The B.V.D. Licensing Corporationv.Bosideng Co., Ltd.

Trademark Trial and Appeal Board

Jan 10, 2012

No. 91173468 (T.T.A.B. Jan. 10, 2012)

Mailed:
January 10, 2012

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
______

The B.V.D. Licensing Corporation

v.

Bosideng Co., Ltd.
_____

Opposition No. 91173468
to application Serial No. 78729641
filed on October 10, 2005
_____

Carrie A. Shufflebarger of Thompson Hine, LLP for The B.V.D.
Licensing Corporation.

Yuval H. Marcus of Leason Ellis LLP for Bosideng Co., Ltd.
______

Before Holtzman, Bergsman and Kuczma,
Administrative Trademark Judges.

Opinion by Bergsman, Administrative Trademark Judge:

Bosideng Co., Ltd. (“applicant”) filed an intent-to-use
application for the mark BOSIDENG BSD and design, shown
below, for “suits, coats, overcoats, shirts, trousers,
skirts, sweaters, T-shirts, pajamas, underwear, leather
shoes,” in Class 25.

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Opposition Nos. 91173468
2
According to the applicant, “[t]he transliteration of the
Chinese characters in the mark is ‘Bosideng’ which is a
coined term without any English translation.”
The B.V.D. Licensing Corporation (“opposer”) filed a
notice of opposition against the registration of applicant’s
mark on the ground of likelihood of confusion pursuant to
Section 2(d) of the Trademark Act of 1946, 15 U.S.C.
§1052(d), and on the ground of dilution pursuant to Section
43(c) of the Trademark Act of 1946, 15 U.S.C. §1125(c).
Opposer alleged ownership of nine trademark registrations
for the marks B.V.D and/or BVD. For purposes of this
opposition, we focus on the following three registrations:
1. Registration No. 0049931 for the mark B.V.D., in
typed drawing form, for “undershirts and underdrawers,” in
Class 25;1
2. Registration No. 0367184 for the mark B.V.D., in
typed drawing form, for “underwear, shirts, shorts,” in
Class 25;2 and
3. Registration No. 2853880 for the mark BVD, in
typed drawing form, for “men’s and boy’s t-shirts,” in Class
25.3

1 Issued February 27, 1906; fifth renewal.
2 Issued May 9, 1939; fourth renewal.
3 Issued June 15, 2004; Sections 8 and 15 affidavits accepted and
acknowledged.
Opposition Nos. 91173468
3
With respect to its claim of likelihood of confusion,
opposer alleged that applicant’s mark BOSIDENG BSD and
design for the goods in the application so resembles
opposer’s BVD marks for underwear, shirts and t-shirts as to
be likely to cause confusion. With respect to its dilution
claim, opposer alleged that its BVD marks have been famous
since the late 19th century and that the registration of
applicant’s mark “will cause dilution of the distinctive
quality of Opposer’s BVD marks.”
Applicant denied the essential allegations in the
notice of opposition.
The Record
By rule, the record includes applicant’s application
file and the pleadings. Trademark Rule 2.122(b), 37 CFR
§2.122(b). In addition, opposer introduced the following
testimony and evidence:
1. Notice of reliance on the following items:
a. Photocopies of opposer’s pleaded
registrations prepared by the U.S. Patent and
Trademark Office showing that they are
currently subsisting and owned by opposer;
b. Opposer’s first set of requests for admission
to which applicant failed to respond and,
therefore, pursuant to Fed. R. Civ. P.
36(a)(3), the requests are deemed admitted;
Opposition Nos. 91173468
4
c. Copies of advertisements appearing in printed
publications;
d. Excerpts from dictionaries copyrighted in
1973, 1980, and 2003 that identify B.V.D. as
a trademark; and
e. Copies of articles published in the November
21, 2005, December 5, 2007, and November 24,
2008 issues of DNR magazine identifying BVD
as one of the top 50 brands in the United
States that men know best; and
2. Testimony deposition of Michael Scott Greene,
Senior Vice President of Union Underwear, a
licensee of opposer, with attached exhibits.
Applicant did not introduce any testimony or evidence.
The case has been fully briefed.
Standing
Because opposer has properly made its pleaded
registrations of record, opposer has established its
standing. Cunningham v. Laser Golf Corp., 222 F.3d 943,
55 USPQ2d 1842, 1844 (Fed. Cir. 2000); Lipton Industries,
Inc. v. Ralston Purina Co., 670 F.2d 1024, 213 USPQ 185, 189
(CCPA 1982).
Priority

Because opposer’s pleaded registrations are of record,
Section 2(d) priority is not an issue in this case as to the
Opposition Nos. 91173468
5
marks and the goods covered by the registrations. King
Candy Co. v. Eunice King’s Kitchen, Inc., 496 F.2d 1400,
182 USPQ 108, 110 (CCPA 1974).

