No. 91161363 (T.T.A.B. Sep. 30, 2013)

Wolverine Outdoors, Inc.v.Marker Volkl (International) GmbH

Trademark Trial and Appeal BoardSep 30, 2013

No. 91161363 (T.T.A.B. Sep. 30, 2013)

THIS OPINION IS NOT A PRECEDENT OF THE TTAB Hearing: April 11, 2013 Mailed: September 30, 2013 UNITED STATES PATENT AND TRADEMARK OFFICE _____ Trademark Trial and Appeal Board _____ Wolverine Outdoors, Inc. v. Marker Volkl (International) GmbH Opposition No. 91161363 _____ Marker Volkl (International) GmbH v. Wolverine Outdoors, Inc. Opposition Nos. 91177732 & 91177736 _______ Douglas Dozeman and Michael B. O’Neal of Warner Norcross & Judd LLP for Wolverine Outdoors, Inc. Sarah K. Duran and Warren J. Rheaume of Davis Wright Tremaine LLP for Marker Volkl (International) GmbH. _______ Before Cataldo, Wolfson, and Adlin, Administrative Trademark Judges. Opinion by Wolfson, Administrative Trademark Judge: These consolidated proceedings involve the rights of Wolverine Outdoors, Inc. (“Wolverine”) and Marker Volkl (International) GmbH (“Marker”) to register design marks depicting stylized representations of the letter “M” for a variety of goods and Opposit services 9116136 have co outline Opposi T the desi for: 1 Applica German Section 4 ion Nos. 9 . The op 3 designa nsidered a the parties tion No. 9 his opposi gn mark d skiin all-pu (Inter clothi boots and (Inter skiin guard snow snow organ winte equip Class tion Serial Registratio 4(d) was no 1161363, 9 positions ted as the ll argumen ’ claims an 1161363 tion involv epicted bel g and snow rpose sp national C ng, namel , sport coa snowboard national C g and sno s for athl skis, sn boards (In izing fest r sports ment for 41). No. 765070 n No. 30242 t claimed. 1177732 a were cons parent cas ts and ev d defense es Marker ow (the “F boarding ort bags lass 18); y, after-sk ts, winter ing mitte lass 25); wboarding etic use, s owboard ternationa ivals featu tourname winter spo 77, filed un 690, which nd 911777 2 olidated o e. The ca idence file s in each o ’s applicat LYING M 1 helmets (In , carry-o i boots, sk sport glo ns, athle gloves, e ki binding bindings l Class 28) ring wint nts, prov rts tourn der Section registered 36 n March ses have b d in each pposition. ion (filed ” mark): ternation n bags, i boot ba ves, headw tic shoes lbow, kne s and par and part ; er sports, iding fac aments (In 44(e), 15 U on Februar 5, 2009, w een fully b case. To b April 5, 20 al Class 9) rucksack gs, ski bib ear, skiin and sock e and sh ts therefo s therefo organizin ilities an ternation .S.C. § 112 y 26, 2003. ith Opp. riefed an egin with 03) to reg ; s s, g s in r, r, g d al 6(e), based Priority un No. d we , we ister on der Opposit W U.S.C. listed go marks s The firs M” and CIRCLE 2 Wolver Therefor Investme argumen claim). 3 Reg. No renewed 4 Reg. No shorts, ja 2003; Se 5 Reg. No bags, tra Section 8 6 Reg. No on July 1 7 Reg. No October 8 Reg. No Board gr rights to original registrat 9 The tw Accordin analysis (expired only that common ion Nos. 9 olverine o § 1052(d), ods and s hown belo t and last the “OVA M marks ine also ass e, we consid nt Co., 75 U ts in its bri . 2670836 f . . 2772456 f ckets, shel ction 8 affid . 2860830 f vel bags, fa affidavit a . 2408922 f , 2011. . 2433428 f 7, 2011. . 3249275 f anted Wolv this registr notice of op ions) “as ex o marks inc gly, the reg . See Sunn registration the registr law rights 1161363, 9 pposed re on the gr ervices, so w as to be 3,4,5 marks dep L M” mar are also re erted a dilu er this clai SPQ2d 13 ef regardin or “footwea or “clothing ls, vests, co avit accept or “backpac nny packs, ccepted; su or “footwea or “footwea or “footwea erine’s mot ation and c position (ad tending” to luding the istrations h en Products has no pro ation issue to these ma 1177732 a gistration ound that resemble likely to ca icted abov ks, respec gistered f tion claim, m to be wai 13, 1314 n.4 g the claim r; clothing, , namely, s ats, hats, sc ed; subject ks, daypac shoulder ba bject to cou r”; register r”; register r”; register ion to amen onstrued M mitting onl Wolverine’ word MERR ave not bee Co. v. Sun bative valu d” on the re rks. nd 911777 3 under Sec the FLYI s Wolverin use confu 6 e are refer tively, and or clothing but did not ved. See, e (TTAB 200 of dilution, namely shi hirts, t-shir arves, sock to counterc ks, all purp gs and tote nterclaim in ed Novembe ed March 6 ed June 5, 2 d the notic arker’s ans y that Wolv s newly add ELL were n considere ex Int’l Inc. e “other th gistration d 36 tion 2(d) o NG M ma e’s previo sion, mista 7 and red to her are regis , and vario pursue thi .g., Knight 5) (where o opposer is rts”; registe ts, sweatsh s and belts” laim in this ose sport an bags”; regi this proce r 28, 2000; , 2001; canc 007. On F e of opposit wer to para erine is lis ed registra cancelled u d in the lik , 1 USPQ2d an for what ate). Wolv f the Trad rk, when usly used ke or dece einafter a tered for “ us types o s claim in it Textile Corp pposer pre deemed to h red Januar irts, sweat ; registered proceeding d athletic b stered July eding. cancelled u elled under ebruary 22, ion to inclu graph 2 of ted as the o tion. nder Sectio elihood of c 1744, 174 it shows on erine is rely emark Ac applied to and regist ption:2 .8 s the “CIR footwear” f bags. 9 s brief. . v. Jones sented no ave waived y 7, 2003; ers, pants, October 7, . ags, duffel 6, 2004; nder Sectio Section 8 o 2012, the de a claim o Wolverine’s wner of the n 8 in 2011 onfusion 7 (TTAB 19 its face, i.e ing on its t, 15 the ered CLE ; the the n 8 n f . 87) ., Opposit W letter “M In oppositi as a sou M of two r and Reg priority CIRCLE allegatio Opposi O OVAL M shirts, s Marker use of t 10 Amend 11 Answe 12 Marke non-use, January 13 Serial 14 Serial ion Nos. 9 olverine a ” mark (t its answ on and ass rce indicat arker late egistration . No. 286 and likeli M mark ns in the tion Nos. n May 3, mark weatshirt filed notic he FLYIN ed Notice o r, paragrap r unsuccess and to incl 27, 2011, d No. 788756 No. 788749 1161363, 9 lso plead he “BLOCK er, Marker erted that or” for the r amende s for Wolv 0830 for b hood of co for bags (R countercla 91177732 2006, Wo 13 an s, pants, s es of oppo G M mark f Oppositio hs 2 and 3. fully sough ude a count enying Mar 59. 91. 1177732 a ed commo M” mark denied th it was the goods list d its answ erine’s CIR ags) on th nfusion as eg. No. 2 ims. and 9117 lverine file d the BL horts, pull sition aga n paragrap t to amend erclaim aga ker’s motio nd 911777 4 n law righ ) for “footw e salient first to u ed in its ap er to add CLE M m e ground an additi 860830).12 7736 d intent OCK M m overs, jack inst Wolv on the g h 2. its answer inst Reg. N n to amend 36 ts in the ear:” allegations se its FLY plication. countercla ark (Reg. of fraud. onal groun Wolverin to use app ark ets, hats, erine’s ap oods listed to add coun o. 2670836 . below-de .10 in Wolve ING M ma 11 ims seekin No. 27724 Marker f d for canc e has den lications 14 for “clo gloves, so plications, in Marke ts of aband . See Board picted styl rine’s noti rk and “an g cancella 56 for clot urther ass ellation of ied the sa to register thing, nam cks and be alleging p r’s applica onment and order date ized ce of ‘M’ tion hing erts the lient the ely lts.” rior tion d Opposition Nos. 91161363, 91177732 and 91177736 5 for the mark, including clothing and bags, as well as priority of use and ownership of a registration for the mark M (in typed characters) for “safety ski bindings.”15 Marker further alleges prior use of “the letter M” in association with clothing16 and that Wolverine’s registration of its marks is likely to cause confusion, mistake or deception among relevant consumers. Wolverine has denied the salient allegations in Marker’s notices of opposition.17 The Parties Opposer Wolverine Outdoors, Inc. is a subsidiary of Wolverine World Wide Inc., an international company “doing business through international licensees and distributors.”18 At one point, it comprised four operating groups: “The Hush Puppies Group, the Outdoor Group, the Heritage Group and the Wolverine Group.19” In 1998, Wolverine World Wide Inc. bought the footwear company Merrell,20 which had “started out in 1981 as a maker of high performance hiking 15 Reg. No. 1595584 for “safety ski bindings”; registered May 8, 1990; renewed. 16 Notices of opposition paragraphs 7 and 8. 17 Wolverine did not assert as an affirmative defense that it claims priority of use of any of its marks, but we find that the issue has been tried by implied consent of the parties. See Citigroup Inc. v. Capital City Bank Group, Inc., 94 USPQ2d 1645, 1650, 1655-56 (TTAB 2010) (Board deemed unpleaded affirmative defense of tacking by prior use of an unpleaded mark to have been tried by implied consent pursuant to Fed. R. Civ. P. 15(b)), aff'd, 637 F.3d 1344, 98 USPQ2d 1253 (Fed. Cir. 2011); H.D. Lee Co. v. Maidenform Inc., 87 USPQ2d 1715, 1720 (TTAB 2008) (“Mere denial by applicant of opposer’s allegation of priority of use is sufficient to put opposer on notice that it must prove its pleaded priority, but it is insufficient to put opposer on notice that any priority opposer will attempt to prove will have to predate the priority that applicant will attempt to prove through tacking”). 18 Zwiers Dep., p. 6. 19 Id. 20 Brown Dep., p. 10; exhibit 1. The exhibit, “The First 20,” is a brochure describing Merrell’s first twenty years of operation. In this brochure, the company is referred to as the Opposition Nos. 91161363, 91177732 and 91177736 6 boots”21 and which, over the years, “expanded its footwear line to include backcountry ski shoes, trail running shoes, sport sandals, walking shoes and a full line of footwear for outdoor enthusiasts.”22 Wolverine World Wide Inc. formed Wolverine Outdoors, Inc. upon the acquisition of Merrell, and the Merrell brands have since been continuously controlled by Wolverine Outdoors. Mr. Zwiers, president of Wolverine Outdoors, Inc., testified to the continuous expansion of the MERRELL brand “both in terms of its categories and in terms of its global reach.”23 Applicant Marker Volkl (International) GmbH began as a family-run business founded in 1952 in Germany by Hannes Marker, who invented the first safety release bindings for ski boots.24 In 1981, Mr. Marker sold his business to a United States company that became Marker International. The company was located in Salt Lake City until the mid to late-1980’s, when it filed for bankruptcy and was purchased by two European investors, one of whom owned the “Volkl” company (which used VOLKL for skis). The company thereafter consolidated Marker International with Volkl, becoming Marker Volkl (International) GmbH, and returned to Germany.25 In 2004, Marker was purchased by a company named “K2, Inc.” and moved to New Hampshire.26 In 2007, K2, Inc. was bought by Jarden Corporation, where Marker remains today.27 Its primary product line continues to “Merrell Boot Company.” The parties use the shorthand “Merrell” to refer to Wolverine’s predecessor. 