PRL USA Holdings, Inc.v.Malibu Riding and Tennis Club, Ltd.

Trademark Trial and Appeal Board

Sep 7, 2001

OPP (T.T.A.B. Sep. 7, 2001)

9/7/01
Paper No. 25
AD

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
______

PRL USA Holdings, Inc.
v.
Malibu Riding and Tennis Club, Ltd.
_____

Opposition Nos. 106,932 and 110,254
to application Serial Nos. 75/019,265; 75/227,228;
75/227,229; and 75/227,230
_____

Anthony F. Lo Cicero of Amster, Rothstein & Ebenstein for
PRL USA Holdings, Inc.

Marc J. Schwartz for Malibu Riding and Tennis Club, Ltd.
______

Before Seeherman, Quinn, and Drost, Administrative
Trademark Judges.

Opinion by Drost, Administrative Trademark Judge:

Malibu Riding and Tennis Club, Ltd. (applicant) has
filed four trademark applications to register the
following marks for the words “MALIBU POLO CLUB” and the
design of a polo player depicted in the two drawings1
below for the identified goods and services:

1 The first mark shown below is much clearer in the actual
drawing in the application file (75/019,265).
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Opposition Nos. 106,932 and 110,254
2

for “clothing, headgear, and footwear, namely, athletic
shoes, bathrobes, boxer shorts, briefs, clothing caps,
rain coats, over coats, polo shirts, jackets, parkas,
ponchos, sports shirts, sweat shirts, T-shirts, under
shorts, Bermuda shorts, gym shorts, sweat shorts, socks,
gum [sic] suits, jogging suits, sweats suits, warm-up
suits and athletic uniforms” in International Class 25;2

for “clothing, headgear, and footwear, namely, shoes,
socks, shorts, pants, shirts, jackets and hats” in
International Class 25;3

2 Serial No. 75/019,265 filed on November 15, 1995, and based on
an allegation of a bona fide intent to use the mark in commerce.
Applicant has disclaimed the words “Malibu” and “Polo.”
3 Serial No. 75/227,228 filed on January 17, 1997, and based on
an allegation of a bona fide intent to use the mark in commerce.
Applicant has disclaimed the words “Malibu Polo.”
Opposition Nos. 106,932 and 110,254
3
for the services of “dissemination of advertising matter”
in International Class 35;4 and
for “goods of precious metals and their alloys, namely,
jewelry, clocks, watches and watch bands, and
chronographs” in International Class 14.5
On July 15, 1997, and April 21, 1998, PRL USA
Holdings, Inc. (opposer) filed notices of opposition to
oppose the registration of the marks in this case
alleging that applicant’s marks were confusingly similar
to various trademark registrations it owned. Opposer
ultimately based its opposition on its ownership of the
following eight6 registrations.
Opposer’s first registration is for the mark:

4 Serial No. 75/227,229 filed on January 17, 1997, and based on
an allegation of a bona fide intent to use the mark in commerce.
Applicant has disclaimed the word “Malibu.”
5 Serial No. 75/227,230 filed on January 17, 1997, and based on
an allegation of a bona fide intent to use the mark in commerce.
Applicant has disclaimed the word “Malibu.”
6 Opposer’s ninth registration (Registration No. 1,846,817
issued July 26, 1994) was for the mark USA POLO CLUB for “T-
Shirts.” This registration was cancelled August 4, 2001, for
failure to file a Section 8 affidavit. Therefore, we do not
give this registration any weight in our determination. Royal
Hawaiian Perfumes, Ltd. v. Diamond Head Products of Hawaii,
Inc., 204 USPQ 144 (TTAB 1979); Duffy-Mott Co. v. Borden, Inc.,
201 USPQ 846 (TTAB 1978).
Opposition Nos. 106,932 and 110,254
4
for “men's suits, slacks, ties, sweaters, shoes, shirts,
hats, belts, socks; and ladies' blouses, skirts, suits
and dresses” in International Class 25.7
Opposer’s second registration is for the mark THE
POLO CLUB (typed form) for “retail clothing store
services” in International Class 42.8 Opposer’s third
registration is for the mark POLO (typed form) for
“clothing-namely, suits, slacks, trousers, shorts, wind
resistant jackets, jackets, blazers, dress shirts,
sweatshirts, sweaters, hats, belts, socks, blouses,
skirts, coats, and dresses” in International Class 25.9
Opposer’s fourth registration is for the following
mark:

