Likelihood of Confusion - Market Interface Between Applicant and Owner



As stated in section 1207.01 Likelihood of Confuion of the Trademark Manual of Examination Procedure: In the ex parte examination of a trademark application, a refusal under §2(d) is normally based on the examining attorney's conclusion that the applicant's mark, as used on or in connection with the specified goods or services, so resembles a registered mark as to be likely to cause confusion. (See TMEP §1207.02 concerning §2(d) refusals to register marks that so resemble another mark as to be likely to deceive, and TMEP §1207.03 concerning §2(d) refusals based on unregistered marks. Note: Refusals based on unregistered marks are not issued in ex parte examination.)

The examining attorney must conduct a search of Office records to determine whether the applicant's mark so resembles any registered mark(s) as to be likely to cause confusion or mistake, when used on or in connection with the goods or services identified in the application. The examining attorney also searches pending applications for conflicting marks with earlier effective filing dates. See TMEP §§1208 et seq. regarding conflicting marks. The examining attorney must place a copy of the search strategy in the file.

If the examining attorney determines that there is a likelihood of confusion between applicant's mark and a previously registered mark, the examining attorney refuses registration under §2(d). Before citing a registration, the examining attorney must check the automated records of the Office to confirm that any registration that is the basis for a §2(d) refusal is an active registration. See TMEP §716.02(e) regarding suspension pending cancellation of a cited registration under §8 of the Act or expiration of a cited registration for failure to renew under §9 of the Act.

Also, if Office records indicate that an assignment of the conflicting registration has been recorded, the examining attorney should check the automated records of the Assignment Services Branch of the Office to determine whether the conflicting mark has been assigned to applicant.

In In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (C.C.P.A. 1973), the Court of Customs and Patent Appeals discussed the factors relevant to a determination of likelihood of confusion. In ex parte examination, the issue of likelihood of confusion typically revolves around the similarity or dissimilarity of the marks and the relatedness of the goods or services. The other factors listed in du Pont may be considered only if relevant evidence is contained in the record. See In re Majestic Distilling Co., 315 F.3d 1311, 1315, 65 USPQ2d 1201, 1204 (Fed. Cir. 2003) ("Not all of the DuPont factors may be relevant or of equal weight in a given case, and Ďany one of the factors may control a particular case,'" quoting In re Dixie Restaurants, Inc., 105 F.3d 1405, 1406-07, 41 USPQ2d 1531, 1533 (Fed. Cir. 1997)); In re National Novice Hockey League, Inc., 222 USPQ 638, 640 (TTAB 1984). In an ex parte case, the following factors are usually the most relevant:

  • The similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation and commercial impression.
  • The relatedness of the goods or services as described in an application or registration or in connection with which a prior mark is in use.
  • The similarity or dissimilarity of established, likely-to-continue trade channels.
  • The conditions under which and buyers to whom sales are made, i.e., "impulse" vs. careful, sophisticated purchasing.
  • The number and nature of similar marks in use on similar goods.
  • A valid consent agreement between the applicant and the owner of the previously registered mark.

The Court of Appeals for the Federal Circuit has provided the following guidance with regard to determining and articulating likelihood of confusion:

The basic principle in determining confusion between marks is that marks must be compared in their entireties and must be considered in connection with the particular goods or services for which they are used (citations omitted). It follows from that principle that likelihood of confusion cannot be predicated on dissection of a mark, that is, on only part of a mark (footnote omitted). On the other hand, in articulating reasons for reaching a conclusion on the issue of confusion, there is nothing improper in stating that, for rational reasons, more or less weight has been given to a particular feature of a mark, provided the ultimate conclusion rests on consideration of the marks in their entireties (footnote omitted). Indeed, this type of analysis appears to be unavoidable.

In re National Data Corp., 753 F.2d 1056, 1058, 224 USPQ 749, 750-51 (Fed. Cir. 1985).

There is no mechanical test for determining likelihood of confusion. The issue is not whether the actual goods are likely to be confused but, rather, whether there is a likelihood of confusion as to the source of the goods. In re Shell Oil Co., 992 F.2d 1204, 1208, 26 USPQ2d 1687, 1690 (Fed. Cir. 1993), and cases cited therein. Each case must be decided on its own facts.

The determination of likelihood of confusion under §2(d) in an intent-to-use application does not differ from the determination in any other type of application.