21 Brown Dep., p. 10. 22 Wolverine’s Brief, p. 9. 23 Zwiers Dep., p. 8. 24 Wiant Dep., p. 20. 25 Id., p. 21. 26 Id., p. 23. 27 Id., p. 22. Opposition Nos. 91161363, 91177732 and 91177736 7 be ski bindings and accessories, i.e. helmets and goggles, supplemented by “apparel primarily for skiing, which is outer wear, but also layering for apparel,”28 and a sublicensee sells bags.29 Evidentiary Matters Before proceeding to the merits of the parties’ respective claims, we address several evidentiary matters. Wolverine’s Objections –Marker’s Notice of Reliance Evidence Wolverine objects to the admission of certain news articles30 to the extent Marker offers these news articles to prove that Wolverine did not enter the apparel and bags markets until December 2003 (the earliest date on any of the news articles submitted by Marker). Wolverine also objects to the admission of certain magazine advertisements31 to the extent these advertisements are offered as evidence that the public is familiar with Marker’s trademarks. Wolverine’s objections go to the probative value of the news articles and magazine advertisements and not to their admissibility. Marker has properly submitted these documents as printed publications under a notice of reliance. Printed publications made of record by notice of reliance are admissible and probative for what they show on their face, but not for the truth of the matters contained therein, unless a competent witness has testified to the truth of such matters. Syngenta Crop Protection Inc. v. Bio-Chek LLC, 90 USPQ2d 1112, 1117 28 Id., p. 23. 29 Id., p. 24; exhibit 8. 30 Marker’s Notice of Reliance, exhibits 83 through 101. 31 Marker’s Notice of Reliance, exhibits 10 through 27. Opposition Nos. 91161363, 91177732 and 91177736 8 n.7 (TTAB 2009). Accordingly, these documents have been considered for what they show on their face but not to demonstrate the truth of what has been printed. Marker’s Objections - Motion to Strike On December 8, 2011, Marker filed a motion to strike evidence attached to Wolverine’s “Second and/or Supplemental Notice of Reliance,” alleging that the evidence was untimely because the notice of reliance was filed after Wolverine’s testimony period had closed. The motion was granted as conceded. Wolverine resubmitted the material on February 27, 2012, during its rebuttal period as plaintiff in the parent case. Marker filed a second motion to strike the evidence as improper rebuttal evidence, arguing that the evidence goes to Wolverine’s case-in- chief in the parent case. Wolverine argues that due to the consolidation of the cases, all proceedings must be tried on the same record; and that because the evidence is admissible in the child cases, it would be impractical for the Board to “put on blinders” and preclude the evidence in the parent case.32 Wolverine’s rebuttal period as plaintiff in the parent case was at the same time its main testimony period as defendant in the child cases. Marker replies that the mere fact that the cases are consolidated does not require the Board to treat the evidence as admitted in all proceedings; that the evidence has already been excluded by the Board’s prior order; and that “[t]o the extent that Wolverine seeks to introduce the evidence identified in the Notice of 32 Wolverine also argued that Marker’s motion to strike should be denied as premature because it was not based on an objection that could have been promptly cured if raised by motion to strike, and that Marker should have raised the issue for the first time in its brief. We do not construe the admonition in TBMP § 532 so narrowly as to require summary denial of Marker’s motion on this basis; however, the better practice is for Marker to have filed its objections to said evidence at the briefing stage. Opposition Nos. 91161363, 91177732 and 91177736 9 Reliance as part of its rebuttal to Marker’s evidence, the evidence should be disregarded and stricken.”33 The evidence Marker seeks to exclude consists of newspaper and magazine articles that were identified during the testimony deposition of Sue Harvey Brown, Patagonia Footwear’s34 marketing manager, as exhibit Nos. 15-34. As such, the evidence has been properly made of record during Wolverine’s main trial period. As for Marker’s objection that the evidence was not properly authenticated during the deposition, inasmuch as newspaper and magazine articles appearing in periodicals are considered self-authenticating under Federal R. Evid. 902(6), the evidence is admitted.35 However, we agree with Marker that the evidence goes to Wolverine’s case-in-chief and that the timing of its filing of the evidence via notice of reliance was otherwise improper rebuttal vis-à-vis the parent case. Trademark Rule 2.122(e). Accordingly, we have considered the documents insofar as they were filed as exhibit Nos. 15-34 to Ms. Brown’s testimony. Marker’s Objections - Filed by Marker With its Brief Marker’s Objections to Ms. Brown’s Testimony 33 Marker’s Motion to Strike Notice of Reliance, pp. 1-2. Emphasis in original. 34 Ms. Brown testified that she works for the Patagonia Footwear division of Wolverine Worldwide, Inc., which has the “official license to market and make and sell [Wolverine] footwear globally.” Brown dep., p. 8. 35 During her testimony, Ms. Brown specifically identified exhibit Nos. 15 and 16 as product reviews that appeared in Travel & Leisure (No. 15) and Aspen Peak magazine (No. 16) as well as confirming that “all of these [i.e., the products being reviewed in the articles] I recognize as Merrell products that were featured in PR reviews.” Brown dep., pp. 39 and 40-41. Ms. Brown also stated that she worked directly on the product placement ads for Wolverine’s goods shown in exhibit Nos. 23 and 30. Even if we were to have excluded the exhibits generally, these four would have been admitted based on Ms. Brown’s authentication. Opposition Nos. 91161363, 91177732 and 91177736 10 Marker objects to portions of Ms. Brown’s testimony. First, as Ms. Brown was only employed by Wolverine during 2001–2009, Marker objects to her testimony regarding events that occurred prior to 2001 and after 2009, and to Exhibit Nos. 10 and 14 as having been created before Ms. Brown’s employment. Ms. Brown’s direct testimony regarding events that took place outside the 2001- 2009 timeframe have not been considered where it is clear the witness has no personal knowledge of such events. We also have not considered exhibit No. 14 and the second page of exhibit No. 10. Ms. Brown testified concerning exhibit No. 14 that she had no personal knowledge of the promotional event described therein.36 Similarly, although Ms. Brown testified that she was familiar with the vendor who printed Wolverine’s t-shirts in 2002, Ms. Brown did not specify that she was familiar with them in 1998, when the second page of exhibit No. 10 (an invoice) was created.37 Secondly, Marker objects to Ms. Brown’s statements regarding whether there is a close relationship between apparel and footwear. Marker contends that Ms. Brown lacks personal knowledge about any such purported relationship and has not been qualified as an expert to offer her opinion regarding same. We find that Ms. Brown has the necessary background and experience in the outdoor footwear market to be aware of companies that have both footwear and clothing brands, and have considered her statements of fact regarding examples of such companies and 36 Brown Dep., p. 61. 37 Brown Dep., p. 23. The objection to the first page of exhibit No. 10 is overruled because that page is dated April 2, 2002, which was within the relevant timeframe. The exhibit consists of two pages referencing two separate transactions. Opposition Nos. 91161363, 91177732 and 91177736 11 her lay opinion as to whether this is a common practice in the industry, giving it whatever probative weight it merits. See Fed. R. Evid. 701 (allowing lay opinions of witnesses where (a) rationally based on the witness’s perception; (b) helpful to clearly understanding the witness’s testimony or to determining a fact in issue; and (c) not based on scientific, technical, or other specialized knowledge within the scope of Rule 702. We do not, however, consider her qualified as an expert in this field. Third, Marker objects to Ms. Brown’s testimony regarding Wolverine’s advertising expenditures or marketing and sales numbers, as well as the introduction of Exhibit 8 to her deposition, for lack of personal knowledge. We have considered Ms. Brown’s testimony to the extent she testified based on her personal knowledge regarding sales of Wolverine’s products, but have not considered her testimony outside the relevant timeframe. As to exhibit No. 8, Ms. Brown stated affirmatively that she recognized the figures listed therein. Therefore, we have considered the exhibit, with the exception of the two years post-2009 (i.e., 2010 and 2011) that occurred following her tenure. However, neither her testimony nor the evidence identified a breakdown of the figures in terms of what goods were represented thereby or what marks were depicted on the goods covered by the sales figures. In view thereof, both testimony and evidence have been considered for whatever probative value they may have. Marker’s Objections to Mr. Zwiers’ Testimony Marker objects to Mr. Zwiers’ testimony on several grounds. First, Marker objects to the testimony to the extent it would be considered part of Wolverine’s case-in-chief in Opp. No. 91161363. Secondly, Marker claims that Mr. Zwiers does Opposit not hav promoti whether certain M the OVA was pre have be testimon testimon mark in find tha to testif may exi knowled also con to the e further marks a are conf basis an opinion ion Nos. 9 e personal onal activi a likelih third-party r. Zwiers L M mar sented to p en presen y has not y goes to the child t Mr. Zwie y regardin st in the ge, goes t sidered M xtent he te admit his nd with M usingly si d helpful testimony 1161363, 9 knowledg ties. Thir ood of con marks. testified to k . W rove that ted durin been con Wolverin cases, the rs had the g Wolveri testimony, o the weig r. Zwiers’ stified tha testimony arker’s m milar. We ness requ has minim 1177732 a e of the u d, Marker fusion exi Wolverin e agree w Wolverine g Wolver sidered fo e’s defense evidence requisite ne’s use of such as t ht of the t testimony t he was p comparin ark, and