CASE SUMMARIES OF FAME BEFORE THE TRADEMARK TRIAL AND APPEAL

BOARD AND THE CANADIAN TRADE-MARKS OPPOSITION BOARD (2008)

During the committee term, the Dilution & Well Known Marks Committee: North

America Subcommittee summarized case law as part of its committee objectives. This work was done as part of INTA’s policy initiatives. This report summarizes cases decided in 2008 by the Trademark Trial and Appeal Board and cases decided by the Canadian Trade-Marks Opposition Board regarding the treatment of famous marks.

All information provided by the International Trademark Association in this document is provided to the public as a source of general information on trademark and related intellectual property issues. In legal matters, no publication whether in written or electronic form can take the place of professional advice given with full knowledge of the specific circumstances of each case and proficiency in the laws of the relevant country. While efforts have been made to ensure the accuracy of the information in this document, it should not be treated as a basis for formulating business decisions without professional advice. We emphasize that trademark and related intellectual property laws vary from country to country, and between jurisdictions within some countries. The information included in this document will not be relevant or accurate for all countries or states.

UNITED STATES TRADEMARK TRIAL AND APPEAL BOARD Case Title: Centex Corporation v. Citihomes RealtyCorporation,

Opposition 91161887, Decided 8/22/08 Citable as Precedent: No Opposer’s Mark(s): CITYHOMES and other marks incorporating the term

“CITYHOMES” [all for: construction services, namely, planning, laying out and custom construction of residential communities; real estate development; and custom construction of homes]

Applicant’s Mark(s): “CITIHOMES” [real estate brokerage services,

namely, assisting in the purchase and sale of real property; providing a database of real estate information, namely, real estate listing information; providing a directory of real estate agents]

Issues: Priority; Likelihood of Confusion Decision: Opposition Sustained based on Section 2(d)); Board

found fame factor was neutral in likelihood of confusion determination.

Fame: Opposer’s evidence included use since 1994, over

$108 million in sales, favorable press for its awards

2

and $2.5 million is promotion between FY 2002 and FY 2005. No direct evidence of fame of Opposer’s mark, such as market survey evidence and vast majority of Opposer’s operations were in Dallas/Fort Worth area.

TTAB acknowledged that Opposer had garnered

significant press coverage for its awards and widespread industry recognition as one of country’s premier developers of urban homes. TTAB found renown is largely limited to Texas and gross levels of promotional expenditures and sales were not significant enough to support famous mark status.

Case Title: O.C. Seacrets, Inc. v. Coryn Group, Cancellation No. 92042854,

Decided 8/20/08 Citable as Precedent: No Petitioner’s Mark(s): SEACRETS [restaurant and bar services; hotel

services] Registrant’s Mark(s): SECRETS [resort hotel services]

Issues: Likelihood of Confusion; Laches; r Partial Cancellation under Section 18

Decision: Petition to Cancel was granted based on priority and

likelihood of confusion; counterclaim for partial cancellation and restriction denied; Board found fame factor was neutral in likelihood of confusion determination.

Fame: Petitioner’s information about its marketing and

advertising was submitted under seal and numbers were not discussed in the opinion. Board noted that there was some evidence in the record regarding the strength of the SEACRETS mark, but the Board was not prepared to call the mark famous.

Case Title: Intermex Products USA, Ltd. V. Tron Hermanos, SA de CV,

Opposition 91166834, Decided 8/18/08 Citable as Precedent: No

3

Opposer’s Mark(s): LA TORRE (and design) [canned food products, namely, jalapenos, pineapple, mangos, guavas, cream of coconut, tomatoes, mushrooms, chic peas, refried beans, chili with and without beans]; “LA TORRE” [canned sardines and canned fruits; pasta and cookies]

Applicant’s Mark(s): LA TORRE” [edible oils and fats, lard, butter] Issues: Likelihood of Confusion Decision: Opposition Sustained; TTAB found evidence not

sufficient to conclude LA TORRE mark famous However, concluded LA TORRE mark is arbitrary with respect to goods and is “conceptually strong as a trademark.”

Fame: Opposer owned three federal registrations for LA

TORRE for various food products; had continuous registration since 1988. Testimony regarding advertising expenditures, sales revenue, sales in at least 28 states and continuous sales since at lest 1974.

Case Title: Duke University v. Apogee Software, Ltd., Opposition 91117365,

Decided 8/14/08 Citable as Precedent: No Opposer’s Mark(s): A number of marks, all comprising or incorporating

the word “DUKE” [prior registrations for a wide range of goods and services in Classes 6, 14, 16, 18, 20, 21, 24, 25, 28, 42, 200 and common law use on additional goods and services]

Applicant’s Mark(s): “DUKE” [various goods and services in Classes 9, 14, 16, 20, 24, 25, 28, 30, and 41]

Issues: Likelihood of Confusion Decision: Opposition Sustained; TTAB found evidence not

sufficient to conclude Opposer’s marks were famous. Fame: Opposer request for admission “Opposer’s mark

DUKE is a famous mark.” was answered affirmatively by the Applicant. TTAB found that the request did not specify what goods or services the mark was

4

allegedly famous for and found the request too vague to have any probative value.

