No. 91217164 (T.T.A.B. Apr. 12, 2017)

Wrangler Apparel Corp.v.Brian Guillotte

Trademark Trial and Appeal BoardApr 12, 2017

No. 91217164 (T.T.A.B. Apr. 12, 2017)

THIS OPINION IS NOT A PRECEDENT OF THE TTAB Mailed: April 12, 2017 UNITED STATES PATENT AND TRADEMARK OFFICE _____ Trademark Trial and Appeal Board _____ Wrangler Apparel Corp. v. Brian Guillotte _____ Opposition No. 91217164 _____ Paul J. Kennedy, Sean P. McConnell of Pepper Hamilton LLP, for Wrangler Apparel Corp. Brian Guillotte, pro se. _____ Before Shaw, Gorowitz and Heasley, Administrative Trademark Judges. Opinion by Gorowitz, Administrative Trademark Judge: Brian Guillotte (“Applicant”) filed an application to register the mark for “belts,” in International Class 25.1 1 Application Serial No. 86088911 was filed on October 10, 2013 based upon Applicant’s alleged both first use and use in commerce at least as early as August 22, 2007 under Section 1(a) of the Trademark Act, 15 U.S.C. § 1051(a). Opposition No. 91217164 2 Applicant entered the following description of the mark: “The mark consists of A Bold form of TWO ‘W’s’ that make a cross lined pattern.” Color is not claimed as a feature the mark. Wrangler Apparel Corp. (“Opposer”) opposed the application on the ground of a likelihood of confusion under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), with the following registrations owned by Opposer:2 1. U.S. Registration No. 634868 for the mark for, as amended, men's, ladies' western style dungarees in International Class 25 Registered September 25, 1956 (fourth renewal filed February 14, 2017); 2. U.S. Registration No. 3322277 for the mark for jeans, casual pants, shorts, skirts, shirts, blouses, vests, jackets, diaper covers in International Class 25 Registered October 30, 2007 (Section 8 declaration accepted; Section 15 declaration acknowledged); 2 The marks in Registration Nos. 634868, 3322277, 3777026, 3985886, and 4656517 are 4656517 collectively referred to as “Single W Marks.” Opposition No. 91217164 3 3. Registration No. 3777026 for the mark for headgear, namely caps in International Class 25 Registered April 20, 2010 (Section 8 declaration accepted); 4. Registration No. 3985886 for the mark for bottoms in International Class 25 Registered June 28, 2011 (Section 8 declaration accepted; Section 15 declaration acknowledged); 5. Registration No. 4656517 for the mark for, as amended, clothing, namely, tops; belts in International Class 25 Registered December 16, 2014; 6. Registration No. 4782316 for the mark for, as amended, tops, shirts, bottoms, pants, shorts, jackets in International Class 25 Registered: July 28, 2015.3 Applicant filed a document on October 26, 2014, which while treated as an answer, was stricken on January 28, 2015. Applicant’s time to file an Answer was re- 3 Goods amended after the Notice of Opposition was filed. Thereafter, registration issued. The mark is referred to as “Double W Design Mark.” Opposition No. 91217164 4 set and extended until March 13, 2015, at which time Applicant filed a document entitled “Applicants [sic] Answer to Opposer’s Motion to Strike.” 13 TTABVUE. This document does not satisfy the requirements for an answer, in that it does not contain admissions and/or denials of the allegations in the complaint. Trademark Trial and Appeal Board Manual of Procedure (“TBMP”) §311.01(a) (January 2017). However, no objection was made to the answer and thus, it was accepted into the record. Applicant did not take testimony or file a brief. Opposer filed a brief. The Record. The record includes the pleadings, and by operation of Trademark Rule 2.122(b), 37 CFR § 2.122(b), the application file of the opposed application. In addition, Opposer introduced the following evidence: 1. Testimony Deposition of Joseph Anthony Bugni (Bugni Test.) (28 TTABVUE);4 2. Exhibits B-1 to B-5 to Bugni Test. (25 TTABVUE); 3. Exhibits B-6 to B-9 to Bugni Test. (26 TTABVUE); 4. Exhibits B-10 to B-14 to Bugni Test. (27 TTABVUE); 5. Exhibits B-15 to B-22 to Bugni Test. (29 TTABUE); and By notice of reliance: 1. Certified title and status copies of registrations of record (23 TTABVUE 5- 23); 2. Copies of the following articles obtained from LEXIS/NEXIS: 4 Confidential Testimony of Joseph Anthony Bugni and confidential exhibit are at 24 TTABVUE. We will not quote any of the language designated “confidential.” Opposition No. 91217164 5 • Arnold J. Karr, Levi's Among Patriotic Brands, WOMEN’S WEAR DAILY, June 30, 2014 (23 TTABVUE 25-26); • Karyn Monget, Ace Metrix Unveils Top Ad Brands, WOMEN’S WEAR DAILY, March 12, 2014, (23 TTABVUE 28-29); • Rajeev Kumar, International