University of Georgia Athletic Association, Inc.v.Patty Blanton

Trademark Trial and Appeal Board

Dec 2, 2016

No. 91218578 (T.T.A.B. Dec. 2, 2016)

This Opinion is Not a
Precedent of the TTAB

Mailed: December 2, 2016

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

University of Georgia Athletic Association, Inc.
v.
Patty Blanton
_____

Opposition No. 91218578
_____

Thomas C. Lundin Jr. of FisherBroyles LLP,
for University of Georgia Athletic Association, Inc.

John B. West of Dunstan, Cleary & West, LLP
for Patty Blanton.
_____

Before Wolfson, Kuczma and Adlin,
Administrative Trademark Judges.

Opinion by Wolfson, Administrative Trademark Judge:
Patty Blanton (“Applicant”) seeks to register the standard character mark GO
DAWGS! SIC ’EM WOOF WOOF! on the Principal Register for “clothing, namely,
tops and bottoms,” in International Class 25.1

1 Serial No. 86105107, filed October 30, 2013 under Section 1(b) of the Trademark Act,
alleging Applicant’s bona fide intent to use the mark in commerce.
Opposition No. 91218578
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The University of Georgia Athletic Association, Inc. (“Opposer”) opposes
registration under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), asserting
prior use and registration of several marks that include the terms “DAWGS,”
“DAWG,” “DOGS,” and “BULLDOGS” and alleging that Applicant’s mark so
resembles Opposer’s registered and common law marks that confusion, mistake, or
deception of consumers is likely. Opposer specifically claims common law rights in
the mark GO DAWGS! SIC ’EM WOOF WOOF WOOF! for entertainment services,
alleging that the phrase comes from “the official fight song for the University’s
athletic teams” and is included “verbatim” in the fight song, which Opposer has
published “on its official website, http://www.georgiadogs.com.”2 Opposer also alleges
that its marks became famous prior to the filing date of Applicant’s application and
that Applicant’s mark, when used in connection with the goods in the application,
will cause dilution of the distinctive quality of Opposer’s registered marks; that
Applicant’s mark falsely suggests a connection, association or affiliation with Opposer
and/or its affiliates and licensees; and that Applicant lacked a bona fide intent to use
her mark in commerce as of the filing date of Applicant’s application.
Applicant filed an answer to the complaint, denying the salient allegations
therein. Only Opposer filed a brief. We sustain the opposition.

2 4 TTABVUE 10.
Opposition No. 91218578
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I. Record
The record in this case consists of the pleadings and the file of the involved
application. Trademark Rule 2.122(b)(1). Applicant did not file any testimony or
evidence. Opposer made of record the following evidence:
• A copy of Opposer’s First Set of Requests for Admission, propounded on
Applicant on September 14, 2015.
• Internet printouts from Opposer’s websites, www.georgiadogs.com and
http://welcome.uga.edu/UGAtraditions.html.
• Printouts from the Trademark Electronic Search System (“TESS”) database
of Opposer’s pleaded registrations, showing current status and title of the
following eight registrations on the Principal Register:
o HOW ’BOUT THEM DOGS (in standard characters) for “educational
and entertainment services-namely, conducting intercollegiate
football games and exhibitions,” in International Class 41.3
o DAWGS (in standard characters) for “entertainment in the nature of
football games,” in International Class 41.4
o BULLDOGS (in standard characters) for “clothing, namely boxer
shorts, caps, coats, footwear, hats, infantwear, jackets, jerseys,
pants, rainwear, shirts, shoes, shorts, sweatpants, sweat shirts,
sweat suits, sweaters, T-shirts, ties and visors,” in International
Class 25.5
o HOW ’BOUT THEM DOGS (in standard characters) for “decals,
notepaper, notebooks, paper folders; printed booklets, catalogs,
newsletters, and brochures all featuring college football,” in
International Class 16.6
o HAIRY DAWG (in standard characters) for “Education services,
namely providing instruction at the college level, and entertainment