7 Registration No. 978,166 issued February 5, 1974, and it
alleges a date of first use and a date of first use in commerce
of May 1967. The registration has been renewed.
8 Registration No. 1,271,213 issued March 20, 1984, and it
alleges a date of first use and a date of first use in commerce
of August 14, 1977. Sections 8 and 15 affidavits have been
accepted and acknowledged, respectively.
9 Registration No. 1,363,459 issued October 1, 1985, and it
alleges a date of first use and a date of first use in commerce
of May 1967. The mark registered under Section 2(f) of the
Trademark Act. Sections 8 and 15 affidavits have been accepted
or acknowledged, respectively.
Opposition Nos. 106,932 and 110,254
5
for “men's and women's wearing apparel and accessories,
namely, t-shirts, sweatshirts, sweaters, jackets, pants,
wind-resistant jackets” in International Class 25.10
Opposer’s fifth registration is for the following
mark:

for “clothing --namely, suits, slacks, trousers, shorts,
wind-resistant jackets, jackets, blazers, dress shirts,
knit shirts, sweatshirts, sweaters, hats, belts, socks,
blouses, skirts, coats and dresses” in International
Class 25.11
Opposer’s sixth and seventh registrations are for
the same mark shown below:

10 Registration No. 1,378,247 issued January 14, 1986, and it
alleges a date of first use and a date of first use in commerce
of 1975. Sections 8 and 15 affidavits have been accepted or
acknowledged, respectively.
11 Registration No. 1,512,754 issued November 15, 1988, and it
alleges a date of first use and a date of first use in commerce
of December 12, 1972. Sections 8 and 15 affidavits have been
accepted or acknowledged, respectively.
Opposition Nos. 106,932 and 110,254
6

for “jewelry” in International Class 1412 and for the
service of “providing information in the field of
fashion, fragrance, lifestyle and other topics of general
interest by means of a global computer network” in
International Class 42.13
Opposer’s eighth registration is for the mark POLO
(typed form) for the service of “providing information in
the field of fashion, fragrance, lifestyle and other
topics of general interest by means of a global computer
network” in International Class 42. 14
Applicant denied that its marks and opposer’s marks are
confusingly similar. As an affirmative defense,
applicant alleged that: “Opposer is barred by Laches,
Estoppel and Waiver in that Opposer has known of
Applicant’s use of the mark and has taken no legal action

12 Registration No. 1,729,192 issued November 3, 1992, and it
alleges a date of first use and a date of first use in commerce
of 1976. Sections 8 and 15 affidavits have been accepted or
acknowledged, respectively.
13 Registration No. 2,085,471 issued August 5, 1997, and it
alleges a date of first use and a date of first use in commerce
of November 1, 1995.
Opposition Nos. 106,932 and 110,254
7
for more than seven years.” Answer dated January 23,
1998, p. 2.
On March 25, 1999, the Board granted the parties’
motion to consolidate the two oppositions.

The Record
The record consists of the file of the involved
applications; the trial testimony deposition, with
accompanying exhibits, of Lee S. Sporn, opposer’s vice-
president of intellectual property and associate general
counsel; and the trial testimony deposition, with
accompanying exhibits, of Samuel K. Freshman, applicant’s
general partner.
Both parties have filed briefs, but no oral hearing
was requested.
Priority
Priority is not an issue here in view of opposer’s
ownership of eight registrations for marks containing the
word POLO and/or the design of a polo player. See King

14 Registration No. 2,083,276 issued July 29, 1997, and it
alleges a date of first use and a date of first use in commerce
of November 1, 1995.
Opposition Nos. 106,932 and 110,254
8
Candy Co. v. Eunice King’s Kitchen, 496 F.2d 1400, 182
USPQ 108 (CCPA 1974).15
Laches, Estoppel, and Acquiescence
Before we address the issue of likelihood of
confusion, we must address applicant’s arguments in its
brief that opposer is precluded from opposing the
registration of its four current applications because it
previously failed to oppose other applications of
applicant, which issued as registrations. “Opposer had
the opportunity to oppose Malibu’s trademark registration
over ten years ago, and has had all the time since then
to file a cancellation proceeding[]. They chose to do
neither. Polo’s acquiescence, combined with the long
period of time of such acquiescence prevents Polo from
now opposing Malibu’s registration of same and similar
marks on similar goods.” Applicant’s Br., p. 5.16