Midas Touch, BUSINESS OF FASHION, distributed by Contify.com, June 17, 2013 (23 TTABVUE 31-36); • Trend Watch: The Magic of Denim, BUSINESS OF FASHION, distributed by Contify.com, January 5, 2012 (23 TTABVUE 38-41); • John Katsilometes, Kat Goes Country: At the NFR. You Have to Look the Part to Run with These Bulls, LAS VEGAS WEEKLY, November 30, 2010 (23 TTABVUE 43-45); • Brenner Thomas, Whole New Ball Game: Men’s Firms Tap Sports As Key Marketing Tool, WOMEN’S WEAR DAILY, April 1, 2010 (23 TTABVUE 47- 50); • David Lipke, Memo Pad: Hut, Hut, Hike, WOMEN’S WEAR DAILY, August 20, 2009 (23 TTABVUE 53); • Jean E. Palmieri, Pasha Antonov, Wrangler Taps Aldean for Retro, WOMEN’S WEAR DAILY, July 21, 2009 (23 TTABVUE 56); • David Lipke, Memo Pad: Still on Track, WOMEN’S WEAR DAILY, December 10, 2008 (23 TTABVUE 59); • Donald Patterson, Wrangler's Longride, NEWS & RECORD (GREENSBORO, NC), October 14, 2007 (23 TTABVUE 61-66); • Julee Greenberg, Wrangler Celebrates 60, WOMEN’S WEAR DAILY, September 20, 2007 (23 TTABVUE 68); • Mark Jacobs, Branded, THE NEW YORK TIMES, June 24, 2007 (Late Edition) (23 TTABVUE 70-72); • The Denim Directory,· Part 4,· Buyers Guide, DAILY NEWS RECORD, August 14, 2006 (23 TTABVUE 74-81); • Marshall Hood, Denim’s In Demand At the White House and Elsewhere, COLUMBUS DISPATCH (OHIO), January 30, 2001 (23 TTABVUE 82-84); and • S. Ray Clune, Wrangler Launching 1st Line Since Acquisition by VF; VF Corp., DAILY NEWS RECORD, July 30, 1987 (23 TTABVUE 86-87). Opposition No. 91217164 6 Background. Opposer and its predecessors have been selling WRANGLER jeans since 1947. Bugni Test. 28 TTABVUE 17, 19 and Exhibit B-2 thereto, 25 TTABVUE 22. These jeans were the first western wear jeans in the marketplace. At that time, each of the two hip pockets included a stitched “W.” Id. Opposer owns a number of registrations for both its single letter stylized “W” marks and for an intertwined stylized “WW” mark. These registrations are of record. The registrations cover a number of clothing and accessories, including jeans and belts. See 23 TTABVUE 5-23. Applicant filed a use-based application to register the mark for belts, in which he alleged both first use and use in commerce at least as early as August 22, 2007. Applicant submitted no evidence of use in this proceeding. Standing. Standing is a threshold issue that must be proven by a plaintiff in every inter partes case. To establish standing in an opposition or cancellation proceeding, a plaintiff must show “both a ‘real interest’ in the proceedings as well as a ‘reasonable basis’ for its belief of damage.” Empresa Cubana Del Tabaco v. Gen. Cigar Co., 753 F.3d 1270, 111 USPQ2d 1058, 1062 (Fed. Cir. 2014) (quoting ShutEmDown Sports, Inc., v. Lacy, 102 USPQ2d 1036, 1041 (TTAB 2012)); Ritchie v. Simpson, 170 F.3d 1092, 50 USPQ2d 1023, 1025 (Fed. Cir. 1999); Lipton Industries, Inc. v. Ralston Purina Co., 670 F.2d 1024, 213 USPQ 185, 189 (CCPA 1982). Opposition No. 91217164 7 Because Opposer has made its pleaded registrations of record, Opposer has established its standing in this proceeding. Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1844 (Fed. Cir. 2000); Lipton Industries, Inc., 213 USPQ at 189. Priority. Priority is not at issue with respect to the marks and goods in Opposer’s pleaded registrations, which Opposer properly made of record through the submission of status and title copies of such registrations with Opposer’s notice of reliance. See King Candy Co. v. Eunice King's Kitchen, 496 F.2d 1400, 182 USPQ 108 (CCPA 1974); Toro Co. v. ToroHead Inc., 61 USPQ2d 1164, 1167 (TTAB 2001). Likelihood of Confusion. Our determination of the issue of likelihood of confusion is based on an analysis of all of the probative facts in evidence that are relevant to the factors set forth in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973); see also Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1691 (Fed. Cir. 2005); In re Majestic Distilling Co., 315 F.3d 1311, 65 USPQ2d 1201, 1203 (Fed. Cir. 2003). In considering the evidence of record on these factors, we keep in mind that “[t]he 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.” Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976); see also In re Dixie Rests. Inc., 105 F.3d 1405, 41 USPQ2d 1531 (Fed. Cir. 1997). Opposition No. 91217164 8 1. Similarity or dissimilarity and nature of the goods, channels of trade and class of purchasers. We start our analysis with the second and third du Pont factors and look at the relationship between the goods at issue, the channels of trade in which they travel and the class of purchasers. When determining the relationship between the goods, [t]he authority is legion that the question of registrability of an applicant’s mark must be decided on the basis of the identification of goods set forth in the application regardless of what the record may reveal as to the particular nature of an applicant’s goods, the particular channels of trade or the class of purchasers to which sales of the goods are directed. Octocom Systems, Inc. v. Houston Computers Services Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990); see also Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1161-62 (Fed. Cir. 2014). Applicant’s goods are identified as: “belts.” Opposer’s goods in its registrations for its Single “W” marks are identified as: “men’s, ladies’ western style dungarees”; “jeans, casual pants, shorts, skirts, shirts, blouses, vests, jackets, diaper covers”; “headgear, namely caps”; “bottoms”; and “clothing, namely, tops; belts.” The goods in Opposer’s registration for the Double “W” design mark are identified as “tops, shirts, bottoms, pants, shorts, and jackets.” Both the application at issue and one of Opposer’s pleaded registrations for a Single “W” mark, include “belts.” Opposition No. 91217164 9 A “belt” is defined as: A strip of flexible material worn especially around the waist as an item of clothing or a means of carrying something (as tools).5 On similar evidentiary records, both the Court of Customs and Patent Appeals6 and the Board have held that for likelihood of confusion purposes, many different articles of clothing are related. See Cambridge Rubber Co. v. Cluett, Peabody & Co., 286 F.2d 623, 128 USPQ 549, 550 (CCPA 1961) (women’s boots related to men’s and boys’ underwear); Jockey Int’l, Inc. v. Mallory & Church Corp., 25 USPQ2d 1233, 1236 (TTAB 1992) (underwear related to neckties); In re Mercedes Slacks, Ltd., 213 USPQ 397, 398-399 (TTAB 1982) (hosiery related to trousers); Nina Ricci, S.A.R.L. v. ETF Enters., 203 USPQ 947, 951-52 (TTAB 1979) (belts, coats, tops, shirts, dresses, hats, jackets, scarves, shoes, and other clothing and accessories all related); Tudor Square Sportswear, Inc. v. The Pop-Op Corporation, 160 USPQ 50, 54 (TTAB 1968) (belts and pants are related). Accordingly, we find that Opposer’s clothing items, including belts, are either identical or closely related to Applicant’s belts. It is well established that absent restrictions in the application and registration, [identical or closely related] goods are presumed to travel in the same channels of 5 We take judicial notice of the definition of “belt” from the Merriam-Webster On-line Dictionary (www.merriam-webster.com). The Board may take judicial notice of dictionary definitions, including online dictionaries that exist in printed format, In re Cordua Rests. LP, 110 USPQ2d 1227, 1229 n.4 (TTAB 2014), aff’d 823 F.3d 594, 118 USPQ2d 1632 (Fed. Cir. 2016). 6 The predecessor to our primary reviewing court, the Court of Appeals for the Federal Circuit. Opposition No. 91217164 10 trade to the same class of purchasers. See Octocom, 16 USPQ2d at 1787; Cunningham v. Laser Golf Corp., 55 USPQ2d at 1846 (affirming Board finding that where the goods are “identical in part . . . and otherwise closely related” and the identification is unrestricted, “we must deem the goods to travel in all appropriate trade channels to all potential purchasers of such goods”). Because the goods at issue are either identical or closely related, they are presumed to travel in the same channels of trade to the same classes of purchasers, who, as Opposer confirms are ordinary customers, who take ordinary care in their purchasing decisions. Opposer’s Brief, 31 TTABVUE 23. Based on the foregoing, we find that the second and third du Pont factors favor a finding of likelihood of confusion. 2. Similarity or dissimilarity of the marks. Next, we analyze the first du Pont factor to determine the similarity or dissimilarity of the marks at issue. Opposer’s allegation of likelihood of confusion is based on its registrations for four different marks, the Single W Marks and the Double W Design Mark. Of the four marks pleaded, three are Single W Marks, in which the letter, “W” is clear and recognizable: 7 8 9 and the fourth 7 Registration No. 634868. 8 Registration No. 322277. 