Likelihood of Confusion
Our determination under Section 2(d) is based on an
analysis of all of the probative facts in evidence that are
relevant to the factors bearing on the issue of likelihood
of confusion. 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 Company, Inc., 315 F.3d 1311, 65 USPQ2d
1201, 1203 (Fed. Cir. 2003).
A. The fame of opposer’s marks.

This du Pont factor requires us to consider the fame of
opposer’s mark. Fame, if it exists, plays a dominant role
in the likelihood of confusion analysis because famous marks
enjoy a broad scope of protection or exclusivity of use. A
famous mark has extensive public recognition and renown.
Bose Corp. v. QSC Audio Products Inc., 293 F.3d 1367,
63 USPQ2d 1303, 1305 (Fed. Cir. 2002); Recot Inc. v. M.C.
Becton, 214 F.3d 1322, 54 USPQ2d 1894, 1897 (Fed. Cir.
2000); Kenner Parker Toys, Inc. v. Rose Art Industries,
Inc., 963 F.2d 350, 22 USPQ2d 1453, 1456 (Fed. Cir. 1992).
Fame may be measured indirectly by the volume of sales
and advertising expenditures of the goods and services
identified by the marks at issue, “by the length of time
Opposition Nos. 91173468
6
those indicia of commercial awareness have been evident,”
widespread critical assessments and through notice by
independent sources of the products identified by the marks,
as well as the general reputation of the products and
services. Bose Corp. v. QSC Audio Products Inc., 63 USPQ2d
at 1305-1306 and 1309. Although raw numbers of product
sales and advertising expenses may have sufficed in the past
to prove fame of a mark, raw numbers alone may be
misleading. Some context in which to place raw statistics
may be necessary (e.g., the substantiality of the sales or
advertising figures for comparable types of products or
services). Bose Corp. v. QSC Audio Products Inc., 63 USPQ2d
at 1309.
Finally, because of the extreme deference that we
accord a famous mark in terms of the wide latitude of legal
protection it receives, and the dominant role fame plays in
the likelihood of confusion analysis, it is the duty of the
party asserting that its mark is famous to clearly prove it.
Leading Jewelers Guild Inc. v. LJOW Holdings LLC, 82 USPQ2d
1901, 1904 (TTAB 2007). In this regard, opposer did the
bare minimum to prove that the mark BVD is famous for
purposes of likelihood of confusion. Opposer did not take
to heart the Board’s warning in B.V.D Licensing Corp. v.
Rodriguez, 83 USPQ2d 1500, 1506 (TTAB 2007) that “non-
Opposition Nos. 91173468
7
specific testimony about sales and advertising might not be
sufficient to demonstrate the fame of a mark.”
Opposer has introduced the following testimony and
evidence to prove that its BVD marks are famous:
1. Excerpts from three dictionaries copyrighted in
1973, 1980, and 2003 that identify B.V.D. as a trademark;
2. Copies of articles published in the November 21,
2005, December 5, 2007, and November 24, 2008 issues of DNR
magazine identifying BVD as one of the top 50 brands in the
United States that men know best. DNR identifies itself as
“Defining Men’s Fashion.”4 The 2005 and 2007 DNR surveys of
well-known brands listed BVD as the 35th most well-known
brand and the 2008 DNR survey listed BVD as the 27th most
well-known brand. The 2007 survey referenced BVD as
“legendary” and that it has “achieved cult-like status.”
The 2008 survey stated that BVD has “[l]ong been synonymous
with men’s underwear.”5