Case Title: Monaco Coach Corporation v. Mitsubishi Motors North

America, Inc., Cancellation No. 92041358, Decided 8/11/08 Citable as Precedent: No Petitioner’s Mark(s): ENDEAVOR [motor homes] Registrant’s Mark(s): ENDEAVOR [automobiles] Issues: Likelihood of Confusion Decision: Petition to Cancel Granted based on priority and

Likelihood of Confusion. Fame: Respondent’s position was that ENDEAVOR was a

weak mark and was entitled to extremely limited protection and did not extend to prevent use of same mark on automobiles. Petitioner did not claim its mark was famous and Board agreed, but said it was also not a highly suggestive mark and neither the dictionary definitions do not convey even a vague suggestion of the goods. The third party registrations do not demonstrate a meaning of the word ENDEAVOR in the industry.

Case Title: Trek Bicycle Corporation v. Tektite Industries, Inc., Opposition

91164982, Decided 8/5/08 Citable as Precedent: No Opposer’s Mark(s): TREK [bicycles and bicycle parts and accessories,

including lights] Applicant’s Mark(s): TREK [flashlights]

Issues: Likelihood of Confusion Decision: Opposition Sustained; TTAB found fame factor

weighed heavily in favor of Opposer and found TREK famous for bicycles.

Fame: Opposer had continuous use of mark TREK for over

30 years; TTAB was impressed with the revenue

5

dollars and units sold. Annual sales in the hundreds of millions of dollars. Annual advertising expenditures in the tens of millions of dollars. Ads in variety of national publications including Time, Sports Illustrated and Bicycling. Opposer sponsored two pro-cycling teams. Opposer’s mark has been beneficiary of unsolicited publicity – Lance Armstrong rode TREK bicycles in Tour de France. Surveys conducted by independent magazines featuring bicycles and bicycling-related information showed strong TREK brand awareness among bicycle-purchasing public.

Case Title: Michael Stars, Inc. v. Michael Starr, Opposition 91164989,

Decided 8/1/08 Citable as Precedent: No Opposer’s Mark(s): MICHAEL STARS” [clothing, namely, hats, tops and

bottoms; retail store services featuring clothing and related accessories]; “MICHAEL STARS” (in stylized lettering) [clothing, namely, t-shirts, shirts, and polo shirts]

Applicant’s Mark(s): “MICHAEL STAR” [watches, clocks and jewelry] Issues: Likelihood of Confusion; Dilution Decision: Sustained on likelihood of confusion 2(d) grounds

only; TTAB found mark is strong among purchasers of women’s clothing, but declined to rule mark is famous under the du Pont factors.

Fame (2(d)): No direct evidence of fame such as a survey or

customer declarations. Opposer submitted evidence of $50 million in annual sales. Evidence did not specify what the ad expenditures bought, apart from ads in local and national magazines and “editorial” placements of clothing items with Opposer’s name in “smallest of fine print.” Celebrities wear Opposer’s clothing on TV and in films, but not clear that Opposer is recognized as the source of the clothing. Record did not show how significant Opposer is in clothing industry. No evidence of whether ads and editorial placements impacted sales or whether sales

6

are due to reasons such as quality of products and a limited loyal customer base.

Fame (Dilution): TTAB ruled that opposer’s mark does not meet the test for fame under the du Pont analysis, therefore, ruled that the mark does not have fame necessary for a dilution claim. Additionally, Opposer submitted no evidence on the issue of blurring or tarnishment.

Case Title: University of Southern California v. The University of South

Carolina, Opposition 91125615, Decided 8/1/08 Citable as Precedent: No

Opposer’s Mark(s): “SC” [sweatshirts and t-shirts; keyrings, decorative emblems, plates, umbrellas, tote bags, luggage, towels, blankets, cloth pennants, and other goods, all sold through university or at university-controlled or –authorized outlets]; “SC” (in stylized format) [t-shirts, sweatshirts, polo shirts, warm-up suits, jackets, rain ponchos, sweaters, jerseys, tank tops, shorts, sport shirts, baseball shirts, basketball jerseys, golf sweaters, night shirts, boxer shorts, socks, hats, caps, sport caps, visor caps, beanies and ties and other goods]; “SC” (in a different stylized format) [shirts and hats]

Applicant’s Mark(s): “SC” (in stylized format) [clothing, namely, hats, baseball uniforms, t-shirts and shorts]

Issues: Likelihood of Confusion; Cancellation based on 2(d) Decision: Opposition Sustained; Counterclaim for Cancellation

Denied; TTAB found the fame factor is neutral or at best weighs only slightly in California’s favor.

Fame: Most of evidence submitted under seal. California’s evidence of

sales and advertising volumes pertains to the “SC” mark and its other marks and designations, including “USC” and did not persuasively establish the percentages that pertain to the “SC” mark or to the sales of goods in the Classes at issue. The press articles prominently referred to California by other designations including “USC” and “Trojans,” which diluted the significance of the evidence as proof of the fame of “SC”. Evidence insufficient to show “SC” is a famous mark as contemplated by the du Pont factor.

