Target Brands, Inc.v.Jackdaddy Inc.Download PDFTrademark Trial and Appeal BoardJan 31, 202091235560 (T.T.A.B. Jan. 31, 2020) Copy Citation Mailed: January 31, 2020 UNITED STATES PATENT AND TRADEMARK OFFICE _____ Trademark Trial and Appeal Board _____ Target Brands, Inc. v. Jackdaddy, Inc. _____ Opposition No. 91235560 _____ James R. Steffen, Peter M. Routhier, and David R. Merritt of Faegre Baker Daniels LLP for Target Brands, Inc. Kevin J. Keener of Keener and Associates, P.C. for Jackdaddy, Inc. Before Thurmon, Deputy Chief Administrative Trademark Judge, Bergsman and English, Administrative Trademark Judges. Opinion by Thurmon, Deputy Chief Administrative Trademark Judge: Jackdaddy, Inc. (“Applicant”) seeks registration on the Principal Register of the mark CADDY JACK (standard characters) for goods in International Class 25.1 Target Brands, Inc. (“Opposer”), opposes registration based on its registered mark 1 Application Serial Number 87291418 was filed on January 6, 2017, based on Applicant’s alleged bona fide intent to use the mark in commerce under Section 1(b) of the Trademark Act, 15 U.S.C. § 1051(b). The Application also identifies educational services in International Class 41, but this opposition is limited to the class 25 goods. 1 TTABVUE 3. Page references to the application record are to the downloadable .pdf version of the USPTO’s Trademark Status & Document Retrieval (TSDR) system. References to the pleadings, evidence, and briefs are to the Board’s TTABVUE docket system. This Opinion Is Not a Precedent of the TTAB Opposition No. 91235560 2 CAT & JACK (standard characters) for goods in International Class 25.2 Opposer presents two claims: 1) that Applicant lacks a bona fide intent to use the CADDY JACK mark in commerce, 15 U.S.C. § 1051(b); and, 2) that Opposer has priority and Applicant’s use of the CADDY JACK mark for the clothing identified in the Application would create a likelihood of confusion with Opposer’s registered CAT & JACK mark, 15 U.S.C. § 1052(d). This proceeding has been fully briefed and submitted for final decision. We find the evidence supports Opposer’s Section 2(d) claim (likelihood of confusion) and for that reason, the opposition is sustained. We do not reach the intent to use claim. I. The Record We decide this case primarily on the basis of the pleaded Registration and the opposed Application. Opposer submitted substantial evidence of the use and promotion of the CAT & JACK mark, but upon examination, there are gaps and inconsistencies in that evidence on a critical issue. In the Notice of Opposition, Opposer alleged that it “is a wholly-owned subsidiary of Target Corporation (‘Target’).”3 Opposer also alleged that it “licenses the CAT & JACK mark for use by Target.”4 The Notice further alleged, “Through use and promotion of the CAT & JACK mark by Target, substantial and valuable goodwill 2 Registration Number 5143395, issued February 14, 2017 from an application filed September 4, 2015. The Registration identifies goods in four other classes, but the class 25 clothing goods are the primary basis for this Opposition. 3 1 TTABVUE 3. 4 Id. at 4. Opposition No. 91235560 3 and public recognition have been built up in the CAT & JACK mark.”5 Applicant denied these allegations in its Answer.6 Opposer made essentially the same assertions in its trial brief.7 Applicant did not respond to those assertions in its brief. Opposer, however, submitted no evidence of its relationship with Target Corporation or of a license between Opposer and Target Corporation to use the CAT & JACK mark. The allegations on these points in the Notice of Opposition were denied and the unsupported attorney argument in Opposer’s brief does not constitute evidence. Cai v. Diamond Hong, Inc., 901 F.3d 1367, 127 USPQ2d 1797, 1799 (Fed. Cir. 2018) (“Attorney argument is no substitute for evidence.”). Opposer submitted a declaration of Renee Kraft, “the Director Counsel for Trademark & Copyright at Target Brands, Inc. (‘TBI’).”8 Ms. Kraft testified about Opposer’s actions to enforce and protect the CAT & JACK mark. She also testified that over “$5.8 billion in sales of good under the CAT & JACK trademark have been made since the brand launched in 2016.”9 Ms. Kraft even asserted that “TBI has spent millions of dollars on advertising and marketing goods sold under the CAT & JACK 5 Id. at 5. 6 7 TTABVUE 2-3. 7 32 TTABVUE 7 (“Opposer Target Brands, Inc. (‘Opposer’ or ‘TBI’) is a wholly-owned subsidiary of Target Corporation (‘Target’), one of the nation’s largest retailers. TBI owns and licenses for use by Target the CAT & JACK mark …”). 8 18 TTABVUE 3. 