h find that irements al probat nd 911777 12 se of Wol objects t sts with r e’s first us ith Marke has prior ine’s case- r this pur of its ap was not i personal k its mark hat it was estimony a regarding ersonally g Wolver is lay opi this opinio of Fed. R. ive value a 36 verine’s m o Mr. Zwi espect to e of the C r that to t ity in Opp in-chief in pose. How plication t mproper r nowledge s. Any pu indicated nd not its third-part familiar w ine’s mark nion regar n testimo Evid. 70 s to consu arks in co ers’ testim the parti IRCLE M he extent . No. 9116 that op ever, to t o register ebuttal. I under Fe rported in to be to admissib y uses of ith any su s with su ding whet ny satisfie 1. On th mer perce nnection ony regar es’ marks mark this testim 1363, it sh position. he extent the OVA n addition d. R. Evid. adequacy the best o ility. We h similar ma ch marks. ch third-p her the m s the ratio e other h ption, and with ding and and ony ould His this L M , we 602 that f his ave rks, We arty arks nal- and, we Opposition Nos. 91161363, 91177732 and 91177736 13 will not substitute the opinion of a witness, even an expert witness, for our evaluation of the facts. Edwards Lifesciences Corp., 94 USPQ2d 1399 (TTAB 2010); citing Fisons Ltd. v. UAD Laboratories, Inc., 219 USPQ 661, 663 (TTAB 1983). Marker’s Objections to Ms. Bovee’s Testimony Marker objects to Ms. Bovee’s testimony on the ground that it is improper rebuttal and should have been presented during Wolverine’s case-in-chief. This objection is directed to Ms. Bovee’s testimony regarding when Wolverine distributed apparel and what marks appeared on such apparel. Marker’s objection is well taken with regard to the testimony to the extent it concerns when Wolverine first used those marks pleaded in Opp. No. 91161363, and the extent of such use. This was improper rebuttal testimony and should have been presented during Wolverine’s opening testimony period. However, this information, as with Mr. Zwiers’ testimony, is relevant not only to Wolverine’s case against Marker’s FLYING M mark, but also with respect to Wolverine’s defense in the oppositions brought by Marker against Wolverine’s OVAL M and BLOCK M marks. Thus, we have considered the testimony to the extent it may rebut Marker’s case against Wolverine’s pending applications in Opp. Nos. 9177732 and 91177736. Marker’s Objections to the Fall 2001 Wolverine Catalog Marker argues that Wolverine should be estopped from relying upon its Fall 2001 catalog because it was not produced during discovery, but rather was submitted after Wolverine’s testimony period closed. Wolverine contends that its failure to include the catalog in Wolverine’s timely responses to Marker’s document requests was inadvertent; that Marker will not suffer prejudice; and that Marker Opposit itself un full yea was not believe Spring 2 Winter prejudic to the in P applicat Nos. 788 copies o respecti (with its for a typ 38 Reg. N with Ma referred registrat Sunnen P 39 Reg. N Notice of 40 Marke R packs, kn parkas, j ion Nos. 9 timely dis r, well afte prejudice that no ca 002, whic Olympics. ial. Mark formation ursuant t ion file (fo 75659 and f the par ve cases. M notice of ed letter o. 1719521 rker’s Notic to Reg. No. ion has exp roducts, su o. 1595584 Reliance e r submitted eg. No. 185 apsacks an ackets, ski 1161363, 9 closed nea r the test d by argui talogs sh h was afte We agre er had no disclosed o Tradem r Serial N 7887499 ties’ plea arker als reliance): M mark,39 for “ski bin e of Relianc 1638400 fo ired and th pra. for “safety xhibit 4. copies of t 0699 for “lu d multi-us suits, ski pa 1177732 a rly 100 pa imony cut- ng that un owed use r Marker b e with M opportuni in the cata Th ark Rule o. 765070 1), and the ded regist o filed sta for the ma the stand dings”; regi e exhibit 6 r the SERIF us has no p ski binding wo registra ggage; nam e bags; nam nts, ski ve nd 911777 14 ges that it off period. til the ca of the OV egan usin arker tha ty to cross log. We h e Record 2.122(b) 77), Wolv pleadings rations th tus and tit rk (h ard chara stered Sept . See, e.g., W M mark robative va s”; registere tions for the ely, travel ely, all pur sts, ski hats 36 had in it Marker talog appe AL M ma g its FLYI t reliance -examine ave not con , the rec erine’s ap . In additi at they le copies o ereinafter cter mark ember 22, olverine’s for clo lue, we hav d May 8, 1 mark MAR bags, flight pose sports , pullovers s possessio rebuts the ared, Mar rk on NG M ma on the 2 Wolverine sidered it ord inclu plication f on, the rec have intro f additiona the “SER MARKER 1992; renew Brief, p. 6. thing, but a e not consid 990; renewe KER: bags, ruck bags”; clot , anoraks, s n for almo charge th ker was le shoes be rk at the 2 001 catalo ’s witnesse . des Mark iles (for S ord consis duced in l registrat IF M” mar ,40 the styl ed. Submi Marker als s the ered it. d. Marker sacks, fann hing; name hell suits, s st a at it d to fore 002 g is s as er’s erial ts of the ions k);38 ized tted o ’s y ly, hell Opposit mark Wolveri “retail Marker’ addition W exhibits certain newspap Michael testimon pants, sw namely, Reliance R Reliance 41 Marke R of Relian R namely, . 42 Reg. N bags, car sport coa snowboa athletic u snowboa festivals facilities combine 43 Reg. N Reliance ion Nos. 9 ,41 ne’s regist store serv s Supplem al marks a olverine h ) and two of Wolverin er and m Pereyo, y in accor eaters, hat ski boot bag exhibit 7. eg. No. 255 exhibit 8. r submitted eg. No. 899 ce exhibit 3 eg. No. 171 pants, shirt Marker’s N o. 2876482 ry-on bags ts, winter s rding glove se, skiing rd bindings featuring w and equipm d declaratio o. 3368041 dated Apri 1161363, 9 and the sty ration for ices featur ental No s being of as submi notices of e’s discov agazine including dance with s, headban s, ski bags 8197 for “sk copies of t 119 for “ski . 1716 for “al s, sweaters otice of Re for “skiing and rucksa port gloves s, skiing an and snowbo and parts inter sport ent for win n accepted ; registered l 25, 2012; e 1177732 a lized mar the mark ing footw tice of Re record in t tted six t reliance ( ery reques articles; a exhibits). our evide ds, shirts, T , and ski bin i bindings wo registra bindings”; l purpose s , jackets, he liance exhib and snowbo cks” in Clas , headwear d snowboar arding mitt therefor and s, organizin ter sports and acknow January 15 xhibit 104. nd 911777 15 k . MERRE ear, cloth liance.43 his consol estimonial introducin ts; third-p nd the d We ha ntiary ruli -shirts, sho ding bags” and parts th tions for the renewed as port bags, t adwear an it 5. arding helm s 18; clothi , winter spo ding goggle ens, ski bin snowboar g winter sp tournament ledged. M , 2008. Ma 36 42 Marker LL (stand ing, bags, The par idated pro depositio g Marker arty regist iscovery ve consid ngs. rts, caps, a ; renewed. erefor”; re mark: amended t otebags and d gloves”; r ets” in Cla ng, namely rts mittens s, elbow, kn dings and ds” in Class orts tourna s” in Class arker’s Not rker’s Supp also subm ard chara and acce ties have ceeding. n transcri ’s discover rations an deposition ered this nd gloves; a Marker’s N newed. Ma o . rucksacks enewed as a ss 9; “all-p , ski boot ba ” in Class 2 ee and shi parts theref 28; and “or ments and 41; Section ice of Relian lemental N itted a cop cter form) ssories” u treated t pts (inclu y response d applicat transcrip evidence nd sport ba otice of rker’s Notic Marker’s N ” and “cloth mended to urpose spor gs, ski bibs 5; “skiing a n guards fo or, snow sk ganizing providing s 8 and 15 ce exhibit otice of y of for nder hese ding s to ions; t of and gs; e of otice ing; t , nd r is, 9. Opposition Nos. 91161363, 91177732 and 91177736 16 Marker has submitted six testimonial depositions (including exhibits); the affidavit of Greg Grip, Vice President of Marker Volkl USA (with exhibits; cross examination and redirect was taken orally)44; a notice of reliance (introducing copies of its registrations; magazine advertisements and news articles; third-party registrations;45 portions of Mr. Zwiers’ discovery deposition and exhibits; two statements of use; several SEC filings; and discovery responses produced by Wolverine in response to Marker’s discovery requests); and a supplemental notice of reliance (introducing a status and title copy of Wolverine’s registration for the mark MERRELL, a magazine article, portions of the discovery depositions of Michael Pereyo and Mr. Zwiers, with exhibits, and further discovery responses produced by Wolverine). Standing Both Wolverine (as plaintiff in Opp. No. 91161363) and Marker (as plaintiff in Opp. Nos. 91177732 and 91177736) have made their pleaded registrations of record, showing themselves as owner and that the registrations are valid and subsisting. Accordingly, they have established their standing in the respective oppositions. 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). Marker also has standing in the counterclaims by 44 The parties are commended for stipulating to submission of Mr. Grip’s direct testimony under affidavit and the efficiencies realized thereby, despite their evidentiary contentions discussed above. 