7

Case Title: Gap (Apparel), LLC v. Gap One Enterprises, LLC, Opposition 91172505, Decided 7/28/08

Citable as Precedent: No

Opposer’s Mark(s): THE GAP” [retail clothing store services], “GAP” [clothing, tote bags and handbags, sunglasses and eyeglass cases, stationery, pencils, and notebooks, watches, blankets, sheets, linens, quilts, comforters, cosmetics, luggage, purses, book bags, wallets, umbrellas]

Applicant’s Mark(s): “GAP ONE” [general business merchandising services, namely, marketing] (some of the services are related to imprintable clothing and screen printing of clothing)

Issues: Likelihood of Confusion; Dilution. Decision: Opposition Sustained. Gap trademarks are famous and

entitled to broad scope of protection and exclusivity of use. TTAB stated that decision was based on likelihood of confusion and that it did not reach the issue of dilution.

Fame: The Applicant made the following admissions: The Gap is famous

for the name of a retail store; Gap was famous for clothing prior to the filing of Applicant’s mark; Gap was famous at time Applicant picked the name GAP One Enterprises; and Gap is well known to the general public in connection with clothing. TTAB found that evidence and testimony Opposer submitted under seal re sales revenues and advertising expenditures “are substantial under any standard.” Opposer introduced news articles and stories from national magazines and regional newspapers referring to the Gap mark as famous or well-known. TTAB reiterated that there is no excuse for even approaching the well-known trademark of a competitor.

Case Title: Flowers Bakeries Brands, Inc. v. Independent Marketing

Alliance LP, Opposition 91167151, Decided 7/25/08 Citable as Precedent: No

Opposer’s Mark(s): “COBBLESTONE MILL” and “COBBLESTONE MILL” (and design) [both marks for: bakery products,

8

namely, bread, buns and rolls]; and “COBBLESTONE MILL QUALITY BREADS A FAMILY OF BAKERS SINCE 1919 SAN FRANCISCO SOURDOUGH RECIPE” (and design) [bakery products]

Applicant’s Mark(s): “COBBLESTONE MARKET” [deli meats; cooked deli items, namely, soups, cheese; refrigerated salads except macaroni, rice, and pasta salad; pickles; bagged potato chips, frozen soups; frozen entrées, namely, entrees consisting primarily of meat, fish, poultry or vegetables]

Issues: Likelihood of Confusion; Marks are not famous under du Pont.

Decision: Opposition Sustained Fame: Opposer maintained mark acquired a high degree of recognition,

fame, and distinctiveness as applied to its goods. Opposer submitted sales and advertising numbers and testimony regarding consumer recognition and the extent and nature of its advertising. TTAB found there was no evidence re extent of consumer recognition of the mark and testimony of officers regarding recognition was insufficient to support claim of widespread notoriety. Annual advertising figure: $600,00 low compared to other marks found to be famous.

Case Title: ConAgra Foods RDM, Inc. v. Candwich Food Corporation, Opposition 91170341, Decided 7/17/08

Citable as Precedent: No

Opposer’s Mark(s): “MANWICH” [sandwich sauce; spice and seasoning mixes for meats]

Applicant’s Mark(s): “CANDWICH” [in Class 29: food items packaged in cans, namely, vegetable-based snack foods; in Class 30: food items packaged in cans, namely, meat-based sandwiches, candy, popcorn, candy popcorn and dessert toppings]

Issues: Likelihood of Confusion

9

Decision: Opposition Sustained. TTAB found that Manwich is truly well-known, is strong and entitled to a broad scope of protection under du Pont analysis

Fame: Forty years of continuous use; about $10 million in promotional

costs; in FY 2007 Opposer had more than $75 million in sales. No evidence of third party use of similar marks for related goods. Evidence exceeds the extensive public recognition and renown found sufficient to establish fame.

Case Title: Zabar’s & Co., Inc. v. Zaba’s Grill, LLC, Opposition 91163191, Decided 7/10/08

Citable as Precedent: No

Opposer’s Mark(s): “ZABAR’S” [food catering services, retail store services and mail order services for gourmet foods, gourmet cookware utensils, and gourmet books]; and other marks incorporating the word “ZABAR’S” for the services listed above and/or related goods and/or services

Applicant’s Mark(s): “ZABA’S” and “ZABA’S” (and design) [both marks for: restaurant services]

Issues: Likelihood of Confusion Decision: Opposition Sustained; TTAB finds that record falls short of

establishing that Opposer’s mark ZABAR’S is famous for the purpose of likelihood of confusion. Evidence of regional or niche fame falls short of demonstrating that awareness of Opposer’s products and services among those segments of the population translates into widespread recognition of the mark.

Fame: Opposer contested validity of Applicant’s survey evidence

submitted to show Opposer’s mark is not famous. TTAB found that even if it did not consider Applicant’s survey evidence, the Opposer’s evidence falls short of showing mark is famous. Opposer evidence: in business in New York City since 1934; 5,000 customers a week; mark has appeared in movies and on Seinfeld; 500,000 catalogues distributed; $500,000 in annual advertising. TTAB found: mark had gained notoriety in New York but not clear that people outside New York area are familiar with the mark; not clear where catalogues were sent; unclear whether facsimile and email orders are confined to the New York City area

10

or are nationwide; unclear as to what the hits on the Opposer’s website signify; annual advertising figure very low compared to annual advertising figures of other famous marks.

