The Greens/Green Party USAv.Green Party of the United StatesDownload PDFTrademark Trial and Appeal BoardJun 11, 2010No. 91178037 (T.T.A.B. Jun. 11, 2010) Copy Citation Mailed: June 11, 2010 UNITED STATES PATENT AND TRADEMARK OFFICE _____ Trademark Trial and Appeal Board _____ The Greens/Green Party USA v. Green Party of the United States _____ Opposition No. 91178037 _____ Henry B. Robertson, Esq., for The Greens/Green Party USA. Ronald W. Citkowski of Gifford, Krass, Sprinkle, Anderson, et. al., for Green Party of the United States. _____ Before Walters, Holtzman, and Ritchie, Administrative Trademark Judges. Opinion by Ritchie, Administrative Trademark Judge: On February 25, 2005, applicant, Green Party of the United States, applied to register the mark GREEN PARTY OF THE UNITED STATES for “political party services, namely, promoting the interests and political agenda of environmentalists; promoting public awareness of the need for environmental protection and social justice,” in International Class 35.1 1 Serial No. 78575215, claiming dates of first use and first use in commerce of July 28, 2001. The application includes a claim, under Section 2(f) of the Trademark Act, of acquired THIS OPINION IS NOT A PRECEDENT OF THE T.T.A.B. Opposition No. 91178037 2 On June 20, 2007, opposer, The Greens/Green Party USA, opposed the registration of applicant’s mark on the ground that applicant’s mark is likely to cause confusion with opposer’s mark, THE GREENS/GREEN PARTY USA.2 Opposer asserted that it has priority of use of its mark, and that registration of applicant’s mark would present a likelihood of confusion. Opposer also alleged ownership of Trademark Application Serial No. 78585919, the prosecution of which has been suspended pending the outcome of the application herein. Applicant’s answer denied the salient allegations of the Notice. Both parties filed briefs. The Record The record consists of the pleadings; the file of the involved application; and opposer’s Notice of Reliance on excerpts from printed publications. Applicant did not submit any testimony or evidence, but submitted what it referred to as a "Notice of Reliance" stating that it was relying on the application file and noting objections as to the relevance of various documents in opposer’s Notice of distinctiveness, and a disclaimer of the exclusive right to use the term “PARTY” apart from the mark as shown. 2 Opposer also pleaded a claim of deceptiveness under Section 2(a) of the Trademark Act. However, it did not pursue this claim and, accordingly, we deem it to be waived. Thus, we have considered only the pleaded and tried claim of priority and likelihood of confusion. Opposition No. 91178037 3 Reliance.3 Applicant has not explained how, or established that, the documents submitted as part of opposer’s Notice of Reliance are irrelevant. Therefore, we overrule applicant’s objections and we have considered the documents and accorded them whatever probative value they merit. Standing Standing is a threshold issue that must be proven in every inter partes case. See Lipton Industries, Inc. v. Ralston Purina Co., 670 F.2d 1024, 213 USPQ 185, 189 (CCPA 1982) ("The facts regarding standing . . . must be affirmatively proved. Accordingly, [plaintiff] is not entitled to standing solely because of the allegations in its [pleading]."). To establish standing in an opposition, opposer must show both “a real interest in the proceedings as well as a ‘reasonable’ basis for his belief of damage.” See Ritchie v. Simpson, 170 F.3d 1092, 50 USPQ2d 1023, 1025 (Fed. Cir. 1999). As discussed below, applicant has conceded opposer’s priority with regard to political party services in connection with the mark THE GREENS/GREEN PARTY 3 Even without a notice of reliance, applicant may rely on any evidence submitted during prosecution of its application. See The Cold War Museum, Inc. v. Cold War Air Museum, Inc., 586 F3d 1352, 92 USPQ2d 1626, 1629 (“The unambiguous language of 37 C.F.R. § 2.122(b) provides that the entire file of the registration at issue is automatically part of the record, without any action necessary by the parties. Therefore, the evidence of the mark’s acquired distinctiveness submitted during prosecution was automatically part of the record before the Board”). Opposition No. 91178037 4 USA. Accordingly, we deem applicant to have conceded opposer’s standing to bring this action. PRIORITY Opposer has not pleaded a registered trademark. Accordingly, to establish its priority, opposer must establish its ownership and prior use, under common law, of a distinctive, inherently or otherwise, mark in connection with its pleaded political party services. See Giersch v. Scripps, 90 USPQ2d 1020, 1023 (TTAB 2009); Otto Roth & Co. v. Universal Foods Corp., 640 F.2d 1317, 209 USPQ 40 (CCPA 1981). Applicant has not questioned the inherent distinctiveness of opposer’s mark. See The Chicago Corp. v. North American Chicago Corp., 20 USPQ2d 1715 (TTAB 1991). See also Wetseal Inc. v. FD Management Inc., 82 USPQ2d 1629 (TTAB 2007) (absent argument or evidence from applicant, opposer’s mark deemed distinctive). Similarly, applicant has not questioned whether the services in connection with which opposer uses its mark are political party services. In fact, the record establishes that opposer and applicant were at one time part of the same organization rendering the same political party services. Further in this regard, opposer has submitted numerous news articles referring to opposer as a political party. Accordingly, we deem opposer to have established common law rights to the inherently Opposition No. 91178037 5 distinctive mark THE GREENS/GREEN PARTY USA for “political party services.” In its brief, applicant makes the following statement: Applicant notes for the record that Opposer has asserted