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  • The tenth du Pont factor is the market interface between applicant and registrant.
    • In re Association of the United States Army, Serial No. 76578579, (TTAB 2007).
      • In further support of its contention that confusion is unlikely, applicant argues that registrant has impliedly consented "to the use by Applicant of Applicant's logo." (Applicant's brief at 7.) We deem this argument to fall under the tenth du Pont factor, i.e., the market interface between applicant and registrant. See In re Opus One Inc., supra.
    • In re Association of the United States Army, Serial No. 76578579, (TTAB 2007).
      • If, as applicant contends, the United States Army in fact consents to applicant's registration of the mark, "there is available to applicant in a future application a type of evidence which, under du Pont and subsequent case law, is entitled to great weight in the likelihood of confusion analysis, i.e., a valid consent agreement between applicant and registrant. The evidence of record applicant relies on in the present case simply does not suffice as a substitute for such an agreement. We have given that evidence due consideration, but conclude that the tenth du Pont evidentiary factor, i.e., the "market interface" between applicant and registrant, does not weigh in applicant's favor to any significant degree in this case." In re Opus One Inc., supra, 60 USPQ2d at 1822.
  • Case Finding: The fact that opposer also uses other media such as print and television advertising to market its services does not raise a genuine issue regarding the parties' channels of trade.
    • Apple Computer v. TVNET.net, Inc., Opposition No. 91168875, (TTAB 2007).
      • The fact that opposer also uses other media such as print and television advertising to market its services does not raise a genuine issue regarding the parties' channels of trade. See Octocom Systems Inc. v. Houston Computers Services Inc., 918 F.2d 937, 16 USPQ2d 1783, 1788 (Fed. Cir. 1990).
    • The Wet Seal, Inc. v. FD Management, Inc., Opposition No. 91157022, (TTAB 2007)
      • We turn finally to the tenth du Pont factor, "the market interface between applicant and the owner of a prior mark" which includes consideration of "(b) agreement provisions designed to preclude confusion, i.e., limitations on continued use of the marks by each party..." du Pont supra at 567.
  • A settlement Agreement may not negate a finding of potential likelihood of confusion.
    • The Wet Seal, Inc. v. FD Management, Inc., Opposition No. 91157022, (TTAB 2007)
      • In addition to its claim of priority based on the parties' settlement agreement, which we have found unpersuasive, applicant also argues that the settlement agreement "negates any potential likelihood of confusion" between the two marks. Brief, p. 3. Applicant has not explained how the agreement "negates" the likelihood of confusion and we do not find that it does. As we noted earlier, the agreement contains no provisions regarding opposer's rights in the term ARDEN alone or apart from ELIZABETH ARDEN in connection with fragrances and cosmetics; and nothing precluding opposer from using the mark ARDEN B, at least in its present form, or from asserting its rights in this mark for clothing and clothing stores against applicant. In fact, if anything, the agreement implies that there would be a likelihood of confusion between certain "ARDEN" marks for fragrance and cosmetic products on the one hand, and for clothing and clothing store services on the other.23
  • Having found that there exists a likelihood of confusion, we elect to sustain the opposition on this basis alone. We will not consider opposers' claim, which was unpled but which was tried by the consent of the parties, that the current applicants are bound by a 1985 settlement agreement entered into by opposers and Mego Corp., the former owner of the old MEGO mark. See American Paging Inc. v. American Mobilephone Inc., 13 USPQ2d 2036, 2039 (TTAB 1989), aff'd 17 USPQ2d 1726 (Fed. Cir. 1990) and cases cited therein.
    • INTERLEGO AG and LEGO SYSTEMS, INC. and KIRKBI AG v. ABRAMS/GENTILE ENTERTAINMENT, INC. and MJJ MULTIMEDIA LLC, Opposition No. 103,612, (TTAB 2002)
  • Even though the parties had an agreement to not sell a particular class of goods, the general public would be unaware of the agreement and still likely to believe the goods are related.
    • The Wet Seal, Inc. v. FD Management, Inc., Opposition No. 91157022, (TTAB 2007)
      • However, opposer's ARDEN B clothing is sold exclusively in opposer's own ARDEN B clothing stores, and the ARDEN B stores sell, almost exclusively, opposer's house brand of clothing. Opposer has expressed no intention of expanding the sale of its merchandise to include the stores of others or the brands of merchandise of others. Applicant argues that because opposer's goods are only sold in opposer's stores, and since opposer is prohibited by the parties' agreement from selling cosmetics under the ARDEN B mark, the parties' clothing and cosmetic products in this case will never in fact be sold together. Applicant's statement is true, but not compelling. First, purchasers are not going to be aware that opposer is prohibited from selling cosmetic products under the ARDEN B mark. Further, where products are closely related, merely because the products in fact would not be sold together would not necessarily prevent consumers, when encountering the products in different outlets, from believing the products come from the same source. See Freedom Savings and Loan Association v. Fidelity Bankers Life Insurance Company, 224 USPQ 300, 304 (TTAB 1984) ("It is not necessary that goods be competitive or be sold together or through the same outlets if they can be shown to be related in some manner that would suggest to persons encountering them, even at different locations, sources, or offices a likelihood of common sponsorship").