Case Title: Time Warner Entertainment Company, L.P. v. Fleet

Wholesale Supply Co., Inc., Opposition 91155422, Decided 7/10/08

Citable as Precedent: No

Opposer’s Mark(s): “ROAD RUNNER” and other marks incorporating the words “ROAD RUNNER” and various cartoon designs [a wide variety of goods and services, including: action figures and accessories therefor; hand held units for playing a parlour type video game]

Applicant’s Mark(s): “ROAD RUNNER” [batteries]

Issues: Likelihood of Confusion Decision: Opposition Sustained; mark is famous under the du

Pont factor analysis. Fame: Opposer’s mark has been used continuously since 1949 as part of

the Looney Tunes family of cartoon characters. Due to popularity of cartoon there has been great demand for Road Runner merchandise and has been a wide merchandising program – about $500 million worth of Looney Tunes licensed merchandise sold every year. Licensees include fast food restaurants for kid’s meal programs, commemorative stamps by the USPS and Six Flag Theme Parks. In the 1960’s mark was licensed to Plymouth for use on a vehicle. No specific evidence as to advertising of licensed products – licensees conduct and pay for this advertising although Opposer approves the advertising. Opposer’s affiliate has expended significant sums advertising and promoting ROAD RUNNER broad band internet service. TTAB was persuaded by length of time mark had been in use, large number of licensed products and services, nationwide advertising exposure and the advertising expenditures of its affiliate.

Case Title: Bear U.S.A., Inc. v. Dada Corporation, Opposition 91176592,

Decided 10/10/08 Citable as Precedent: No

11

Opposer’s Mark(s): BEAR, BEAR-MAX, BABY BEAR, BEAR USA (and other marks incorporating a bear design) [clothing, namely parkas, jackets, shirts, hats, headbands and footwear; sweatshirts, shorts – in various combinations]

Applicant’s Mark(s): PINK BEAR [clothing namely hats, caps and

headwear, headbands, jerseys, jackets, jeans, casual wear namely shorts, pants, t-shirts, overcoats, shoes]

Issues: Likelihood of Confusion Decision: Opposition Sustained Fame: Opposer plead in Notice of Opposition that mark will

dilute its famous BEAR trademarks, but did not discuss in trial brief. Dilution not given further consideration. TTAB rejects opposer’s position that mark is famous based on sales of $110 million over 14 years and $7 million in advertising expenditures. These figures are not of level required to find fame. However, TTAB finds mark is strong since BEAR is arbitrary for clothing and therefore distinctive. Applicant did not submit any evidence and there was no evidence of third-party use of BEAR marks. Found applicant’s mark likely to cause confusion based on du Pont Factors.

Case Title: Gilmar S.p.A. v. Mizuno Kabushiki Kaisha, Opposition

91156043, Decided 10/10/08 Citable as Precedent: No Opposer’s Mark(s): ICE and ICEBERG (and other marks incorporating the

words ICE or ICEBERG) [variety of clothing and accessory items]

Applicant’s Mark(s): BODY COOLING TECHNOLOGY ICE TOUCH and

Design [long list of clothing items, footwear and head gear] with BODY COOLING TECHNOLOGY disclaimed.

Issues: Likelihood of Confusion Decision: Opposition Sustained

12

Fame: Opposer argues it built up substantial fame in its ICE marks for clothing and related goods. Although record does not establish marks to be famous, it does support opposer’s ICE mark to be strong. Applicant submitted 48 third party “ICE” marks but without evidence of actual use, TTAB did not give it much weight, if any. TTAB found ICE TOUCH to be the dominant element of applicant’s mark and likely to cause confusion based on du Pont Factors.

Case Title: Li & Fung (B.V.I.) Limited v. Kenosha Ferrell, Opposition

91174386, Decided 10/17/08 Citable as Precedent: No Opposer’s Mark(s): BLACK CAT (and other marks incorporating the

words BLACK CAT) [fireworks and firecrackers; mopeds; t-shirts, baseball caps, denim shirts, windbreakers, boxer shorts, polo shirts, belt buckles, lady’s tank tops, bicycle racing jerseys]

Applicant’s Mark(s): Black Cat Beauty [baseball caps; denims; t-shirts;

wind jackets; and many other items of clothing] Issues: Likelihood of Confusion Decision: Opposition Sustained Fame: With respect to du Pont Factor, the TTAB found that

“BLACK CAT” marks are strong marks, but not famous based on evidence submitted. TTAB reiterated that a famous marks given extreme deference in terms of legal protection, it is the duty of a plaintiff to clearly prove fame. No evidence of sales; evidence of advertising was relatively meager.