9 Id. Opposition No. 91235560 4 trademark since 2016.”10 The evidence of use and promotion of the CAT & JACK mark was submitted with Ms. Kraft’s declaration.11 Ms. Kraft, however, did not testify about the relationship between TBI and Target. She did not mention a license, nor did she refer to Target Corporation in her declaration. To further confuse matters, Ms. Kraft’s assertion that TBI has “spent millions on advertising and marketing” conflicts with the Notice of Opposition and Opposer’s trial brief, which both indicate that Target Corporation, as a licensee, uses and promotes the CAT & JACK mark. These may appear minor points, but they are not. From the pleadings, arguments, and even Opposer’s name (Target Brands, Inc.), it appears that two distinct legal entities are involved in the ownership and use of the CAT & JACK mark. That is a common arrangement, and when a proper trademark license is in place, the use and promotion of the mark by the licensee inures to the benefit of the licensor. 15 U.S.C. § 1055; Visa, U.S.A., Inc. v. Birmingham Tr. Nat’l Bank, 696 F.2d 1371, 1377 n.4 (Fed. Cir. 1982). When a proper corporate relationship is established, that may also provide a basis for the use and promotion by one legal entity to inure to the benefit of another. Moreno v. Pro Boxing Supplies, Inc., 124 USPQ2d 1028, 1036 (TTAB 2017). But there must be evidence of a license or a proper corporate relationship to support such a finding. There is no such evidence in the record here, and we find Ms. Kraft’s 10 Id. 11 18-21 TTABVUE. Opposition No. 91235560 5 testimony, when taken together with the allegations in Opposer’s Notice of Opposition, leaves gaps and creates inconsistencies on these critical facts. Target Corporation and Opposer chose to structure its business using a distinct parent and subsidiary relationship. Such a business structure may offer some advantages, but it also comes with some strictures, and the existence of two separate and distinct legal entities cannot be turned on or off at will to suit the occasion. Noble House Home Furnishings, LLC v. Floorco Enters., LLC, 118 USPQ2d 1413, 1422 (TTAB 2016). This result is merely the flip side of the principle that a parent corporation is not liable for the wrongs of its subsidiary absent disregard of corporate separateness, such as an “alter ego” relationship. See generally A. Stucki Co. v. Worthington Indus., Inc., 849 F.2d 593 , 7 USPQ2d 1066, 1068 (Fed. Cir. 1988). For these reasons, we do not rely on those portions of the Kraft Declaration and accompanying evidence concerning the use and promotion of the CAT & JACK mark. Both parties submitted evidence relating to Applicant’s intent to use the CADDY JACK mark, but we have not considered that evidence because we do not reach the intent to use issue. We have carefully reviewed the full record, including those parts not identified above or below. We cite to specific evidence below when such evidence is particularly relevant to our analysis. II. The Section 2(d) Claim To prevail, Opposer must prove three things: 1) that it has standing to bring this opposition; 2) that it has priority; and, 3) that there is a likelihood of confusion. Opposition No. 91235560 6 A. Standing Standing is a requirement that must be established in every inter partes proceeding. Empresa Cubana Del Tabaco v. Gen. Cigar Co., 753 F.3d 1270, 111 USPQ2d 1058, 1062 (Fed. Cir. 2014); John W. Carson Found. v. Toilets.com Inc., 94 USPQ2d 1942, 1945 (TTAB 2010). Opposer’s standing is established by its pleaded registration, which the record shows to be valid and subsisting, and owned by Opposer.12 See, e.g., Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1844 (Fed. Cir. 2000); Otter Prods. LLC v. BaseOneLabs LLC, 105 USPQ2d 1252, 1254 (TTAB 2012). B. Priority Opposer’s pleaded registration has a priority date of September 4, 2015. 15 U.S.C. § 1057(c). Applicant did not counterclaim to cancel Opposer’s registration, and Applicant’s earliest potential priority date is January 6, 2017, the filing date of its application. Opposer, therefore, has established priority with respect to the goods identified in the Registration and Application. Penguin Books Ltd. v. Eberhard, 48 USPQ2d 1280, 1286 (TTAB 1998) (citing King Candy Co. v. Eunice King’s Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108, 110 (CCPA 1974)). C. Likelihood of Confusion Our determination under Section 2(d) is based on an analysis of all of the probative evidence of record bearing on the likelihood of confusion. In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973) (setting forth 12 1 TTABVUE 7-9. Opposition No. 91235560 7 factors to be considered); see also In re Majestic Distilling Co., 315 F.3d 1311, 65 USPQ2d 1201, 1203 (Fed. Cir. 2003). In any likelihood of confusion analysis, two