3 Reg. No. 1249346, issued August 23, 1983, renewed.
4 Reg. No. 1345116, issued January 2, 1996, renewed.
5 Reg. No. 2237895, issued April 13, 1999, renewed.
6 Reg. No. 3027008, issued December 13, 2005, renewed.
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services, namely organizing and conducting collegiate sporting
events” in International Class 41.7
o HOW ’BOUT THEM DAWGS (in standard characters) for “Clothing,
namely boxer shorts, caps, coats, footwear, hats, infant wear, jackets,
jerseys, pants, rainwear, shirts, shoes, shorts, sweatpants,
sweatshirts, sweat suits, sweaters, T-shirts, ties, and visors,” in
International Class 25.8
o BULLDOGS (in standard characters) for:
 “Education services, namely providing instruction at the
college level, and entertainment services, namely organizing
and conducting collegiate sporting events,” in International
Class 41;
 “Toys, games, and sporting goods, namely, stuffed toy animals,
footballs, basketballs, soccer balls, baseballs, and Christmas
tree ornaments,” in International Class 28;
 “Beverage glassware, earthenware, and plasticware, namely
drinking glasses, mugs, coffee cups and shot glasses, coasters,
and insulated beverage coolers,” in International Class 21; and
 “Printed booklets, newsletters, catalogs, and brochures
featuring information of interest to students, faculty, and
alumni of the University of Georgia; decals; note paper;
notebooks; and paper folders,” in International Class 16.9
o DAWGS (in standard characters) for:
 “Toys, games, and sporting goods, namely board games,
stuffed toy animals, footballs, basketballs, soccer balls,
baseballs, golf balls, golf bags, and golf accessories, namely
golf club covers, golf club head covers, divot repair tools, golf
accessory pouches, golf bag covers, golf bag tags, golf ball
markers, golf ball retrievers, golf ball sleeves, golf club grips,
golf club heads, golf club inserts, golf club shafts, golf gloves,
golf putter covers, golf putters, golf tee markers, golf tees, and
golf towel clips for attachment to golf bags; and Christmas tree
ornaments,” in International Class 28;

7 Reg. No. 3044695, issued January 17, 2006, renewed.
8 Reg. No. 3044738, issued January 17, 2006, renewed.
9 Reg. No. 3065107, issued March 7, 2006, renewed.
Opposition No. 91218578
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 “Clothing, namely boxer shorts, caps, coats, footwear, hats,
infant wear, jackets, jerseys, pants, rainwear, shirts, shoes,
shorts, sweatpants, sweatshirts, sweat suits, sweaters, T-
shirts, ties, and visors,” in International Class 25;
 “Beverage glassware, earthenware, and plasticware, namely
drinking glasses, mugs, coffee cups and shot glasses, coasters,
and insulated beverage coolers,” in International Class 21; and
 “Decals, notepaper, notebooks, paper folders; printed booklets,
catalogs, newsletters, and brochures all featuring college
football,” in International Class 16.10
II. Opposer’s Standing and Priority
Standing is a threshold issue that must be proven by the plaintiff in every inter
partes case. See Empresa Cubana Del Tabaco v. Gen. Cigar Co., 753 F.3d 1270, 111
USPQ2d 1058, 1062 (Fed. Cir. 2014), cert. denied, 135 S. Ct. 1401 (2015); John W.
Carson Found. v. Toilets.com Inc., 94 USPQ2d 1942, 1945 (TTAB 2010). Opposer’s
standing to oppose registration of Applicant’s mark is established by its pleaded
registrations, which the record shows to be valid and subsisting, and owned by
Opposer. 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). In addition, because Opposer’s pleaded registrations are of record
and Applicant did not counterclaim to cancel any of them, priority is not an issue with
respect to the goods covered by the registrations. 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)).