that there is an issue as to whether The Greens/Green Party USA has established a prior right to what it refers to as “the name.” In this regard, Opposer presents evidence establishing that it has called itself ‘The Greens/Green Party USA’ since 1991. Applicant does not contest this fact and the sole issue regarding Applicant’s right to register its mark is the likelihood of confusion with regard to Opposer’s name. (Applicant’s brief at 1) (emphasis added). This is clearly an admission by applicant of opposer’s priority of use of the pleaded mark THE GREENS/GREEN PARTY USA. Moreover, opposer has established its use of its mark since at least prior to any date of first use that applicant may claim. Therefore, opposer’s priority is established. Likelihood of Confusion Our determination under Section 2(d) is based on an analysis of all of the factors relevant to a likelihood of confusion. See In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). See also Palm Bay Imports, Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689 (Fed. Cir. 2005); In re Majestic Distilling Company, Inc., 315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir. 2003); and In re Dixie Restaurants Inc., 105 F.3d 1405, 41 USPQ2d 1531 (Fed. Cir. 1997). In any Opposition No. 91178037 6 likelihood of confusion analysis, two key considerations are the similarities between the marks and the similarities between the goods or services. See Federated Foods, Inc. v. Fort Howard 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”). The Services, Channels of Trade, and Classes of Purchasers Applicant seeks to register the mark GREEN PARTY OF THE UNITED STATES for “political party services, namely, promoting the interests and political agenda of environmentalists; promoting public awareness of the need for environmental protection and social justice.” These services are legally identical to the “political party services” in connection with which opposer uses its mark. Neither the services identified in the application nor the evidence of opposer’s use of its mark in connection with its services indicate any limitations on trade channels or classes of purchasers. Thus, because the services are identical, the channels of trade and classes of purchasers of the parties’ services are also the same. These du Pont factors heavily favor finding a likelihood of confusion. Opposition No. 91178037 7 The Marks We consider and compare the appearance, sound, connotation and commercial impression of the marks in their entireties. Palm Bay Imports Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1692 (Fed. Cir. 2005). Preliminarily, we note that the more similar the goods or services at issue, and in this case the services are identical, the less similar the marks need to be for the Board to find a likelihood of confusion. Century 21 Real Estate Corp. v. Century Life of America, 970 F.2d 874, 23 USPQ2d 1698 (Fed. Cir. 1992). In comparing the marks, we are mindful that 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 specific impression of the marks. Winnebago Industries, Inc. v. Oliver & Winston, Opposition No. 91178037 8 Inc., 207 USPQ 335, 344 (TTAB 1980); Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106, 108 (TTAB 1975). Opposer’s mark is THE GREENS/GREEN PARTY USA. Applicant’s mark is GREEN PARTY OF THE UNITED STATES. Both share the term “Green Party.” In opposer’s, mark, the term “Green Party” is followed by the term “USA.” It is hardly necessary, but, nonetheless, we take judicial notice of the obvious fact that “USA” is an abbreviation of “United States of America,” and that this is synonymous with the term “UNITED STATES.” In applicant’s mark, the term “Green Party” is followed by the phrase “Of The United States.” We find that the connotations of “Green Party USA” and “Green Party Of The United States” are, thus, the same.4 Nor does the fact that, in opposer’s mark, the term “Green Party” is preceded by the term “The Greens” distinguish the marks. Rather, “The Greens” is likely to be perceived as a shortened version of “Green Party,” and it is likely to be perceived as placing the emphasis, or focus, on the term “Green Party.” 4 We note, in this regard, that applicant objected in its brief to opposer’s discussion of the issue of “likelihood of confusion” as to the shortened version of opposer’s mark, GREEN PARTY USA, since the full pleaded mark is THE GREENS/GREEN PARTY USA. However, as discussed in this section, we consider the marks in their entireties as well as their dominant elements. Since opposer has not actually attempted to base its claim of likelihood of confusion on GREEN PARTY USA as a separate mark but has merely discussed this element in the context of its pleaded mark as a whole, applicant’s objection is not well taken. Opposition No. 91178037 9 Accordingly, we find that, when considered in their entireties, the marks share more similarities than differences and provide substantially similar commercial impressions. This du Pont factor also favors finding a likelihood of consumer confusion. Balancing the Factors Considering all of the evidence of record as it pertains to the du Pont factors, we conclude that the services are legally identical and, thus, are marketed through the same channels of trade to the same classes of purchasers; and that the marks are substantially similar. Accordingly, we find a likelihood of consumer confusion between opposer’s pleaded mark THE GREENS/GREEN PARTY USA for “political party services” and applicant’s mark GREEN PARTY USA for “political party services, namely, promoting the interests and political agenda of environmentalists; promoting public awareness of the need for environmental protection and social justice.” DECISION: The opposition is sustained. 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