4 Although opposer also introduced copies of the 2007 and 2008
DNR survey into evidence in the Greene testimony deposition, Mr.
Greene did not testify as to the subject matter of the DNR
magazine, its circulation, or the survey methodology.
5 The DNR surveys are admissible and probative only for what they
show on their face, not for the truth of what has been printed.
Brooks v. Creative Arts By Calloway LLC, 93 USPQ2d 1823, 1827
(TTAB 2010) (truth of matters asserted in printed publications
not considered; printed publications considered as showing
continued consumer exposure of opposer's mark in connection with
opposer's name); Syngenta Crop Protection Inc. v. Bio-Chek LLC,
90 USPQ2d 1112, 1117 n.7 (TTAB 2009) (printed publications
probative only for what they show on their face, not for the
truth of the matters contained therein, unless a competent
witness has testified to the truth of such matters).
Opposition Nos. 91173468
8
3. Mr. Greene testified that “our annual sales
internationally or even domestically are in the tens of
millions of dollars … and we’ve sold them in the tens of
millions of dollars for every year that I can remember for
the last couple of decades.”6
4. Mr. Greene testified that “[o]ur advertising
investment has always been an appropriate amount to suit a
business of that size … so that advertising investment has
been there for quite some time.”7 Mr. Greene did not
testify as to what an “appropriate amount to suit a business
of that size” would be.
5. BVD is the number two underwear brand at JC
PENNEY.
We’ve done very well over the last few
years, particularly at JC PENNEY. I
don’t have - - I couldn’t tell you
exactly how BVD compared to other
brands, say, at Amazon, but I do know
that at JC Penney we have just within
the last year or two emerged as the
number two brand within their stores.
The top seller’s [sic] their Stafford
brand, which is a private label brand
for JC Penney, but we have surpassed
Jockey and now have the number 2
position on their floor.8

JC PENNEY has 1,100 stores throughout the United States.9

6 Greene Dep., p. 53. Mr. Greene is an employee of Union
Underwear, opposer’s licensee. (Greene Dep., p. 7). Opposer did
not develop any testimony to explain how or why Mr. Greene is
competent to testify regarding opposer’s advertising, sales or
market share.
7 Greene Dep., p. 54.
8 Greene Dep., pp. 24-25.
9 Greene Dep., p. 24.
Opposition Nos. 91173468
9

6. Copies of numerous advertisements in magazines and
newspapers from 1907 through 2008. However, there was no
testimony regarding the circulation of these publications
and how many people might have seen them.
7. Mr. Greene testified that the BVD mark may have
originated in 1876.
Q. Do you know where [BVD] originated?

A. In vague terms, don’t ask me too
many questions on it, but there
were three gentlemen back in I
think it was 1876 that started.
Bradley, Voorhees and Day were the
three gentlemen’s last names, so
Bradley being the B, Voorhees V,
and then Day the D, and then I
believe their mark was trademarked
in the early 1900s specific. And
again, their business started as an
underwear business doing union
suits, which was a popular
underwear item back at the turn of
the 20th Century.10

When Mr. Greene’s testimony regarding opposer’s sales
is joined with the dictionary entries recognizing BVD as a
trademark,11 as well as the extremely long period of use and
the renown of the mark as referenced in the DNR surveys, we
find that BVD is famous for purposes of likelihood of
confusion.

10 Greene Dep., p. 13.
11 B.V.D. Licensing Corp. v. Body Action Design Inc., 846 F.2d
727, 6 USPQ2d 1719, 1720 (Fed. Cir. 1988) (“When a trademark
attains dictionary recognition as a part of the language, we take
it to be reasonably famous”).
Opposition Nos. 91173468
10
Even though we have found that opposer has proven that
its BVD marks are famous for purposes of likelihood of
confusion, fame alone is not sufficient to establish
likelihood of confusion. If that were the case, having a
famous mark would entitle opposer to a right in gross, and
that is against the principles of trademark law. See
University of Notre Dame du Lac v. J.C. Gourmet Food
Imports, Co., Inc., 703 F.2d 1372, 217 USPQ 505, 507 (Fed.
Cir. 1983). Accordingly, we must consider the other du Pont
factors for which evidence has been introduced.
B. The similarity or dissimilarity and nature of the goods
at issue, likely-to-continue channels of trade and
classes of consumers.

The description of goods for both applicant’s
application and opposer’s pleaded registrations include
underwear, shirts, and t-shirts. Accordingly, the goods are
in part identical.12 Because the goods described in the
application and opposer’s registrations are in part
identical, we must presume that the channels of trade and
classes of purchasers are the same. See Genesco Inc. v.
Martz, 66 USPQ2d 1260, 1268 (TTAB 2003) (“Given the in-part
identical and in-part related nature of the parties’ goods,
and the lack of any restrictions in the identifications