15 Opposer introduced two of the registrations (Nos. 2,083,276
and 2,085,471), discussed above, during the testimony of its
witness that were not originally pled as a basis of its
oppositions. Applicant has not objected to the introduction of
these registrations. In addition, in its brief, applicant
incorporates by reference “Polo’s trademarks identified in
Opposer’s trial brief.” Applicant’s Trial Br., p. 1.
Therefore, we deem the pleadings to be amended to conform to the
evidence. Fed. R. Civ. P. 15(b).
16 Opposer has not objected to applicant’s argument concerning
opposer’s failure to object previously to the registration of
applicant’s earlier applications as a new issue not raised in
the answer and, therefore, we will consider it.
Opposition Nos. 106,932 and 110,254
9
Applicant is the owner of the following two
registrations:
.

for “shirts, shorts and caps” in International Class 25;17
and

for “goods of precious metals and their alloys, namely,
jewelry, clocks, watches and watch bands, and
chronographs” in International Class 14.18
An opposer can be prohibited from opposing an
application if it has failed to oppose or cancel an
existing registration for the same marks on the same

17 Registration No. 1,492,318 issued June 14, 1988, and it
alleges a date of first use and a date of first use in commerce
of December 1, 1983. A Section 8 affidavit was accepted. The
registration disclaims the words “Malibu Polo.”
18 Registration No. 2,231,291 issued March 16, 1999, and it
alleges a date of first use and a date of first use in commerce
of December 1, 1983. The registration disclaims the word
“Malibu.”
Opposition Nos. 106,932 and 110,254
10
goods. Morehouse Manufacturing Corp. v. J. Strickland
and Co., 407 F.2d 881, 160 USPQ 715 (CCPA 1969). A prior
registration or Morehouse defense is an equitable defense
in the nature of laches or acquiescence. TBC Corp. v.
Grand Prix Ltd., 12 USPQ2d 1311, 1313 (TTAB 1989). We
understand applicant’s laches, estoppel, and acquiescence
argument to raise a Morehouse or prior registration
defense.
Applicant’s argument must fail. First, applicant’s
oldest registration (no. 1,492,318) is for shirts,
shorts, and caps. None of the opposed applications is
limited to shirts, shoes, and caps. The failure to
oppose the registration of a mark for one set of goods
does not bar a party from opposing the mark on a
different set of goods. Magnovox Co. v. Multivox Corp.
of America, 341 F.2d 139, 144 USPQ 501 (CCPA 1973);
Federated Foods, Inc. v. Ft. Howard Paper Co., 544 F.2d
1098, 192 USPQ 24 (CCPA 1976). The goods must be
identical or substantially identical before an opposer
can be denied the opportunity to file an opposition to a
later filed application. La Fara Importing Co. v. F. Lli
De Cecco di Filippo Fara S. Martino S.p.a., 8 USPQ2d 1143
(TTAB 1988) (Failure to oppose the registration of a mark
Opposition Nos. 106,932 and 110,254
11
for alimentary pastes does not preclude opposition to the
same mark for spaghetti sauce).
In this case, two of the involved applications are
for dissemination of advertising matter and jewelry,
clocks, watches and watch bands and chronographs of
precious metals, which are clearly different from shirts,
shorts, and caps. While the other two applications are
for clothing items, including shirts, shorts, and caps,
there are numerous other clothing items that are
specifically different, including jackets, bathrobes,
parkas, ponchos, overcoats, shoes, and socks.
The goods in applicant’s second registration (No.
2,231,291), however, are identical to the goods in its
application (Serial No. 75/227,230). This registration
issued March 16, 1999. The oppositions were filed on
July 15, 1997, and April 21, 1998. We have held that
“[t]here is an exception to the defense of ownership of a
subsisting registration when the registration which
bottoms the defense issued subsequently to the
institution of the opposition” as in this case. S.
Gumpert Co., Inc. v. ITT Continental Baking Co., 191 USPQ
409, 411 (TTAB 1976). See also Texas Instruments
Incorporated v. Peerless Teleread, Inc., 171 USPQ 376,
377 (TTAB 1971).
Opposition Nos. 106,932 and 110,254
12
In addition, applicant has not established any
specific prejudice to itself as a result of any delay on
opposer’s part. Therefore, for the reasons set out
above, applicant’s ownership of the two registrations of
record does not prevent these oppositions from going
forward because of laches, estoppel, or acquiescence.
Likelihood of Confusion
Both parties have analyzed the issue of likelihood
of confusion under the principles set forth by the Court
of Customs and Patent Appeals, one of the predecessor
courts of the Court of Appeals for the Federal Circuit,
in In re E.I. du Pont de Nemours & Co., 476 F.2d 1357,
1361, 177 USPQ 563, 567 (CCPA 1973). Therefore, we begin
our discussion by analyzing whether applicant’s and
opposer’s marks as identified in the applications and
registrations are confusingly similar under the du Pont
factors.
(1) The fame of the prior mark (sales, advertising,
length of use).