45 Marker also submitted copies of third-party registrations for the first time with its brief. These have not been considered. Trademark Rule 2.142(d); TBMP §§ 1203.02(e), 1207.01. Opposition Nos. 91161363, 91177732 and 91177736 17 virtue of being the defendant in the parent case, and the fact that Wolverine has asserted its registrations against Marker therein. Anthonys Pizza & Pasta International, Inc. v. Anthonys Pizza Holding Company, Inc., 95 USPQ2d 1271, 1274 (TTAB 2090); Aries Systems Corp. v. World Book Inc., 26 USPQ2d 1926, 1930 n.12 (TTAB 1993). Marker’s Counterclaims for Fraud Because Wolverine’s claims in Opp. No. 91161363 are dependent upon whether its pleaded registrations are cancelled, we first address Marker’s counterclaims to cancel Reg. Nos. 2772456 and 2860830. Both registrations have been attacked as having been fraudulently procured. “Fraud in procuring a trademark registration or renewal occurs when an applicant knowingly makes false, material representations of fact in connection with his application.” In re Bose Corp., 91 USPQ2d 1938, 1939 (Fed. Cir. 2009), quoting Torres v. Cantine Torresella S.r.l., 808 F.2d 46, 48, 1 USPQ2d 1483, 1484 (Fed. Cir. 1986). A party seeking cancellation of a trademark registration for fraud bears a heavy burden of proof. In re Bose Corp., 580 F.3d 1240, 91 USPQ2d 1938, 1939, citing W.D. Byron & Sons, Inc. v. Stein Bros. Mfg. Co., 377 F.2d 1001, 153 USPQ 749, 750 (CCPA 1967). “Indeed, ‘the very nature of the charge of fraud requires that it be proven ‘to the hilt’ with clear and convincing evidence. There is no room for speculation, inference or surmise and, obviously, any doubt must be resolved against the charging party.’” In re Bose, 91 USPQ2d at 1939, citing, Smith Int'l, Inc. v. Olin Corp., 209 USPQ 1033, 1044 (TTAB 1981). Opposition Nos. 91161363, 91177732 and 91177736 18 Marker claims that Wolverine knew, at the time it filed the statements of use in 2009 (Reg. No. 2772456) and 2010 (Reg. No. 2860830), that it was not using the mark on all of the goods recited in the registrations. Upon careful consideration of the testimony of Mr. Zwiers, Wolverine’s corporate counsel, and Ms. Brown, Wolverine’s employee, regarding the circumstances surrounding their signing of the respective statements of use, we find that they did not have the requisite intent to defraud the Office. Each independently testified to Wolverine’s corporate procedures, which we find reasonable, for ensuring that the statements accurately represented the goods upon which the marks were used, and each independently advised that they followed those procedures at the time. For Reg. No. 2860830, covering backpacks and bags, Mr. Zwiers further testified that he believed the mark was in use at the time he signed the statement of use (on January 21, 2004) because Wolverine first presented its line of packs and bags at a New York trade show on December 10, 2003.46 As to clothing, Ms. Brown testified to her awareness of the Oobe project,47 the presentation that Oobe made to Wolverine in January 2002, the sample line of clothing produced by Oobe as part of its presentation, and Wolverine’s subsequent agreement to, in her words, “purchase the apparel and then it was sold at retail. Liquidated, basically.”48 Mr. Pereyo confirmed that the Oobe apparel was liquidated and identified the date as being sometime in the “Fall” of 46 Zwiers Dep., p. 35. 47 Oobe Inc. was contracted by Wolverine in 2002 to make a presentation of a sample line of apparel for Wolverine to consider in connection with its future entry into the apparel market. See, gen., Pereyo deposition. 48 Brown Dep., p. 35. Opposit 2002.49 jackets, stateme most, if not show it a regi T in procu Nos. 27 W CIRCLE bags, du ground B King Ca (CCPA 1283-12 of Techn not be counter 49 Pereyo 50 Id., p. ion Nos. 9 The Oobe cardigans nt of use ( not all, of n that W stration fo he record ring the r 72456 and M e turn ne M mark ffel bags, of priority ecause the ndy Co., I 1974); and 84 (TTAB ology, 492 shown by claims for Dep., p. 75 74, exhibit 1161363, 9 sample l , caps, and July 21, 20 the clothi olverine in r an overly does not su egistration 2860830 o arker’s C xt to Mar for travel ba and likelih registrat nc. v. Eun Brewski 1998). Se F.2d 1399 a plaintif cancellati . 46. 1177732 a ine of clot t-shirts.5 03), the r ng items i tentionall broad list pport a de s. Accord n the basis ounterclai ker’s coun “backpack gs, fanny ood of con ion is subj ice King’s Beer Co. e also, Ma , 181 USP f relying on”). Both nd 911777 19 hing inclu 0 Thus, as ecord evide dentified i y sought t of goods. terminati ingly, Mar of fraud a m - Likelih terclaim t s, daypack packs, sho fusion. ect to can Kitchen, I v. Brewsk ssey Junio Q 272, 27 on a regis parties m 36 ded shirts of the da nce shows n the regis o defraud on that Wo ker’s coun re dismiss ood of Co o cancel R s, all-pur ulder bag cellation, nc., 496 F i Brothers r College, 5 n.6 (CCP tered mar ay rely o , pants, ve te Ms. Bro the mark tration, an the Office lverine co terclaims ed with pr nfusion eg. No. 28 pose spor s and tote priority is .2d 1400, Inc., 47 U Inc. v. Fa A 1974) (“ k unless n the filin sts, pullov wn signed was in us d Marker into awar mmitted fr to cancel ejudice. 60830 for t and ath bags” on at issue. 182 USPQ SPQ2d 1 shion Inst prior use the defen g date of ers, the e on has ding aud Reg. the letic the Cf., 108 281, itute need dant any Opposit pleaded use of it at 1283 they ow W Wolveri Wolveri is Decem two date M M mark as of Ma M winter s next; th Februar merchan showing testimon 51 Wiant 52 Santos 53 We us FLYING term “lu 54 Exhibi ion Nos. 9 or involve s mark for -1284 (par n, but the olverine’s ne’s bona ne has cla ber 10, 2 s, Wolveri arker mu , o rch 27, 20 arker clai ki season e 2003 wi y 2003. dise (bear luggage5 y does no Dep., p. 52 Dep., p. 85 e the term “ M applicat ggage” is ta t 1-R to Wi 1161363, 9 d registrat the goods ties may evidence o Reg. No fide inten imed as th 003. Beca ne may re st therefor r in a mar 02, and th ms first us .”51 Ski se nter ski se Marker ing the FL 3 bearing t support . . luggage” w ion, namely ken from M ant depositi 1177732 a ion they o listed in s rely on th f record ot . 2860830 t to use e date of f use the a ly upon M e demonst k confusin at a likelih e of the F asons run ason accor allegedly YING M the FLY an earlier ith respect , “all-purpo arker’s cata on. nd 911777 20 wn as esta uch regist e respectiv herwise de was file the mark irst use of pplication arch 27, 20 rate that i gly simila ood of con LYING M from Aug dingly wo started fi mark) in J ING M m date of us to Marker’s se sport ba logs for the 36 blishing a ration. B e filing d termines p d on Mar in comme its CIRCL filing dat 02 as its p t establish r to Wolve fusion exis mark “int ust of one uld have r lling orde uly 2002;5 ark is d e of the m goods to in gs, carry-on se goods. constructi rewski Be ates of an riority). ch 27, 20 rce. The E M mar e is the ea riority dat ed rights rine’s CIR ts between ernational year to F un from A rs for sk 2 but the e ated “04-0 ark on lug clude the g bags, ruck ve date of er, 47 USP y registrat 02, based earliest k on rliest of t e. in its FLY CLE M m the mark ly for the 2 ebruary of ugust 200 i-season 2 arliest cat 5,”54 and gage. Ind oods of its sacks.” Th first Q2d ions on date bags hese ING ark, s. 003 the 2 to 003 alog the eed, e Opposit Marker’ on lugg first sh were di FLYING priority M on lugg that use M mark therefor later u Mobilph 1990) (A earlier therefro Ideal Se (marks Lake 20 that the 55 Wolve and 2. 56 Wiant ion Nos. 9 s response age indica own to pro splayed in M mark date of Ma arker arg age during of this m to be leg e “tack” th se of the one Inc., 1 party se mark is “t m, and wo c. Hardwa must crea 02” catalo INTERM rine’s Notic Dep., p. 43 1161363, 9 to Wolve tes that s spective p the 2004 appears rch 27, 20 ues that it the Wint ark gives i ally equiv e earlier FLYING 3 USPQ2d eking to re he legal e uld be con re Corp., te same, c g from the EDIARY e of Relianc . 1177732 a rine’s disc amples be urchasers -2005 cata to have b 02. first used er Olympic t priority. alent to M use of the M mark. 2036, 20 ly on its u quivalent sidered by 527 F.2d 1 ontinuing 2002 Wint FLYING M e exhibit C nd 911777 21 overy requ aring the in Decem log.55 Thu een used an INTER s at Salt We consi arker’s F INTERME See Am 39 (TTAB se of an e of the mar purchaser 221, 1224 commercia er Olympi mark w , Marker’s R 36 est for fir FLYING M ber 2003 s, the ea on luggag MEDIARY Lake City der the IN LYING M DIARY F erican P 1989), aff’d arlier ma k in ques s as the s , 188 USP l impressi cs does no as used d esponses t st use dat mark o and that rliest date e post-dat FLYING in Februa TERMED mark an LYING M aging Inc 923 F.2d rk may do tion or ind ame mark Q 485, 487 on). How t support M uring the o Interroga es of the m n luggage these sam on which es Wolver M mark ry 2002,56 IARY FLY d Marker mark ont . v. Amer 869 (Fed. so only if istinguish ”); Ilco Cor (CCPA 1 ever, the “ arker’s c timefram tories Nos. ark was ples the ine’s and ING may o its ican Cir. the able p. v. 976) Salt laim e on 1 Opposition Nos. 91161363, 91177732 and 91177736 22 luggage, bags, packs or the like. The catalog, exhibit 1-L to Wiant’s testimony deposition, shows use of the mark MARKER on luggage, not the INTERMEDIARY FLYING M mark, which is shown in use only as to a “competition glove” and a baseball cap. It is in the 2004-2005 catalog, as noted above, that the first appearance of the FLYING M mark is seen as applied to luggage. Therefore, Marker has not pre-dated Wolverine’s priority date of March 27, 2002 through use of the INTERMEDIARY FLYING M mark. Marker cannot claim priority based on use of these marks on luggage.57 Marker argues that it can pre-date Wolverine’s priority date through its use and registration of two other marks. First, Marker owns Reg. No. 1719521 for the SERIF M mark for “ski bindings,” filed March 5, 1990. Marker has also shown that it used the SERIF M mark on bags as early as 1998.58 As noted above, Marker may rely on earlier use of a different mark only if it is considered to be legally equivalent to its FLYING M mark, that is, only if they create the same, continuing commercial impression. We do not consider Marker’s SERIF M mark to be sufficiently similar to its FLYING M mark to allow Marker to “tack” its first use of the SERIF M mark onto its later use of the FLYING M mark. Accordingly, Marker cannot claim priority on the basis of this mark.59 57 Marker does not hold a registration for the INTERMEDIARY FLYING M mark. And while Marker’s registration for the MARKER mark does pre-date Wolverine’s priority date, the mark is not legally equivalent to the FLYING M mark and therefore does not enable Marker to “tack” the priority date of the MARKER mark to the FLYING M mark. 58 Wiant Dep., p. 40. 59 For the same reason, Marker cannot rely on earlier use of the MARKER marks to establish priority. These marks create entirely different impressions from the single letter “M” marks. Marker’s argument that because the Office allowed it to amend its registration Opposit M ski bind part of The evi letter/nu registra pre-date are rela binding of the ty B its coun is dismi W Section connect not typi ownersh the concl . M moderni 60 Regist 61 Grip a ion Nos. 9 arker also ings,” filed a combina dence doe mber com tion for th Wolverin ted to lug s to the FL ped letter ecause Ma terclaim to ssed. e now tur 2(d) in O ion with o cally at is ip in a va (with serifs usion that oreover, th zed MARKE ered May 8 ffidavit, par 1161363, 9 owns Re October 1 tion mark s not show bination e letter M e’s use of i gage, such YING M m M mark. rker cann cancel Re n to the is pp. No. 9 ur decision sue in an lid and su ) to the “mo the MARKE e fact that R mark is , 1990; rene agraph 6. 