (T.T.A.B. Sep. 21, 2010)

Mailed: September 21, 2010

UNITED STATES PATENT AND TRADEMARK OFFICE
_______

Trademark Trial and Appeal Board
_______

Playboy Enterprises International, Inc.
v.
Diane Dickson dba Bunny
_______

Cancellation No. 92047717
to Registration No. 3115637
issued on July 18, 2006
_______

William T. McGrath of Davis McGrath for Playboy Enterprises
International, Inc.

Mark Murphy Henry of Henry Law Firm for Diane Dickson dba
Bunny.
_______

Before Seeherman, Walters and Zervas, Administrative
Trademark Judges.

Opinion by Walters, Administrative Trademark Judge:

Playboy Enterprises International, Inc. filed its
petition to cancel the registration of Diane Dickson dba
Bunny for the mark BUNNY for “handbags, all purpose carrying
bags, tote bags, traveling bags, shoulder bags, clutch
purses, all-purpose athletic bags, backpacks, wallets, coin
purses and cosmetic bags sold empty,” in International Class
18, and “dresses, skirts, pants, tops, shirts, t-shirts,

THIS OPINION
IS NOT A PRECEDENT OF
THE TTAB
Cancellation No. 92047717
2
blouses, sweaters, vests, sleepwear, lingerie, pajamas,
bathrobes, bathing suits, beach cover-ups, caps, hats,
bandanas, scarves, coats, jackets, rainwear and gloves,” in
International Class 25.1
As the first ground for the petition, petitioner
asserts that respondent’s mark, when applied to respondent’s
goods, so resembles petitioner’s previously used and
registered marks shown below as to be likely to cause
confusion, under Section 2(d) of the Trademark Act.
Petitioner alleges, inter alia, that it is an international
multimedia entertainment company; that it owns a family of
famous BUNNY marks, including its famous rabbit’s head
design mark2; that it uses and has registered these marks in
connection with a wide range of goods and services; that it
has used its rabbit’s head design mark in connection with
clothing and footwear in International Class 25 since at
least 1959, and in connection with goods in International
Class 18 since at least 1969; and that its marks are famous.
In its amended petition to cancel, petitioner adds the
assertion that the registration is invalid, i.e., void ab
initio, because respondent had not used her mark on each of

1 Registration No. 3115637, issued July 18, 2006. The underlying
application was filed on September 23, 2003, alleging, in connection
with both classes, first use as of June 30, 2001, and first use in
commerce as of October 31, 2002.

2 Petitioner did not pursue this allegation in its brief and, thus, we
consider the question of whether petitioner has established a family of
Cancellation No. 92047717
3
the goods identified in the underlying use-based application
as of the application filing date.3
In its second amended petition, petitioner adds its
claim of ownership of three additional registrations, to
conform to the evidence it had submitted.4
Respondent, in her answer to the amended petition,
denied the salient allegations of the claims. Respondent
made several assertions as affirmative defenses. However,
respondent submitted no testimony or other evidence and did
not submit a brief on the case. We find respondent’s
defenses of laches and acquiescence, estoppel, and unclean
hands are unavailing. We have given no consideration to the
legal efficacy, relevance or merits of these various
defenses.

BUNNY marks to be waived. Moreover, such a finding is not necessary to
our decision.
3 In its brief, petitioner argues, for the first time, that respondent
committed fraud on the USPTO in connection with her allegations of use
in the underlying application. However, the amended petition contains
no allegation of fraud, which must be pled with particularity; nor can
we consider from this record that the issue has been tried by express or
implied consent. Therefore, we have considered only the question of
whether respondent had made use of her mark on fewer than all of the
goods identified in her used-based application as of the filing date.

In its pleading, petitioner also asserts dilution under Trademark Act
§43(c), 15 U.S.C. 1125(c). However, petitioner did not pursue this
ground in its brief and, therefore, we find petitioner’s dilution claim
has been waived and we have given it no consideration.