While not the first factor listed in the du Pont
case, we start with this factor because it plays a
significant role in our decision. With this factor, we
look at what fame the mark has achieved in the
marketplace. “Thus, a mark with extensive public
recognition and renown deserves and receives more legal
Opposition Nos. 106,932 and 110,254
13
protection than an obscure or weak mark.” Kenner Parker
Toys v. Rose Art Industries, 963 F.2d 350, 353, 22 USPQ2d
1453, 1456 (Fed. Cir. 1992). Applicant acknowledges that
opposer’s trademarks are famous. Applicant’s Br., p. 6
(“While it is true that Polo’s trademarks are famous,
their fame is not relevant in this case since the
appearance of the Malibu’s Marks is such that it would
not cause confusion”) (emphasis added). The record
indicates that in 1998 opposer spent $23.5 million
advertising its men’s clothing line. Sporn testimony
dep., p. 33. Also, in 1998, it had sales of $1.3
billion. Sporn testimony dep., p. 35. In 1997 and 1998,
opposer placed 2513 pages of advertising in more than 80
publications including Architectural Digest,
Entertainment Weekly, Fortune, Golf Digest, The New York
Times Magazine, Rolling Stone, Time, and USA Today.
Sporn Ex. 13. Opposer is listed as one of the largest
advertisers in the fashion, accessories, and beauty
industry. Sporn Ex. 16.19

19 In addition, opposer has cited several federal court cases
that recognized the renown of its marks. Opposer’s Br., pp. 6-
7. Polo Fashions, Inc. v. Magic Trimmings, Inc., 223 USPQ 1178,
1179 (S.D. Fla. 1984) (“Polo is a world famous fashion house …
under the direction of its world famous designer Ralph Lauren”);
Polo Fashions, Inc. v. Clothes Encounters, 227 USPQ 327, 328
(N.D. Ill. 1985) (“The defendants do not dispute that Polo is a
world-famous fashion house and that the Polo trademarks are
Opposition Nos. 106,932 and 110,254
14
The Federal Circuit “has acknowledged that fame of
the prior mark, another du Pont factor, ‘plays a dominant
role in cases featuring a famous or strong mark.’”
Century 21, 23 USPQ2d at 1701, quoting, Kenner Parker
Toys, 22 USPQ2d at 1456. “Famous marks thus enjoy a wide
latitude of legal protection.” Recot, Inc. v. Becton,
214 F.3d 1322, 54 USPQ2d 1894, 1897 (Fed. Cir. 2000)
(FIDO LAY for edible dog treats confusingly similar to
FRITO-LAY snack foods). In this case, because of the
undisputed fame of the Polo marks, this factor strongly
favors opposer.
(2) The similarity or dissimilarity of the marks in
their entireties as to appearance, sound,
connotation and commercial impression.

Opposer has eight registrations for marks containing
the word POLO and/or design of a polo player for various
goods and services. These registrations include the
marks POLO and THE POLO CLUB in typed form as well as the
registrations set out below for clothing or retail
clothing store services.

among the most well-known trademarks in the fashion clothing
field”).
Opposition Nos. 106,932 and 110,254
15

Applicant is seeking to register the two marks shown
below for various clothing items.