1177732 a g. No. 159 6, 1989.60 , such as that Ma forms, on mark, an ts mark, t that Mar ark. Thu ot show th g. No. 286 P sue of prio 1161363. vis-à-vis oppositio bsisting P dernized ve R marks a the “M” wi the same do wed. nd 911777 23 5584 for th Marker h M48, M38 rker has u luggage. d its use here is no ker can “t s, Marker at it has p 0830 on th riority rity with As noted Marker’s c n where a rincipal R rsion” re legally eq thin the FL es not mak 36 e typed l as shown , or M27, sed the l While the of the ma evidence t ack” its u cannot cl riority in e ground respect to above, p ountercla plaintiff egister re (withou uivalent to YING M an e them lega etter M m that it use on safety etter M al filing da rks M48, M hat “safety se of these aim priori connection of likeliho Wolverine riority wa im. Howe pleads an gistration. t serifs) doe the FLYIN d the “M” w lly equival ark for “sa d the mar ski bindin one, or in te of Mark 38, and ski bindi marks on ty on the b with lugg od of confu ’s claim u s at issu ver, priori d later pr King Ca s not comp G M mark ithin the ent. fety k as gs.61 the er’s M27 ngs” ski asis age, sion nder e in ty is oves ndy, el Opposition Nos. 91161363, 91177732 and 91177736 24 182 USPQ at 110 (Trademark Act requires consideration under Section 2(d) of an opposer’s registration, regardless of whether the opposer is the prior user). Because Wolverine owns an unchallenged registration, as well as two registrations the counterclaims against which have been dismissed herein, priority would ordinarily not be at issue in this case, leaving Wolverine to prove its pleaded ground of likelihood of confusion. Likewise, in Opp. Nos. 91177732 and 91177736, because Marker pleaded ownership of an unchallenged registration, priority would ordinarily not be at issue in these oppositions, leaving Marker to its proof on the issue of likelihood of confusion. In this consolidated proceeding, however, Wolverine has proven ownership of its pleaded registrations (in Opp. No. 91161363) and Marker has proven ownership of its pleaded registration (in Opp. Nos. 91177732 and 91177736). We must therefore decide whether to treat priority as at issue in both oppositions, or as being not at issue in either. The predecessor court to our reviewing court, the Court of Custom and Patent Appeals, in King Candy interpreted Section 2(d) as prohibiting any requirement that an opposer who owns an unchallenged registration prove prior use. The Court’s rationale was that to hold otherwise would negate the language of the statute (“No trademark…shall be refused registration on the principal register on account of its nature unless it…(d) Consists of or comprises a mark which so resembles a mark registered…,or…previously used in the United States by another and not abandoned”).62 The court also concluded that if such opposer were required to prove prior use, this would place the validity of its pleaded registration in issue, 62 Emphasis supplied. Opposition Nos. 91161363, 91177732 and 91177736 25 directly conflicting with Trademark Rule 2.106(b), which requires that a counterclaim (i.e. petition to cancel) must be filed in order to place the validity of a pleaded registration in issue. It would also conflict with the benefits conferred by Section 7(b), including the presumptions that a registration is prima facie evidence of ownership, validity and exclusive right to use the registered mark, and of Section 7(c)’s constructive use priority. We find these reasons pertinent to the case at hand. Here, both parties have obtained registrations, and with respect to the marks and the goods/services recited therein, are entitled to the benefits of Section 7, the prohibition against having to prove priority embedded in Section 2(d), and the procedural protection afforded them by Rule 2.106(b). Thus, in Opp. No. 91161363, even if Marker were to show that it is the prior user of its marks, and in Opp. Nos. 91177732 and 91177736, even if Wolverine were to show that it is the prior user of its marks, priority is not at issue for the registered marks and the respective listed goods and services. See, e.g., Dating DNA LLC v. Imagini Holdings Ltd., 94 USPQ2d 1889, 1893 (TTAB 2010); M.C.I. Foods, Inc. v. Bunte v. M.C.I. Foods, Inc., 86 USPQ2d 1044, 1046 (TTAB 2008) (“despite being consolidated, each proceeding retains its separate character. The decision on the consolidated cases shall take into account any differences in the issues raised by the respective pleadings….”). Cf. Calypso Technology, Inc. v. Calypso Capital Management, LP, 100 USPQ2d 1213, 1219 (TTAB 2011) (in combined opposition and cancellation proceeding, priority was not at issue in the opposition but was at issue in the cancellation, where both parties owned registrations); and TBMP § 511 (2013). Opposition Nos. 91161363, 91177732 and 91177736 26 On the other hand, we have considered the evidence of use that each party has submitted in its attempt to prove that it is the first to have used its marks on goods that fall outside the scope of the pleaded registrations. Likelihood of Confusion We now turn to a discussion of the substantive merits of Wolverine’s likelihood of confusion claims in Opp. No. 91161363. Our likelihood of confusion determination under Section 2(d) is a legal conclusion, based on an analysis of all of the facts in evidence that are relevant to the factors bearing on the likelihood of confusion issue (the du Pont factors). See In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973); In re Dixie Restaurants Inc., 105 F.3d 1405, 41 USPQ2d 1531, 1533 (Fed. Cir. 1997). “In any likelihood of confusion analysis, two key considerations are the similarities between the marks and the similarities between the goods and/or services.” In re Max Capital Group Ltd., 93 USPQ2d 1243, 1244 (TTAB 2010). See also Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1357, 192 USPQ 24 (CCPA 1976). These factors, and the other relevant du Pont factors in the proceeding now before us, are discussed below. Because evidence has been made of record regarding the use of “M” marks by third- parties; the channels of trade; the relevant classes of consumers; and the alleged lack of actual confusion, we have considered these additional factors in making our determination. To the extent any other du Pont factors for which no evidence or argument was presented may nonetheless be applicable, we treat them as neutral. Comparison of the Marks Opposit U the part sound, c Clicquo (Fed. C subjecte sufficien confusio to resul 1991), a Derby S conditio compari proper f rather t 190 USP M M mark black se Both ov ovals sl prospec ion Nos. 9 nder the f ies’ marks onnotatio t Ponsardi ir. 2005). d to a s tly simila n as to th t. Spoons ff’d unpub kate Corp ns, consum sons betw ocus is on han specif Q 106 (TT arker’s FL in t t against als are dr ant in diff tive purcha 1161363, 9 irst du Po when the n and com n Maison F The test ide-by-sid r in term e source of Restauran lished, No ., 206 US ers do n een marks the recoll ic impress AB 1975) YING M m erms of ov a white b awn so th erent dire sers, who 1177732 a nt factor, y are view mercial im ondee En is not wh e compari s of the the goods ts Inc. v. M . 92-1086 PQ 255, ot necessa , and must ection of t ion of the . ark erall appe ackground at their la ctions is u under actu nd 911777 27 we conside ed in their pression. 1772, 396 ether the son, but ir overall offered u orrison I (Fed. Cir. J 259 (TTA rily have rely upon he averag marks. S is strik arance. B with a b rger sectio nlikely to al market 36 r the sim entireties Palm Ba F.3d 1369 marks can rather w commerc nder the r nc., 23 US une 5, 19 B 1980) ( the luxury their imp e custome ealed Air ingly sim oth marks rushstrok n is horiz make a s ing condit ilarity or d in terms y Imports , 73 USPQ be distin hether th ial impre espective m PQ2d 173 92); Dassle under act of makin erfect reco r, who ret Corp. v. S ilar to Wol comprise e oval dra ontal. Th ignificant ions, are l issimilari of appeara , Inc. v. V 2d 1689, guished w e marks ssion so arks is li 5, 1741 (T r KG v. R ual marke g side-by llections). ains a gen cott Paper verine’s O the letter M wn aroun e fact that impressio ikely to me ty of nce, euve 1694 hen are that kely TAB oller ting -side The eral Co., VAL in d it. the n on rely Opposit recall a feature spoken Enterpr and party’s that th Christia 1569 (T conflicti a findin C mark impress leading longer f carriers commer same to the rele marks. with res ion Nos. 9 letter “M” of both m and they w ises, LLC, , both mark stan e public is n Broadca TAB 2007 ng initials g of likelih omparing , we a ions. Bot edge. The ront “leg” of revers cial impre the exten vant consu The first d pect to Wo 1161363, 9 in an oval arks. “[T] ould hav 85 USPQ2 containin ds for qui aware o sting Netw ) (no evide CBN and ood of conf Wolverine gain find h marks letter itse to a shor e backgro ssions. I t the mark mer is aw u Pont fa lverine’s C 1177732 a design. T o that ext e the sam d 1187, 1 g a stylize te differen f the unde ork, Inc. nce that ABS-CBN usion with ’s CIRCLE the mark contain a lf appears ter back und. The n pronunc s would b are of the ctor thus a IRCLE M nd 911777 28 he letter “M ent, the m e letter m 199 (TTAB d letter “S t words, rlying de v. ABS-CB the public ). Accordi respect to M mark s to be si slanted le to be on a “leg.” Bot se visual iation, ag e spoken, a derivation lso favors mark. 36 ” in the m arks woul ark meani 2007) (co ”). Althou no record rivation of N Interna was awar ngly, the f Wolverin wi milar in t tter “M” n incline, h letters similaritie ain, both nd there of the le a finding arks is al d sound t ng.” Nike, mparing t gh the le evidence e the lette tional, 84 e of the m irst du Pon e’s OVAL M th Marker heir overa with a pro decreasing are set ag s create s marks wo is no evide tter “M’s” of likeliho so an esse he same w Inc. v. WN he marks tter M in xists to p rs. Cf., USPQ2d 1 eaning of t factor fa mark. ’s FLYING ll comme minent fr in size fro ainst circ imilar ov uld sound nce to sug in the par od of confu ntial hen BA each rove The 560, the vors M rcial ont- m a ular erall the gest ties’ sion Opposit Third-p T length o the exte Giant F Cir. 198 present extent o other ha without have str registra fo footwea M because use. M between between marks. 63 Brown ion Nos. 9 arty Use he strengt f time the nt of adve ood, Inc. v 3). Wolv ed probati f advertisi nd, the m resort to c ong inher tions. Th r a relati r and in 19 arker arg marks com arker argu various “ Wolverin Dep., p. 21 1161363, 9 of “M” Ma h of a ma mark has rtising or . Nation’s erine has ve evidenc ng sufficie arks are f laims of a ent source e evidence vely long 98 on t-sh ues that W prised of es that th M” marks e’s OVAL ; exhibit 9. 