10 Reg. No. 3075673, issued April 4, 2006, renewed.
Opposition No. 91218578
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Opposer has also pleaded and attempts to rely on its common law rights in the
mark GO DAWGS! SIC ’EM WOOF WOOF WOOF! in association with entertainment
services. In contrast to its rights acquired via its pleaded and unchallenged
registrations, to the extent Opposer bases its likelihood of confusion claim on common
law rights, Opposer must establish priority in its alleged unregistered mark, i.e. that
Opposer used its alleged unregistered mark in interstate commerce prior to the actual
or constructive first use by Applicant, in this case Applicant’s filing date of October
30, 2013. See Kraft Group LLC v. Harpole, 90 USPQ2d 1837, 1841 (TTAB 2009);
Miller Brewing Co. v. Anheuser-Busch Inc., 27 USPQ2d 1711, 1714 (TTAB 1993);
Zirco Corp. v. American Telephone and Telegraph Co., 21 USPQ2d 1542, 1544 (TTAB
1991) (“[T]here can be no doubt but that the right to rely upon the constructive use
date comes into existence with the filing of the intent-to-use application and that an
intent-to-use applicant can rely upon this date in an opposition brought by a third
party asserting common law rights.”).
To that end, Opposer has filed a copy of its First Set of Requests for Admission
that it propounded on Applicant, which, Opposer asserts, Applicant failed to answer.
Applicant does not contest that she did not timely respond to the requests for
admissions, and Applicant has made no motion to withdraw or amend her
admissions. Because Applicant failed to respond to Opposer’s Requests for Admission,
each of Opposer’s requests is deemed admitted. Fed. R. Civ. P. 36(a)(3) (“A matter is
admitted unless, within 30 days after being served, the party to whom the request is
directed serves on the requesting party a written answer or objection addressed to
Opposition No. 91218578
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the matter and signed by the party or its attorney.”). Moreover, each fact in the
requests deemed admitted is “conclusively established.” Fed. R. Civ. P. 36(b) (“A
matter admitted under this rule is conclusively established unless the court, on
motion, permits the admission to be withdrawn or amended.”). See Texas Dept. of
Transportation v. Tucker, 95 USPQ2d 1241, 1244 (TTAB 2010); Sinclair Oil Corp. v.
Kendrick, 85 USPQ2d 1032, 1037 n.8 (TTAB 2007). See also TBMP §§ 407.04 and
527.01(d).
Applicant, through her deemed admissions, has admitted that “Applicant cannot
show priority of use of Applicant’s Alleged Mark as between Applicant and
Opposer.”11 Applicant further admits that she knew at the time she filed her
application that the phrase GO DAWGS! SIC ’EM! WOOF WOOF WOOF! was used
by Opposer’s affiliate,12 the University of Georgia’s (the “University”) football team
as a display “on the scoreboard video screens in Sanford Stadium before each
kickoff,”13 as part of the lyrics to a fight song “played at sporting events involving the
University’s sports teams”14 and as a “traditional cheer for the University’s sports
teams.”15 Indeed, Applicant admits that she selected her mark “because the phrase
‘GO DAWGS! SIC ’EM! WOOF WOOF WOOF!’ is associated in the minds of the public

11 Request No. 43, 14 TTABVUE 15. “Applicant’s Alleged Mark” is defined as “GO DAWGS!
SIC ’EM! WOOF WOOF!” 14 TTABVUE 18.
12 The Requests for Admission identify the University as Opposer’s affiliate in the Definitions
section of Opposer’s Requests for Admission, 14 TTABVUE 17.
13 Request No. 31, 14 TTABVUE 12.
14 Request No. 18, 14 TTABVUE 10.
15 Request No. 27, 14 TTABVUE 12.
Opposition No. 91218578
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with the University’s sports teams.”16 In addition, Opposer’s web pages show that GO
DAWGS! SIC ’EM WOOF WOOF WOOF! are part of the lyrics to a fight song played
at sporting events involving the University’s sports teams, specifically at
intercollegiate football games, and that the University encourages its students to
cheer on the football team during a game by yelling GO DAWGS! SIC ’EM WOOF
WOOF! WOOF! WOOF! WOOF! WOOF!17 Applicant also admits that Opposer, and
“Opposer’s Affiliates and Licensees,”18 used “Opposer’s Unregistered Mark” before
Applicant first used her mark.19 Such admission, without further admitting that
Opposer’s first use predates Applicant’s filing date, would be insufficient proof of