4 The Board, in its order of February 19, 2010, accepted the second
amended petition and deemed respondent’s answer to the first amended
petition as responsive to the second amended petition as well.
Cancellation No. 92047717
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The Record
The record consists in part of the pleadings and the
file of the involved registration. At trial, petitioner
submitted its notice of reliance on printouts from the
Office’s TARR electronic database for its pleaded
registrations, which show that the registrations are
currently registered and that they are owned by petitioner.
See Trademark Rule 2.122(d)(1), 37 C.F.R. §2.122(d)(1).
Petitioner also submitted the testimony depositions of Judy
Kawal, petitioner’s senior director of business management,
and Michele McCoy, petitioner’s senior intellectual property
counsel, both with accompanying exhibits. Respondent
submitted no evidence at trial and only petitioner filed a
brief on the case.
The registrations owned and made of record by
petitioner are as follows:
Registration No.
(issue date/status)
Mark Goods/Services
0728889
(3/20/1962; renewed;
Section 15 affidavit
acknowledged)

“ties and men’s and
women’s shirts,” in
International Class
25
0810555
(6/28/1966; renewed;
Section 15 affidavit
acknowledged)

BUNNY
“operating
establishments which
feature food, drink,
and entertainment,”
in International
Class 42
0871553
(6/24/1969; renewed;
Section 15 affidavit
acknowledged)
“billfolds and card
cases,” in
International Class
3
Cancellation No. 92047717
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1192561
(3/23/1982; renewed;
Section 15 affidavit
acknowledged)

“Footwear,” in
International Class
25
1908471
(8/1/1995; renewed;
Section 15 affidavit
acknowledged)

“tote bags,
suitcases and
garment bags for
travel,” in
International Class
18
3194099
(1/2/2007)
“Bathrobes;
Beachwear; Belts;
Coats; Dresses;
Footwear; Headwear;
Hosiery; Jackets;
Jogging suits;
Lingerie;
Loungewear;
Neckwear; Pants;
Shirts; Shorts;
Skirts; Sleepwear;
Socks; Stockings;
Sweaters; Swim wear;
T-shirts; Tops;
Undergarments,” in
International Class
25
3375883
(1/29/2008)

“On-line ordering
services featuring
perfumes, colognes,
toiletries,
essential oils,
cosmetics, personal
care products,
nutritional
supplements, optical
products,
Cancellation No. 92047717
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“The mark consists
of a ‘Rabbit head’
with bow tie facing
left.”
eyeglasses,
sunglasses,
spectacles, CDs,
DVDs and videos,
games and toys,
audio equipment,
jewelry, horological
and chronometric
instruments and
apparatus, clocks,
watches, books,
magazines, posters,
printed matter,
publications,
calendars, leather
goods, wallets,
handbags, purses,
trunks and traveling
bags, umbrellas,
household or kitchen
utensils and
containers, barware,
kitchenware,
glassware, porcelain
and earthenware,
home accessories,
textiles and textile
goods, bed and table
covers, bar
accessories,
sporting goods,
electronics, candy
and confections,
musical instruments,
footwear, headgear,
fashion accessories,
articles of
clothing, lingerie,
shoes, scarves, bed
and bath
accessories, sex
toys, furniture,
collectors items,
energy drinks,
smokers articles,
tobacco, tobacco
products, cigars,
cigarettes and
lighters,” in
International Class
35
3592968
(3/17/2009)

“caps, hats, visors,
slippers, boxer
briefs, underwear,
sleepwear, lingerie,
Cancellation No. 92047717
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“The mark consists
of a three
dimensional bunny
costume worn by a
woman used as a
point of sale
display. The costume
includes a corseted
bodice, bunny ears
worn on the head, a
bunny tail on the
back of the bodice,
a name tag on the
front of the bodice,
wrist cuffs and a
bow tie collar. The
dotted outline of a
woman is not a part
of the mark but is
merely intended to
show the position of
the costume.”
robes, jackets,
pullovers, shirts,
t-shirts, shorts,
pants, jeans,
loungewear,
neckwear, swimwear,
socks and footwear,”
in International
Class 25