Both marks contain the identical wording “MALIBU POLO
CLUB.”
We start with the observation that the marks are
certainly not identical although that, of course, does
not end the likelihood of confusion analysis. It is well
settled that it is improper to dissect a mark and that
marks must be viewed in their entireties. In re Shell
Oil Co., 992 F.2d 1204, 1206, 26 USPQ2d 1687, 1688 (Fed.
Cir. 1993). However, more or less weight may be given to
Opposition Nos. 106,932 and 110,254
16
a particular feature of a mark. In re National Data
Corp., 753 F.2d 1056, 1058, 224 USPQ 749, 751 (Fed. Cir.
1985). Applicant argues that the “visual impression of
the drawings clearly distinguish Malibu’s marks from
Polo’s trademarks.” Applicant’s Br., p. 7. Opposer
argues that the overall effect of the marks is the same.
We agree that there are differences between applicant’s
and opposer’s marks and that the addition of the word
“Malibu” cannot be ignored. We find, however, that there
are more similarities than differences between the marks.
In particular, both applicant’s and opposer’s marks have
a polo theme. Both applicant and opposer have marks that
include the word “polo” and both have at least one mark
that includes the word “club.” While applicant’s marks
include the geographically descriptive word “Malibu,”
this word alone is not sufficient to distinguish the
marks. Potential customers, who are familiar with
opposer’s “polo” marks and its retail store services
identified by the mark “THE POLO CLUB” are likely to
believe that the goods identified with a mark referring
to a specific polo club, the “Malibu Polo Club,” are
related to opposer’s “THE POLO CLUB” and other “POLO”
marks for identical and related goods and services.
Opposition Nos. 106,932 and 110,254
17
Obviously, a side-by-side comparison does not
reflect the way the goods would necessarily be sold in
the marketplace. Here, applicant’s marks are dominated
by the polo theme through the use of the word “polo” and
the similar polo player design. In addition, opposer
also uses the word “club” in its retail clothing store
service mark. Wella Corp. v. California Concept Corp.,
558 F.2d 1019, 194 USPQ 419 (CCPA 1977)(CALIFORNIA
CONCEPT and design likely to be confused with CONCEPT for
hair care products). See also Dixie Restaurants, 105
F.3d at 1407, 41 USPQ2d at 1534 (THE DELTA CAFE and
design was confusingly similar to DELTA; more weight
given to common dominant word DELTA).
Applicant also seeks to register the following mark
for jewelry and the dissemination of advertising matter.

In addition to its registrations for clothing,
opposer owns the mark shown below for jewelry and for
providing information in the field of fashion, fragrance,
lifestyle and other topics of general interest by means
of a global computer network.
Opposition Nos. 106,932 and 110,254
18

Opposer also owns a registration for the mark POLO
in typed form for the same services.
Opposer’s polo design and the word mark POLO are
similar to applicant’s mark MALIBU POLO CLUB and polo
player design for its advertising dissemination services.
While opposer has only made of record a design of a polo
player for jewelry, there are similarities between the
polo players of applicant’s and opposer’s designs such
that, considered in relation to opposer’s other
registrations, the marks would be similar.
Therefore, we conclude that the marks are similar in
sound, appearance, and meaning and the differences do not
outweigh the similarities of the marks. National Data,
753 F.2d at 1060, 224 USPQ at 749.
(3) The similarity or dissimilarity and nature of
the goods or services as described in an
application or registration or in connection
with which a prior mark is in use.