16 Request No. 34, 14 TTABVUE 13.
17 Opposer submitted copies of pages from its website http://www.georgiadogs.com,
including a page entitled “Songs of the Georgia Bulldogs” wherein the mark appears, 14
TTABVUE 71, Exhibit 10, and submitted “Welcome to UGA” pages from the website
http://welcome.uga.edu/UGAtraditions.html, wherein prospective students are encouraged
to cheer on the University’s football team by “Calling the Dawgs,” 14 TTABVUE 84, Exhibit
11. The Calling the Dawgs cheer starts by “yelling ‘Go’ and holding the ‘o’ until the ball is
kicked, then yell ‘Dawgs’ and chant ‘Sic’em! Woof! Woof! Woof! Woof! Woof!” The insignificant
differences between the phrase used in the fight song, in the Calling the Dawgs cheer, and in
the mark as pleaded are immaterial. See footnote 23, infra. Because they are dated
“3/11/2016,” the web pages by themselves do not prove use of the mark as of October 30, 2013,
the filing date of Applicant’s application.
18 The record does not identify any entities that may be considered Opposer’s Licensees. As
noted, the University of Georgia is identified as an Affiliate of Opposer.
19 Request Nos. 40 and 41, 14 TTABVUE 14. The designation “Opposer’s Unregistered Mark,”
as defined in the Requests for Admission, is “GO DAWGS! SEC ’EM! WOOF WOOF WOOF!”
14 TTABVUE 18. The phrase, as used in the lyrics of the fight song reproduced in Request
Nos. 17 and 18, appears as “Go Dawgs! Sic ’em! Woof, woof, woof!” When used in Request No.
27, the phrase appears in all caps and without commas between the last three words. The
mark, as pleaded, is GO DAWGS! SIC ’EM! WOOF WOOF WOOF! We find that these slight
differences between the mark as pleaded and as presented in the various papers that have
been filed herein do not affect the overall commercial impression of Opposer’s mark and we
have considered the mark as pleaded to encompass these slight variations; moreover, we find
the term “SEC” in the Definitions Section of the Requests for Admissions to have been a
typographical error.
Opposition No. 91218578
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priority. However, since Applicant admits she had already used her mark in Augusta,
Georgia at the time that the application was filed,20 Applicant’s admissions that
Opposer, and its licensees and affiliates, used Opposer’s Unregistered Mark before
Applicant’s first use date are deemed to apply to the filing date of her application.21
The evidence thus establishes Opposer’s priority in the mark GO DAWGS! SIC
’EM WOOF WOOF WOOF! since, as admitted, the University used the service mark
in association with entertainment services prior to Applicant’s filing date. To the
extent that Opposer has shown that others, such as fans and students, have used the
mark, as admitted, the mark has become associated in the minds of the public with
the University. “We have found that in certain circumstances a nickname or a trade
name for a product or service may acquire trademark significance when the public
has come to know and use it as such ‘even if the company itself has made no use of
the term.’” American Stock Exch., Inc. v. American Express Co., 207 USPQ 356, 364
(TTAB 1980) (quoted in N.Y. Yankees P'ship v. IET Prods. & Servs., Inc., 114 USPQ2d
1497, 1504 (TTAB 2015). See also The Board of Trustees of the University of Alabama
v. Bama-Werke Curt Baumann, 231 USPQ 408 (TTAB 1986) (sports teams at the