Factual Findings
Petitioner began its business with the publication of
Playboy Magazine in December 1953. The magazine has been
published continuously to the present and the Bunny logo, as
shown below, has appeared on most covers and inside most
publications.
Cancellation No. 92047717
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The current monthly magazine circulation in the United
States is approximately 2.6 million copies. In the year
preceding trial alone, one in ten U.S. men between the ages
of 18 and 34 read the magazine and its adult audience in the
United States is more than 10 million readers.
Petitioner began using the word BUNNY in connection
with its goods and services in the 1960’s and the Bunny logo
is regularly referred to by petitioner, consumers and the
media as “the Bunny” or “the Playboy Bunny.”
Petitioner’s marks pertaining to bunnies are the Bunny
logo, the word mark BUNNY, and the Bunny costume, which is
used both as a two–dimensional drawing of a woman in the
costume and as an actual costume on a model or “Playboy
Bunny.” In addition to its magazine, petitioner has used
the Bunny logo mark since the 1960’s in connection with
nightclubs and related entertainment services.
Petitioner began using the Bunny logo as a mark on
products as early as the 1950’s, the first product being
cuff links. Petitioner began its licensing program for the
use of its marks in connection with a wide variety of
products in the 1970’s. A 1976 product catalog included use
of the Bunny logo on various clothing items, key chains,
barware, puzzles, playing cards, decals and mugs.
Petitioner’s witness, Judy Kawal, testified that petitioner
has expanded its licensing program to use its Bunny logo on
Cancellation No. 92047717
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a wide variety of consumer goods, including each of the
items identified in its registrations herein and in
connection with each of the items listed in respondent’s
registration. She testified, further, that the catalogs in
1976 included hats, ties, scarves, T-shirts and tank tops,
all with the Bunny logo thereon.
Petitioner sells its branded products through
approximately 2000 retail businesses in the United States,
some of which are its own stores and others are third-party
stores such as Bloomingdales, Henri Bendel, Spencer’s and K-
Mart. It also sells its branded products online through its
own websites, shop.playboy.com and ShopTheBunny.com, and
through third-party licensees’ websites. Petitioner’s
websites receive approximately 300,000 new visitors each
month.
Petitioner uses the Bunny logo in connection with
various services such as videos, games and other
entertainment offered on its website, television programming
and mobile phone downloads. One current program featuring
both the word mark BUNNY and the Bunny logo is petitioner’s
Rock the Bunny, featuring up-and-coming bands.
In addition to its own advertising, petitioner receives
substantial numbers of references to its Bunny logo in
various media such as magazines, newspapers, television and
movies. For example, the Bunny logo has appeared in product
Cancellation No. 92047717
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placements in the show Sex and the City; and in an article
in Rolling Stone Magazine featuring “American icons,” which
included the Bunny logo. Also, numerous celebrities have
been photographed in clothing that shows the Bunny logo; and
a recent movie by Sony entitled The Bunny House, about a
former Playboy Bunny who supervises a college sorority,
features the Bunny logo, the word mark BUNNY and the Bunny
costume.
Regarding respondent, petitioner’s witness, Michele
McCoy, testified that petitioner conducted an investigation
into the extent of respondent’s use of her mark on the goods
listed in her registration. Using archived and current
websites pages, it reviewed respondent’s website and third-
party websites selling respondent’s goods. Petitioner sent
copies of the documents it reviewed to respondent. Ms.
McCoy testified that, in response to petitioner’s request
for production of information, documents, hangtags, etc. for
each and every product on which respondent uses and has ever
used her trademark, respondent produced a copy of the above-
noted documents that petitioner had previously sent to
respondent.
The sampling of respondent’s website includes monthly
snapshots for July through December 2003; and sample
snapshots of respondent’s website and a third-party website
offering respondent’s goods during the years 2004 through
Cancellation No. 92047717
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2007. These excerpts show some but not all of the goods
identified in both classes in respondent’s registration.
The website excerpts that predate the filing date of
respondent’s underlying application show or refer to very
few of the items identified in the underlying application.
In fact, these excerpts picture only handbags, clutches, and
what appear to be either wallets and/or coin purses; the
excerpts identify totes; and the excerpts contain a
statement identifying respondent’s goods as follows: “bunny
is a collection of lifestyle accessories with a focus on
handbags and small leather goods.”
Respondent subsequently supplemented this production
with what appear to be product photos and excerpts from
publications; copies of several invoices from 2002 and 2003;
and copies of one 2002 check and one 2003 check from third
parties to respondent. The publications and photos are
insufficiently clear or identifiable to be of any probative
value. The nature of most of the goods identified in the
invoices is unclear as the products are identified by