Case Title: Blair Corporation & Blair LLC v. Tami T. Fassinger, Opposition

Nos. 91166414 & 91171088, Decided 10/17/08 Citable as Precedent: No Opposer’s Mark(s): BLAIR [jewelry; retail store services and/or mail

order/catalog services featuring books, office items, gift wrap, craft items, giftware, purses, children’s clothes, dolls, and many other items]

13

Applicant’s Mark(s): MALLORY VALERIE BLAIR [in Class 14: jewelry; plastic necklaces; plastic rings; in Class 16: series of fictional books for children; stationery; note pads; paper goods, namely, art paper, craft paper and drawing paper; stickers; in Class 18: purses; in Class 25: clothing for children, namely, t-shirts, dresses, pajamas, underwear, socks; children’s Halloween costumes; fabric headbands; headbands, bandanas; in Class 26: hair accessories, namely, twisters, claw clips, snap clips, hair bands, plastic barrettes, hair bows; in Class 28: dolls; stuffed dolls; rubber dolls; rag dolls; plastic dolls; paper dolls; plush toys; doll clothing and doll accessories sold as a unit therewith; puzzles]

Issues: Likelihood of Confusion Decision: Opposition Sustained. Fame: Blair mark found famous under du Pont Factor.

Following proof submitted: retail and mail order services under the mark since the 1920’s, including clothing, clothing accessories, giftware, dolls, and home furnishings. From 2000 – 2005, sales of goods and services ranged from $457,000,000 to $582,000,000. In 20002 – 2006 www.blair.com had between 7 million and 14 million of visitors each year. Opposer distributes about 100,000,00 Blair catalogues and other advertising piece per month for an annual total since 2000 of about 1.3 Billion separate mailings per year. Advertises in many nationally distributed well-known periodicals monthly. Advertising expenses between 2000 and 2006 exceeded $100,000,000 per year. Sales and advertising numbers not places in context, but sheer numbers alone display consumer awareness in two ways: “the extensive sales illustrate the vast number of purchases that have been made by consumers and the extensive advertising demonstrates that the public has been bombarded with opposer’s advertising and marketing efforts.

Case Title: Kohler Co. v. Kohler Homes; Kohler Co. v. Kohler Associates

Architects, Opposition Nos. 91152287 & 91152290, Decided 11/04/08

14

Citable as Precedent: No Opposer’s Mark(s): THE BOLD LOOK OF KOHLER [plumbing fixtures

and fittings for use with plumbing fixtures and parts therefor]; KOHLER [bath-tubs, lavatories, sinks, water closets, urinals, and a variety of other plumbing fixtures and fittings]

Applicant’s Mark(s): KOHLER HOMES [custom construction of homes];

KOHLER ASSOCIATES ARCHITECTS [architectural design]

Issues: Likelihood of Confusion Decision: Opposition Sustained Fame: Opposer sold over $18 billion worth of KOHLER

kitchen and bath products in US and has spent over $250 million in advertising Kohler products in US through national and local magazines, trade journals, newspapers, TV, radio, trade shows, billboards and Internet. Almost 600 showrooms. Some products sold over 70 years, others over 100 years. Opposer’s products have won many national awards and have been rated as “Best Buy” by Consumers Digest. Applicant recognized that Opposer is known as the undisputed king of the American bathroom. Found opposer’s KOHLER mark is famous with bathroom fixtures and within the home construction industry generally for purposes of likelihood of confusion and is entitled to broad protection.

Case Title: World Triathlon Corp. v. Traditional Medicinals, Inc.,

Opposition No. 91110391, Decided 10/03/08 Citable as Precedent: No Opposer’s Mark(s): IRONMAN (and design) [entertainment services,

namely, presentation of athletic contests featuring running, swimming and biking; watches and chronometers sold in association with contests of running, biking and swimming]; IRONMAN TRIATHLON NUTRITION (and design) [food and vitamin supplements]; IRONMAN TRIATHLON [non-carbonated soft drinks, namely, bottled water]; IRONWOMAN [t-shirts, sweatshirts, denim shirts and

15

hats, marketed in association with contests consisting of running, biking and swimming]; IRON GIRL [various items of clothing and physical fitness apparel for the general female consumer market]

Applicant’s Mark(s): IRON WOMAN [in Class 5: dietary and nutritional

supplements; in Class 30: herb teas] Issues: Likelihood of Confusion Decision: Opposition Sustained as to Class 5; dismissed as to

Class 30 Fame: Not persuaded that Opposer’s IRONMAN and

IRONMAN TRIATHLON are famous. Continuous use since 1979 with athletic events. TV broadcast began in 1980. By 2003, 9 sports Emmy Awards were won by NBC. Articles in numerous national magazines and newspapers. Opposer used IRON-formative marks with a variety of goods and services, including Timex watch, introduces in 1986 and is best-selling sports watch in world. Achieved a level of media exposure and recognition at least with athletic events. But little evidence of brand awareness – no figures showing household penetration or brand awareness tending to show that opposer products or services of lasting value. Opposer’s evidence fell short of demonstrating extent to which its length of use of its marks, media exposure, or marketing efforts translate into widespread recognition of the Opposer’s marks by the general public outside of the field of triathlons. Found evidence sufficient to show Opposer’s marks have achieved at least some degree of recognition and strength in the sports market.

