PHILLIPS-VAN HEUSEN CORP. v. WEIJING LUO, 91185251 (TTAB 4-15-2011)
Phillips-Van Heusen Corporation, Cluett Peabody Resources Corporationand Cluett, Peabody Co., Inc. v. Weijing Luo
Opposition No. 91185251 to application Serial No. 77282484filed on July 7, 2005United States Patent and Trademark OfficeTrademark Trial and Appeal Board
Mailed: April 15, 2011Page 1
[EDITOR'S NOTE: This case is unpublished as indicated by the issuing court.]
THIS OPINION IS NOT A PRECEDENT OF THE T.T.A.B.
Kristin Hogan of FITZPATRICK CELLA HARPER SCINTO for Phillips-Van Heusen Corporation, Cluett Peabody Resources Corporation and Cluett, Peabody Co., Inc.
Weijing Luo, pro se.
Before Seeherman, Taylor and Wellington, Administrative Trademark Judges.
Opinion by Wellington, Administrative Trademark Judge:
Applicant, Weijing Luo, a U.S. citizen, seeks registration of the mark ARROWWA (in standard character form) for goods identified in his application as:
Jeans; Anglers' shoes; Apres-ski shoes; Athletic shoes; Ballet shoes; Baseball shoes; Beach shoes; Bowling shoes; Boxing shoes; Canvas shoes; Cleats for attachment to sports shoes; Cycling shoes; Deck-shoes; Drivers; Football shoes; Golf shoes; Gymnastic shoes;Page 2
Handball shoes; Heel pieces for shoes; Hockey shoes; Infants' shoes and boots; Insoles; Leather shoes; Paper shoes used when going through metal detectors to keep feet and socks clean; Protective metal members for shoes and boots; Rubber shoes; Rugby shoes; Running shoes; Shoe dowels; Shoe inserts for primarily non-orthopedic purposes; Shoe pegs; Shoe soles; Shoes; Shoes [sic] soles for repair; Ski and snowboard shoes and parts thereof; Skiing shoes; Soccer shoes; Tap shoes; Tennis shoes; Tongue or pullstrap for shoes and boots; Track and field shoes; Training shoes; Volleyball shoes; Women's shoes; Work shoes and boots; Belts; Bibs not of cloth or paper; Caps; Children's and infants' cloth bibs; Children's cloth eating bibs; Cloth bibs; Cloth bibs for adult diners; Cloth bibs for use by senior citizens or physically- or mentally-challenged persons; Cloth diapers; Clothing for wear in judo practices; Clothing for wear in wrestling games; Clothing, namely, arm warmers; Clothing, namely, folk costumes; Clothing, namely, hand-warmers; Clothing, namely, knee warmers; Clothing, namely, neck tubes; Clothing, namely, wrap-arounds; Corsets; Dusters; Foulards; Hoods; Infant and toddler one piece clothing; Infant cloth diapers; Jerseys; Leather belts; Mantles; Mufflers; Non-disposable cloth training pants; Paper hats for use as clothing items; Parts of clothing, namely, gussets for tights, gussets for stockings, gussets for bathing suits, gussets for underwear, gussets for leotards and gussets for footlets; Perspiration absorbent underwear clothing; Shifts; Short sets; Shoulder wraps; Swaddling clothes; Ties; Tops; Triathlon clothing, namely triathlon tights, triathlon shorts, triathlon singlets, triathlon shirts, triathlon suits; Underarm clothing shields; Wraps; Caps with visors; Golf caps; Knitted caps; Shower caps; Skull caps; Swim caps; Swimming caps; Toboggan hats, pants and caps; Toe caps; Baseball caps; Bathing caps; Cap visors; Ankle socks; Anklets; Anti-perspirant socks; Japanese style socks (tabi covers); Japanese style socks (tabi); Men's socks; Sock suspenders; Socks; Socks and stockings; Thermal socks; Water socks; Woollen socks; Balloon pants; Capri pants; Cargo pants; Denims; Jogging pants; Leather pants; Lounge pants; Nurse pants; Pants; Petti-pants; Ski pants; Snow pants; Snowboard pants; Stretch pants; Sweat pants; Tap pants; Track pants; Waterproof jackets and pants; Wind pants; Yoga pants; A-shirts; Button-front aloha shirts; Camp shirts; Dress shirts; Golf shirts; Knit shirts; Long-sleeved shirts; Night shirts; Open-necked shirts; Pique shirts; Polo shirts; Rugby shirts; Shirt fronts; ShirtPage 3
yokes; Shirts; Shirts for suits; Short-sleeved or long-sleeved t-shirts; Short-sleeved shirts; Sleep shirts; Sport shirts; Sports shirts; Sports shirts with short sleeves; Sweat shirts; T-shirts; Tee shirts; Wind shirts; Yoga shirts; Bed jackets; Denim jackets; Down jackets; Fishermen's jackets; Fur coats and jackets; Fur jackets; Heavy jackets; Jacket liners; Jackets; Leather jackets; Light-reflecting jackets; Long jackets; Men and women jackets, coats, trousers, vests; Rain jackets; Rainproof jackets; Reversible jackets; Shell jackets; Ski jackets; Sleeved or sleeveless jackets; Smoking jackets; Sports jackets; Stuff jackets; Suede jackets; Wind resistant jackets; Wind-jackets