shorthand, for example “jelly,” “squid,” and “PEBCHBK.” The
checks are not connected in any way with any products and,
thus, are of no probative value.
Analysis
Standing
Cancellation No. 92047717
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Because petitioner has properly made its pleaded
registrations of record, we find that petitioner has
established its standing in this cancellation proceeding.
See Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d
1842 (Fed. Cir. 2000); Lipton Industries, Inc. v. Ralston
Purina Co., 670 F.2d 1024, 213 USPQ 185 (CCPA 1982).
Priority
Next, we must determine whether petitioner or
respondent has priority. In a cancellation proceeding,
priority is an issue even though a petitioner owns a
registration. Brewski Beer Co. v. Brewski Brothers, Inc.,
47 USPQ2d 1281, 1284 (TTAB 1998) (The “Board has taken the
position, in essence, that the registrations of each party
offset each other; that petitioner as a plaintiff, must, in
the first instance, establish prior rights in the same
or similar mark … Of course, petitioner or respondent may
rely on its registration for the limited purpose of proving
that its mark was in use as of the application filing
date”). Cf. King Candy Company v. Eunice King’s Kitchen,
Inc., 496 F.2d 1400, 182 USPQ 108 (CCPA 1974).
In this case, the earliest date upon which respondent
may rely is the filing date of her underlying application,
i.e., September 23, 2003. Five of petitioner’s established
registrations (nos. 0728889, 0810555, 0871553, 1192561 and
Cancellation No. 92047717
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1908471) registered long before that filing date.
Therefore, petitioner has established its priority.
The applications underlying petitioner’s remaining
three established registrations (nos. 3194099, 3375883 and
3592968) were filed, respectively, on March 24, 2006,
August 23, 2007 and November 8, 2004 – all subsequent to the
filing date of respondent’s underlying application.
Petitioner has established that the marks in these three
registrations were in use at the time of trial in connection
with each of the goods and services listed in the respective
registrations. However, with the exception of the use of
the Bunny logo on headwear, neckwear and T-shirts since at
least 1976, petitioner did not establish that the marks in
these three registrations were in use in connection with the
respectively identified goods prior to the filing date of
respondent’s underlying application. Thus, neither these
three registrations, nor, with the noted exception, the
common law use of these marks in connection with the
identified goods, has been considered in determining
petitioner’s priority.
Likelihood of Confusion
Our determination of likelihood of confusion under
Section 2(d) must be based on an analysis of all of the
probative facts in evidence that are relevant to the factors
bearing on the likelihood of confusion issue. In re E.I. du
Cancellation No. 92047717
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Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA
1973). See also Palm Bay Imports, Inc. v. Veuve Clicquot
Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d
1689 (Fed. Cir. 2005); In re Majestic Distilling Company,
Inc., 315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir. 2003); and In
re Dixie Restaurants Inc., 105 F.3d 1405, 41 USPQ2d 1531
(Fed. Cir. 1997).
In considering the evidence of record on these factors,
we keep in mind that “[t]he fundamental inquiry mandated by
Section 2(d) goes to the cumulative effect of differences in
the essential characteristics of the goods and differences
in the marks.” Federated Foods, Inc. v. Fort Howard Paper
Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976). See also
In re Azteca Restaurant Enterprises, Inc., 50 USPQ2d 1209
(TTAB 1999) and the cases cited therein.
We begin by noting that we have conducted our analysis
of likelihood of confusion by focusing on, in addition to
petitioner’s established common law use of its Bunny logo in
connection with headwear, neckwear and T-shirts since 1976,
only petitioner’s two most relevant registrations for which
petitioner has established priority, i.e., Nos. 0728889 and
0871553 for the Bunny logo.
Considering, first, the goods of the parties, we
observe that there is a substantial overlap in the goods
identified in both classes in the respective registrations.
Cancellation No. 92047717
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Respondent’s identified “tops, shirts, T-shirts and blouses”
are essentially the same as petitioner’s “men’s and women’s
shirts” in its Registration No. 0728889 for the Bunny logo;
and respondent’s “wallets and coin purses” are either the
same as or closely related to petitioner’s “billfolds and
card cases” in Registration No. 0871553 for the Bunny logo.
Additionally, petitioner established its prior common law
use of its Bunny logo on headwear, neckwear and T-shirts,
which goods are the same as or closely related to
respondent’s “T-shirts,” “caps,” “hats,” and scarves.”
Thus, petitioner has previously used or registered its bunny
logo mark in connection with several goods that are
identical or closely related to several goods identified in
respondent’s registration.
Because likelihood of confusion must be found if there
is likely to be confusion with respect to any item that is
the same as or related to any of petitioner’s goods,
petitioner need show only that at least one of the goods
identified in each class in respondent’s registration is the
same as or related to petitioner’s previously used goods
and/or the goods identified in its two registrations under
