Stratosphere Skateboards, Inc.v.Stratosphere Corp.

Trademark Trial and Appeal Board

Dec 21, 1998

No. 91095975 (T.T.A.B. Dec. 21, 1998)

Paper No. 20
HANAK/md
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
_____
Trademark Trial and Appeal Board
______
Stratosphere Skateboards, Inc.
v.
Stratosphere Corporation
_____
Opposition No. 95,975
to application Serial No. 74/411,666
filed on July 9, 1993
_____
Virginia S. Taylor of Kilpatrick & Cody for Stratosphere
Skateboards, Inc.
Edward J. Quirk of Quirk & Tratos for Stratosphere
Corporation.
______
Before Hanak, Walters and Bucher, Administrative Trademark
Judges.
Opinion by Hanak, Administrative Trademark Judge:
Stratosphere Corp. (applicant) seeks to register
STRATOSPHERE TOWER in typed capital letters for “clothing,
namely shirts, pants, shorts, jackets and hats.” The
intent-to-use application was filed on July 9, 1993.
On December 30, 1994 Stratosphere Skateboards, Inc.
(opposer) filed a notice of opposition alleging that long
Opposition No. 95,975
2
prior to July 9, 1993, it used STRATOSPHERE as both a
service mark and a trademark in connection with the sale of
various items of apparel including shirts, pants, shorts,
and hats. Opposer also stated that it owned Registration
No. 1,666,157 for the mark STRATOSPHERE depicted in typed
capital letters. Opposer further noted that the services of
this registration include “retail store services in the
fields of … sportswear for men, women and children, namely,
shoes, socks, pants, shirts, shorts, jackets, swimsuits and
hats.” This registration issued on November 26, 1991 with a
claimed first use date of March 1, 1986. Finally, opposer
alleged that “applicant’s use and registration of the mark
STRATOSPHERE TOWER for apparel is likely to cause confusion
with opposer’s previously used mark STRATOSHPERE and opposer
is likely to be injured thereby.”
Applicant filed an answer which denied the pertinent
allegations of the notice of opposition.
The record in this case includes the depositions of
Thomas F. Taylor (applicant’s president) and Andrew S.
Blumen (opposer’s executive vice president and general
counsel). In addition, opposer properly made of record
certified status and title copies of its aforementioned
Registration No. 1,666,157.
Opposer filed a brief. Applicant did not. Neither
party requested a hearing.
Opposition No. 95,975
3
At the outset, we note that as to opposer’s retail
store services featuring, among other things, the sale of
apparel, priority is not an issue in this proceeding because
opposer has made of record its Registration No. 1,666,157.
See King Candy v. Eunice King’s Kitchen, 496 F.2d 1400, 182
USPQ 108, 110 (CCPA 1974). Moreover, the record establishes
that opposer has operated a retail store selling, among
other items, apparel continuously since 1986. In addition,
since at least as early as 1987, opposer has made continuous
trademark use of its mark STRATOSPHERE by affixing it to
shirts and jackets. Furthermore, continuously since 1988
opposer has made trademark use of its mark STRATOSPHERE by
affixing it to hats.
In any likelihood of confusion analysis, two key
considerations are the similarities of the goods and/or
services and the similarities of the marks. Federated
Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192
USPQ 24, 29 (CCPA 1976).
Considering first the goods, we note that they are in
part identical and otherwise very closely related. As just
discussed, applicant has proven that long prior to 1993, it
made continuous trademark use of its mark STRATOSPHERE in
connection with shirts, jackets and hats, three of the five
types of apparel for which applicant seeks to register
STRATOSPHERE TOWER.
Opposition No. 95,975
4
Turning to a consideration of the marks, two important
legal propositions must be kept in mind. First, “when marks
would appear on virtually identical goods or services, the
degree of similarity [of the marks] necessary to support a
conclusion of likely confusion declines.” Century 21 Real
Estate Corp. v. Century Life of America, 970 F.2d 874, 23
USPQ2d 1698, 1700 (Fed. Cir. 1992). Second, because
applicant seeks to register STRATOSPHERE TOWER in typed
drawing form, this means that applicant’s rights in the mark
would “not [be] limited to the mark depicted in any special
form.” Phillips Petroleum v. C. J. Webb, 442 F.2d 1376, 170
USPQ 35, 36 (CCPA 1971). Accordingly, in any likelihood of
confusion analysis, we “must consider all reasonable manners
in which [applicant’s mark STRATOSPHERE TOWER] could be
depicted” INB National Bank v. Metrohost, 22 USPQ2d 1585,
1588 (TTAB 1992).
Applying these two legal propositions to the facts of
this case, we find that opposer’s mark STRATOSPHERE and
applicant’s mark STRATOSPHERE TOWER are similar enough in
visual appearance, pronunciation and connotation such that
their use on legally identical goods is likely to result in
confusion. This would be true even if applicant depicted
both words of its mark in lettering of approximately the
same size.
Opposition No. 95,975
5
However, because applicant is seeking a typed drawing
registration for STRATOSPHERE TOWER, were applicant to
obtain such a registration, it would be free to depict its
mark with the word STRATOSPHERE in large lettering and the
word TOWER in smaller lettering. When so depicted, the
similarities between applicant’s mark and opposer’s mark
would be even greater. We note that Mr. Blumen (applicant’s
executive vice president and general counsel), would on
numerous occasions abbreviate applicant’s full corporate
name to simply “Stratosphere.” Moreover, Mr. Blumen often
referred to applicant’s planned resort complex in Las Vegas,
Nevada as simply “the Stratosphere” or “the Stratosphere
resort” without using its full name “the Stratosphere
Tower.” See, for example, Blumen deposition page 23.
Finally, in discussing some prototype apparel items which
applicant was developing, Mr. Blumen testified that these
items simply say “Stratosphere Las Vegas” and that he could
not “recall specifically any [apparel items] that say
Stratosphere Tower.” (Blumen deposition page 31). Thus,
Mr. Blumen’s own testimony only lends further support to the
obvious proposition, namely, that one very reasonable manner
of presentation of applicant’s mark STRATOSPHERE TOWER would
be to depict the word STRATOSPHERE in large lettering and
the word TOWER in small lettering.
Opposition No. 95,975
6
Decision: The opposition is sustained.
E. W. Hanak
C. E. Walters
D. E. Bucher
Administrative Trademark
Judges, Trademark Trial and
Appeal Board