in International Class 25.[fn1]
Three companies, Phillips-Van Heusen Corporation (PVHC), Cluett Peabody Resources Corporation (CPRC) and Cluett, Peabody Co., Inc. (CPCI), hereinafter collectively referred to as "opposers,"[fn2] have opposed registration of applicant's mark on the grounds of priority and likelihood of confusion, dilution, and applicant's lack of a bona fide intent to use his proposed mark. Specifically, opposers allege,inter alia, that: opposer PVHC "directly or indirectly owns 100% of the shares of [the other two opposers]"; that PVHC is "one of the largest apparel companies in the world"; that opposers are well-knownPage 4
marketers of "a wide variety of goods including clothing, footwear, perfume, leather goods, jewelry and eyewear, under its ARROW brand"; that opposer CPCI is the owner of fourteen registrations for the mark ARROW; that the ARROW mark has become famous and did so before the filing date of the subject application; that "upon information and belief. . ., applicant does not have a bona fide intent to use the ARROWWA term in commerce for all of the many different types of apparel and footwear identified [in the application]"; that the "registration and use of applicant's mark is likely to cause confusion among consumers with [opposers'] well-known ARROW family of marks"; "registration of applicant's mark for goods identified in the opposed application also will cause a likelihood of dilution of the famous ARROW family of marks"; and that on information and belief applicant is not in a position to use his mark in commerce in association with all the products identified in the application and lacks a bona fide intent to do so.
Applicant filed an answer wherein he denied the salient allegations.
Preliminary Matters/ The Record
Both parties submitted additional materials with their pleadings. Exhibits attached to a pleading generally are not evidence on behalf of the party to whose pleading they are attached unless they are thereafter, during the time forPage 5
taking testimony, properly identified and introduced in evidence as exhibits. TBMP § 317 (2d ed. rev. 2004).
At trial, opposers took the testimonial deposition, with exhibits, of Kenneth Wyse, and submitted it on CD-ROM. Trademark Rule 2.126 at one time provided that parties could submit deposition testimony in CD-ROM form; however, by amendment effective August 31, 2007 and applicable to all cases pending or commenced on or after that date, the rule no longer accords parties the option of making submissions to the Board in this manner.[fn3] Because opposers' testimonial deposition and exhibits were not filed on paper or by electronic means as required under the operative Trademark Rule, they are not of record and have not been considered.
Opposers also submitted several notices of reliance during their assigned trial period and made the following of record: status and title copies for nine of the pleaded registrations for marks containing the term ARROW and owned by opposer CPCI; a copy of an article titled "America's Top Mega Brands" (published on November 24, 2008 via Daily News Record); a copy of an article titled "Collars and Consumers: Changing Images of American Manliness and Business" (published in the September 2000 issue of EnterprisePage 6 Society); and a copy of the discovery deposition, with exhibits, of applicant, Mr. Weijing Luo, including a "discovery stipulation" that in turn has various attachments thereto.[fn4]
During his assigned testimony period, applicant submitted a copy of a Wikipedia online encyclopedia entry for the term "WA (Japan)" and a printout from a Google translation website for the term "wa."
In sum, the only evidence of record on submission is that derived from the parties' notices of reliance, as discussed above. The record also includes the pleadings and, by rule, the file of the opposed application.