12 It is sufficient for a finding of likelihood of confusion if
the relatedness is established for any item encompassed by the
identification of goods in the application. Tuxedo Monopoly,
Inc. v. General Mills Fun Group, 648 F.2d 1335, 209 USPQ 986, 988
(CCPA 1981).
Opposition Nos. 91173468
11
thereof as to trade channels and purchasers, these clothing
items could be offered and sold to the same classes of
purchasers through the same channels of trade”); In re Smith
and Mehaffey, 31 USPQ2d 1531, 1532 (TTAB 1994) (“Because the
goods are legally identical, they must be presumed to travel
in the same channels of trade, and be sold to the same class
of purchasers”).
C. The degree of consumer care.
The extent of the testimony regarding the degree of
consumer care is Mr. Greene’s testimony that an underwear
purchase is a “planned purchase.”13 We construe a planned
purchase to be a purchase where the consumer has a
reasonably focused need for the product. With respect to a
“planned purchase,” the Federal Circuit has held that
consumers exercise sufficient care to minimize source
confusion. See G.H. Mumm & Cie v. Desnoes & Geddes, Ltd.,
917 F.2d 1292, 16 USPQ2d 1635, 1638 (Fed. Cir. 1990) (“a
reasonably focused need” for champagne weighs against a
holding of likelihood of confusion). At a minimum, Mr.
Greene’s testimony indicates that purchasing underwear is
not an impulse purchase.
Mr. Greene further testified that with an online
purchase, a consumer will buy underwear “to get them over a
certain threshold of a total purchase that they can save in

13 Greene Dep., p. 27.
Opposition Nos. 91173468
12
some shipping fees.”14 In that situation [making a purchase
to get over a shipping fee threshold], the consumer is
making a decision based on price and his/her degree of care
regarding source may be so low as to amount to
indifference.15
Opposer does not address Mr. Greene’s testimony in its
brief, rather it argues that “[p]roducts bearing the BVD
mark are generally inexpensive – often sold in multi-packs
for approximately $14-$32 per pack,”16 and “[w]hen consumers
deal with inexpensive products, they are likely to exercise
less care, which, in turn, makes confusion more likely.”17
However, price alone is not determinative of the degree of
care in a purchasing decision. See Stouffer Corp. v. Health
Valley Natural Foods, Inc., 1 USPQ2d 1900, 1092 (TTAB 1986)
(although the products “are normally inexpensive, subject to
quick consumption and frequent replacement purchase,” the
circumstances do not justify applying a lower standard of
care than that of ordinary consumers because purchasing
decisions will not be made impulsively of carelessly).
Opposer argues, in essence, that there should be a per se
rule that consumers of inexpensive items exercise a low
degree of consumer care. We disagree. There is no per se

14 Greene Dep., p. 28.
15 On a different record, we might find that the source of the
product is a factor in purchasing underwear online.
16 Opposer’s Brief, p. 19, citing the Greene Dep., pp. 21-22.
17 Opposer’s Brief, p. 18.
Opposition Nos. 91173468
13
rule that low price equates to a low degree of purchaser
care especially when opposer’s own witness testified that
the purchase of underwear is a “planned purchase.” On the
other hand, it is only logical that consumers will not
exercise as much care purchasing inexpensive items as they
will purchasing expensive items.
Because the testimony regarding the facts and
circumstances surrounding the degree of consumer care was
not fully developed (e.g., the definition of a “planned
purchase,” the importance of brand recognition in purchasing
underwear, the role of price in an underwear purchase,
etc.), any conclusion that we might reach regarding the
degree of consumer in purchasing underwear would be drawn
from inferences based on an incomplete record. Accordingly,
this du Pont factor is neutral.
D. The similarity of the marks in their entireties in
terms of appearance, sound, meaning, and connotation.