key considerations are the similarities between the marks and the similarities between the goods and services. See Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976) (“The fundamental inquiry mandated by § 2(d) goes to the cumulative effect of differences in the essential characteristics of the goods and differences in the marks.”). Opposer bears the burden of establishing that there is a likelihood of confusion by a preponderance of the evidence. Cunningham, 55 USPQ2d at 1844. We consider the likelihood of confusion factors about which there is evidence. du Pont, 177 USPQ at 567-68 (consider factors “when of record”); Cai v. Diamond Hong, Inc., 127 USPQ2d at 1800 (“Not all of the du Pont factors are relevant to every case, and only factors of significance to the particular mark need be considered.”(quoting In re Mighty Leaf Tea, 601 F.3d 1342, 94 USPQ2d 1257, 1259 (Fed. Cir. 2010)). The parties have presented evidence or argument regarding the following du Pont factors: (1) The similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation and commercial impression. (2) 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. (3) The similarity or dissimilarity of established, likely-to-continue trade channels. (4) The conditions under which and buyers to whom sales are made, i.e. “impulse” vs. careful, sophisticated purchasing. Opposition No. 91235560 8 (5) The fame of the prior mark (sales, advertising, length of use). du Pont, 177 USPQ at 567. 1. Strength of the CAT & JACK Mark We begin our analysis with the fifth du Pont factor, which asks whether Opposer’s mark is strong.13 “A mark’s strength is measured both by its conceptual strength (distinctiveness) and its marketplace strength (secondary meaning).” In re Chippendales USA, Inc., 622 F.3d 1346, 96 USPQ2d 1681, 1686 (Fed. Cir. 2010)); see also Top Tobacco, L.P. v. N. Atl. Operating Co., Inc., 101 USPQ2d 1163, 1171-72 (TTAB 2011); Tea Bd. of India v. Republic of Tea Inc., 80 USPQ2d 1881, 1899 (TTAB 2006); 2 J. THOMAS MCCARTHY, MCCARTHY ON TRADEMARKS AND UNFAIR COMPETITION § 11:83 (5th ed. 2019). To evaluate the conceptual strength of a word mark, we place the mark in one of the following classes: “(1) generic, (2) descriptive, (3) suggestive, and (4) arbitrary or fanciful. The lines of demarcation, however, are not always bright.” Abercrombie & Fitch Co. v. Hunting World, Inc., 537 F.2d 4, 9 (2d Cir. 1976). Market strength also “varies along a spectrum from very strong to very weak.” Joseph Phelps Vineyards, LLC v. Fairmont Holdings, LLC, 857 F.3d 1323, 122 USPQ2d 1733, 1734 (Fed. Cir. 2017). 13 The fifth du Pont factor addressed “the fame of the prior mark,” but this factor has been used to evaluate strength of the mark in a broader sense, as explained in the text above. We address this factor first because it is relevant to our evaluation of other factors. Opposition No. 91235560 9 We find the CAT & JACK mark is arbitrary for clothing and thus is conceptually strong. Applicant submitted evidence showing a “cat” is a type of mammal14 and “Jack” is a common personal name.15 There is no apparent connection between the meanings of these terms, either separately or when combined into the mark CAT & JACK, and clothing. For the reasons given in our discussion of the record, we do not consider the evidence Opposer submitted showing use and promotion of the CAT & JACK mark. While this mark may have market strength, we cannot take judicial notice of the critical connection between the owner of a mark and a user of the mark when the two appear to be separate legal entities. If the mark was used by Target Corporation under license, there must be some evidence to support that fact. We, therefore, make no findings as to the market strength of the CAT & JACK mark. 2. Similarity of the Goods, Trade Channels and Purchasing Conditions “The authority is legion that the question of registrability of an applicant’s mark must be decided on the basis of the identification of goods set forth in the application regardless of what the record may reveal as to the particular nature of an applicant’s goods, the particular channels of trade or the class of purchasers to which the sales of goods are directed.” Octocom Sys., Inc. v. Houston Comput. Servs. Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990). See also Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1161 (Fed. Cir. 2014); 14 29 TTABVUE at Exh. 9. 