Standing
Because there are nine pleaded registrations owned by opposer CPCI properly of record, we find that CPCI has standing to oppose registration of applicant's mark. See Cunningham v.Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842 (Fed. Cir. 2000); and Lipton Industries, Inc. v. Ralston PurinaCo., 670 F.2d 1024, 213 USPQ 185 (CCPA 1982).
As to the other two opposers, PVHC and CPRC, there is no evidence of record to establish their relationship with CPCI or otherwise establish whatever interest they may havePage 7
in bringing this proceeding forward.[fn5] SeeRitchie v. Simpson, 170 F.3d 1092, 50 USPQ2d 1023 (Fed. Cir. 1999).
In sum, we find that opposer CPCI has standing, but opposers PVHC and CPRC do not. Accordingly, the opposition is dismissed with regard to opposers PVHC and CPRC. This opposition goes forward solely on the claims being brought by opposer CPCI and any reference to "opposer" hereinafter is limited to CPCI.
We now turn to the substantive grounds alleged in the operative notice of opposition and initially address the priority and likelihood of confusion ground.
Priority
Priority is not in issue because opposer is the owner of nine pleaded registrations, and made them properly of record, for marks containing the term ARROW. See King Candy Co., Inc.v. Eunice King's Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108 (CCPA 1974).Page 8
Likelihood of Confusion
Our likelihood of confusion determination under Trademark Act Section 2(d) 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 and Co.,476 F.2d 1357, 177 USPQ 563 (CCPA 1973). See also, In reMajestic Distilling Co., Inc., 315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir. 2003). In any likelihood of confusion analysis, however, two key considerations are the similarities between the marks and the similarities between the goods and/or services. See Federated Foods, Inc. v. Fort Howard PaperCo., 544 F.2d 1098, 192 USPQ 24 (CCPA 1976).
As we have already noted, opposer has established that it is the owner of nine of the pleaded registrations. Of these, we focus our likelihood of confusion analysis on the following two:[fn6]
Registration No. 1683039, for the mark ARROW (typed drawing) for "shirts" in International Class 25;[fn7] and
Registration No. 1678655, for the mark ARROW (typed drawing) for "hosiery" in International Class 25.[fn8]Page 9
With these two registrations and the subject application in mind, we first consider the du Pont factor involving the degree of relatedness, if any, between the parties' goods. In doing so, we must make our findings based on the goods as they are recited in the application and registrations, respectively. See Octocom Systems Inc. v. Houston ComputersServices Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990); In re Linkvest S.A., 24 USPQ2d 1716 (TTAB 1992); In re Elbaum, 211 USPQ 639 (TTAB 1981). Furthermore, similarity need only be found between any
of the opposer's goods and any of the opposed goods for purposes of this du Pont factor, and this dictates refusal as to all of the opposed goods in the class, should the ultimate conclusion in the case be that a likelihood of confusion exists. See Tuxedo Monopoly, Inc. v. GeneralMills Fun Group, 648 F.2d 1335, 209 USPQ 986 (CCPA 1981).
Here, applicant has listed numerous articles of clothing and related accessories in his application. These include specific items that are either identical to or encompassed by (and thus legally identical to) opposer's shirts and hosiery.[fn9] In particular, the application listsPage 10
the following types of shirts:
Camp shirts; Dress shirts; Golf shirts; Knit shirts; Long-sleeved shirts; Open-necked shirts; Pique shirts; Polo shirts; Rugby shirts
as well as "socks and stockings."
We continue our likelihood of confusion analysis with respect to these particular goods, i.e., the legally identical shirts and hosiery (socks and stockings). Because these goods are legally identical, the du Pont factor of the similarity of the goods favors opposer.
Neither opposer's nor applicant's identifications of these goods are restricted as to their trade channels or classes of purchasers. We must therefore presume that the parties' goods are marketed in all of the normal trade channels for such goods, and that the goods are bought by the usual classes of purchasers. Accordingly, given that the parties' goods are, in part, identical and are without restrictions, it is presumed that they move in the same trade channels to the same classes of purchasers.
In view of the nature of the parties' goods, i.e., fairly basic articles of clothing, the purchasers of the goods would include ordinary consumers, who would be expected to exercise the ordinary amount of care in their purchasing decisions. Further, socks and certain types of shirts may be relatively inexpensive and are capable of being purchased on impulse.Page 11
The du Pont factors of the similarity of the goods and trade channels, as well as the conditions under which and buyers to whom sales are made, all weigh in favor of a finding of likelihood of confusion.