We now turn to the du Pont likelihood of confusion
factor focusing on the similarity or dissimilarity of the
marks in their entireties as to appearance, sound,
connotation and commercial impression. In re E. I. du Pont
de Nemours & Co., 177 USPQ at 567. In a particular case,
any one of these means of comparison may be critical in
finding the marks to be similar. In re White Swan Ltd.,
8 USPQ2d 1534, 1535 (TTAB 1988); In re Lamson Oil Co.,
Opposition Nos. 91173468
14
6 USPQ2d 1041, 1042 (TTAB 1987). In comparing the marks, we
are mindful that where, as here, the goods are in part
identical, the degree of similarity necessary to find
likelihood of confusion need not be as great as where there
is a recognizable disparity between the goods and services.
Century 21 Real Estate Corp. v. Century Life of America, 970
F.2d 874, 23 USPQ2d 1698, 1700 (Fed. Cir. 1992); Real Estate
One, Inc. v. Real Estate 100 Enterprises Corporation, 212
USPQ 957, 959 (TTAB 1981); ECI Division of E-Systems, Inc.
v. Environmental Communications Incorporated, 207 USPQ 443,
449 (TTAB 1980).
Moreover, in comparing the marks, 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
offered under the respective marks is likely to result. San
Fernando Electric Mfg. Co. v. JFD Electronics Components
Corp., 565 F.2d 683, 196 USPQ 1, 3 (CCPA 1977); Spoons
Restaurants Inc. v. Morrison Inc., 23 USPQ2d 1735, 1741
(TTAB 1991), aff’d unpublished, No. 92-1086 (Fed. Cir. June
5, 1992). The proper focus is on the recollection of the
average customer, who retains a general rather than a
specific impression of the marks. Winnebago Industries,
Inc. v. Oliver & Winston, Inc., 207 USPQ 335, 344 (TTAB
Opposition Nos. 91173468
15
1980); Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106,
108 (TTAB 1975). In this case, the average customer is a
general consumer who purchases underwear and t-shirts.
As indicated above, a basic principle in determining
whether the marks at issue are similar or dissimilar is that
the marks must be compared in their entireties. The Court
of Appeals for the Federal Circuit, our primary reviewing
court, provided the following guidance:
It follows from that principle that
likelihood of confusion cannot be
predicated on dissection of a mark, that
is, on only part of a mark. On the
other hand, in articulating reasons for
reaching a conclusion on the issue of
confusion, there is nothing improper in
stating that, for rational reasons, more
or less weight has been given to a
particular feature of a mark, provided
the ultimate conclusion rests on
consideration of the marks in their
entireties. Indeed, this type of
analysis appears to be unavoidable.

In re National Data Corp., 753 F.2d 1056, 224 USPQ 749 (Fed.
Cir. 1985).
The word BOSIDENG is the dominant portion of
applicant’s mark. It is the most visually distinctive part
of the mark especially to an English speaker. With respect
to the letters BSD, the gravamen of opposer’s opposition,
they are the smallest component of the mark and not visually
distinctive. In this regard, we note that Mr. Greene,
opposer’s witness, testified that “the word ‘Bosideng’ tends
to be the dominant verbiage and ‘BSD’ is somewhat
Opposition Nos. 91173468
16
subtler.”18 The letters BSD are so buried in the middle of
applicant’s mark and so innocuous that consumers will not
perceive applicant’s mark as being similar in appearance or
sound to opposer’s mark. Thus, applicant’s mark has a
different look and sound than opposer’s BVD mark.
With respect to the connotation and commercial
impression of applicant’s mark, the name BOSIDENG is a
coined term and the Chinese letters at the top of the mark
engender the commercial impression of a Chinese product.
Accordingly, applicant’s mark has a different meaning and
engenders a different commercial impression than opposer’s
BVD mark.
Opposer argues that “[a]pplicant clearly intends ‘BSD’
to be the dominant element, as Applicant’s U.S.-based
subsidiary has a pending application [shown below] where in
the ‘BSD wing’ design is even more prominently featured, the
Chinese text is lacking, and the ‘BOSIDENG U.S.A.” house
mark appears in much smaller, non-stylized text.”19
20

18 Greene Dep., p. 57. Opposer argues that “the letter string
‘BSD,’ flanked on the sides with a wing design” is the dominant
feature of applicant’s mark. (Opposer’s Brief, p. 15). However,
opposer’s argument is contradicted by the testimony of its own
witness.
19 Opposer’s Brief, p. 15.
Opposition Nos. 91173468
17
However, it is the drawing of the mark in the
application being opposed that controls whether the marks at
issue are similar, not the mark in a different application.
In re Elbaum, 211 USPQ 639, 640 (TTAB 1981). See also
Frances Denney v. Elizabeth Arden Sales Corp., 263 F.2d 347,
120 USPQ 480, 481(CCPA 1959) (“In determining the
applicant’s right to registration, only the mark in the
application may be considered”); Blue Cross and Blue Shield
Association v. Harvard Community Health Plan Inc., 17 USPQ2d
1075, 1077 (TTAB 1990).
When the marks are considered in their entireties, they
are not similar in terms of appearance, sound, meaning or
commercial impression.
D. Balancing the factors.
While the fame of opposer’s mark and the identity of
the goods and the presumption that the channels of trade and
classes of consumers weigh in favor of finding a likelihood
of confusion, the dissimilarity of the marks is a
significant countervailing factor that outweighs the other
factors. Kellogg Co. v. Pack’em Enterprises 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 view of the foregoing we find that
applicant’s mark BOSIDENG BSD and design for “suits, coats,