1177732 a rks rk is deter been in u promotion Foodservi not argu e regardi nt to show anciful, ha cquired di -indicating shows th period of irts.63 olverine’s the letter is eviden for clothin M and C nd 911777 29 mined by se, the vo of the go ce, Inc., 71 ed that it ng volume that its m ve been r stinctivene power wit at Wolveri time nati marks are “M” within ce demons g, and th IRCLE M 36 a variety lume of sa ods with 0 F.2d 15 s marks a of sales arks are f egistered o ss under h respect ne has us onwide; fi weak in a circular trates tha at they cou marks an of factors les under which the 65, 218 U re famou under its amous or s n the Prin Section 2(f to the goo ed the CIR rst use w connection carrier ar t consume ld therefo d Marker , including the mark mark is u SPQ 390 ( s and has marks or trong. On cipal Reg ) and, as s ds listed in CLE M m as in 1999 with cloth e common rs disting re disting ’s FLYING the and sed. Fed. not the the ister uch, the ark on ing, ly in uish uish M Opposit “E containi conditio the sou USPQ2d 1514 (T compan The ma 64 Killian offering Mountai exhibit 2 65 Id., ex renewed 66 Id., ex 67 Cherm 68 Neves ion Nos. 9 vidence o ng a certa ned to look rce of goo 1559, 15 TAB 2005 ies with st rks and th Dep., exhi for sale hat n LLC; Reg 8. hibit 6. The ; Marker’s n hibit 9. oshnyuk D Dep., exhib 1161363, 9 f widespr in shared t to the oth ds or serv 65 (TTAB ). Marker ylized “M” e goods on dis dis dis dis dis bit 3. A cop s and a sho . No. 34316 mark has otice of rel ep., exhibit it 3. 1177732 a ead third erm is com er elemen ices in th 1996); Ca introduce design ma which the played on played on played on played on played on y of this co ulder bag. 34; register been regist iance exhib 3. nd 911777 30 -party use petent to ts of the m e field.” refirst of d several rks displa y were disp a t-shirt;64 a t-shirt;65 a t-shirt66 a t-shirt a a t-shirt;69 mpany’s we The mark h ed May 20, ered by LeM it 34. 36 , in a pa suggest th arks as a In Re Bro Maryland, apparel it yed within layed are and on a g nd a pair o bsite was a as been reg 2008; Mark ans Corpo rticular fi at purcha means of adway Ch Inc., 77 U ems offere circular o : love;67 f boxer sh lso included istered by M er’s notice ration; Reg eld, of m sers have b distinguis icken Inc SPQ2d 1 d by diffe r oval carr orts;68 as exhibit armot of reliance . No. 28122 arks een hing ., 38 492, rent iers. 5, 05; Opposit B within Wolveri strength classes 69 Id., ex Reg. No. 70 Cherm 71 Id., ex Foundat 72 Id., ex Minneso has been 73 Id., ex 3820041 74 We no party us ion Nos. 9 ased on M a circular ne’s mark of plaint 9, 18, 28, a hibit 7. The 2201018; r oshnyuk D hibit 6. The ion; Reg. N hibit 9. The ta without accepted a hibit 17. Th ; registered te that the e of “M” ma 1161363, 9 dis dis dis dis arker’s sh carrier co s are not s iff’s mark nd 41, but mark has enewed; Ma ep., exhibit mark has o. 2298792; mark has the carrier; nd acknowl e mark ha on July 20, evidence of rks on “bag 1177732 a played on played on played on played on owing, we mmonly i trong in t (s) favors not in clas been regist rker’s notic 5. been regist renewed; M been regist Reg. No. 27 edged; Mar s been regis 2010; Mar third-party s,” namely, nd 911777 31 a glove;70 a hat;71 a hat72; an a t-shirt;73 agree tha dentify clo his class. a finding s 25.74 ered by Mo e of relianc ered by the arker’s not ered by the 88911; a Se ker’s notice tered by an ker’s notice use provid an online c 36 d t marks c thing. A The du P of likeliho torola Trad e exhibit 31 Memphis R ice of relian Regents of ctions 8 an of reliance individual of reliance ed by Mark atalog of m omprised ccordingly ont factor od of con emark Hold . edbirds Ba ce exhibit the Univer d 15 combi exhibit 30. , Bryan Ket exhibit 40. er includes erchandise of a letter , we find regarding fusion onl ings, LLC. seball 32. sity of ned declara tles; Reg. N some third being offere “M” that the y in ; tion o. - d Opposit Compa U of the registra its CIR types o Interna viewed or servi services Ltd., 89 applicat applicat In applicat 1 W snowboa issue wi under th Chermos above) th showing ion Nos. 9 rison of th nder the s goods as t tions. Wo CLE M m f bags. M tional Cla as a group ces in eac must be c USPQ2d ion is in ions). asmuch a ion, we ad . Interna olverine rding hel th respect e Mazamba hnyuk Dep at includes insufficient 1161363, 9 e Goods econd du P hey are i lverine ha ark f arker ha sses 9, 18 of applicat h class, co onsidered 1571, 15 the same s opposer dress the s tional Cla has not m mets or go to the goo letter “M” ., exhibit 20 an over-th proof of m 1177732 a ont factor dentified s registere or footwea s applied , 25, 28 an ions for re mbined in separately 74 (TTAB position i has opp imilarity o ss 9 – “Sk ade use ods relate ds for whi mark (show ); and a cat e-shoulder arket weakn nd 911777 32 , we deter in Marker d its OVA r, various to registe d 41. A gistration to one ap . See G&W 2009) (a t would b osed all f f goods for iing and of any of d to such ch Wolveri n above) th alog under bag (see Kil ess of Wolv 36 mine the s ’s applica L M mark articles o r its FLY multiple-c of a mark plication. Laborato n applica e had it f ive classe each clas snowboa its plead helmets. ne has reg at includes the Marmo lian Dep., e erine’s ma imilarity o tion and for f clothing ING M m lass appli in connect Each cla ries, Inc. v nt for a iled sever s of good s. rding hel ed marks While pri istrations “bags” (see t letter “M” xhibit 5.). rks with re r dissimila in Wolver footwear, , and asso ark cation ma ion with g ss of good . G W Pha multiple c al single-c s in Mark mets.” on skiin ority is no (i.e., footw mark (sho We find thi spect to “ba rity ine’s and rted in y be oods s or rma lass lass er’s g or t at ear, wn s gs.” Opposition Nos. 91161363, 91177732 and 91177736 33 clothing or bags), Wolverine has not presented any testimony or evidence showing that footwear, clothing or bags are related to skiing or snowboarding helmets. Marker, on the other hand, has shown that it has made use of its FLYING M mark on helmets.75 Accordingly, as Wolverine cannot prove priority for these goods, Wolverine cannot prevail on its claims with respect to class 9. 2. International Class 28 – “Skiing and snowboarding gloves, elbow, knee and shin guards for athletic use, ski bindings and parts therefor, snow skis, snowboard bindings and parts therefor, snowboards.” Because the goods in Class 28 cover a variety of items, we note that in the context of likelihood of confusion, it is sufficient if priority and likelihood of confusion is found with respect to any item that comes within the identification of goods in the class. Tuxedo Monopoly, Inc. v. General Mills Fun Group, 648 F.2d 1335, 209 USPQ 986, 988 (CCPA 1981); Rocket Trademarks Pty Ltd. v. Phard S.p.A., 98 USPQ2d 1066, 1073 (TTAB 2011) (“[A] likelihood of confusion may be found with respect to a particular class based on any item within the identification of goods for that class.”). Wolverine has not made use of any of its marks on any of the items listed in Marker’s application.76 It also has not presented any testimony or evidence showing that these goods are related to footwear, clothing or bags. On the other 75 Marker states in its Notice of Reliance that exhibits 10-27 thereto show products bearing the FLYING M mark. The exhibits appear to show the mark on helmets and snow skis (although the copies are quite indistinct). 76 It is noted that “gloves” appear in class 25, but that “skiing and snowboarding gloves” appear in class 28. Wolverine’s class 25 registration (Reg. No. 2772456) initially included “gloves” but these were deleted from the identification of goods upon the filing of the Section 8 affidavit. Opposit hand, M has use has use cannot 28. 3 s a N marks i footwea the opp cannot 41. In the FLY 4 r W “backpa fanny p counter 77 Reg. N 78 Grip a 79 Wiant ion Nos. 9 arker own d variation d the FLY prove prio . Interna ports, org nd equipm either Wo n associat r, clothing osition, be prove prio accordan ING M ma . Interna ucksacks olverine’s cks, daypa acks, sho claim to ca o. 1595584 ffidavit, par Dep., p. 7; 1161363, 9 s a registr s of the l ING M ma rity, Wolve tional C anizing ent for w lverine no ion with a or bags a ars the bu rity, Wolve ce with th rk for the tional C .” Reg. N cks, all-pu ulder bag ncel this m ; registered agraph 6. exhibit 1K. 1177732 a ation for t etter “M” rk rine cann lass 41 – winter s inter sp r Marker h ny of the re related rden of pr rine cann e above fin goods and lass 18 – o. 286083 rpose spo s and to ark, prior May 8, 199 nd 911777 34 he typed l (i.e., M48, on ski g ot prevail “Organiz ports tou orts tourn as shown se service to these s oof on its ot prevail dings, Ma services in “All-purp 0 for th rt and ath te bags.” ity is not 0; renewed 36 etter M fo M38, M27 loves.79 A on its clai ing festi rnament aments.” that it ha s. Wolver ervices. W claims. A on its clai rker is ent Classes 9 ose spor e CIRCL letic bags, As we at issue in . See Wian r “safety s ) on ski b ccordingly ms with r vals feat s, provid s made us ine has n olverine, ccordingly ms with r itled to a r , 28 and 4 t bags, ca E M m duffel bag have de this case t Dep., p. 3 ki binding indings,78 , as Wolve espect to c uring win ing facili e of any o ot shown as plainti , as Wolve espect to c egistration 1. rry-on b ark co s, travel b nied Mark with respe 1; exhibit 10 s,”77 and rine lass ter ties f its that ff in rine lass for ags, vers ags, er’s ct to . Opposit these go legally i W “footwea bags, ru of natur A ion Nos. 9 ods. The dentical in olverine’s r.” Wolve cksacks” a al expansi s the Boar Unde a ma posse subse same subse goods expec busin doctr expan is, wh the o first that from Amon whet secon area poten first a new exten busin servic and c the s user 1161363, 9 goods of W part to th registrati rine argu re related on” of footw d has prev r the doct rk in con sses super quent use or simila quent use or servi t to eman ess under ine is str sion, whe ere the go ne hand, a user has p purchasers the same s g the fa her an ex d area of of busin tially may area of bus technolog sion of th ess; (2) t es in each lasses of c ame, so th in its first 1177732 a olverine’s ose in Mar ons for the es that foo goods bec ear. iously exp rine of nat nection wi ior rights rs of the r goods o rs of the ces which ate from i the ma ictly limi ther actua ods or ser nd the go rior use, o would ge ource. ctors to pansion is business ess, into expand) iness (of t y or know e technolo he nature area; (3) ustomers f at the go area of bu nd 911777 35 registratio ker’s appl OVAL M twear and ause these lained: ural expan th particu in the ma same or r services same or purchase t in the no rk. … Th ted to th l or poten vices of th ods or ser n the oth nerally ex be consid natural (that is, t which th is a distin he prior us -how, or w gy involve and pur whether or the two odwill est