20 Request No. 5, 14 TTABVUE 8.
21 Request No. 5 asks Applicant to admit that at the time Applicant filed her application,
Applicant had used her mark “solely in the Augusta, Georgia area.” This admission allows
that Applicant had commenced use prior to October 30, 2013. However, as no date of use is
indicated, and Applicant did not plead earlier use as an affirmative defense, this admission
is not evidence of an earlier date upon which Applicant may rely. Cf. Nike Inc. v. Maher, 100
USPQ2d 1018, 1027 (TTAB 2011) (citing Citigroup Inc. v. Capital City Bank Group Inc., 94
USPQ2d 1645, 1650, fn. 13 (TTAB 2010), aff'd Citigroup Inc. v. Capital City Bank Group Inc.,
98 USPQ2d 1253 (Fed. Cir. 2011) (intent-to-use applicant asserting any use prior to its filing
date is required to plead such use as an affirmative defense, in this case to dilution claim)).
Opposition No. 91218578
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University of Alabama known as “BAMA” in part because radio sportscasters referred
to the University as BAMA and the fight song of the University referred to itself as
BAMA); Board of Supervisors for Louisiana State University Agricultural and
Mechanical College v. Smack Apparel Co., 89 USPQ2d 1338, 1345 (5th Cir. 2008)
(desire by consumers and fans to associate with a University’s particular “color
scheme” supports finding that fans perceive unregistered school colors as mark). Cf.
In re Nieves & Nieves LLC, 113 USPQ2d 1629 (TTAB 2015) (public’s use of
PRINCESS KATE to refer to Catherine, Duchess of Cambridge, supports refusal
under Section 2(a) to applicant); In re Olin Corp., 181 USPQ 12 (TTAB 1973)
(ornamentation is registrable when it “tells the purchasing public the source of the
[goods], not the source of manufacture but the secondary source.”).
Accordingly, we find that Opposer has shown that its common law rights in the
mark GO DAWGS! SIC ’EM! WOOF WOOF WOOF! were acquired before any date
upon which Applicant may rely and that Opposer has priority with respect to its
unregistered mark GO DAWGS! SIC ’EM WOOF WOOF!
III. Likelihood of Confusion
Our determination under Trademark Act Section 2(d) is based on an analysis of
all 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 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 or services, the first two du Pont factors. See Federated Foods, Inc. v. Fort
Opposition No. 91218578
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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 proving its claim of likelihood of confusion by a preponderance of the evidence.
Cunningham, 55 USPQ2d at 1848.
A. Similarity of the Marks
We begin by considering the first du Pont factor, the similarity of the parties’
marks. In a likelihood of confusion analysis, we compare the marks in their entireties
for similarities and dissimilarities in 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
a side-by-side comparison of the marks, but instead 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, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012) (citation omitted).
We first focus on Opposer’s common law mark GO DAWGS! SIC ’EM! WOOF
WOOF WOOF! This mark is virtually identical to Applicant’s mark GO DAWGS! SIC
’EM! WOOF WOOF! in appearance, sound, connotation and commercial impression.
The marks share the same initial six words, which split into the phrases “go dawgs,”
“sic ’em,” and “woof woof” and but for the last word, they are exactly the same in
phrasing as well as punctuation. Applicant admits that the “only difference” between
the marks is that in Applicant’s mark, “the word ‘WOOF’ appears twice after the
words ‘GO DAWGS! SIC ’EM!’ and in [Opposer’s] mark the wor[d] ‘WOOF’ appears
Opposition No. 91218578
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three times after the words ‘GO DAWGS! SIC ’EM!’22 Applicant further admits that
the marks are “visually similar”23 and “similar in their pronunciation.”24
Opposer’s registered marks are also similar to Applicant’s mark. In particular,
Opposer’s registrations for the marks DAWGS (Reg. Nos. 1345116 and 3075673)
depict the same unconventional spelling of the term “dogs” that has been incorporated
into Applicant’s mark. Opposer also owns two registrations for marks that include
the term in plural and singular depiction, namely, HAIRY DAWG (Reg. No. 3044695)
and HOW ‘BOUT THEM DAWGS (Reg. No. 3044738). In each of these, the term
DAWGS retains its special meaning and prominence in the mark. The marks are
similar to Applicant’s mark in appearance, sound, connotation and commercial
impression. Consumers familiar with the marks in Opposer’s pleaded registrations
encountering Applicant’s mark would likely perceive it as an extension or modified
version of Opposer’s marks, used by a source at least affiliated with or sponsored by
Opposer. As discussed fully infra, where, as here, the parties use their marks in
connection with goods that are legally identical in part, the similarity needed to
support a determination that confusion is likely declines. See Bridgestone Ams. Tire
Operations LLC v. Federal Corp., 673 F.3d 1330, 102 USPQ2d 1061, 1064 (Fed. Cir.
2012).
The first du Pont factor strongly favors a finding of likelihood of confusion.

22 Request No. 1, 14 TTABVUE 7-8.
23 Request No. 3, 14 TTABVUE 8.
24 Request No. 2, 14 TTABVUE 8.
Opposition No. 91218578
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B. Similarity of the Goods; Trade Channels and Classes of Consumers
We turn next to the second and third du Pont factors, which assess the similarity
or dissimilarity of the parties’ goods and services and their established, likely-to-
continue trade channels. It is well-established 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.” Stone Lion Capital Partners, L.P. v. Lion Capital LLP, 746
F.3d 1317, 110 USPQ2d 1157, 1162 (Fed. Cir. 2014) (quotation omitted). Because
Applicant’s goods fall within a single class, likelihood of confusion “may be found
based on any item that comes within the identification of goods in the involved
application and registration.” In re La Peregrina Ltd., 86 USPQ2d 1645, 1647 (TTAB
2008). See also Inter IKEA Sys. B.V. v. Akea, LLC, 110 USPQ2d 1734, 1745 (TTAB
2014); Edom Labs., Inc. v. Lichter, 102 USPQ2d 1546, 1550 (TTAB 2012),
Applicant seeks to register her mark for “clothing, namely tops and bottoms.”
Three of Opposer’s registrations include specific types of tops and bottoms in their
identification of goods, namely Reg. Nos. 2237895, 3044738, and 3075673 for the
marks BULLDOGS, HOW ’BOUT THEM DAWGS and DAWGS. Specifically, the
registrations cover “boxer shorts, jackets, jerseys, pants, shirts, shorts, sweatpants,
sweat shirts, sweat suits, sweaters, T-shirts.” The identification of goods in
Applicant’s application and in Opposer’s registrations are legally identical in part
because the goods recited in Opposer’s registrations are encompassed by the broader
terms “tops and bottoms” in Applicant’s application.
Because Opposer’s registered goods and Applicant’s goods are legally identical and
contain no restrictions on trade channels or classes of consumers, we must presume
Opposition No. 91218578
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that they move in the same channels of trade and are available to the same classes of
customers for such goods. See American Lebanese Syrian Assoc. Charities Inc. v. Child
Health Research Inst., 101 USPQ2d 1022, 1028 (TTAB 2011); see also In re Viterra
Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (finding Board entitled
to rely on this presumption). Moreover, Applicant admits that the “target market or
target consumers for goods bearing Applicant’s Alleged Mark is likely to be the same
or similar to the target market or target consumers for goods and/or services bearing
Opposer’s Registered Mark or Opposer’s Unregistered Mark.”25
As we have previously noted, Applicant’s admissions establish that at the time
Applicant filed her application, she knew that Opposer’s unregistered mark GO
DAWGS! SIC ’EM! WOOF WOOF WOOF! was used in connection with the
University’s intercollegiate football games as a traditional cheer, on scoreboard
displays, and as a refrain in the University’s fight song. Further, Applicant admits
that before she first used her mark, she was “aware of goods offered for sale in stores
and online bearing Opposer’s Unregistered Mark.”26 While Applicant does not admit
that these goods were clothing items, “the licensing of commercial trademarks for use
on ‘collateral’ products (such as clothing, glassware, linens, etc.), which are unrelated
in nature to those goods or services on which the marks are normally used, has
become a common practice in recent years.” In re Phillips-Van Heusen Corporation,
228 USP 949, 951 (TTAB 1986). See also Turner Entertainment Co. v. Nelson, 38