20 Greene Dep., Exhibit 26.
Opposition Nos. 91173468
18
overcoats, shirts, trousers, skirts, sweaters, T-shirts,
pajamas, underwear, leather shoes” is not likely to cause
confusion with opposer’s BVD marks for underwear, shirts,
and t-shirts.
Dilution
In addition to its Section 2(d) claim, opposer has
asserted a dilution claim. The Lanham Act provides for a
cause of action for the dilution of famous marks. Sections
13 and 43(c) of the Lanham Act, 15 U.S.C. §§ 1063 and
1125(c).
The Lanham Act provides as follows:
Subject to the principles of equity, the
owner of a famous mark that is
distinctive, inherently or through
acquired distinctiveness, shall be
entitled to an injunction against
another person who, at any time after
the owner's mark has become famous,
commences use of a mark or trade name in
commerce that is likely to cause
dilution by blurring or dilution by
tarnishment of the famous mark,
regardless of the presence or absence of
actual or likely confusion, of
competition, or of actual economic
injury.

Section 43(c)(1) of the Trademark Act, 15 U.S.C. §
1125(c)(1).
Opposer contends that applicant’s marks will “blur” the
distinctiveness of opposer’s BVD mark.21 The Lanham Act
defines dilution by blurring as follows:

21 Opposer’s Brief, p. 20.
Opposition Nos. 91173468
19
"dilution by blurring" is association
arising from the similarity between a
mark or trade name and a famous mark
that impairs the distinctiveness of the
famous mark.22

With respect to fame, the dilution analysis requires
consideration of the following issues:
1. Whether BVD is a famous mark;

2. Whether BVD became famous prior to the filing date
of applicant’s application (October 10, 2005);
and,

3. Whether BOSIDENG BSD and design is likely to cause
dilution by blurring of the distinctiveness of
BVD.

A. Whether opposer’s mark is famous for purposes of
dilution?

Although we have found BVD famous for purposes of
opposer’s likelihood of confusion claim, we must now
determine whether BVD is famous in the context of a dilution
claim. Fame for dilution requires a more stringent showing.
Palm Bay Imports Inc. v. Veuve Clicquot, 396 F.3d 1369, 73
USPQ2d 1689, 1694 (Fed. Cir. 2005); Toro Co. v. ToroHead
Inc., 61 USPQ2d 1164, 1170 (TTAB 2001). Likelihood of
confusion fame “varies along a spectrum from very strong to
very weak” while dilution fame is an either/or proposition –
it either exists or it does not exist. Id. See also
Carefirst of Maryland Inc. v. FirstHealth of the Carolinas
Inc., 77 USPQ2d 1492, 1507 (TTAB 2005) (likelihood of
Opposition Nos. 91173468
20
confusion “[f]ame is relative . . . not absolute”). A mark,
therefore, may have acquired sufficient public recognition
and renown to be famous for purposes of likelihood of
confusion without meeting the more stringent requirement for
dilution fame. Toro Co. v. ToroHead Inc., 61 USPQ2d at
1170, citing I.P. Lund Trading ApS v. Kohler Co., 163 F.3d
27, 47 USPQ2d 1225, 1239 (1st Cir. 1998) (“[T]he standard
for fame and distinctiveness required to obtain anti-
dilution protection is more rigorous than that required to
seek infringement protection”).
In Toro, we described the requirements for proving that
a mark is famous:
While the eight statutory factors are a
guide to determine whether a mark is
famous, ultimately we must consider all
the evidence to determine whether
opposer has met its burden in
demonstrating that the relevant public
recognizes the [BVD mark] as “signifying
something unique, singular, or
particular.” H.R. REP. No. 104-374, at 3
(1995). Because famous marks can be
diluted by the use of similar marks on
non-competitive goods and services, the
owner of a famous mark must show that
there is a powerful consumer association
between the term and the owner.

* * *

Fame for dilution purposes is difficult
to prove.

* * *

22 Section 43(c)(2)(B) of the Lanham Act, 15 U.S.C.
§1125(c)(2)(B).
Opposition Nos. 91173468
21
Therefore, an opposer … must provide
evidence that when the public encounters
opposer's mark in almost any context, it
associates the term, at least initially
with the mark's owner…. Examples of
evidence that show the transformation of
a term into a truly famous mark include:

1. Recognition by the other party.

2. Intense media attention.

3. Surveys.

* * *

But in order to prevail on the ground of
dilution the owner of a mark alleged to
be famous must show a change has
occurred in the public's perception of
the term such that it is now primarily
associated with the owner of the mark
even when it is considered outside of
the context of the owner's goods or
services.

