Retail Royalty Companyv.The University of Houston System

Trademark Trial and Appeal Board

Mar 10, 2017

No. 91217413 (T.T.A.B. Mar. 10, 2017)

This Opinion is not a
Precedent of the TTAB

Mailed: March 10, 2017

UNITED STATES PATENT AND TRADEMARK OFFICE
_______
Trademark Trial and Appeal Board
_______
Retail Royalty Company
v.
The University of Houston System
_______
Opposition No. 91217413
_______
Charles H. Hooker, III of Kirkpatrick Townsend & Stockton LLP for
Retail Royalty Company.

Jennifer S. Sicker Thompson & Knight LLP for
The University of Houston System.
_______
Before Bergsman, Wellington and Pologeorgis,
Administrative Trademark Judges.

Opinion by Wellington, Administrative Trademark Judge:
The University of Houston System (“Applicant”) has filed an application seeking
to register the mark:

Opposition No. 91217413

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for the following goods and services:
Print materials, namely, magazines, technical publications in the
nature of journals and articles, sports guides, teaching materials in the
field of business, accounting, engineering, science, legal, medical, health
science, literature, history, and math research, business, accounting,
engineering, science, legal, medical, health science, literature, history,
and math education and athletics, and course materials in the field of
business, accounting, engineering, science, legal, medical, health
science, literature, history, and math research, business, accounting,
engineering, science, legal, medical, health science, literature, history,
and math education and athletics; printed souvenir programs
concerning sports, graduation, and academic events; pens; pen sets;
pencils; erasers; pencil toppers, namely, decorative pencil-top
ornaments; loose leaf binders; bookmarks; book covers; address books;
appointment books; calendars; photographic albums; art photographs,
namely, photographs that have been computer manipulated and
enhanced to contain graphic elements; photographs; lithographs and
prints in the nature of pictures, photographs, and artistic drawings;
paper banners; paper pennants; printed paper handheld signs; paper
bags; magnetic boards; billboards, namely, advertising signs of paper or
cardboard; paper notepads; note pad holders; scrapbooks; catalogs in the
field of academic and athletic courses and academic and athletic goods;
series of nonfiction books in the field of business, accounting,
engineering, science, legal, medical, health science, literature, history,
and math research, business, accounting, engineering, science, legal,
medical, health science, literature, history, and math education and
athletics; newsletters in the field of business, accounting, engineering,
science, legal, medical, health science, literature, history, and math
research, business, accounting, engineering, science, legal, medical,
health science, literature, history, and math education and athletics;
notebooks; composition books; picture books; binders; stationery type
portfolios; paper gift wrap; blank cards; paper gift cards; greeting cards;
business cards; writing paper; note paper; postcards; decals; paper
labels; bank checks; checkbook covers; rubber stamps; prepaid telephone
calling cards, not magnetically encoded; credit cards without magnetic
encoding; transferable temporary tattoos; bumper stickers; stickers;
posters; party goods, namely, paper party favors, paper napkins and
paper party decorations; desk accessories, namely, baskets for desk
accessories, desk pads, file trays, desktop organizers, desktop planners,
desktop revolving rotary card files, desktop business card holders, and
desk calendars; paperweights; letter openers[;] and printed paper labels
for bottled water; letter openers of precious metal; coasters of paper, in
International Class 16;
Opposition No. 91217413

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Mugs, cups, cork coasters, souvenir plates, waste baskets, and bottle
openers, in International Class 21;

Clothing, namely, shirts, pants, hats, scarves, sweat pants, sweat shirts,
jackets, raincoats, sweaters, underwear, pajamas, socks, sandals, flip
flops, shoes, and slippers, in International Class 25; and

Educational services, namely, providing college and graduate level
courses of instruction, continuing education courses and seminars in [a
variety of fields of learning]; educational services, namely, providing
opportunities in the nature of internships and exchange programs for
students to participate in educational research programs in [a variety of
fields of learning]; entertainment services, namely, providing college
athletic and sporting events in the fields of football, basketball, soccer,
hockey, tennis, volleyball, track and field, and baseball; entertainment
services, namely, live performances of dramatic works and live musical
performances, in International Class 41.1

Retail Royalty Company (“Opposer”) opposes registration of Applicant’s mark on
the ground of likelihood of confusion under Section 2(d) of the Trademark Act.
Opposer pleads, inter alia, ownership of Registration No. 3878197 (hereinafter
referred to as the “’197 registration”) for the silhouette of a bird shown below:2

(hereinafter referred to as the “Flying Eagle Design Mark”) for the following goods
and services:

1 Application Ser. No. 86038277, filed on August 14, 2013, based upon Applicant’s allegation
of first use anywhere and in commerce on November 1, 2012, under Section 1(a) of the
Trademark Act, 15 U.S.C. § 1052(a), for all classes of goods and services. The mark is
described in the application as “consist[ing] of a stylized hawk above the letters ‘UHCL’,
which are above the word ‘HAWKS’ in stylized font.”
2 1 TTABVUE 9.
Opposition No. 91217413

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Body cream, cologne, perfume, liquid soaps for body, in International
Class 3;

Athletic bags, backpacks, barrel bags, beach bags, book bags, duffel
bags, shoulder bags, tote bags, clutch purses, coin purses, drawstring
pouches, handbags, purses, and wallets, in International Class 18;

Clothing and accessories, namely, blazers, vests, sweaters, turtleneck
sweaters, skirts, pants, jeans, shorts, shirts, t-shirts, blouses, polo
shirts, rugby shirts, sweatshirts, sweatpants; swimwear; sleepwear;
underwear, namely, boxer shorts, shell bra tanks, and undershirts;
outerwear, namely, jackets, vests, coats, pea coats, gloves, scarves; belts;
footwear, namely, socks, shoes, slippers, leather boots, sandals, flipflops,
sneakers, clogs and slides; canvas shoes, headwear, namely, hats, caps,
baseball caps, [and] visors, in International Class 25;

Retail store services, computerized online retail store services, and
phone order services all featuring a wide range of goods in the nature of
fragrances, personal care goods; sunglasses; jewelry and wristwatches;
a wide range of bags and wallets, handbags, purses, shoulder bags,
school bags, backpacks, duffle bags; and wearing apparel and clothing
accessories, namely, clothing, headwear and footwear, in International
Class 35.