9 Registration Nos. 377026, 3985886, and 4656517. Opposition No. 91217164 11 is the Double W Design Mark, a highly stylized mark, which Opposer describes as “consisting of the stylized letters ‘WW,’” .10 Applicant’s mark, , is also a highly stylized mark, which Applicant describes as consisting of “A BOLD form of TWO ‘W’s’ that make a cross lined pattern.”11 Since all of the marks at issue are design marks, “the question of … similarity … must be determined primarily on the basis of their visual similarity.”12 In re Vienna Sausage Mfg. Co., 16 USPQ2d at 2047. To reach its conclusion that Applicant’s mark is similar to Opposer’s marks, Opposer argues that Applicant’s mark ‘consists of A BOLD form of TWO ‘W's’ that make a cross lined pattern.’ The mark does not claim any particular color. As the drawing demonstrates, the angles of the W’s in Applicant’s Mark are sharp and pointed. Wrangler’s registered W Marks share similar pointed and sharp angles, along with bold letters, and some share a similar overlapping W design. . . . The overlapping nature 10 Registration No. 4782316. 11 Emphasis in original description entered into the record by Applicant. 12 This principle is applicable to marks “which are not capable of being spoken.” In re Vienna Sausage Mfg. Co., 16 USPQ2d at 2047. However, it is also applicable here where three of Opposer’s marks (Single W Marks) are designs that are capable of being spoken, but Applicant’s mark is not. Therefore, the marks can only be compared on the basis of their appearance. Opposer’s fourth mark (Double W Design Mark) is incapable of being spoken so it falls squarely within the Vienna Sausage principle. Opposition No. 91217164 12 of Wrangler’s W Marks is particularly evident in the marks of Registration Nos. 634,868 and 4,782,316. Applicant’s Mark also appears to show a wider “W” with a “V” in the center. With that view in mind, the wide “W” in Applicant’s Mark closely approximates the “W” design employed in Wrangler’s Reg. No. 3,322,277. Opposer’s Brief, 31 TTABVUE 18-19 (depictions of marks omitted). To support its conclusion that “Applicant’s Mark is nearly identical to” Opposer’s designs, Opposer relies on the following depictions of its marks that it asserts “substantially reflect the design of Applicant’s Mark13:” 14 15 13 Opposer’s Brief, 31 TTABVUE 20. 14 Bugni Test., Exhibit B-17, 29 TTABVUE 164. 15 Id., Exhibit B-15 at 29 TTABVUE 51-54. Opposition No. 91217164 13 16 17 18 19 Opposer claims that “as consumers have long been accustomed to seeing multiple designs used for Wrangler’s W Marks, it would not be surprising for a consumer to 16 Id., Exhibit B-9 at 26 TTABVUE 209.Id. 17 Id., at 219. 18 Id., Exhibit B-13 at 27 TTABVUE 206. 19 Id., at 224. Opposition No. 91217164 14 view the design of Applicant’s Mark to be simply a varied or new version of Wrangler’s long-standing line of W Marks.”20 We disagree. For Applicant’s mark to be viewed as a new version of Opposer’s marks, it would need to be considered a “W” mark. However, despite Applicant’s description of its mark as “A BOLD form of TWO ‘W's’ that make a cross lined pattern,” even Opposer acknowledges that Applicant’s Mark appears to show a wider ‘W’ with a ‘V’ in the center.21 Moreover, a mark’s meaning is based upon its impression to the purchasing public, not an applicant’s description of its mark. In re Serac, Inc., 218 USPQ 340, 342 (TTAB 1983). Further, in evaluating the similarities between marks, the emphasis must be on the recollection of the average purchaser, who normally retains a general, rather than specific, impression of trademarks. In re Cynosure, Inc., 90 USPQ2d 1644, 1645 (TTAB 2009), citing Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106, 108 (TTAB 1975). We find that the average purchaser would not perceive Applicant’s mark as a “W” at all, let alone a single “W.” Accordingly, we find that Applicant’s mark is not similar to Opposer’s single W marks. Opposer also pleaded ownership of its Double W Design Mark, which Opposer describes as “consisting of the stylized letters ‘WW.” Since neither this mark nor Applicant’s mark is capable of being spoken, similarity must be determined primarily on the basis of their visual similarity. In re Vienna Sausage Mfg. Co., 16 USPQ2d at 2047. 20 Opposer’s Brief, 31 TTABVUE 21. 21 Id., at 18-19. Opposition No. 91217164 15 When we compare Applicant’s mark with Opposer’s mark , we find that the general impression of the two marks is so similar, i.e., two “W’s” combined, that the average purchaser is not likely to remember the differences. On that basis, we find that these two marks are very similar and that the first du Pont factor favors a finding of likelihood of confusion. Conclusion. Having considered all the evidence and arguments on the relevant du Pont factors, whether discussed or not, we conclude that there is a likelihood of confusion between Applicant’s mark for belts and Opposer’s mark for clothing. Decision: The opposition is sustained.