We now turn our attention to the parties' marks. Under thisdu Pont factor, we look to the similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation and commercial impression. In considering the marks, we initially note that when they are used in connection with identical goods, as they are here, "the degree of similarity [between the marks] necessary to support a conclusion of likely confusion declines." Century21 Real Estate Corp. v. Century Life of America, 970 F.2d 874, 23 USPQ2d 1698, 1700 (Fed. Cir. 1992).
The marks at issue, ARROW and ARROWWA, are extremely similar in appearance, the only difference being applicant's addition of the letters WA to the end of opposers' mark. Further, because applicant has depicted his mark in standard character format, if he were to obtain a registration he could depict the word ARROW in larger letters than the letters WA, which would increase the similarity of the marks. Citigroup Inc. v.Capital City Bank Group, Inc., ___ F.3d ___, ___ USPQ2d ___, slip op. at 12-13 (Fed. Cir. Mar. 28, 2011).Page 12
The marks will likely be pronounced similarly. There is no evidence in the record as to how applicant's mark will be pronounced, but because it begins with the commonly known word "arrow," consumers will likely recognize this word and pronounce the beginning of applicant's mark the same as opposer's mark and merely add the "wa" sound to the end. While the addition of the letters "wa" results in an additional syllable in applicant's mark, the phonetic difference between the marks is not significant. Consequently, the marks are not only visually very similar, but will likely be pronounced in a very similar manner.
As to any connotations created by the respective marks, opposer's mark has a defined meaning. Applicant argues that his mark is "a new international word Applicant created, and only used by Applicant . . . It combines [the] English word "ARROW" and [the] Japanese/Chinese word "WA", it's a symmetrical word, very unique." Brief, at (unnumbered) p. 2. By "symmetrical," applicant explains that his mark contains the letter O in the center with two "R's" on the left and two "W's" on the right, and then bookended with the letter "A." In support, applicant relies on the Wikipedia encyclopedia entry for the term "WA" and a Google English-to-Chinese translation for the same term. The former essentially provides, "Japanese Wa . . . is the older recorded name of Japan." The latter translation simplyPage 13
transliterates the English letters "Wa" into Chinese characters.
On this record, we find that consumers of clothing will not attribute any special meaning to the letters "WA" found at the end of applicant's proposed mark, ARROWWA. There is no evidence to suggest that consumers in the United States would be aware of the apparently obscure meaning indicated in the Wikipedia printout or, even if they did, that they would attribute that meaning to these letters when they follow the word ARROW. Moreover, there is no evidence to suggest that consumers will recognize the symmetry described by applicant. Although some consumers may perceive applicant's mark as an arbitrary term, we find it at least equally likely that they will recognize the word ARROW which forms the first part of the mark, and attribute to the mark the meaning of this word to which the letters WA have been appended.
In view of the above, and with emphasis on the fact that the only distinguishing factor is that applicant has added the letters "WA" to the end of opposer's registered mark, we conclude that the marks are overall highly similar. Accordingly, this du Pont factor favors a finding of a likelihood of confusion.
We now turn to the fifth du Pont factor, which requires us to consider evidence of the fame of opposer's marks,Page 14
since if fame exists, we must give great weight to this factor. See Bose Corp. v. QSC Audio Products Inc.,293 F.3d 1367, 63 USPQ2d 1303 (Fed. Cir. 2002); Recot Inc. v.Becton, 214 F.3d 1322, 54 F.2d 1894 (Fed. Cir. 2000); andKenner Parker Toys, Inc. v. Rose Art Industries, Inc.,963 F.2d 350, 22 USPQ2d 1453 (Fed. Cir. 1992). It is the duty of a party attempting to establish the fame of a mark to clearly prove it. Leading Jewelers Guild Inc. v. LJOWHoldings LLC, 82 USPQ2d 1901, 1904 (TTAB 2007).
Opposer has argued at length that its ARROW mark is famous. However, there is insufficient evidence of record to support this assertion. The two articles that discuss the ARROW brand are probative only for what they show on their face,i.e., that the brand was discussed in the publication and the characterizations of opposer's mark can be considered, at best, the authors' own views. Simply put, we are left with little more than the mere assertions of fame in opposer's brief.