Toro Co. v. ToroHead Inc., 61 USPQ2d at 1180-1181. In other
words, “the transformation of a term into a truly famous
mark” means that “the mark must be a household name.” Thane
International, Inc. v. Trek Bicycle Corp., 305 F.3d 894, 64
USPQ2d 1564, 1575 (9th Cir. 2002). See also Coach Services
Inc. v. Triumph Learning LLC, 96 USPQ2d 1600, 1610-1611
(TTAB 2010).
Opposer's evidence regarding fame is recounted supra.
This evidence is not sufficient to show that opposer's mark
is famous for purposes of dilution. In concluding that
opposer has not met the stringent requirements of proving
fame for purposes of dilution, we note that opposer's
Opposition Nos. 91173468
22
evidence of fame falls far short of the quantum and quality
of evidence introduced in NASDAQ Stock Market Inc. v.
Antartica S.r.l., 69 USPQ2d 1718 (TTAB 2003) that was found
sufficient to prove that opposer's mark was famous for
dilution purposes. In NASDAQ Stock Market Inc., opposer
introduced market studies demonstrating that the awareness
of opposer's stock market among investors reached more than
80% in 1999. In this case, opposer’s DNR magazine articles
are most akin to a brand awareness study but they are of
limited probative value because opposer did not proffer a
witness with first-hand knowledge of the study to explain
how the study was conducted, how many people participated in
the study or how many people read the published study. In
addition, the opposer in NASDAQ Stock Market Inc. introduced
newspaper and magazine articles, and stock market reports
that evidenced a widespread recognition of opposer's mark
beyond just investors. With the exception of the DNR survey
articles noted above, opposer failed to introduce media
evidence showing widespread recognition of opposer's mark,
let alone that it has been transformed into a household
name. Furthermore, although opposer introduced numerous
advertisements displaying its mark, there was no testimony
regarding how many people saw the advertisements. Finally,
with the exception of Mr. Greene’s vague testimony that
opposer has done advertising suitable to support its sales,
Opposition Nos. 91173468
23
opposer did not submit any testimony or evidence regarding
its advertising expenditures.
In this regard, opposer argues that it “invested
millions of dollars in advertising goods bearing the BVD
mark in various media, including print, television, and the
internet.”23 On pages 29-32 of his deposition, Mr. Greene
describes opposer’s print and internet advertising, not
opposer’s advertising expenditures. There is no testimony
regarding opposer’s advertising expenditures except Mr.
Greene’s testimony that “[o]ur advertising investment has
always been an appropriate amount to suit a business of that
size.”24 As indicated above, Mr. Greene, in his testimony,
did not identify “an appropriate amount to suit a business
of that size.” While we may infer that it is sizable, since
it is opposer’s duty to clear prove that its mark is famous,
Leading Jewelers Guild Inc. v. LJOW Holdings LLC, 82 USPQ2d
at 1904, we may not conclude that “sizable” is sufficient to
prove that opposer’s mark is famous for purposes of
dilution.
Finally, opposer argues that “the fame of Opposer’s BVD
mark easily satisfies the higher standard” of fame required
for dilution, citing B.V.D. Licensing Corp. v. Body Action

23 Opposer’s Brief, p. 21, citing the Greene Dep., pp. 29-32 and
53-55.
24 Greene Dep., p. 54.
Opposition Nos. 91173468
24
Design Inc., 846 F.2d 727, 6 USPQ2d 1719 (Fed. Cir. 1988).25
In that case, the Federal Circuit took judicial notice of
“the fact that within our jurisdiction, which is the whole
United States, the B.V.D. trademark is at least widely, if
not universally, known.” Id. at 1721. However, we will not
take judicial notice of the fame a mark for purposes of
dilution. In B.V.D. Licensing Corp. v. Body Action Design
Inc., the issue was likelihood of confusion, not dilution
for which there is a more stringent standard for determining
fame. In this regard, the Court specifically noted that the
“focus” of that case was “not primarily on fame but on
likelihood of confusion.” Id. Fame is an evidentiary
factor to consider in determining whether there is a
likelihood of confusion whereas in a dilution claim, fame is
an element of the cause of action. Second, according to the
Advisory Committee notes, judicial notice may be taken of
adjudicative facts [i.e., the facts that would normally go
to a jury in a jury trial] and judicial notice of facts
should only be taken when the matter is “beyond reasonable
controversy.”
The usual method of establishing
adjudicative facts is through the
introduction of evidence, ordinarily
consisting of the testimony of
witnesses. If particular facts are
outside the area of reasonable
controversy, this process is dispensed
with as unnecessary. A high degree of