Opposer also pleads common law rights in its Flying Eagle Design Mark, as well
as the marks AMERICAN EAGLE OUTFITTERS and an “AMERICAN EAGLE
family of marks” for “a broad range of lifestyle products” and that it uses these marks
“extensively on its products and in connection with its Internet and retail sales.”3
Specifically, Opposer pleads that: it first opened a retail store in 1977 and now “more
than 850 of these retail stores are located in the United States”;4 its stores
“prominently feature its [Flying Eagle Design Mark]”; Opposer “prominently features

3 Id. at 6-7.
4 Id.
Opposition No. 91217413

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its Flying Eagle Design in its advertising and on billboards”;5 “among the products
[Opposer] has sold under … the Flying Eagle Design Mark specifically, are clothing
and accessories, including shirts, t-shirts, shorts, sweatshirts, outerwear, jackets,
sleepwear, footwear, backpacks, purses, and book bags” and it “also uses the Flying
Eagle Design Mark extensively in connection with its retail and online retail services
selling these products”;6 it “offers numerous products that are affiliated with colleges
and universities” and “also sponsors a variety of collegiate and university themed
events”;7 “[i]n addition to featuring the Flying Eagle Design Mark prominently in its
advertising, AEO regularly uses that mark on gift cards and packaging, including
shopping bags.”8
Opposer pleaded that Applicant’s use of the applied-for mark is likely to cause
confusion and that “there is no issue as to priority” because Opposer “began using its
Flying Eagle Design Mark in commerce at least as early as August 2003, well prior
to the August 14, 2013 filing date of Applicant’s Application and Applicant’s claimed
first use date of November 1, 2012.”9
Applicant, in its answer, admits that Opposer is the “record owner” of its pleaded
registration, but otherwise denies the remaining salient allegations in the Notice of
Opposition. Applicant also pleads what it called “affirmative defenses.”10

5 Id.
6 Id. at 7.
7 Id. at 8.
8 Id.
9 Id. at 11.
10 9 TTABVUE. Several of these are not actual affirmative defenses. In any event, Applicant
Opposition No. 91217413

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Both parties filed briefs,11 and Opposer filed a reply brief.
The Record
The record includes the pleadings and, by way of Rule 2.122, the file of the
involved application.
The parties stipulated that “each party may submit declarations to authenticate
documents they have produced in discovery through disclosure or under Fed. R. Civ.
P. 34” and “submit trial testimony by declaration during their trial periods, provided
the opposing party will have the opportunity to cross-examine any witness that
provides a testimony declaration.”12
During its initial trial period, Opposer filed six notices of reliance introducing the
following materials:13 copies of its pleaded ‘197 registration, including a copy from the
Office’s TESS electronic database showing the current status of and title to the

did not pursue them at trial and we have not considered them further. See Alcatraz Media
Inc. v. Chesapeake Marine Tours Inc., 107 USPQ2d 1750, 1753 n.6 (TTAB 2013).
11 Opposer filed a main trial brief that was designated “confidential” in its entirety (56
TTABVUE). A redacted copy of the brief for public viewing, as required by Rule 2.126(c), was
not filed. See also TBMP 810.03; Turdin v. Trilobite, Ltd., 109 USPQ2d 1473, 1476 n.6 (TTAB
2014); Duke University v. Haggar Clothing Inc., 54 USPQ2d 1443, 1445 (TTAB 2000)
(redacted copy deleting confidential matters must be filed). While in such cases the Board
may require the party that does not file a redacted copy to do so, we exercise our discretion
in this case and choose not to do this. Nevertheless, we will treat as confidential only such
information as is truly confidential. See Couch/Braunsdorf Affinity, Inc. v. 12 Interactive,
LLC, 110 USPQ2d 1458, 1461 (TTAB 2014) (the Board will not be bound by improper
confidentiality designations); Trademark Rule 2.116(g) (amended effective January 14, 2017
to codify the Board’s practice of treating as public material that cannot reasonably be
considered confidential).
12 47 TTABVUE. Although the stipulation was not filed until April 27, 2016, during
Applicant’s trial period, we construe it as pertaining to all trial periods. By its own terms, the
stipulation allows testimony by declaration to be submitted “during their [the parties’] trial
periods.”
13 23-25 and 27-29 TTABVUE.
Opposition No. 91217413

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registration;14 copies of nineteen (19) other registrations owned by Opposer, including
electronic copies from the TESS database;15 Internet printouts comprising copies of
Opposer’s SEC filings;16 Internet printouts intended to show “public’s exposure to
information about Opposer and [its] Flying Eagle Design marks and brand” as well
Opposer’s other marks general recognition, “particularly among teens and young
adults”;17 Internet printouts intended to show “Opposer’s support of programs for
high school and college students, and Opposer’s marketing efforts aimed at
consumers 15–25 years of age”;18 and Internet printouts showing “representative
examples of unsolicited print publications concerning” Opposer and its marks.19
Applicant, during its trial period, submitted two testimony declarations of
Theresa Presswood, the Executive Director of Communications for the University of
Houston – Clear Lake (UHCL), a “component” of Applicant.20 Applicant also filed
seven notices of reliance introducing the following materials:21 a copy of the involved
application file;22 a copy of the registration file for Opposer’s pleaded ‘197

14 23 TTABVUE.
15 24 TTABVUE.
16 25 TTABVUE.
17 27 TTABVUE.
18 28 TTABVUE.
19 29 TTABVUE.
20 43-44 (Presswood declaration “regarding the business records of [Applicant]”), and 48
TTABVUE (second Presswood declaration).
21 30-46 and 48 TTABVUE. Copies of materials from a notice of reliance (“number 5”) and
designated “confidential” are found at 45-46 TTABVUE and are not accessible to the public.
22 30-31 TTABVUE.
Opposition No. 91217413

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registration;23 copies of one-hundred nineteen (119) third-party registration
certificates for marks containing bird designs;24 copies of thirty-four (34) applications
from the Office’s TSDR electronic database for marks containing bird logos;25 a
Wikipedia excerpt with information about Applicant and copies of Internet printouts
from various websites or online publications involving Opposer;26 Internet printouts
purportedly showing “representative examples of Opposer’s competitors who use bird
silhouette logos as trademarks”;27 and copies of Opposer’s responses to Applicant’s
admission requests nos. 1-2, 13-14, 16-20, 24-25, 29, and 36-39, and to Applicant’s
interrogatory nos. 4-5.28
During its rebuttal trial period, Opposer introduced the testimony declaration of
Steve Kubinski, Vice President of Marketing Operations at American Eagle
Outfitters, Inc., Opposer’s parent company, with accompanying exhibits.29
I. Background
Applicant is a university system in Texas comprising four universities, one of
which is located on a nature reserve in the Clear Lake community and is identified
as the University of Houston – Clear Lake or “UHCL” for short.30 UHCL was