When we compare the goods and services of applicant
and opposer, we must compare the goods and services as
described in the applications and the registrations to
Opposition Nos. 106,932 and 110,254
19
determine if there is a likelihood of confusion.
Canadian Imperial Bank v. Wells Fargo Bank, 811 F.2d
1490, 1493, 1 USPQ2d 1813, 1815 (Fed. Cir. 1987).
Applicant “does not dispute that many of the goods listed
in Malibu’s applications may be similar to those that
Polo uses in conjunction with its trademarks.”
Applicant’s Br., p. 8. Indeed, many of the goods are
identical (jackets, socks, shorts, and hats) or virtually
identical (applicant’s rain coats, over coats, parkas,
and ponchos v. opposer’s wind resistant jackets and
jackets; applicant’s boxer shorts, under shorts, Bermuda
shorts and sweat shorts v. opposer’s shorts). In
addition, both applicant and opposer use their marks on
jewelry. Finally, there is no argument by applicant that
its dissemination of advertising matter services are not
related to opposer’s Internet and retail store services.20
Because the marks are used on identical clothing items
and jewelry, there is a greater likelihood that when
similar marks are used in this situation, confusion would
be likely. Century 21 Real Estate Corp. v. Century Life
of America, 970 F.2d 874, 23 USPQ2d 1698, 1701 (Fed. Cir.
1992) (“When marks would appear on virtually identical

20 Applicant does not discuss its “dissemination of advertising
matter” services in its brief.
Opposition Nos. 106,932 and 110,254
20
goods or services, the degree of similarity necessary to
support a conclusion of likely confusion declines”).
(4) The similarity or dissimilarity of established,
likely-to-continue trade channels.

While applicant argues that it “does not sell in the
same stores as Opposer, nor does Malibu advertise in the
same magazines as Opposer,” it does not dispute that “the
trade channels in which the goods are distributed may be
similar.” Applicant’s Br., p. 8. As discussed above, we
must consider the goods and services as defined in the
applications and registrations. Neither the applications
nor registrations contain any limitation on where the
goods can be sold. Therefore, we must assume that
identical goods would be marketed in similar trade
channels.
Even looking at opposer’s actual trade channels
reveals that opposer:
[O]wns its own full-price, free-standing Polo Ralph
Lauren stores. We also own a chain of Polo Ralph
Lauren factory stores, which are discount outlets.
We distribute our products through the major upscale
department stores, Bloomingdale’s and Macy’s and the
like. And then a wide variety of specialty store
accounts, depending on what the product is.

Sporn testimony dep., p. 17.
Thus, opposer already has its own discount outlets,
which indicates that its goods are not marketed as
exclusively as applicant argues. In addition, nothing in
Opposition Nos. 106,932 and 110,254
21
opposer’s identification of goods restricts it from
selling its goods in any other type of store if it
chooses to change its marketing strategy.
(5) The conditions under which and buyers to whom
sales are made, i.e. "impulse" vs. careful,
sophisticated purchasing.

Applicant argues that “[i]n making purchasing
decisions regarding expensive goods, the reasonably
prudent person standard is elevated to the standard of
discriminating purchaser.” Applicant’s Br., p. 9.
Applicant cites Weiss Associates Inc. v. HRL Associates
Inc., 902 F.2d 1546, 14 USPQ2d 1840 (Fed. Cir. 1990). In
Weiss Associates, the “products are used primarily by
professional persons of large manufacturing plant and
institutions for property maintenance and management.
Both products sell in the range of thousands of dollars.”
Id. at 1841. The products in this case include shorts,
socks, hats, belts, dress shirts, slacks, wind resistant
jackets, jewelry, and similar products, which are in a
different class from expensive software bought by
professional property managers.21 We have no basis to
hold that purchasers of opposer’s items are sophisticated
purchasers.

21 Sporn Ex. 7 is a shirt with a tag indicating that the shirt
was priced to sell at $52.50.
Opposition Nos. 106,932 and 110,254
22
(6) The number and nature of similar marks in use on
similar goods.

Applicant relies heavily on this factor. Applicant
maintains there are numerous third-party registrations
for similar marks containing the word “polo” and a design
of a polo player. To the extent that applicant relies on
registrations without submitting copies of the
registration, they will not be considered. In re Smith
and Mehaffey, 31 USPQ2d 1531 (TTAB 1994); Riceland Foods
Inc. v. Pacific Eastern Trading Corp., 26 USPQ2d 1883
(TTAB 1993).
We will consider two22 registrations (Reg. Nos.
1429,311 and 1,743,296) introduced during the Sporn
deposition.23 Both registrations are for various clothing
items.