siness wou 36 n for the C ication. and CIRC “all-purp types of b sion, the lar goods rk not only similar m , but also similar m rs might rmal expa e applica ose cases tial, is “na e subsequ vices as t er, are of pect them ered in are: (1) w he subseq e first u ct departu er), thereb hether it i d in the f pose of th the chann areas of b ablished b ld carry o IRCLE M LE M ma ose sport ags are w first user or service as again ark for th as again ark for an reasonab nsion of i tion of th where th tural,” th ent user, o o which th such natur to emana determinin hether th uent user ser has re from th y requirin s merely a irst area e goods els of trad usiness ar y the prio ver into th mark rks also c bags, carr ithin its “ of s st e st y ly ts e e at n e e te g e 's or e g n of or e e r e are over y-on zone Opposition Nos. 91161363, 91177732 and 91177736 36 second area; and (4) whether other companies have expanded from one area to the other. Mason Engineering and Design Corp. v. Mateson Chemical Corp., 225 USPQ 956, 962 (TTAB 1985) (internal citations omitted). Wolverine’s admissible evidence does not identify the date it first entered the “bags” market. However, Ms. Brown verified the authenticity of a large number of catalogs during her deposition, the earliest of which is dated “Spring 2004” and covers carry-ons, backpacks, wheelies, messenger bags, duffel-type bags, transit bags and briefcase alternatives.80 In considering whether Wolverine’s entry into the bags market would be considered a distinct departure from its footwear line, there is no evidence that these products would not involve new technology or know-how in manufacturing. As to the nature and purpose of the goods in each area, however, and whether the goodwill established in its footwear market would carry over to the bags market, Wolverine has shown that it marketed both types of products through similar advertising channels to the same classes of consumers. Indeed, Wolverine’s catalogs for footwear include an outdoor line called “Outventure”; in its Fall 2003 catalog, this line includes hiking boots, running and multi-sport shoes and sport sandals.81 The Spring 2004 “Packs & Bags” catalog also includes a line called “Outventure Packs” where the emphasis is on the “outdoor experience” and “the pulse of the trail.” Advertising copy in the catalog carries the idea that the company is expanding: “...building upon long-held Merrell brand principles of intelligent product design, comfortable fit and protection – from the elements, for 80 Brown Dep., p. 49; exhibit 68. 81 Id.; exhibit 55. Opposition Nos. 91161363, 91177732 and 91177736 37 yourself, and now for your stuff - Merrell continues to define the New Outdoor with this new product offering. Outventure Packs and Transit Bags: for the trail and around the neighborhood.”82 As to whether other companies have expanded from footwear to bags, Wolverine submitted several use-based, third-party registrations for marks that cover both footwear and various types of bags, such as backpacks and book bags.83 Marker also submitted a number of use-based third-party registrations for “M” marks covering both clothing and bags under a single mark.84 While the third- party registrations are generally of limited probative value, they nonetheless suggest that the goods are of a type which may emanate from a single source, see In re Albert Trostel & Sons Co., 29 USPQ2d 1783, 1785 (TTAB 1993). In addition, the online “2006 MAZAMBA catalog” submitted by Marker shows footwear (shoes, sandals and socks) being offered under the same letter “M” mark as luggage, backpacks, a “padfolio” and a brief case.85 Taken as a whole, we find that the evidence shows that “all-purpose sport bags, carry-on bags, rucksacks” are within Wolverine’s zone of natural expansion. Accordingly, the du Pont factor regarding the relatedness of the goods favors a finding of likelihood of confusion in Class 18 with respect to both the OVAL M mark and the CIRCLE M mark. 82 Id.; exhibit 68. The “Outventure” line of bags was featured in each “Packs & Bags” catalog submitted; exhibits 68-73 (spanning years 2003 to 2008). 83 Wolverine’s Notice of Reliance, exhibits O, P, S and T. 84 Marker’s Notice of Reliance, exhibits 28-41. 85 Chermoshnyuk Dep. p. 29, exhibit 20. “This is available on … Mazamba.com.” Opposit 5 b s W The goo athletic are all these ar are typi worn to (women a coordi 2013); A 1173, 34 W “clothin shells, v (“coats” coats” a W natural ion Nos. 9 . Interna oots, spo nowboard olverine o ds of Ma shoes and considered e inheren cally purch gether. Se ’s shoes ar nated outf merican 2 F.2d 10 olverine a g, namely ests, coats and “hats nd “headw olverine f expansion 1161363, 9 tional Cl rt coats ing mitte wns Reg. rker’s FL socks.” A footwear; tly related ased toget e, e.g., In e complem it). Accor Drill Bush 19, 1022 (1 lso holds , shirts, t , hats, sca ”) overlap ear”). The urther arg . Marker 1177732 a ass 25 - “ , winter ns, athle No. 32492 YING M fter-ski b thus, thes , complem her, may b re Melville entary to w d, In re Se ing Co. v 965). Reg. No. -shirts, sw rves, sock with tho se goods a ues that s argues tha nd 911777 38 After-ski sport g tic shoes 75 for the mark oots, othe e goods a entary go e matched Corp., 18 omen’s cl la Produc . Rockwel 2772456 f eatshirts, s and belt se identifi re also leg ports cloth t there is 36 boots, sk loves, h and socks OVAL M include r types of re legally ods to foot as part o USPQ2d othing bec ts, LLC, 1 l Manufac or the CIR sweaters s.” The go ed in Mar ally identi ing is wit no “per se i boot b eadwear, .” mark “after-sk boots and identical. wear, ina f a set, and 1386, 138 ause they 07 USPQ2 turing Co CLE M m , pants, s ods of Reg ker’s appl cal. hin the fo ” rule tha ags, ski b skiing for “footw i boots, b athletic s As to “so smuch as are obvio 8 (TTAB 1 may be pa d 1580 (T ., 52 C.C ark horts, jack . No. 2772 ication (“s otwear zon t footwear ibs, and ear.” oots, hoes cks,” they usly 991) rt of TAB .P.A. for ets, 456 port e of and Opposition Nos. 91161363, 91177732 and 91177736 39 clothing are within a natural zone of expansion, and that Wolverine’s expansion from footwear to apparel was not natural.86 On behalf of Wolverine, Mr. Zwiers87 and Ms. Brown testified that it is typical for a footwear company to expand into apparel and vice versa. Ms. Brown stated that “ever since I joined the team in 2001 there was [sic] discussions about we’re going into apparel.”88 And while there were several years between the Oobe project and Wolverine’s actual launch of its own apparel line with the OVAL M mark, we consider Wolverine’s actual expansion from footwear to apparel not to be a distinct departure from its footwear business. Footwear and apparel are designed to be worn together and serve similar purposes; they are typically sold to the same customers through similar channels of distribution. Significantly, other companies have similarly expanded from footwear to apparel or vice versa. Ms. Brown named several examples,89 namely North Face, Columbia, Nike and Under Armour, as did Mr. Zwiers, who further explained Wolverine’s intentions in expanding to apparel: that having the brand on apparel, in contrast to footwear, gets it “higher up on the body and more visible…”90 Wolverine also submitted copies of several use-based, third-party registrations that cover both footwear and apparel.91 The evidence and testimony shows that the goods are related and may even be considered to be complementary in nature. Thus, the du Pont factor regarding the similarity of the 86 Marker’s Brief, p. 19. 87 We have considered Mr. Zwiers’ testimony in this regard, inasmuch as Marker also relied on his statements regarding Wolverine’s intent to enter the clothing market. 88 Brown Dep., p. 31. 89 Id., p. 33. 90 Zwiers Dep., p. 16. 91 Wolverine’s Notice of Reliance, exhibits N-T. Opposition Nos. 91161363, 91177732 and 91177736 40 goods favors a finding of likelihood of confusion with both the OVAL M and the CIRCLE M mark. Trade Channels and Classes of Purchasers Under the third du Pont factor, we determine the similarity or dissimilarity of the trade channels in which, and the classes of purchasers to whom, the respective goods are or would be marketed. Because there are no limitations or restrictions as to trade channels or classes of purchasers in the pertinent identifications, we presume that those goods are or would be marketed in all normal trade channels for such services and to all normal classes of purchasers of such services. See Paula Payne Products Co. v. Johnson Publishing Co., 473 F.2d 901, 177 USPQ 76 (CCPA 1973); Kalart Co. v. Camera-Mart, Inc., 258 F.2d 956, 119 USPQ 139 (CCPA 1958); In re Linkvest S.A., 24 USPQ2d 1716, 1716 (TTAB 1992). Moreover, Ms. Brown identified Wolverine’s trade channels as “mid to upper tier retailers in a number of different categories, outdoor specialty, sporting goods, department stores, independent shoe accounts.”92 Marker’s trade channels similarly are the “larger non-department store retail locations,” as well as “within the ski specialty retail community [and] the sporting good community,”93 which includes “sporting goods stores, sporting goods departments, outdoor recreation stores, winter sports hard goods stores, ski and snowboard specialty stores, winter sport and ski rental shops, mail order sporting goods stores, and online sales via the 92 Brown Dep., p. 15. 93 Santos Dep., p. 20. Opposition Nos. 91161363, 91177732 and 91177736 41 Internet.”94 Both Ms. Brown on behalf of Wolverine, and Mr. Santos on behalf of Marker, named Dick’s Sporting Goods as a retailer.95 Accordingly, we find that the trade channels overlap. The classes of consumers of the parties’ goods are also the same, namely ordinary consumers. This du Pont factor favors a finding of likelihood of confusion. Actual Confusion Marker argues that there have been no instances of actual confusion, and that in response to Marker’s First Interrogatories and Requests for Production, specifically Interrogatory No. 15,96 Wolverine indicated that it was unaware of any instances of actual confusion. Ms. Brown also testified that she was unaware of any such instances.97 The probative value of the absence of actual confusion depends upon there being a significant opportunity for actual confusion to have occurred. Barbara’s Bakery Inc. v. Landesman, 82 USPQ2d 1283, 1287 (TTAB 2007). We have determined that the first use of the FLYING M mark occurred in 2002 (based on the earlier use of the equivalent INTERMEDIARY FLYING M mark). However, in its September 15, 2009 responses to Wolverine’s discovery requests, Marker stated that it had discontinued use of its FLYING M mark except on ski bindings, helmets, and goggles.98 Thus, we give little weight to the alleged absence of actual confusion in light of the relatively short period of time that the marks co-existed in 94 Wolverine’s Notice of Reliance exhibit C (Marker’s “Supplemental Responses in Response to Order of March 5, 2009 and Correction of Request for Admission No. 14,” Interrog. 