23 31 TTABVUE.
24 31-33 TTABVUE.
25 34 TTABVUE.
26 35-41 TTABVUE.
27 40 TTABVUE.
28 42 TTABVUE.
29 49-53 TTABVUE.
30 Presswood Decl. (48 TTABVUE 6).
Opposition No. 91217413

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established in 1974 as an upper-level institution and in 2014 began offering
“freshman/sophomore coursework, officially beginning its transition to a four-year
institution.”31 UHCL currently has approximately 8,665 students.32 Applicant’s
proposed mark is a “mascot logo” and was introduced in the spring of 2012 after a
process that began in 2010 and was based on input from students, alumni, faculty,
staff and the community.33 Applicant contracted with an advertising agency to
“develop art for the new HAWK mascot logo” and Applicant’s proposed mark has been
in continuous use for the goods and services identified in the Application since
November 1, 2012.34
Opposer, through its affiliated companies which includes American Eagle
Outfitters, Inc. (“AEO”), has used its Flying Eagle Design Mark in connection with
retail store services featuring clothing and accessories, as well as on clothing. AEO
opened its first retail store in 1977 and now operates over 800 retail stores in the
United States, including 62 stores in Texas and 10 in the greater Houston area.35
AEO has prominently advertised its Flying Eagle Design Mark by itself as well as
with the wording “American Eagle”, in advertising its goods and services. Opposer
began using its Flying Eagle Design Mark “at least as early as 2004.”36 AEO uses its

31 Id. at 7.
32 Id., Exhibit 156.
33 Id.
34 Id. at 8.
35 Kubinski Decl. (49 TTABVUE 11).
36 Id. at 12.
Opposition No. 91217413

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Flying Eagle Design Mark on “gift cards and packaging, including shopping bags.”37
AEO markets its goods and services through “back to school” promotions and other
programs targeting college students, including its Flying Eagle Design Mark
appearing “prominently on t-shirts and other materials distributed and used at …
colleges and universities.”38
II. Standing
Standing is a threshold issue that must be proven by a plaintiff in every inter
partes case. To establish standing in an opposition or cancellation proceeding, a
plaintiff must show “both a ‘real interest’ in the proceedings as well as a ‘reasonable
basis' for its belief of damage.” Empresa Cubana Del Tabaco v. Gen. Cigar Co., 753
F.3d 1270, 111 USPQ2d 1058, 1062 (Fed. Cir. 2014) (quoting ShutEmDown Sports,
Inc., v. Lacy, 102 USPQ2d 1036, 1041 (TTAB 2012)); Ritchie v. Simpson, 170 F.3d
1092, 50 USPQ2d 1023, 1025 (Fed. Cir. 1999); Lipton Industries, Inc. v. Ralston
Purina Co., 670 F.2d 1024, 213 USPQ 185, 189 (CCPA 1982). The Court of Appeals
for the Federal Circuit has enunciated a liberal threshold for determining standing
in Board proceedings. Ritchie, 50 USPQ2d at 1030. Here, the issue of Opposer’s
standing is not in dispute; in any event, we find Opposer has demonstrated that it is
more than a mere interloper and has a real interest in and standing to bring this
proceeding. Particularly, we rely on the testimony by declaration of Mr. Kubinski
regarding Opposer’s use of the Flying Eagle Design Mark through its affiliate, AEO,

37 Id. at 14.
38 Id. at 18.
Opposition No. 91217413

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and Opposer’s ownership of the ‘197 registration for the Flying Eagle Design Mark, a
copy of which has been properly introduced.39
III. Priority
As demonstrated by the parties’ arguments in their briefs, there appears to be
some confusion whether priority is at issue in this proceeding.
Opposer’s ‘197 Registration
With respect to Opposer’s ‘197 registration and the goods and services identified
in that registration, priority is not in issue. King Candy Company v. Eunice King’s
Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108 (CCPA 1974). That is, Opposer need not
prove prior use of its registered mark in connection with the goods and services
identified in the registration vis-à-vis Applicant’s use of its applied-for mark in
connection with the goods and services described in the Application. Id.
Opposer’s Pleaded Common Law Rights
In order for Opposer to rely on its pleaded common law rights in its Flying Eagle
Design Mark for goods or services beyond the scope of its pleaded registration, it must
prove use of its mark prior to any date that Applicant may rely upon. Applicant, for
its part and for purposes of priority, may, at the very least, rely on the filing date of
the involved application, i.e., July 14, 2013. M.C.I. Foods, Inc. v. Bunte, 96 USPQ2d
1544, 1550 (TTAB 2010); see also, J.C. Hall Co. v. Hallmark Cards, Inc., 340 F.2d
960, 144 USPQ 435, 437 (CCPA 1965). Through the declaration of Ms. Presswood,
Applicant has established that its proposed mark has been in continuous use for the

39 23 TTABVUE.
Opposition No. 91217413

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goods and services identified in the Application since November 1, 2012.40 Opposer
does not dispute this date of first use for Applicant’s goods and services. Thus, in
order for Opposer to prevail on its likelihood of confusion based on goods or services
based on its common law rights, Opposer must establish it first used its mark on
those goods or services prior to November 1, 2012. With this in mind, we now address
Opposer’s prior common law use of its Flying Eagle Design Mark. In doing so, we do
not discuss the entirety of Opposer’s alleged prior, common law use of its mark.
Rather, we analyze Opposer’s purported common law rights in connection with goods
and services that are relevant to our likelihood of confusion analysis, namely, those
that may have a relationship to Applicant’s identified goods and services and possibly
serve as a basis for finding a likelihood of confusion.
With this in mind, we address Opposer’s alleged prior use, through its affiliate
AEO, of the Flying Eagle Design Mark in connection with various goods that it asserts
are the same or closely related to goods listed in Classes 16 and 21 of the involved
application. Specifically, Opposer argues that the “hundreds of [AEO] retail stores
and [AEO] ecommerce website long since have carried a broad range of paper goods
under the Flying Eagle Design Mark, including stationery, notebooks, notepads,
sticky notes, thank you notes, and journals” and that AEO “has used its Flying Eagle
Design Mark on or in connection with paper bags, billboards, advertising signs of
paper or cardboard, newsletters, paper labels, and credit cards, among other goods