In summary, we find that the marks are very similar, there is no evidence establishing that opposer's mark is weak or for any reason entitled to a narrow scope of protection, the involved goods are identical in part, and the goods must be presumed to be marketed in the same channels of trade to the same classes of end consumers. Ultimately, upon weighing all of the relevantdu PontPage 15
factors for which the parties have submitted evidence or presented arguments, we find that applicant's use of his mark for his identified goods is likely to cause confusion with opposer's registered ARROW marks for shirts and hosiery.
Dilution and Lack of Bona Fide Intent to Use
Inasmuch as we have found that opposer has failed to establish that its ARROW mark is famous, let alone that such fame was present prior to the filing date of the subject application, opposer cannot prevail on its claim of dilution which requires a more stringent showing of fame. See Palm Bay Imports Inc.v. Veuve Clicquot Ponsardin Maison Fondee En 1772,396 F.3d 1369, 73 UPQP2d 1689, 1694 (Fed. Cir. 2005); and ToroCo. v. ToroHead Inc., 61 USPQ2d 1164, 1170 (TTAB 2001).
Because we sustain the opposition on the likelihood of confusion ground, we need not reach a finding as to opposer's claim that applicant lacked a bona fide intent to use the mark on all the goods identified in the application.
Decision: Opposer CPCI's opposition is sustained on the ground of likelihood of confusion.[fn10] In view thereof, we need not reach a decision on the claim that applicantPage 16
lacked a bona fide intent to use his mark. The opposition on the ground of dilution is dismissed.
[fn1] Serial No. 77292484, alleging a bona fide intention to use the mark in commerce under Trademark Act Section 1(b),15 U.S.C. § 1051(b).
[fn2] On January 30, 2009, the Board granted PVHC's motion to join CPRC and CPCI as party plaintiffs. The Board also allowed opposers time to file an amended notice of opposition, which they did on February 9, 2009. Applicant filed his answer to the amended notice of opposition on February 23, 2009. The amended notice of opposition and answer thereto serve as the operative pleadings in this proceeding.
[fn3] Notice thereof is posted on the Trademark Trial and Appeal Board (TTAB) page of the USPTO internet website at http://www.uspto.gov/web/offices/com/sol/notices/72fr42242.pdf http://www.uspto.gov/web/offices/com/sol/notices/72fr42242_ FinalRuleChart.pdf.
[fn4] Opposers' "motion to file a notice of reliance upon consent," requesting that they be allowed to file a corrected copy of Exhibit 2 to Mr. Luo's discovery deposition, is granted. By way of the correction, opposers attached two pages that were missing from the exhibit.
[fn5] For reasons explained supra, the deposition testimony of Mr. Wyse has not been considered. As to the two articles submitted under notice of reliance, while they identify opposer PVHC as the owner of the ARROW mark, all statements in the articles constitute hearsay and cannot be used to establish the truth of the matter asserted in the statements. Finally, we note that applicant specifically denied all of the pertinent allegations of the notice of opposition. Although applicant, at one point in his answer, asserts that opposer PVHC is "only one of the world's largest companies" and "owns too many brands, such as . . . ARROW . . ." (Answer, Para. 1), we construe these statements, following a denial of the allegation, as mere amplification of his reason(s) for denying the allegation. The statements do not constitute an admission or otherwise suffice for purposes of establishing opposer PVHC's standing.
[fn6] We have selected these registrations on the basis that they are for marks and/or cover goods that, when considered vis-à-vis the applied-for mark and identified goods, are most likely to support a finding of likelihood of confusion. See, e.g., In re Max Capital Group Ltd., 93 USPQ2d 1243
(TTAB 2010).
[fn7] Issued on April 14, 1992, renewed.
[fn8] Issued on March 10, 1992, renewed.
[fn9] We take judicial notice that "hosiery" is defined as "socks and stockings; hose" (from The American Heritage Dictionary of the English Language, Fourth Edition, updated in 2009). The Board may take judicial notice of dictionary definitions. University of Notre Dame du Lac v. J. C.Gourmet Food Imports Co., Inc., 213 USPQ 594 (TTAB 1982), aff'd, 703 F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983).
[fn10] As explained in the body of this decision, opposers PVHC and CPRC did not establish their standing and, accordingly, all claims brought by these two opposers are dismissed.