3). 95 Santos Dep., p. 21; Brown Dep. p. 19. 96 Marker’s Notice of Reliance, exhibit 54. 97 Brown Dep., p. 50. 98 Wiant Dep., p. 86; Wolverine’s Notice of Reliance exhibit E (Marker’s “Answers to [Wolverine’s] First Set of Discovery Requests,” Interrogs. 3 and 5). Opposition Nos. 91161363, 91177732 and 91177736 42 the marketplace and the lack of record evidence of the marketing conditions under which there has been alleged concurrent use. In any event, the lack of evidence of actual confusion carries little weight in a Board proceeding. Giant Food, Inc. v. Nation's Foodservice, Inc., 710 F.2d 1565, 218 USPQ 390, 396 (Fed. Cir. 1983); J & J Snack Foods Corp. v. McDonald's Corp., 932 F.2d 1460, 18 USPQ2d 1889, 1892 (Fed. Cir. 1991); J.C. Hall Co. v. Hallmark Cards, Inc., 340 F.2d 960, 144 USPQ 435, 438 (CCPA 1965). Accordingly, this du Pont factor is considered neutral. Conclusion – Opp. No. 91161363 Because Wolverine has not shown a likelihood of confusion between its marks and Marker’s FLYING M mark in classes 9, 28 and 41, Marker’s application for the mark will proceed to registration in these classes. Wolverine has shown a likelihood of confusion between its OVAL M and CIRCLE M marks and Marker’s FLYING M mark in classes 18 and 25. The marks are similar, the goods are legally identical in part, the trade channels are similar and the classes of consumers are the same. In class 25, even though Wolverine’s marks have been shown to exist in a crowded field, the goods are in-part identical, and at least with respect to Wolverine’s OVAL M mark, the marks are extremely close such that their similarities far outweigh any general conclusion we may make that “M” marks surrounded by circular carriers are generally weak in the clothing class. We note too that likelihood of confusion “is to be avoided, as much between ‘weak’ marks as between ‘strong’ marks.” King Candy Co. v. Eunice King's Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108, 109 (CCPA 1974). Balancing these factors, we Opposit find a li mark as In classes refused the mar Opposi In for “ gloves, BLOCK M listed i registra for the are Mar and Wo 99 Serial 100 Serial 101 Reg. N 102 Reg. N 103 Reg. N 104 Reg. N 105 Reg. N 106 Reg. N ion Nos. 9 kelihood o applied to sum, the 18 and 25 in these c k will proc tion Nos. Opp. No clothing, n socks and M mark arker alle n its app tions: for SERIF M ker’s regis lverine’s re No. 788756 No. 78874 o. 1595584 o. 1719521 o. 1850699 o. 899119 o. 2876482 o. 3368041 1161363, 9 f confusion clothing. opposition , and regi lasses. Th eed to regi 91177732 . 91177732 amely shi belts.”99 I for the ges prior u lication a the mark mark trations f gistration 59. 991. . . and No. 25 and No. 171 . . 1177732 a between is sustain stration to e oppositi stration in and 9117 , Wolverin rts, sweat n Opp. No same good se of the F nd priori M (in type for “ski bi or the mar for the ma 58197. 1716. nd 911777 43 Wolverine ed on the Marker on is dism these clas 7736 e has app shirts, pan . 91177736 s.100 LYING M ty of use d characte ndings.”10 ks MARK rk MERR 36 ’s marks a ground of of the FLY issed in C ses in due lied to reg ts, shorts , Wolverin mark and own rs) for “sa 2 Also of r ER,103 ELL for re nd Marke likelihood ING M m lasses 9, 2 course. ister the O , pullovers e applied on the ership of fety ski bi ecord in t 104 a tail store s r’s FLYIN of confusio ark 8 and 41, VAL M m , jackets, h to register class 25 g two plea ndings”101 his procee nd ervices.106 G M n in is and ark ats, the oods ded and ding 105 Opposit B oppose W its two identifie to show identifie natural of these likelihoo INTERM issue of T mark as its c dates of In addit presiden 1999,107 on footw CIRCLE 107 Zwier 108 Bovee ion Nos. 9 ecause its olverine’ pleaded r d therein. that “safe d in Wolv expansion two regis d of conf EDIARY priority. he record or BLO onstructiv the involv ion, Wolv t stating but this t ear. On M mark s Dep., p. 5 Dep., p. 26 1161363, 9 pleaded s applicati egistration However ty ski bin erine’s app for ski bin trations. usion with FLYING M evidence d CK M ma e first use ed applica erine has that Wolve estimony w the other on t 2. ; exhibit 9; 1177732 a registratio ons. Beca s, priority , Marker dings” or “ lications, dings. Ac We look t its SER mark an oes not d rk on date for tions. Tra presented rine first as not su hand, W -shirts and p. 44; exhib nd 911777 44 ns are of use Marke is not a has not pr ski bindin or that the cordingly, hen to Ma IF M mar d the FLY emonstrat clothing. both mark demark A the testim used the O pported by olverine h hats in it 103. 36 record, M r has prov t issue wi esented an gs” are rel listed goo Marker ca rker’s alle k, the ty ING M ma e Wolverin Wolverine s on cloth ct Section ony of W VAL M m evidence as demon 1998,108 a arker ha en the sta th respect y testimo ated to an ds are wit nnot preva gations of ped letter rk. We fir e’s use of may clai ing, based 7(c), 15 U olverine O ark showing u strated fi nd that it s standin tus and tit to the g ny or evid y of the g hin the zon il on the b prior use M mark, st address the OVA m May 3, 2 on the f .S.C. § 105 utdoors, I on footwea se of the m rst use of commissio g to le of oods ence oods e of asis and the the L M 006 iling 7(c). nc.’s r in ark the ned Opposit Oobe, In resulted of first “tack” th In “tacked” they mu marks u continui CIRCLE establis In clothing between was in sleeved this ma Lake Ci time pe 109 See d 110 Wiant 111 See th catalog, 112 Wiant ion Nos. 9 c. to prod in comme use, based e use of th our earli onto ano st create tilize the ng comme M mark hing priori light of or related the mark 1989, when t-shirt.110 rk on glov ty;111 the riod.”112 iscussion su Dep., pp. 4 e “Salt Lak exhibit 1-K Dep., p. 45 1161363, 9 uce a line rcial sales on use o e CIRCLE er discussi ther, the m the same identical r rcial imp onto th ty. the above goods pr s. Mark it used t As to the es and ha mark was We consid pra at 18. 0-42; exhib e 2002” cat . . 1177732 a of clothin .109 Accor f the CIR M mark o on on tack arks mus continuing endering o ression. A e OVAL M , Marker n ior to 199 er’s first d he SERIF INTERME ts during also used er this m it 14. alog; exhibi nd 911777 45 g bearing dingly, Wo CLE M m nto the O ing, we no t be consi commerc f the lette ccordingl and BL eeds to s 8 and that emonstrat M mark DIARY F the Febru on ski pa ark to be t 1-L and t 36 the CIRCL lverine m ark on clo VAL M or ted that in dered lega ial impres r “M” and y, Wolveri OCK M how that there is ed use of on a l LYING M ary 2002 nts and ve the legal he “Introdu E M mar ay claim 1 thing, if W BLOCK M order for l equivale sion. All thereby cr ne may t marks fo it used an a likelihoo an “M” ma ong-sleeve mark, Ma Winter Ol sts during equivalen cing M-Lin k in 2002 998 as its olverine mark. one mark t nts. Tha of Wolver eate the s ack use o r purpose “M” mar d of confu rk on clot d and a sh rker first ympics in “the Olym t of Mark e 2002-2003 that date may o be t is, ine’s ame f its s of k on sion hing ort- used Salt pic er’s ” Opposit FLYING Marker mark. of a lett with nu B on its e whether and Wo multiple clothing differen feature their ap on simil M M mark consider similar on whic 113 Id., ex Santos D ion Nos. 9 M mark may rely Marker h er M mark merals) on ased on th arlier use Marker h lverine’s a marks co class, and ces betwee thereof, th pearance ar goods, w arker may because t Marker’s to the FLY h Marker hibit 15; se ep., p. 64. 1161363, 9 , on Februa as not sub (in typed clothing. e record d of the SE as shown pplied-for mprising consumer n marks. e unique s and overal e find tha not “tack he marks letter M m ING M m has used e also the “ 1177732 a which it fi ry 2002 a mitted tes or standa escribed a RIF M ma a likeliho marks: “M” desig s have be While the tylizations l commerc t confusion ” its earlie are not le ark capa ark, tacki the M an Introducing nd 911777 46 rst used o s the date timony or rd charact bove, Mar rk od of confu and ns have b en conditio letter “M of the lett ial impres would be r use of th gal equiva ble of bein ng would n d “M-num M-Line 20 36 n jackets of its firs evidence er form, o ker has pr only. We sion betw . As w een shown ned to dis ” in each m er “M’s” in sion. The unlikely. e SERIF M lents. Li g represen ot be perm erical com 02-2003” ca in 2003.11 t use of t to support r as used i iority for must ther een the S e have ear to be pr tinguish b ark is sti each mar refore, de mark on kewise, ev ted in a c itted bec bination” talog, exhi 3 Accordin he FLYIN a claim of n combina clothing b efore cons ERIF M m lier discus evalent in ased on m ll an essen k differen spite their to its FLY en were w ircular ca ause the g marks are bit 1-K and gly, G M use tion ased ider ark sed, the inor tial tiate use ING e to rrier oods not Opposit substan Blue Pr the two B on cloth the OVA necessa Accordin an shorts, p Decisio In Serial N 25 and dismiss in these In Wolveri Serial N applicat ion Nos. 9 tially iden oducts Inc sets of goo ecause Wo ing, and t L M and ry elemen gly, Mark d the BLO ullovers, j n-Summa Oppositi o. 765070 registrati ed as to cla classes. Opposit ne’s applic o. 788749 ions will p 1161363, 9 tical to clo ., 19 USP ds are “sub lverine ha hat Wolve BLOCK t in Mar er’s oppos CK M ma ackets, ha ry on No. 91 77 for the on to Ma sses 9, 28 ion Nos. ations Se 91 for th roceed to r 1177732 a thing, the Q2d 1072, stantially s shown th rine may M marks, ker’s claim itions to W rk for ts, gloves, 161363, W mark rker is re , and 41, a 91177732 rial No. 7 e BLOCK egistration nd 911777 47 relevant g (TTAB 19 identical” at it was t tack its pr Marker ca on the olverine’s “clothing, socks and olverine’s is gra fused in nd the app and 91 8875659 fo M mark . -o0o- 36 oods of th 91) (tacki ). he first to ior use of nnot show basis of applicatio namely sh belts” are opposition nted with these clas lication wi 177736, M r the OV are e FLYING ng permit use its CI the CIRC that it likelihood ns for the irts, swea dismissed. to Marke respect to ses. The ll proceed arker’s AL M ma also dism M mark. ted only w RCLE M m LE M mar has priorit of confu OVAL M m tshirts, pa r’s applica classes 18 oppositio to registra opposition rk issed, and Big hen ark k to y, a sion. ark nts, tion and n is tion s to and the