Case Title: RE/MAX International Inc. v. Somraj Singh, Opposition No.

91175272, Decided 12/10/08 Citable as Precedent: No Opposer’s Mark(s): RE/MAX [real estate brokerage services] Applicant’s Mark(s): SAVEMAX REALTY (and design) [real estate

brokerage services] Issues: Likelihood of Confusion

16

Decision: Opposition Dismissed. Opposer’s mark famous under

Likelihood of Confusion standard, and although services and channels of trade identical and class of consumers same, no likelihood of confusion because dissimilarity of marks outweigh the other factors.

Fame: Fame for likelihood of confusion established by

opposer: More than 4,000 offices in US; 80,000 sales associates in US; has a 16% market share; Since march 2006 website has listed 3.9 million properties and generated 3.3 million leads; in 2007 spent about $50 million in advertising in US; associates of opposer spent about $1 billion in ads in 2007 (about 47% of ads in real estate field in US was by opposer).

Case Title: Kansas City Royals Baseball Corporation v. Anschutz

Manchester Hockey, LLC, Opposition No. 91163833, Decided 12/09/08

Citable as Precedent: No Opposer’s Mark(s): mark in the nature of a mascot, namely, an

anthropomorphized lion wearing a crown and clothing that includes a jersey bearing the word “Royals” (in script) on the front and the word “SLUGGERR” on the back and/or other clothing bearing opposer’s baseball team’s indicia [entertainment services, namely, professional baseball games and mascot entertainment services; charitable and educational services; clothing items including hats and shirts]

Applicant’s Mark(s): design mark incorporating an anthropomorphized lion

wearing a crown and clothing that includes a jersey bearing the letter “M” [in Class 25: clothing related to a professional ice hockey team, namely, t-shirts, hats, baby creepers; and cloth baby bibs; in Class 41: live entertainment services in the nature of individuals in costume who appear and perform at ice hockey games and exhibitions; entertainment services, namely, professional ice hockey games and exhibitions; and charitable services, namely, providing youth hockey instruction, and teaching children the importance of goal setting and healthy lifestyles]

Issues: Likelihood of Confusion

17

Decision: Opposition Dismissed. Fame: Opposer failed to prove fame of its Sluggerrr mascot

within the meaning of the du Pont factor. Even assuming the opposer’s baseball team and its “ROYALS” team name and marks are famous, the record did not show that the team’s mascot, per se and apart from the team and its other marks is famous. Although the Sluggerrr mark is likely well-known to the fans of the opposer’s baseball team, the TTAB found that it is not, in itself, a mark of sufficient general renown that it is entitled to the broad scope of protection accorded to famous marks under the fifth du Pont factor.

Case Title: Full Speed Ahead, Inc. v. SRAM Corp., Opposition No.

91171889, Decided 12/10/08 Citable as Precedent: No Opposer’s Mark(s): K FORCE [bicycles and a variety of bicycle parts] Applicant’s Mark(s): SRAM FORCE [in Class 12: a variety of bicycle

parts; in Class 25: a variety of clothing items] Issues: Likelihood of Confusion Decision: Opposition Dismissed as to both Class 12 and Class

25 Fame: Opposer referred to the K FORCE mark as a “famous

mark” at one point, but did not argue that fame was a factor. TTAB noted it has considered evidence of use and promotion of mark and finds it insufficient to establish K FORCE as a famous mark. Therefore, the TTAB did not regard fame as relevant in this case.

Case Title: Bombardier Recreational Products Inc. v. Duramax, Inc,

Opposition No. 91163205, Decided 12/04/08 Citable as Precedent: No Opposer’s Mark(s): JOHNSON [internal combustion engines for boats,

marine engines and outboard motors, and a variety of other goods; maintenance and repair of internal

18

combustion engines, outboard motors and marine accessories; retail store services in the field of marine equipment]

Applicant’s Mark(s): JOHNSON RUBBER COMPANY (and design

incorporating a stylized letter J) [in Class 35: distributorships in the fields of land vehicles and marine equipment; in Class 40: manufacture of general product lines in the fields of land vehicles and marine equipment to the order and specification of others]

Issues: Likelihood of Confusion Decision: Opposition Sustained as to both Class 35 and Class 40 Fame: Opposer claimed JOHNSON mark had acquired a

“legendary status” and was one of the most well known marks in the US to identify outboard motors. TTAB found that that statement might be true but had not been properly demonstrated on the record. Decided based on commercial impressions of marks and relationship of services, not necessary to find any degree of fame.

Case Title: Embotelladora Aga del Pacifico, SA de CV v. Jose Alfonso

Serrano Gonzalez, Opposition No. 91175952, Decided 12/03/08 Citable as Precedent: No Opposer’s Mark(s): CABALLITOS (and design) and CABALLITOS

FRUITS (and design) [both marks for: soft drinks] Applicant’s Mark(s): CABALLITO CERRERO [tequila] Issues: Likelihood of Confusion Decision: Opposition Sustained (on 2(d) grounds only) Fame: Opposer’s assertions of fame found to be unsupported

by the record. Opposer put in evidence of sales of 6 million cases of soft drinks per year in Mexico. No evidence of opposer’s assertion that the brand’s fame in Mexico carried over to the Mexican /American Community and no evidence of extent of US sales, reach of advertising beyond local sales circulars or any

19

direct evidence of consumer perception. Evidence falls well short of the mark on the record, so TTAB considered fame as a neutral factor in its analysis.