15 Id. at Exh. 1. Opposition No. 91235560 10 Paula Payne Prods. v. Johnson Publ’g Co., 473 F.2d 901, 177 USPQ 76, 77 (CCPA 1973). We group these three du Pont factors because of the shared focus on the identification of the goods.16 Almost every specific type of clothing identified in the Application17 is also identified in the Registration.18 The following chart shows the number of overlapping items. Application goods Registration goods boxer shorts boxers scarves scarves slippers slippers sweat shirts sweatshirts sweaters sweaters swim wear swimwear underwear underwear belts belts gloves gloves hats hats jackets jackets jeans jeans pants pants robes robes shoes shoes 16 Our analysis here covers the second, third and fourth du Pont factors listed above. 17 The Application identifies the following goods in class 25: “Boxer shorts; Scarves; Short- sleeved shirts; Slippers; Sweat shirts; Sweaters; Swim wear; T-shirts; Turtle neck shirts; Turtleneck sweaters; Underwear; Belts; Boxer shorts; Fleece pullovers; Gloves; Hats; Jackets; Jeans; Pants; Robes; Rugby shirts; Shoes; Shorts; Socks.” 18 The Registration identifies the following goods in class 25: “Clothing and apparel, namely, dresses, skirts, tutus, blouses, shorts, vests, bottoms, trousers, slacks, pants, jeans, bibs not of paper, overalls, rompers, sweaters, tank tops, sweatshirts, sweatpants, shirts, graphic t- shirts, tops, jackets, blazers, suits, suit coats, suit sets, overcoats, coats, body suits, leggings, snow pants, uniforms, costumes for use in children's dress up play, wraps, stoles, scarves, ties, swimwear, gloves, mittens, mufflers, earmuffs, belts, hosiery, tights, socks; infantwear, clothing layettes, one piece garments for infants and toddlers; athletic wear, namely, shirts, sweatshirts, pants, shorts; intimate apparel namely, bras, underwear, undergarments, panties, boxers, camisoles, sleepwear, pajamas, robes, nightgowns; footwear, namely, shoes, boots, sandals and slippers; headwear, namely, hats, caps, beanies, and head bands.” Opposition No. 91235560 11 Application goods Registration goods socks socks shorts shorts The only items identified in the Application that are not identical are “short- sleeved shirts, T-shirts, turtle neck shirts, turtleneck sweaters, fleece pullovers and rugby shirts.” The Registration, however, includes “shirts” and “sweaters,” which include the “short-sleeved shirts, T-shirts, turtle neck shirts, turtleneck sweaters, and rugby shirts” identified in the Application. The goods from the Application not identical to or covered by the Registration are fleece pullovers. Even that item is highly similar to the goods listed in the Registration. The goods, therefore, are almost entirely identical and even the sole exception is highly similar.19 Our analysis of the trade channels and purchasing conditions also focuses on the identification of goods found in the application and registration. “We must presume that Applicant’s and Registrant’s goods will be sold in the same channels of trade and will be bought by the same classes of purchasers, because the goods are identical and legally identical in part and there are no limitations as to channels of trade or classes of purchasers in either the application or cited registration.” In re i.am.symbolic, llc, 127 USPQ2d 1627, 1629 (TTAB 2018) (citing In re Viterra Inc., 671 F.3d 1358, 101 19 Under this du Pont factor, Opposer need not prove, and we need not find, similarity as to each product listed in the description of goods. It is sufficient for finding likelihood of confusion that relatedness is established for any item encompassed by the identification of goods in a particular class in the application. Tuxedo Monopoly, Inc. v. Gen. Mills Fun Grp., 648 F.2d 1335, 209 USPQ 986, 988 (CCPA 1981); In re i.am.symbolic, llc, 116 USPQ2d 1406, 1409 (TTAB 2015), aff’d 866 F.3d 1315, 123 USPQ2d 1744 (Fed. Cir. 2017); Inter IKEA Sys. B.V. v. Akea, LLC, 110 USPQ2d 1734, 1745 (TTAB 2014); General Mills Inc. v. Fage Dairy Processing Indus. SA, 100 USPQ2d 1584, 1588 n.1 (TTAB 2011), judgment set aside on other grounds, 110 USPQ2d 1679 (TTAB 2014). Opposition No. 91235560 12 USPQ2d 1905, 1908 (Fed. Cir. 2012)). Applicant’s argument that it intends to market its goods to “adults, namely professional and well educated men and women”20 is irrelevant because there are no trade channel limitations in the Application. Stone Lion Capital Partners, 110 USPQ2d at 1162. We find the parties’ goods, as identified in the Application and Registration, are almost entirely identical, that such goods are likely to use the same trade channels and be purchased under similar conditions by the same classes of purchasers. These facts make confusion more likely. 