25 Request No. 36, 14 TTABVUE 13.
26 Request No. 42, 14 TTABVUE 14.
Opposition No. 91218578
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USPQ2d 1942, 1944 (TTAB 1996) (“It is common knowledge … that video games, t-
shirts, beach towels, caps and other logo-imprinted products are used as promotional
items for a diverse range of goods and services…”); General Mills Fun Group, Inc. v.
Tuxedo Monopoly, Inc., 204 USPQ 396, 400 (TTAB 1979), aff’d 648 F.2d 1335, 209
USPQ 986, 988 (CCPA 1981) (“‘collateral product’ use is a matter of textbook
discussion”). Further, Applicant admits that she applied to register her mark
“because when Applicant initially attempted to have T-shirts made bearing
Applicant’s Alleged Mark, T-shirt suppliers objected because of the similarity to
Opposer’s Unregistered Mark.”27 The circumstances surrounding the marketing of
Applicant’s clothing and Opposer’s entertainment services are such that persons
encountering them under their respective marks are likely to assume that they
originate at the same source or that there is some association between their sources.
Inasmuch as the goods are common clothing items, the relevant purchasing class
includes ordinary consumers who may exercise no greater than reasonable care in
making purchases.
The second and third du Pont factors also support a finding of likely confusion.
C. Other du Pont factors
Applicant admits that Opposer’s registered marks, and its unregistered mark GO
DAWGS! SIC ’EM! WOOF WOOF WOOF! are well-known28 and famous.29 These
factors favor a finding of likelihood of confusion.

27 Request No. 10, 14 TTABVUE 9.
28 Request No. 22, 14 TTABVUE 12.
29 Request No. 23, 14 TTABVUE 12.
Opposition No. 91218578
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IV. Conclusion
Opposer’s registered DAWG marks are similar to Applicant’s mark and Opposer’s
unregistered mark GO DAWGS! SIC ’EM! WOOF WOOF WOOF! is virtually
identical to Applicant’s mark. By virtue of Applicant’s admissions, Opposer’s marks
are considered famous. The parties’ goods are legally identical in part or otherwise
related and move in the same channels of trade to the same classes of customers.
Accordingly, we find that Applicant’s mark is likely to cause confusion with Opposer’s
unregistered mark GO DAWGS! SIC ’EM! WOOF WOOF WOOF! and Opposer’s
registered marks DAWGS and HOW ‘BOUT THEM DAWGS.
Because we find for Opposer on its likelihood of confusion claim, we need not reach
Opposer’s additional claims of dilution; that Applicant’s mark falsely suggests a
connection, association or affiliation with Opposer and/or its affiliates and licensees;
or that Applicant lacked a bona fide intent to use her mark in commerce as of the
filing date of Applicant’s application.
Decision: The opposition is sustained pursuant to Trademark Act Section 2(d).