22 A third registration was also introduced involving the mark
MEADOWBROOK POLO CLUB and design (Registration No. 1,819,237).
However, since the mark was for polo club services, it is not
relevant to this proceeding.
23 We determine that the cross-examination of opposer’s witness
on the subject of these registrations was not outside the scope
of the direct examination, and therefore the registrations are
properly of record.
Opposition Nos. 106,932 and 110,254
23
Opposer has also acknowledged that the BEVERLY HILLS
POLO CLUB worldwide sales “are a bit over 300 million.”
Sporn Testimony dep., p. 102. Opposer has entered into a
settlement agreement with the owner of the Beverly Hills
Polo Club mark. Sporn Ex. 24.
At best, applicant has shown that there are two
other marks containing the words “polo club” with a
geographic term and the design of a polo player for
clothing. This evidence does nothing to diminish the
fame of opposer’s marks, and hardly establishes that
there is no likelihood of confusion between applicant’s
and opposer’s marks.
(7) The nature and extent of any actual confusion.

There is no evidence of actual confusion in this
case. However, the absence of actual confusion does not
mean that there is no likelihood of confusion. Giant
Food, Inc. v. Nation's Foodservice, Inc., 710 F.2d 1565,
218 USPQ 390, 396 (Fed. Cir. 1983); J & J Snack Foods
Corp. v. McDonald’s Corp., 932 F.2d 1460, 18 USPQ2d 1889,
1892 (Fed. Cir. 1991). As explained below, because
applicant has not shown extensive marketing of products
sold under its marks, it is not surprising that there is
no evidence of actual confusion. This factor weighs only
slightly in applicant’s favor.
Opposition Nos. 106,932 and 110,254
24
(8) The length of time during and conditions under
which there has been concurrent use without
evidence of actual confusion.

As discussed above, there has been no actual
confusion, but this is likely due to the limited
marketing of applicant’s goods. Apparently, the
licensees of applicant’s clothing ceased sales years ago
although “there were sales of clothing in the pro shop.”
Freshman testimony dep., p. 53. Sales at the pro shop at
applicant’s Malibu location ceased in April of 1997 when
the pro shop itself closed. Freshman testimony dep., p.
54. Over the years, applicant sold over 10,000 watches
with the Malibu Polo Club and polo player design.
Applicant’s general partner has testified that it sells
its products through “catalogs, direct personal calls on
wholesalers and jobbers and trade shows.” Freshman
testimony dep., p. 25. Therefore, the goods and services
of applicant and opposer, as actually marketed, would be
unlikely to be sold or displayed together because of the
parties’ current marketing strategies. However, there is
no restriction in the identification of goods and
services that limits either party to the current channels
of trade. In addition, as discussed above, the sales of
applicant’s goods have been limited and, therefore, the
significance of the lack of actual confusion, while it
Opposition Nos. 106,932 and 110,254
25
cannot be discounted, cannot weigh too strongly in
applicant’s favor.
(9) The variety of goods on which a mark is or is
not used (house mark, “family” mark, product
mark).

Opposer, as the owner of at least eight
registrations, has demonstrated that it uses its POLO and
polo player marks on a wide variety of products and
services. Applicant does not dispute that the goods
listed in the identification of goods in the applications
and opposer’s registrations may be similar. In fact,
many of the goods are identical.
(10) The market interface between applicant and the
owner of a prior mark:

(a) a mere “consent” to register or use.
(b) agreement provisions designed to preclude
confusion, i.e. limitations on continued use of
the marks by each party.
(c) assignment of mark, application,
registration and good will of the related
business.
(d) laches and estoppel attributable to owner of
prior mark and indicative of lack of confusion.

There is no consent agreement and it is therefore
not a factor in this case. We have previously considered
the laches and estoppel argument.
(11) The extent to which applicant has a right to
exclude others from use of its mark on its
goods.

Opposition Nos. 106,932 and 110,254
26
As the owner of very well-known trademarks, opposer
is entitled to broad protection from marks that are
confusingly similar to its registrations.
(12) The extent of potential confusion, i.e., whether
de minimis or substantial.

Inasmuch as opposer has established the recognition
and renown of its mark, the potential for confusion is
more likely when opposer’s well-recognized mark is used
as a dominant part of another’s trademark.
(13) Any other established fact probative of the
effect of use.