40 See Note 34.
Opposition No. 91217413

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listed in the Application.41 Opposer also argues that “AEO has used its Flying Eagle
Design Mark on, inter alia, the very mugs, cups, and waste baskets that Applicant
seeks to register in International Class 21, as well as related products such as bulletin
boards, magazine racks, and picture frames.”42 In support, Opposer relies on the
following averments of Steve Kubinski, AEO’s vice president for marketing
operations:
7. While AEO has perhaps been best known as an apparel company for
college-aged and young adults, its website and stores have carried a broad
range of products, including paper goods such as stationery, notebooks, and
journals, as well as other accessories one might find in a college bookstore
such as bulletin boards, magazine racks, picture frames, mugs, cups, waste
baskets, umbrellas, and iPhone cases. True and correct depictions of AEO
retail store layouts showing such items are attached as Exhibit 4.

10. AEO also prominently features its Flying Eagle Design, which it began
using at least as early as 2004, on billboards, including its widely
publicized and well-known billboard above its flagship retail store in New
York’s Times Square (as depicted below).

Further representative examples of AEO’s use of its Flying Eagle Design
Mark in and on its retail stores and on out-of-home advertising platforms
(such as billboards, bus sides, bus shelters, and subway cars) are attached
as Exhibit 7.

41 56 TTABVUE 43.
42 Id. at 43-44.
Opposition No. 91217413

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15. In addition to featuring the Flying Eagle Design Mark prominently in
its advertising, AEO regularly uses that mark on gift cards and packaging,
including shopping bags.

True and correct copies of representative examples of such use of the Flying
Eagle Design Mark are attached as Exhibit 14.

A review of Mr. Kubinski’s entire testimony, in conjunction with the referenced
exhibits, does not show that Opposer uses its Flying Eagle Design Mark as a source
identifier for the mentioned goods themselves. Rather, the evidence shows that
Opposer’s Flying Eagle Design Mark is being used to advertise Opposer’s retail stores
services. For example, Opposer’s use of the mark on the Times Square billboard,
shown above, is an advertisement for Opposer’s retail store services, not to indicate
the source of the billboard itself. Moreover, the referenced Kubinski Exhibit 4
contains photographs of “AEO retail store layouts” and merely shows accessories or
other the types of goods, e.g., mugs, books, notebooks, iPhone cases, etc., that may be
found in Opposer’s retail stores, aside from clothing. For example:43

43 49 TTABVUE 474-476.
Opposition No. 91217413

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Opposition No. 91217413

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Opposition No. 91217413

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The photographs do not show the Flying Eagle Design Mark being used on the
goods or in a manner consistent with use on the goods. At most, in reviewing Mr.
Kubinski’s testimony and related exhibits, the record demonstrates that Opposer
uses its Flying Eagle Design Mark in connection with retail store services primarily
in connection with clothing, but these stores also sell other goods, including some of
those listed in Classes 16 and 21 of the opposed application. Opposer has prior use of
the Flying Eagle Design Mark in connection retail store services, which include the
Opposition No. 91217413

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sale of the aforementioned accessory goods, inasmuch as it began using its Flying
Eagle Design Mark for these services long before Applicant’s first use date in 2012.
With respect to services, Opposer acknowledges that it is not an educational
institution like Applicant, but asserts it has prior common law rights in its Flying
Eagle Design Mark in connection with services that target the same collegiate
community. Specifically, Opposer asserts that its affiliate AEO has “extensively has
used its Flying Eagle Design Mark in connection with a variety of collegiate athletic
events and scholarships and educational and community service programs offered to,
and designed to resonate with, college students,” and that AEO “sponsored collegiate
athletic tournaments, given ‘scholar-athlete’ awards, and sponsored entertainment
venues and services.”44 Again, because Opposer’s ‘197 registration does not cover
these services, Opposer must demonstrate use (prior to November 2012) of the Flying
Eagle Design Mark in connection with these services.
On the record before us, however, the only service for which Opposer has
demonstrated some prior use of its Flying Eagle Design Mark involves an agreement
with a collegiate sports conference to assist in the promotion of that conference.45 In

44 56 TTABVUE 45.
45 Although Mr. Kubinski states in his declaration that Opposer’s affiliate AEO has engaged
in other services, i.e., providing scholarships to student-athletes, organizing essay-writing
contests, organizing community service events, and sponsoring entertainment events,
including musical concerts, the record does not establish that the Flying Eagle Design Mark
was used in connection with the these services or, if it was, that the use occurred before
November 2012. For example, in paragraph 38 of his declaration (49 TTABVUE 25), Mr.
Kubinski avers that the Flying Eagle Design Mark is used prominently in connection with
AEO’s “naming rights” for the “Stage AE” in Pittsburgh (including a photograph); however,
there is no testimony or additional evidence establishing this use began prior to November
2012. Likewise, although Kubinski Exhibit 33 contains information and references to
Opposer’s offering of scholarships to student-athletes in conjunction with its affiliation with
Opposition No. 91217413

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particular, Opposer entered into a “sponsorship” agreement with the Big East
Conference of college sports teams in 2010.46 The evidence of Opposer’s use of its
flying eagle mark in connection with this activity, however, is limited. Indeed, the
only evidence that appears to associate the flying eagle mark with the Big East
Conference, before November 2012, is the following photograph of the billboard above
AEO’s Times Square store in New York City:47

the Big East Conference, there is no evidence showing the Flying Eagle Design Mark used in
connection with these services. Thus, for these services, Opposer did not establish prior
common law rights in its Flying Eagle Design Mark.
46 52 TTABVUE 292 (Kubinski Exhibit 33).
47 Id. at 301.
Opposition No. 91217413

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Other photographs of the same billboard merely consist of recognition of the teams
in the Big East Conference without the Flying Eagle Design Mark present, e.g.:48

With respect to the nature of the service, the article containing the above image
describes the relationship as “[t]he Big East maintains ad space on the American
Eagle Outfitters store in Times Square” and that “this is the space typically used to