Case Title: The Black Dog Tavern Company, Inc. v. Joseph J. Juras,

Opposition Nos. 91152364 & 91153557, Decided 12/02/08 Citable as Precedent: No Opposer’s Mark(s): THE BLACK DOG and a design mark comprising a

standing black dog [both marks for: restaurant and bakery shop services, retail store services, and a wide range of goods, including clothing items: hats, t-shirts, sweatshirts and shorts, etc.]

Applicant’s Mark(s): YELLOW DOG NANTUCKET [clothing, namely, t-

shirts, sweatshirts, pants, sweatpants, caps, hats, socks, underwear, boxer-shorts, visors, and jackets]; YELLOW DOG NANTUCKET (and yellow dog design) [t-shirts]

Issues: Likelihood of Confusion Decision: Opposition Sustained in both cases Fame: Use for almost thirty years for dining services and

over two decades of use on a wide range of merchandise, favorable publicity for services and products, ads in wide range of local and national publications, and serves as a strong source indicator. Sales from 1987 to 2006 about $150 million; spent $15 million on promotion; mailed 378,000 catalogs in 2006; political and Hollywood celebrities wear merchandise. Based on the degree of renown of THE BLACK DOG, the standing dog design, as well as combination of the words and design may have acquired, the TTAB concluded opposer’s marks were well-known, commercially strong marks as applied to restaurant services and collateral merchandise, including T-shirts. TTAB found the fifth du Pont factor strongly favors a finding of likelihood of confusion.

20

CANADIAN TRADE-MARKS OPPOSITION BOARD

Case Title: Tradall S.A. v. Martini S.p.A., [2007] T.M.O.B. No. 55

Background: Martini S.p.A. applied to register the trade-mark

MARTINI MASSAGE & DESIGN (Figure 1) for various massage and cosmetic products.

Mark:

Figure 1

Tradall S.A. opposed the application and relied upon a

family of trade-marks consisting of or incorporating the term MARTINI registered for alcoholic beverages. Also, some of Tradall’s MARTINI trade-marks were registered for clothing and snack foods.

Fame: Tradall argued that its trade-marks were famous, such

that use of such trade-marks on non-related wares or services would cause confusion. Tradall filed the following evidence, to both establish use of its trade-marks for a wide variety of wares and the fame of the trade-mark MARTINI:

• sales figures of the MARTINI “family” of products from

1989 to 2003 (alcohol products as well as clothing and snack foods);

• advertising costs since 1995; • testimony that others were licensed to produce the non-

alcohol members of the “family” of products; • testimony that the non-alcohol MARTINI products were

routinely distributed at golf tournaments and other promotional events; and

• photographs of such products.

21

Outcome: There was an absence of likelihood of confusion

between Martini S.p.A.’s trade-mark and Tradall’s trade-marks. Accordingly, the grounds of opposition based on confusion were rejected. The ground of opposition alleging that Martini S.p.A. did not have an bona fide intention to use the applied-for trade-mark was not proven and thus was rejected. Accordingly, the opposition was dismissed.

Fame Disposition: The Board concluded that there was no “use” in

Canada by Tradall of the trade-mark MARTINI in other areas than alcoholic beverages. Acccordingly, Tradall’s trade-mark is well-known in the area of alcoholic beverages, but is not famous.

The Board quoted extensively from Mattel, Inc. v.

3894207 Canada Inc., which states that the fame of a trade-mark would permit its owner to expand its rights “across product lines”. The evidence did not permit the Board to conclude that there was widespread use of the trade-mark MARTINI outside of the sphere of alcoholic beverages in Canada. Accordingly, a consumer would be unlikely to associate a MARTINI MASSAGE & DESIGN massage product, for example, with Tradall.

Case: Allergan Inc. v. Lancôme Parfums and Beauté & Cie, [2007]

T.M.O.B. No. 143 Background: Lancôme applied to register the trade-mark MYOTOX for

cosmetics, namely milks, creams, gels, oils and powders for the face, body and hands. One basis of the application was registration of the trade-mark and use in France. Allergan opposed and relied on a number of registrations for trade-marks incorporating or consisting of the term BOTOX. The Board concentrated its analysis on the trade-marks BOTOX and BOTOX COSMETIC. Allergan registered these trade-marks in association with several different classes of wares, including:

• pharmaceutical preparations for the treatment of smooth

muscle disorders; headaches, sports injuries, and a variety of other medical conditions;

• pharmaceutical preparations for alleviating wrinkles and sweating; and

22

• printed educational materials such as books, brochures, pamphlets, guides, etc.