  • It is not necessary that goods be competitive or be sold together or through the same outlets if they can be shown to be related in some manner that would suggest to persons encountering them, even at different locations, sources, or offices a likelihood of common sponsorship.
    • The Wet Seal, Inc. v. FD Management, Inc., Opposition No. 91157022, (TTAB 2007)
      • However, opposer's ARDEN B clothing is sold exclusively in opposer's own ARDEN B clothing stores, and the ARDEN B stores sell, almost exclusively, opposer's house brand of clothing. Opposer has expressed no intention of expanding the sale of its merchandise to include the stores of others or the brands of merchandise of others. Applicant argues that because opposer's goods are only sold in opposer's stores, and since opposer is prohibited by the parties' agreement from selling cosmetics under the ARDEN B mark, the parties' clothing and cosmetic products in this case will never in fact be sold together. Applicant's statement is true, but not compelling. First, purchasers are not going to be aware that opposer is prohibited from selling cosmetic products under the ARDEN B mark. Further, where products are closely related, merely because the products in fact would not be sold together would not necessarily prevent consumers, when encountering the products in different outlets, from believing the products come from the same source. See Freedom Savings and Loan Association v. Fidelity Bankers Life Insurance Company, 224 USPQ 300, 304 (TTAB 1984) ("It is not necessary that goods be competitive or be sold together or through the same outlets if they can be shown to be related in some manner that would suggest to persons encountering them, even at different locations, sources, or offices a likelihood of common sponsorship").
  • In cases where equitable defenses have been pleaded and proved, it is necessary to decide whether the question of likelihood of confusion is inevitable or reasonably debatable because the equitable defenses of laches and acquiescence are barred if confusion is inevitable.
    • The Christian Broadcasting Network, Inc. v. ABS-CBN International, Cancellation No. 92044366, (TTAB 2007)
      • In cases such as this, where equitable defenses have been pleaded and proved, it is necessary to decide whether the question of likelihood of confusion is inevitable or reasonably debatable because the equitable defenses of laches and acquiescence are barred if confusion is inevitable. Ultra-White Co., Inc. v. Johnson Chemical Industries, Inc., 465 F.2d 891, 175 USPQ 166, 167 (CCPA 1972); Reflange Inc. v. R-Con International, supra; Hitachi Metals International v. Yamakyu Chain Kabushiki, 209 USPQ 1057, 1069 (TTAB 1981).
    • The Christian Broadcasting Network, Inc. v. ABS-CBN International, Cancellation No. 92044366, (TTAB 2007)
      • This is so because any injury to respondent caused by plaintiff's delay is outweighed by the public's interest in preventing confusion. Turner v. Hops Grill & Bar, Inc., 52 UPSQ2d 1310, 1313 (TTAB 1999), citing Coach House Restaurant Inc. v. Coach and Six Restaurants, Inc., 934 F.2d 1551, 19 UPSQ2d 1401, 1409 (11th Cir. 1991).
  • Earlier proceedings involving opposer's mark does not have a res judicata or collateral estoppel effect where the marks and goods at issue in the prior case are different from the earlier case(s).
    • Miss Universe L.P., LLLP v. Community Marketing, Inc., Opposition No. 91160627, (TTAB 2007)
      • Finally, the fact that opposer was the plaintiff in a 1978 opposition proceeding (No. 91062042) involving its MISS U.S.A. mark and a third party's MR. USA mark, in which the opposition ultimately was terminated and a registration issued to the applicant, is of no probative value in the present case. The only evidence pertaining to this prior case are TTABVUE and TARR records, which show only that the proceeding was filed on December 27, 1978 and instituted on March 6, 1979, that the applicant filed an answer on April 2, 1979, that an "appeal to CAFC" was taken on October 26, 1981, that the opposition was terminated on July 27, 1983, that a registration (Reg. No. 1253816) was issued to the applicant on October 11, 1983, and that the registration subsequently was cancelled under Section 8. There is no evidence from which we might ascertain the basis for the Board's apparent dismissal of the opposition and the Federal Circuit's apparent affirmance of such dismissal. We note that the goods identified in the third-party applicant's MR. USA application and registration were Class 25 clothing goods, a fact which in itself may have been the basis for a finding of no likelihood of confusion (assuming that such finding was in fact the basis of the decision and outcome of the case). The point is that we cannot determine what the basis of the decision in the prior case was; that case therefore is of no probative value. To the extent that applicant is arguing that this prior case has some sort of res judicata or collateral estoppel effect in the present case, such contention is without merit given the differences in the marks and goods at issue in the prior case.