48 Id. at 329.
Opposition No. 91217413

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congratulate the various Big East conference champions or other special conference
events.”49 In essence, the service involves Opposer assisting the conference in
promoting the conference and its teams by placing advertisements on the billboard
above its American Eagle store, and we find this was done before November 2012.
In sum, with respect to Opposer’s proven acquisition of common law rights in the
Flying Eagle Design Mark prior to November 2012, we find that these include retail
store services that, despite the primary focus on clothing, include selling accessory
goods that include some of the same goods listed in Classes 16 and 21 of the involved
application. In addition, Opposer acquired prior common law rights in its flying eagle
mark in connection with a service that, as described above, involves assisting the Big
East collegiate sports conference in promoting the conference and its teams through
the placement of advertisements or congratulatory messages on the billboard above
Opposer’s store in New York City.
IV. Likelihood of confusion
Our determination of the issue of likelihood of confusion under Section 2(d) of the
Trademark Act 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, 567 (CCPA 1973); see also In re Majestic Distilling Co., Inc., 315
F.3d 1311, 65 USPQ2d 1201, 1203 (Fed. Cir. 2003).
Strength/ Weakness of Opposer’s Flying Eagle mark

49 Id.
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Opposer does not specifically argue that its Flying Eagle Design Mark is famous,
but does assert that the mark is “strong and entitled to broad protection,” as a result
of “widespread use, extensive advertising, and strong sales.”50 In support, Opposer
has presented impressive evidence regarding the extent to which Opposer, through
its affiliate AEO, has advertised its brands, including AMERICAN EAGLE,
AMERICAN EAGLE OUFITTERS, and the Flying Eagle Design Mark (presented
either in conjunction with the other marks or by itself). Opposer’s net U.S. sales
figures have gradually increased in the years 2010-2015 and are substantial (over $3
Billion in 2015). Although there is ample evidence of use of the Flying Eagle Design
Mark and that AEO stores sell goods other than clothing, it clear from the record that
the focus of AEO’s business is on the brand name AMERICAN EAGLE or
AMERICAN EAGLE OUTFITTERS in connection with retail clothing. For example,
evidence regarding “Most Valuable U.S. Retail Brands [for 2011]” lists “AMERICAN
EAGLE OUTFITTERS” in 38th position and describes the company as a “retailer
[that] offers high quality ‘American prep meets current fashion.’”51 A couple more
references include, “Although teen apparel brand American Eagle Outfitters fell a bit
in the ranking this year …”52 and as “a retailer of casual wear.”53 On the other hand,
AEO has a very strong presence in social media advertising, including “over 11
million followers on Facebook, over 700,000 on Twitter, and over 2 million on

50 56 TTABVUE 33-35.
51 51 TTABVUE 459.
52 Id. at 520.
53 Id. at 536
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Instagram” and the flying eagle mark is prominently displayed in many of the
messages that AEO sends. For example:
54
and
.55

54 50 TTABVUE 112.
55 Id. at 130.
Opposition No. 91217413

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Again, however, although the Flying Eagle Design Mark is displayed in AEO’s
social media advertising, it is being used and viewed almost exclusively in the context
of AEO’s apparel or retail apparel services. The evidence, including the testimony of
Opposer’s witness, does not show that Opposer’s Flying Eagle Design Mark has a
strong commercial presence or consumer recognition outside the field of retail
clothing goods and services.
Applicant, on the other hand, argues that “[a]ny rights that [Opposer] may claim
in its eagle design mark are dramatically weakened by its coexistence in the
marketplace with numerous third party bird design marks,” referencing the evidence
it submitted showing third-party registrations of marks with bird logos covering
apparel goods.56 Applicant also relies on website printouts it submitted for clothing
retailers Hollister (owned by Abercrombie & Fitch) and Eddie Bauer “as
representative examples of [Opposer’s] competitors that are large retailers who use
bird silhouette marks for general retail, including clothing.”57 Applicant asserts
“[c]ustomers have become so conditioned to numerous bird marks in the marketplace
that they have been educated to distinguish between such marks on the basis of small
distinctions.”58
Evidence of the extensive registration and use of similar marks by others can be
“powerful” evidence of a mark's weakness. Cf. Jack Wolfskin Ausrustung Fur

56 57 TTABVUE 24.
57 Id.
58 Id. at 25.
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Draussen GmbH & Co. v. Millennium Sports, S.L.U., 116 USPQ2d at 1136; Juice
Generation, Inc. v. GS Enters. LLC, 794 F.3d 1334, 115 USPQ2d 1671, 1674 (Fed. Cir.
2015). However, third-party registrations such as those offered by Applicant are not
evidence of actual use of the marks. Olde Tyme Foods, Inc. v. Roundy's Inc., 961 F.2d
200, 22 USPQ2d 1542, 1545 (Fed. Cir. 1992). As the Federal Circuit pointed out in
Juice Generation, “the strength of a mark is not a binary factor” and “varies along a
spectrum from very strong to very weak.” Juice Generation, 115 USPQ2d at 1675-76
(internal citations omitted). “The weaker [the Registrant's] mark, the closer an
applicant's mark can come without causing a likelihood of confusion and thereby
invading what amounts to its comparatively narrower range of protection.” Id. at
1676 (internal citations omitted); see also Palm Bay, 73 USPQ2d at 1693 (“Evidence
of third-party use of similar marks on similar goods is relevant to show that a mark
is relatively weak and entitled to only a narrow scope of protection.”).
“In determining the strength of a mark, we consider both its inherent strength
based on the nature of the mark itself and its commercial strength, based on the
marketplace recognition value of the mark.”