25 Opposer’s Brief, p. 20.
Opposition Nos. 91173468
25
indisputability is the essential
prerequisite.

Fed. R. Evid. 201, Advisory Committee Notes – 1972 Proposed
Rules. We should not use a debatable supposed fact [i.e.,
the fame of the B.V.D. mark] to bootstrap a dubious
conclusion to support an element of opposer’s dilution
claim.
In view of the foregoing, on the record before us,
opposer failed to prove that the mark B.V.D. is famous for
purposes of dilution.
B. Whether B.V.D. became famous prior to October 10, 2005?
In the event that this case is appealed and the
reviewing court finds that based on opposer’s record the
mark B.V.D. is famous, we find that it became famous prior
to the October 10, 2005 filing date of the application. We
base this finding of fact on opposer’s long use of the mark,
the dictionary recognition, and the November 21, 2005 issue
of the DNR magazine with the brand awareness survey.26
C. Whether BOSIDENG BSD and design is likely to cause
dilution by blurring of the distinctiveness of BVD?

In determining whether applicant’s mark will cause
dilution by blurring, Section 43(c)(2)(B) lists six factors.
We focus our analysis on the first factor: the degree of

26 Although the November 21, 2005 issue of the DNR magazine is
subsequent to the October 5, 2005 filing date, the renown of the
BVD mark had to exist prior to November 2005 for BVD to be
identified as a well-known brand.
Opposition Nos. 91173468
26
similarity between the mark or trade name and the famous
mark.
The harm dilution does to the selling power of a mark
is not only caused by a third-party use or registration of
an identical mark. It may be caused by a “look-alike” mark,
one that is close enough to the famous mark that consumers
will recall the famous mark and be reminded of it, as this
Board has explained, “even if they do not believe that the
goods come from the famous mark's owner”:
Dilution occurs when consumers associate
a famous mark that has traditionally
identified the mark holder's goods with
a new and different source.” Luigino's,
Inc. v. Stouffer Corp., 170 F.3d 827,
832, 50 USPQ2d 1047, 1051 (8th Cir.
1999). Therefore, blurring occurs when
a substantial percentage of consumers,
upon seeing the junior party's use of a
mark on its goods, are immediately
reminded of the famous mark and
associate the junior party's use with
the owner of the famous mark, even if
they do not believe that the goods come
from the famous mark's owner.

Toro Co., 61 USPQ2d at 1183. See also Nike Inc. v. Maher,
100 USPQ2d 1018, 1030 (TTAB 2011); Coach Services, 96 USPQ2d
at 1612-13. The Board also noted in National Pork Board, 96
USPQ2d 1479, 1497 (TTAB 2010), that:
When making a determination under the
Trademark Dilution Revision Act of 2005
(TDRA), after finding in the affirmative
on the question of pre-existing fame, an
important question in a dilution case is
whether the two involved marks are
sufficiently similar to trigger
Opposition Nos. 91173468
27
consumers to conjure up a famous mark
when confronted with the second mark.

While we are not concerned in this context with whether
a likelihood of confusion exists, we still consider the
marks, not on the basis of a side-by-side comparison, but
rather in terms of whether the marks are sufficiently
similar in their overall commercial impressions that the
required association exists. Also, in determining the
similarity or dissimilarity of the marks, “we will use the
same test as for determining the similarity or dissimilarity
of the marks in the likelihood of confusion analysis, that
is, the similarity or dissimilarity of the marks in their
entireties as to appearance, sound, connotation and
commercial impression.” Coach Services, 96 USPQ2d at 1613.
See also Nike Inc. v. Maher, 100 USPQ2d at 1030.
We find that applicant’s mark BOSIDENG BSD and design
is so different than opposer's BVD mark that it will not
“trigger consumers to conjure up” opposer's mark. See
National Pork, 96 USPQ2d at 1497. Accordingly, applicant’s
mark will not create an association with opposer’s BVD mark
to support opposer’s dilution claim. Cf. Kellogg Co. v.
Pack’em Enterprises Inc., 21 USPQ2d at 1145 (“We know of no
reason why, in a particular case, a single DuPont factor may
not be dispositive”).
On this record, opposer cannot prevail on its dilution
claim because we have found that opposer has not met its
Opposition Nos. 91173468
28
burden of proving that its mark is famous for purposes of
dilution and because applicant’s mark will not create an
association with opposer’s mark sufficient to cause dilution
by blurring.
Decision: The opposition is dismissed on the ground
of likelihood of confusion and on the ground of dilution.