Fame: Allergan filed extensive evidence to demonstrate the Canadian

public’s knowledge of the BOTOX trade-marks, including:

• evidence demonstrating that BOTOX products have the highest market share in Canada;

• sales figures exceeding CDN$35 million for a three year period;

• advertising expenditures of CDN$7 million over the same period;

• samples of advertising and marketing material distributed by Allergan (in the English and French languages);

• evidence of the different kinds of media through which the advertisements were published, such as radio, television, magazines, billboards and bus shelters;

• articles about the BOTOX products published in various newspapers and magazines, generally corroborating commercial success and the assertion that BOTOX products are growing in popularity; and

• evidence that approximately 120,000 Canadians had tried treatment with BOTOX COSMETIC products.

Outcome: The Board concluded that there is no likelihood of confusion based

on the differences between the parties’ trade-marks, the nature of the parties wares and the nature of the parties’ trades. However, the application was refused based on the failure by Lancôme to file evidence of use in France in support of the claim of use and registration abroad.

Fame Disposition: In the context of considering the extent to which the parties’ trade-

marks have become known, the Board concluded that the evidence demonstrated that the trade-marks BOTOX and BOTOX COSMETIC are “known, indeed very well known, in Canada”. Allergan also argued as a separate ground that the “notoriety” of its trade-marks favoured a finding of confusion. The Board expressly declined to decide upon the notoriety of the trade-marks BOTOX and BOTOX COSMETIC, but relied on the Supreme Court of Canada decision in Mattel, Inc. v. 3894207 Canada Inc. to conclude that “the notoriety of a trade-mark is not decisive”.

Case: E. & J. Gallo Winery v. El Gallo Giro Corp., [2007] T.M.O.B.

No. 105

23

Background: El Gallo Giro Corp. applied to register the trade-mark EL GALLO GIRO for retail butcher shops, retail bakery shops, retail tortilla shops, catering, restaurants and carry-out restaurant services. E & J Gallo Winery (hereinafter “Gallo”) opposed based on registrations for a number of trade-marks incorporating or consisting of the term GALLO, including the trade-marks GALLO and ERNEST & JULIO GALLO. Gallo uses these trade-marks in association with wines, alcoholic beverages and wine-based beverages.

Fame: Gallo filed extensive evidence of the fame of its trade-marks in

Canada. This evidence consisted of:

• the fact that Gallo had become the largest wine-producing organization in the world;

• a large collection of photocopied product labels, dating back to 1962 (the year Gallo began exporting products to the Canadian market);

• worldwide sales exceeding 4.5 billion bottles of wine since 1962;

• Canadian sales exceeding 9 million cases of wine since 1962;

• advertising expenditures of $600 million worldwide, and $4.5 million in Canada, during the period from 1987 to 2004.

Gallo also filed evidence to demonstrate a connection between its wares and the applicant’s services. Gallo showed that a significant part of its business consisted of sales of wine to restaurants for consumption with food, and that many of its labels and other advertising materials included suggestions of food to eat with the wine.

Outcome: The Board concluded that the trade-mark EL GALLO GIRO is

confusing with the trade-mark GALLO and thus rejected the application.

Fame Disposition: The Board found that the trade-marks GALLO and ERNEST &

JULIO GALLO had “become well known” in Canada based upon the evidence of significant sales in Canada. However, the Board expressly refused to conclude that the trade-marks had become famous in Canada, although Gallo’s “activities in the United States may support such a conclusion there”.

Case: Molson Canada 2005 v. Cardoso, [2007] T.M.O.B. No. 139

24

Background: Cardoso applied to register the trade-mark CANADIAN ADVENTURE BEER KIT based on proposed use in Canada for the wares beer making kits. The terms CANADIAN and BEER KIT were disclaimed in the application. Molson opposed on several grounds and cited 18 allegedly confusing marks it owned. Molson also opposed on the grounds that Cardoso did not intend to use the specific trade-mark applied for and that Cardoso did not herself intend to use the trade-mark.

Fame: Molson filed affidavit evidence stating that:

• Molson is the largest brewer in Canada with a market share in excess of 45%;

• Molson’s best selling brand of beer is CANADIAN beer; • CANADIAN was adopted as a mark in 1959; • sales of CANADIAN beer from 1995-2000 were in excess

of 27 million hectolitres; • CANADIAN marketing expenditures over the same period

were more than $400 million; • promotion of CANADIAN spans print, radio and television

advertising, sponsorship of sporting events and the sale of promotional items;

• revenues for CANADIAN promotional items exceeded $300,000 in 1998 and $600,000 in 2000.

Outcome: The opposition was successful on several grounds. First, the

opposition was successful on the grounds that Cardoso did not intend to use the trade-mark that was applied for and that Cardoso herself did not intend to use the trade-mark. The probability of confusion is “equally balanced”. Since the onus is on the applicant to prove that the trade-marks are not confusing, the grounds of opposition based on confusion were also successful.

Fame Disposition: In the context of considering the extent to which the parties’ trade-

marks had become known, the Board found CANADIAN to be a famous mark in Canada for beer based on “very extensive use and advertising of that mark for many years”. The Board did not consider fame as a separate surrounding circumstance in the confusion analysis.