American Lebanese Syrian, 101 USPQ2d at 1028 (citing Tea Board of India v.
Republic of Tea Inc., 80 USPQ2d 1881, 1899 (TTAB 2006) and McCarthy on
Trademarks and Unfair Competition § 11:83 (4th ed. 2011) (“The first enquiry focuses
on the inherent potential of the term at the time of its first use. The second evaluates
Opposition No. 91217413

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the actual customer recognition value of the mark at the time registration is sought
or at the time the mark is asserted in litigation to prevent another's use.”)).
Of the numerous third-party registrations for marks containing a bird logo
submitted by Applicant, we find the following as bearing the closest resemblance to
Opposer’s (or Applicant’s) bird logo:
(Reg. No. 3927682) for, inter alia, “clothing, namely,
sweatshirts”;59

(Reg. No. 4074609) for “gym shorts, t-shirts, tops”;60

Reg. No. 1767523 for “sweaters, shirts, slacks, trousers, jackets,
headwear, socks and golf shoes”;61

Reg. No. 3947399 for “socks”;62

59 32 TTABVUE 9.
60 Id. at 11.
61 Id. at 36.
62 33 TTABVUE 31.
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Reg. No. 4552764 for, inter alia, “shirts, tops, shorts,
pants, [and] jeans”’;63

Reg. No. 4487134 for “clothing, namely, t-shirts and shirts”;64

Reg. No. 4548481 for “men’s, women’s and children’s clothing,
namely, hats … shirts”;65

Reg. No. 4382221 for “baseball caps and hats”;66

63 Id. at 35.
64 Id. at 49
65 Id. at 53.
66 Id. at 71.
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Reg. No. 4271697 for, inter alia, “clothing, namely, shirts”;67

Reg. No. 4291319 for, inter alia, “boxer briefs …
jackets … polo shirts, shorts, sweat pants, t-shirts tank tops”;68

Reg. No. 4337318 for “clothing, namely, … shirts, sweat shirts, …
hats … t-shirts, shorts, pants, sweaters, sleepwear, boxer shorts, socks, women’s
blouses, skirts and dresses”;69 and

Reg. No. 4235047 for “hunting apparel, namely, … pants,
shirts, jackets and vests.”70

With respect to the evidence of actual third-party use of bird logos in connection
with retail clothing, Applicant submitted only two such uses:

67 Id. at 73.
68 Id. at 79.
69 Id. at 81.
70 Id. at 87.
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[from the Hollister website www.hollister.com];71
and

[from the Eddie Bauer website www.eddiebauer.com].72
Upon review of the record before us, we are not persuaded that Opposer’s Flying
Eagle Design Mark is commercially weak based on third-party registration and use
of similar bird logo marks. Although Applicant submitted approximately 120 third-
party registrations for marks containing bird logos, we have identified the twelve that
we believe come the closest to Opposer’s mark and, as is evident, only a few of these
can be characterized as bearing a strong resemblance to either Opposer’s or
Applicant’s bird logo. The registrations obviously show that it is not uncommon for
others to seek to adopt a mark containing a bird design in connection with clothing;
however, the registrations further reflect the availability of an array of bird designs
that can be used in marks and do not necessarily bear a resemblance to each other.
Indeed, with the exception of a few, we find none of the registered marks bear a strong

71 41 TTABVUE 2.
72 Id. at 5.
Opposition No. 91217413

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resemblance to either Opposer’s or Applicant’s mark. With respect to the website
printouts showing actual use, we note that the Hollister bird appears to be a seagull
in flight and the Eddie Bauer logo appears to be a duck in flight. These two uses thus
have little in common with the involved bird logos. The record, here, may be
distinguished from the third-party registration and use evidence in Juice Generation,
where there were at least twenty-six relevant third-party uses or registrations of
record, see 115 USPQ2d at 1672 n. 1, and in Jack Wolfskin, where there were at least
fourteen, 116 USPQ2d at 1136 n. 2.
In sum, with respect to the argued strength and weakness of Opposer’s Flying
Eagle Design Mark, we find that Opposer has demonstrated that this mark has had
significant exposure in connection with retail clothing. Moreover, we find no
measurable weakness with respect to Opposer’s particular bird logo, the Flying Eagle
Design Mark. There are simply too few registered marks, and no evidence of third-
party use of marks, that are significantly similar to Opposer’s Flying Eagle Design
Mark. At best, a showing has been made that it is not uncommon to adopt a bird logo
in connection with clothing.
Similarity or Dissimilarity of the Parties’ Marks
We turn now to the du Pont factor of the similarity or dissimilarity of the marks
in terms of their appearance, sound, connotation and commercial impression. Palm
Bay Imps. Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369,
73 USPQ2d 1689, 1692 (Fed. Cir. 2005). The proper test is not based on consumers
having the luxury of a side-by-side comparison of the marks, as they appear below,
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but “whether the marks are sufficiently similar in terms of their commercial
impression such that persons who encounter the marks would be likely to assume a
connection between the parties.” Coach Servs., Inc. v. Triumph Learning LLC, 668
F.3d 1356, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012) (citation omitted).
The obvious similarity in the marks is Applicant’s incorporation of a bird logo in
its mark which bears a resemblance to Opposer’s Flying Eagle Design Mark. Both
marks depict a bird that is landing or attacking in the same direction (from right to
left) with its talons out and wings outstretched. There are, however, noticeable
differences between the bird logo in Applicant’s mark and Opposer’s Flying Eagle
Design Mark. Opposer’s mark is presented purely as a silhouette with few details
whereas Applicant’s bird logo has several discernable characteristics – it is possible
to view the outlines of the feathers, head and talons. It is also possible to identify an
‘angry’ or menacing look in the bird’s eye and the beak is open in Applicant’s mark.
The more obvious and significant distinguishing feature of Applicant’s composite
mark is the presence of the literal terms, UHCL HAWKS. Although these terms
appear beneath the bird logo, we have long found that when evaluating a composite
mark containing both words and a design, the verbal portion of the mark often is the
one most likely to indicate the origin of the goods to which it is affixed because it is
the portion of the mark that consumers would use to refer to or request the goods or
services. In re Viterra Inc., 101 USPQ2d, 1905, 1908 (Fed. Cir. 2012). In contrast to
Opposer’s mark, consumers viewing Applicant’s mark will have an initialism and
word that they can use to help identify the source of the goods and services.
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As far as the commercial impressions and connotations of the marks, we note each
mark depicts a strong bird and thus may be suggestive of the bird’s independence or
freedom. However, we cannot ignore the presence of the literal terms UHCL HAWKS
in Applicant’s mark which, for consumers aware that Applicant is an affiliate of the
University of Houston or for consumers viewing this mark in connection with
education services, will likely be understood as identifying the school’s abbreviated
name and its mascot.73 Even for consumers who are unaware of Applicant’s status as
an institute of higher learning and viewing the mark not in the context of the
educational services, the terms UHCL HAWKS will impart a meaning that is not
present in Opposer’s mark. Consumers may perceive UHCL as an arbitrary
abbreviation identifying the source of the goods and HAWKS as identifying the bird
depicted in the mark.
In sum, we find that the marks are overall more dissimilar than they are similar.
We hasten to add, however, that the issue of similarity of the marks is not a binary
question. As Professor McCarthy explains:
The degree of similarity of the marks needed to prove likely confusion will
vary with the difference in the goods and services of the parties. Where the
goods and services are directly competitive, the degree of similarity
required to prove a likelihood of confusion is less than in the case of
dissimilar products.