3. Similarity of the Marks We compare the marks in their entireties as to appearance, sound, connotation and commercial impression. du Pont, 177 USPQ at 567. “Similarity in any one of these elements may be sufficient to find the marks confusingly similar.” In re Davia, 110 USPQ2d 1810, 1812 (TTAB 2014); accord Krim-Ko Corp. v. Coca-Cola Bottling Co., 390 F.2d 728, 156 USPQ 523, 526 (CCPA 1968) (“It is sufficient if the similarity in either form, spelling or sound alone is likely to cause confusion.”) (citation omitted). The test is not whether the marks can be distinguished when subjected to a side- by-side comparison, but rather whether the marks are sufficiently similar in terms of their overall commercial impression so that confusion as to the source of the goods or services offered under the respective marks is likely to result. Cai v. Diamond Hong, Inc., 127 USPQ2d at 1801; Midwestern Pet Foods, Inc. v. Societe des Produits Nestle 20 33 TTABVUE 23. Applicant similarly notes that Opposer sells children’s clothing under its CAT & JACK mark. The marketing evidence cited above supports that assertion, but we must compare the goods as identified in the Application and Registration. There are no limits to children’s clothing in the Registration. Opposition No. 91235560 13 S.A., 685 F.3d 1046, 103 USPQ2d 1435, 1440 (Fed. Cir. 2012). The focus is on the recollection of the average purchaser, who normally retains a general rather than a specific impression of trademarks. See Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106, 108 (TTAB 1975). In this case, because the goods at issue are clothing without any restrictions or limitations as to channels of trade, classes of consumers, or price points, we find that the average purchaser is an ordinary consumer. The marks CADDY JACK and CAT & JACK are visually similar. The first two letters “CA” are the same and the last word “JACK” is the same. The middle portions of the marks are different, but we find this difference is outweighed by the similarities. The marks are similar in sound, too. Each mark begins and ends with an identical sound, and each mark has three syllables. When the full marks are pronounced, they sound similar. The word “caddy” and the words “cat and” sound similar, particularly when the latter two words are spoken quickly. Nevertheless, “exact similitude is not required to conclude that two marks are confusingly similar.” Hercules Inc. v. Nat’l Starch & Chem. Corp., 223 USPQ 1244, 1246 (TTAB 1984) (NATROL is similar to NATROSOL). Applicant argues that the marks have different meanings and create different commercial impressions.21 To support this argument, Applicant submitted dictionary 21 33 TTABVUE 19-20. Opposition No. 91235560 14 definitions of the words caddie,22 caddy,23 cat,24 and jack.25 Applicant also submitted evidence regarding the word Jack as a personal name.26 We found above that the CAT & JACK mark is arbitrary and has no clear meaning in connection with clothing. The evidence shows multiple meanings of the word “caddy,” including “a person hired to carry a [golf] players clubs, find the ball, etc.”27 Applicant argues that its mark will be understood as a golf caddy named Jack.28 The marks may have different meanings to consumers, but the evidence merely shows the definitions of the different words used in the marks. There is no consumer perception evidence. Applicant’s argument about the likely meaning of the CADDY JACK mark to clothing consumers is speculative. Perhaps some consumers perceive the mark CAT & JACK as referring to a cat and a person named Jack. We lack the evidence needed to make a finding on the likely meaning of these marks to consumers. The meaning of the marks, however, is not critical because we have found the marks similar in appearance and sound. That similarity makes confusion more likely. In re Davia, 110 USPQ2d at 1812. 22 29 TTABVUE at Exh. 7 (this definition is for caddie or caddy). 23 Id. at Exh. 8. 24 Id. at Exh. 9. 25 Id. at Exh. 13. This definition is not for the personal name “Jack” but for the word “jack.” We find that most consumers would recognize the word Jack as a personal name, given the way the word is used in the marks. 26 Id. at Exh. 1. 27 Id. at Exh. 7. 28 33 TTABVUE 19. Opposition No. 91235560 15 4. Weighing the Likelihood of Confusion Factors Every relevant likelihood of confusion factor indicates that confusion is likely. The CAT & JACK mark is conceptually strong. The goods are identical in large part. The trade channels and purchasing conditions are presumed to overlap, as well. The marks are similar in appearance and sound. When these facts are taken together, it is clear that confusion is likely. Decision: The opposition is sustained under Section 2(d) and registration to Applicant in International Class 25 is refused.29 29 The application will proceed to issuance of a notice of allowance with respect to unopposed International Class 41. Copy with citationCopy as parenthetical citation