consideration herein. See Tuxedo Monopoly, Inc. v. General
Mills Fun Group, 648 F.2d 1335, 209 USPQ 986, 988 (CCPA
1981). Petitioner has made this showing.
Further, both parties’ identifications of goods are
broadly worded, without any limitations as to channels of
Cancellation No. 92047717
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trade or classes of purchasers. We must presume that the
goods of respondent and petitioner are sold in all of the
normal channels of trade to all of the usual purchasers for
goods of the type identified. See Canadian Imperial Bank v.
Wells Fargo, 811 F.2d 1490, 1 USPQ2d 1813 (Fed. Cir. 1987).
In other words, we conclude that the channels of trade and
class of purchasers of the parties’ goods are the same.
Moreover, the evidence establishes that both parties sell
their goods to the general public via, at least, the
Internet.
Therefore, we conclude that the parties’ goods, trade
channels and classes of purchasers are either the same or
closely related. These factors weigh strongly in
petitioner’s favor.
Turning to the marks, we note that the vast majority of
the evidence submitted by petitioner pertains to its so-
called Bunny logo. The evidence shows that petitioner, the
press and the public refer to the logo as a bunny, rather
than as a rabbit or some other moniker. Additionally, the
website for petitioner’s e-commerce website is
“ShopTheBunny.com.” Moreover, a picture and the word that
describes the picture often have the same effect and must be
treated as legal equivalents. Rousch Bakery Products Co.,
Inc. v. Ridlen, 203 USPQ 1086 (TTAB 1979). Thus, we find
that petitioner’s design mark of a “Bunny” head is
Cancellation No. 92047717
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equivalent to the word mark BUNNY and will be perceived as
such by relevant consumers.
Therefore, we find that respondent’s word mark and
petitioner’s Bunny logo are substantially similar in
connotation and commercial impression. This factor also
weighs in petitioner’s favor.
Due to our findings that the parties’ marks are
substantially similar and that several of their respective
goods are identical or closely related with the same trade
channels and purchasers, we further find that respondent’s
mark used for her goods is likely to cause confusion with
petitioner’s mark. In view thereof, it is unnecessary for
us to consider whether the du Pont factor of fame would also
favor petitioner.
In conclusion, we find that in view of the substantial
similarity in the commercial impressions of respondent’s
mark, BUNNY, and petitioner’s Bunny logo, their
contemporaneous use on the identical and closely related
goods involved in this case is likely to cause confusion as
to the source or sponsorship of such goods.
Respondent’s Use of her Mark
Petitioner conducted research to determine whether or
the extent to which respondent was using her mark in
connection with all of the goods identified in her
registration and sent the results of its research to
Cancellation No. 92047717
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respondent. During discovery, petitioner asked respondent
to produce all documents pertaining to the use of her
trademark on each and every item identified in her
registration. In addition to the previously discussed non-
probative material, respondent simply returned to petitioner
copies of the same research material that petitioner had
previously sent to respondent with her Bates stamp thereon.
Petitioner submitted at trial copies of the documents it had
submitted to respondent and of the copies that respondent
had returned to petitioner.
This evidence does not show use of respondent’s mark on
all of the goods identified in both classes in her
registration either prior to the filing of her underlying
application or thereafter. Clearly, petitioner has made a
prima facie case that respondent had not used her mark in
connection with all of the goods identified in her
registration at the time she filed the underlying
application based on use in commerce under Section 1(a) of
the Trademark Act, 15 U.S.C. 1051(a). Respondent has taken
no action to contradict the accuracy or probative value of
petitioner’s showing.
Therefore, based on this evidence, we must conclude
that, as of the filing date of the underlying use-based
application, the only goods identified in the application
Cancellation No. 92047717
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upon which the mark was in use were handbags, tote bags,
clutch bags, wallets, and coin purses.
Contrary to petitioner’s contention, the
application/registration as a whole is not void ab initio
due to respondent’s use of her mark on less than all of the
identified goods in the absence of fraud, which petitioner
did not plead or establish. Rather, the application and
registration are void only as to the identified goods upon
which respondent did not have use as of the filing date.
Grand Canyon West Ranch, LLC v. Hualapai Tribe, 78 USPQ2d
1696 (TTAB 2006). The goods for which the
application/registration are void and which must be deleted
from the registration are all of the goods in International
Class 25 and the following goods in International Class 18:
all-purpose carrying bags, traveling bags, shoulder bags,
all-purpose athletic bags, backpacks, and cosmetic bags.
However, the petition to cancel the registration as a
whole has been granted on the ground of priority and
likelihood of confusion. Therefore, the partial
cancellation based on non-use as discussed herein will only
become effective should respondent prevail on appeal on the
ground of priority and likelihood of confusion.
Decision: The petition to cancel is granted.