73 It is certainly not unheard of for universities to have bird mascot logos; to wit, Opposer’s
own evidence includes the following example (52 TTABVUE 313):

Opposition No. 91217413

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McCarthy on Trademarks and Unfair Competition § 23:20.50 (4th ed. 2017), citing to
In re Viterra Inc., 101 USPQ2d at 1912 (“It is also well established that, when the
goods at issue are identical, the degree of similarity necessary to support a conclusion
of likely confusion declines”) (internal citation omitted); In re Mighty Leaf Tea, 94
USPQ2d 1257, 1260 (Fed. Cir. 2010) (noting Board’s recognition that when conflicting
marks appear on virtually identical goods, less similarity is needed for confusion to
occur, and affirming Board’s decision finding confusion likely between applicant's ML
for personal care products and the cited registration for ML MARK LEES for a
competitive skin care product), as well as other Federal Circuit and Board decisions.
Here, we do not find the marks to be so different that confusion is unlikely under
any circumstances, including when their use is on identical goods.
Relatedness of the Goods and Services
We now consider the du Pont factor involving “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.” Du Pont, 177 USPQ at 567. Moreover,
“it is not necessary that the goods or services be identical or even competitive in
nature in order to support a finding of likelihood of confusion, it being sufficient that
the goods or services are related in some manner and/or that the circumstances
surrounding their marketing are such that they would be likely to be encountered by
the same persons under circumstances that would give rise, because of the marks
employed thereon, to the mistaken belief that they originate from or are in some way
associated with the same producer.” In re Home Builders Ass’n of Greenville, 18
Opposition No. 91217413

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USPQ2d 1313, 1317 (TTAB 1990). The issue is not whether consumers will confuse
the goods, but whether they will confuse the source of the goods. Orange Bang, Inc.
v. Olé Mexican Foods, Inc., 116 USPQ2d 1102, 1117 (TTAB 2015); Bd. of Regents,
Univ. of Tex. Sys. v. S. Ill. Miners, LLC, 110 USPQ2d 1182, 1189 (TTAB 2014) (“The
issue, of course, is not whether purchasers would confuse the goods or services, but
rather whether there is a likelihood of confusion as to the source thereof.”).
Opposer need not demonstrate a relationship between its goods and services with
all of the goods or services listed in the involved application to support a finding of
likelihood of confusion. Rather, we may find confusion is likely for each class of goods
and services in the Application based on any item that comes listed in that class. See
Tuxedo Monopoly, Inc. v. General Mills Fun Group, 648 F.2d 1335, 209 USPQ 986,
988 (CCPA 1981); Bond v. Taylor, 119 USPQ2d 1049, 1052-53 (TTAB 2016). With this
point in mind, we address the Application’s classes of goods and services individually.
Classes 16 and 21
Applicant’s goods in Class 16 consist of a variety of print materials, such as
magazines, as well as other various goods like pens, book covers, billboards, and
different types of books. Applicant’s goods in Class 21 are “mugs, cups, cork coasters,
souvenir plates, waste baskets, and bottle openers.”
As described in the priority section, Opposer uses its Flying Eagle Design Mark
in connection with retail store services primarily featuring clothing, but also
involving the sale of certain goods like those listed in Classes 16 and 21 of the
application, such as certain stationary-type goods, as well as mugs, cups and waste
Opposition No. 91217413

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baskets. However, the record before us in this case does not demonstrate that it is
common for a single entity to provide retail clothing store services and offer goods,
like Applicant’s in Classes 16 and 21, under the same mark. We therefore find no
obvious or demonstrated relationship between Opposer’s retail store services and
Applicant’s goods listed in Classes 16 and 21. Accordingly, the factor involving the
relatedness of the Applicant’s goods and Opposer’s services weighs in favor of finding
no likelihood of confusion for these classes.
Class 25
There is no dispute that many, if not all, of Applicant’s clothing goods in Class 25
of the Application are identical to goods covered by Opposer’s ‘197 registration.
Accordingly, the factor involving the relatedness of the goods weighs strongly in favor
of a finding of likelihood of confusion for Class 25. We also keep in mind, as discussed
with cited authority supra, that when marks would appear on identical goods, as they
do here, the degree of similarity necessary to support a conclusion of likely confusion
declines. See also, Century 21 Real Estate Corp. v. Century Life of America, 970 F.2d
874, 23 USPQ2d 1698, 1700 (Fed. Cir. 1992).
Moreover, because the goods described in the application and the cited
registration are in part identical, we must presume that the channels of trade and
classes of purchasers are the same. See In re Viterra Inc., 101 USPQ2d at 1908
(legally identical goods are presumed to travel in same channels of trade to same class
of purchasers); In re Yawata Iron & Steel Co., 403 F.2d 752, 159 USPQ 721, 723
(CCPA 1968) (where there are legally identical goods, the channels of trade and
Opposition No. 91217413

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classes of purchasers are considered to be the same); United Global Media Grp., Inc.
v. Tseng, 112 USPQ2d 1039, 1049 (TTAB 2014); American Lebanese, 101 USPQ2d at
1028.
Class 41
With respect to Applicant’s educational and entertainment services, these include
“entertainment services, namely, providing college athletic and sporting events in the
fields of football, basketball, soccer, hockey, tennis, volleyball, track and field, and
baseball … [and] live performances of dramatic works and live musical
performances.” Opposer’s services, on the other hand and as described in the section
involving priority, involve placing advertisements or congratulatory messages for the
Big East collegiate sports conference on the billboard above its retail store in New
York City.
On their face, the parties’ services may appear to be related in that they involve
collegiate sports. However, that is where the relationship ends. It has not been shown
that Opposer’s mark will be encountered at the actual athletic competitions or how
consumers would otherwise be exposed to the marks in a manner whereby confusion
as to source could actually occur. Although a consumer interested in these collegiate
games would naturally be attracted to advertisements placed on Opposer’s Times
Square billboard, without more, the consumer would necessarily believe Opposer was
involved with the service of providing entertainment. There is no evidence indicating
that a single entity would render these two types of services. Accordingly, the factor
involving the relatedness of the Applicant’s educational and entertainment services
Opposition No. 91217413