Opposer has alleged that applicant has essentially
copied its marks and that there is an inference of bad
faith. We decline to so hold. Applicant is the owner of
registration that issued more than ten years ago, which
is similar to its pending applications. Based on the
record in this case, we cannot draw an inference of bad
faith.
Analysis of Likelihood of Confusion Factors

We now balance the du Pont factors and conclude that
there is a likelihood of confusion in this case.
Likelihood of confusion is decided upon the facts of each
case. Dixie Restaurants, 105 F.3d 1405, 1406, 41 USPQ
1531, 1533 (Fed. Cir. 1997); Shell Oil, 992 F.2d at 1206,
26 USPQ at 1688. The various factors may play more or
Opposition Nos. 106,932 and 110,254
27
less weighty roles in any particular determination of
likelihood of confusion. Shell Oil, 992 F.2d at 1206, 26
USPQ2d 1688; du Pont, 476 F.2d at 1361, 177 USPQ at 567.
We start with the fact that applicant uses its marks
on goods and services that are either identical to
opposer’s goods and services or closely related. In
addition, opposer has alleged and applicant conceded that
opposer’s marks are famous. The marks of the parties are
also similar. Applicant’s and opposer’s word marks
contain the word POLO and the parties’ marks with designs
have similar polo player designs. Opposer also uses the
mark “THE POLO CLUB” for retail clothing store services.
Thus, potential customers, who are familiar with
opposer’s marks used on a wide variety of clothing items,
jewelry, and related goods and services, when they are
confronted with applicant’s MALIBU POLO CLUB and polo
player design for identical and related goods and
services, are likely to believe that opposer is somehow
associated with the source of the goods and services of
applicant.
In addition to the applications for goods, applicant
also has an application for the services of dissemination
of advertising matter in this consolidated opposition
(Serial No. 75/227,229). At best, the parties have made
Opposition Nos. 106,932 and 110,254
28
only passing reference to this application. Opposer has
not clearly articulated its specific basis for alleging a
likelihood of confusion although it appears to be based
on the fame of opposer’s marks and the similarity to its
services with applicant’s. After opposer listed all the
goods and services identified in the applications,
opposer stated that it “has used the Polo Trademarks on
virtually all of these goods, with the exception only of
‘gum suits.’” Opposer’s Br., p. 15. See also Sporn
testimony dep., pp. 53-54. Opposer’s brief also briefly
discusses applicant’s advertising storyboards used in its
attempts to license products for its marks. Freshman Ex.
8. These storyboards relate to fashion and lifestyle,
and they are similar to opposer’s service of providing
information in the field of fashion, fragrance,
lifestyle, and other topics of general interest by means
of a global computer network. Applicant never alleges
that the services are dissimilar. Rather, its argument
is that the similarity of the goods and services is
irrelevant because of other factors. Therefore, we find
that there is a likelihood of confusion when applicant’s
and opposer’s similar marks are used on these services.
The only true difference between applicant’s and
opposer’s various marks is the fact that applicant’s
Opposition Nos. 106,932 and 110,254
29
marks have an added geographic term, Malibu, which
applicant has disclaimed. While we must consider marks
in their entireties, disclaimed matter is often given
less weight than other elements of a mark. Hilson
Research Inc. v. Society for Human Resource Management,
27 USPQ2d 1423 (TTAB 1993). We also must resolve doubts
about confusion against the newcomer. Kenner Parker
Toys, 963 F.2d at 355, 22 USPQ2d at 1458. Furthermore,
we must also consider the goods and services as
identified in the applications and registrations without
limitations on how the goods and services are presently
marketed. Current marketing and distribution methods may
change. Because there are no restrictions in the
applications or registrations as to the channels of
trade, we must assume that the goods and services travel
in the same channels of trade and are purchased by the
same purchasers. Kangol Ltd. v. KangaRoos U.S.A. 974
F.2d 161, 23 USPQ2d 1945 (Fed. Cir. 1992).
We have considered the lack of actual confusion, the
presence of two other users, and the fact that the marks
are not identical, but we find these factors are
outweighed by the renown and recognition of opposer’s
marks, the identical and/or highly related nature of the
goods and services, the similarities of the marks, and
Opposition Nos. 106,932 and 110,254
30
the lack of differences between the channels of trade and
the purchasers of the goods and services described in the
registration and applications.
Decision: The oppositions are sustained and
registration to applicant of all four applications is
refused.