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with Opposer’s service weighs in favor of finding no likelihood of confusion for this
class.
Trade Channels and Relevant Consumers
As discussed, supra, Opposer’s clothing is identical to Applicant’s goods in Class
25 and we must presume the trade channels for those goods will be the same.
We cannot, however, make the same trade channel assumption with respect to the
parties’ other goods and services because they are not identical; any assertion that
the trade channels are similar for these goods and services must be supported with
evidence. In this regard, Opposer submitted evidence showing that it has made
serious efforts to market its clothing and retail clothing store services on college
campuses. Opposer argues that these “extensive marketing efforts that AEO makes
on college and university campuses—and toward college students generally—are
seen by graduate students as well,” and these are the “same demographic
characteristics of UHCL’s students.”74
The record does not show that Opposer’s clothing or retail store services will be
marketed in the same trade channels as Applicant’s goods in Classes 16 and 21, or
its entertainment and educational services in Class 41. Thus, we cannot find a
similarity in trade channels favors a finding of likelihood of confusion with respect to
these classes of goods and services. On the other hand, there is relevant evidence
showing that Opposer’s retail clothing store services and Applicant’s goods and
services are aimed at a same single class of consumers, namely, college students. To

74 56 TTABVUE 47.
Opposition No. 91217413

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the extent that both parties’ goods and services have a focus on the same class of
purchasers, this favors a finding of a likelihood of confusion.
Relative Sophistication of Consumers
Opposer argues that “consumers in the market for the parties’ goods are unlikely
to devote the time and effort necessary to remedy the confusion resulting from the
similarity of the marks, substantially increasing the likelihood of such confusion.”75
We agree with Opposer to the extent that many of Applicant’s listed goods in Classes
16 (e.g., stationary items), 21 (e.g., mugs) and 25 (e.g., socks) may be relatively
inexpensive and we can assume consumers will not make their purchasing decisions
with a higher level of care. To the contrary, these goods may be the subject of impulse
purchases and this increases the likelihood of confusion. The record does not support
a finding in this regard in connection with Applicant’s Class 41 services and this
factor remains neutral in connection with these services.
Balancing of the Factors - Conclusions
Upon consideration of all relevant du Pont factors, we make the following
conclusions.
With respect to Classes 16 and 21 of the involved application, Opposer has not
demonstrated that Applicant’s continued use of its mark on the goods listed in these
classes causes a likelihood of confusion with any goods or services for which Opposer
has prior rights in its Flying Eagle Design Mark. We make this conclusion based
primarily on our findings involving the differences in the marks and there being no

75 Id.
Opposition No. 91217413

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demonstrated tangible relationship between the involved goods and services other
than Opposer’s stores carrying some of the same goods that are identified in the
Application. We make this finding in spite of the relatively inexpensive nature of the
goods in these classes and the possibility that impulse purchasing may take place.
As to Class 25, we find that although the marks are overall more dissimilar than
similar, when they are used on the identical apparel goods, like those listed in the
involved application and Opposer’s ‘197 registration, there is a likelihood of confusion.
We make this decision keeping in mind these same goods will be found in the same
trade channels and offered to the same classes of consumers.
With respect to Class 41, we find no likelihood of confusion between Applicant’s
continued use of its mark in connection with educational and entertainment services
and Opposer’s use of its Flying Eagle Design Mark in connection with its service of
assisting a collegiate conference in promoting itself and the teams within the
conference by placing advertisements on a billboard above its store. We make this
conclusion based primarily on our findings involving the differences in the marks and
there being no demonstrated connection between these services other than each
involving collegiate sports. Particularly, the evidence does not support a finding that
consumers would be inclined to believe that a single entity would provide the same
services under the same mark.
Decision: The opposition is sustained with respect to Class 25. The opposition is
dismissed with respect to Classes 16, 21 and 41. Applicant’s application will proceed
Opposition No. 91217413

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to issuance of a registration solely in connection with the goods and services identified
in Classes 16, 21, and 41.
Dissent By:
Bergsman, J., dissenting.
I respectfully dissent from the majority’s decision to sustain the opposition with
respect to Class 25.
The majority found that the marks are more dissimilar than similar expressly
stating that there are “noticeable differences between the bird logo in Applicant’s
mark and Opposer’s Flying Eagle Design Mark.” Without a threshold similarity of
the marks, it is unnecessary to even consider the other factors. See Kellogg Co. v.
Pack’em Enter. Inc., 951 F.2d 330, 21 USPQ2d 1142, 1145 (Fed Cir. 1991) (“We know
of no reason, why, in a particular case, a single DuPont factor may not be
dispositive.”). In Kellogg Co. v. Pack’em Enter. Inc., the Board held that the
dissimilarity of the marks made it unlikely that confusion would occur from the
simultaneous use of the marks. Id. Likewise, in this case, if the marks are not similar,
there cannot be a likelihood of confusion.
To the extent that the majority is finding that the marks are dissimilar when used
in connection with the goods in Classes 16, 21, and 41, but similar when used in
connection with the goods in Class 25, I still dissent because I find that the marks
are dissimilar. Applicant’s mark bears no more resemblance to Opposer’s Eagle
Design Mark than any of the other bird designs discussed in the analysis of the
strength of Opposer’s Eagle Design Mark. As the majority noted, Applicant is part of
Opposition No. 91217413

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the university system of Texas. It is common knowledge that so many universities
and colleges use bird names and mascots (e.g., Boston College, American University,
and Emory University Eagles; U.S. Air Force Academy and Bowling Green Falcons;
Marquette and Oral Roberts University Golden Eagles; Iowa Hawkeyes; Monmouth,
St. Joseph’s and SUNY New Paltz Hawks; Kansas Jayhawks; Temple and Rice Owls;
Miami University Red Hawks; and Ball State, Catholic, Louisville (see footnote 75),
and SUNY Plattsburgh Cardinals, etc.) printed on Class 25 clothing items that
Applicant’s mark would be understood as identifying Applicant and not Opposer.
Accordingly, I would dismiss the opposition with respect to the goods in Class 25.