  • In cases where equitable defenses have been pleaded and proved, it is necessary to decide whether the question of likelihood of confusion is inevitable or reasonably debatable because the equitable defenses of laches and acquiescence are barred if confusion is inevitable.
    • The Christian Broadcasting Network, Inc. v. ABS-CBN International, Cancellation No. 92044366, (TTAB 2007)
      • In cases such as this, where equitable defenses have been pleaded and proved, it is necessary to decide whether the question of likelihood of confusion is inevitable or reasonably debatable because the equitable defenses of laches and acquiescence are barred if confusion is inevitable. Ultra-White Co., Inc. v. Johnson Chemical Industries, Inc., 465 F.2d 891, 175 USPQ 166, 167 (CCPA 1972); Reflange Inc. v. R-Con International, supra; Hitachi Metals International v. Yamakyu Chain Kabushiki, 209 USPQ 1057, 1069 (TTAB 1981).
    • The Christian Broadcasting Network, Inc. v. ABS-CBN International, Cancellation No. 92044366, (TTAB 2007)
      • This is so because any injury to respondent caused by plaintiff's delay is outweighed by the public's interest in preventing confusion. Turner v. Hops Grill & Bar, Inc., 52 UPSQ2d 1310, 1313 (TTAB 1999), citing Coach House Restaurant Inc. v. Coach and Six Restaurants, Inc., 934 F.2d 1551, 19 UPSQ2d 1401, 1409 (11th Cir. 1991).
  • Earlier proceedings involving opposer's mark does not have a res judicata or collateral estoppel effect where the marks and goods at issue in the prior case are different from the earlier case(s).
    • Miss Universe L.P., LLLP v. Community Marketing, Inc., Opposition No. 91160627, (TTAB 2007)
      • Finally, the fact that opposer was the plaintiff in a 1978 opposition proceeding (No. 91062042) involving its MISS U.S.A. mark and a third party's MR. USA mark, in which the opposition ultimately was terminated and a registration issued to the applicant, is of no probative value in the present case. The only evidence pertaining to this prior case are TTABVUE and TARR records, which show only that the proceeding was filed on December 27, 1978 and instituted on March 6, 1979, that the applicant filed an answer on April 2, 1979, that an "appeal to CAFC" was taken on October 26, 1981, that the opposition was terminated on July 27, 1983, that a registration (Reg. No. 1253816) was issued to the applicant on October 11, 1983, and that the registration subsequently was cancelled under Section 8. There is no evidence from which we might ascertain the basis for the Board's apparent dismissal of the opposition and the Federal Circuit's apparent affirmance of such dismissal. We note that the goods identified in the third-party applicant's MR. USA application and registration were Class 25 clothing goods, a fact which in itself may have been the basis for a finding of no likelihood of confusion (assuming that such finding was in fact the basis of the decision and outcome of the case). The point is that we cannot determine what the basis of the decision in the prior case was; that case therefore is of no probative value. To the extent that applicant is arguing that this prior case has some sort of res judicata or collateral estoppel effect in the present case, such contention is without merit given the differences in the marks and goods at issue in the prior case.
  • Discussion of laches and estoppel in relation to the tenth du Pont factor.
    • In re Thomas H. Wilson, Serial No. 75/285,881, (TTAB 2001).
      • FOOTNOTE 13 "Given the lack of sufficient evidence in the record to establish "laches or estoppel attributable to the owner of the prior mark," we need not reach the more fundamental question of whether applicant is entitled to rely on the tenth du Pont factor at all in this case. Arguably, the "laches and estoppel" provision set forth in subsection (d) of the tenth du Pont factor must be read in conjunction with the introductory language of the tenth factor. That is, "laches and estoppel attributable to owner of prior mark and indicative of lack of confusion" is relevant only as an example of "the market interface between applicant and the owner of a prior mark." No such market interface between applicant and registrant exists in this case; applicant relies solely on an alleged (but unproven) market interface between registrant and the Highland Orange Association, an entity with which applicant admittedly (see supra at footnote 8) shares no privity. This construction of the "laches and estoppel" provision of the tenth du Pont factor is consistent with the well-settled general rule, in inter partes cases, that laches and estoppel are personal defenses which may not be asserted by a third party, such as applicant in this case, who lacks privity with the person entitled to assert the defense. See, e.g., The Procter & Gamble Company v. Keystone Automotive Warehouse, Inc., 191 USPQ 468 (TTAB 1976). But see Interstate Brands Corp. v. Celestial Seasonings, Inc., 576 F.2d 926, 198 USPQ 151, 154 (CCPA 1978)(party's prior statement, in unrelated proceedings, of opinion on legal issue which is contrary to position taken in present proceeding is not an estoppel, but is relevant to the extent that it may be "illuminative of shade and tone in the total picture confronting the decision maker"). Additionally, and aside from the privity issue, we have found no reported cases in which the "laches and estoppel" provision of the tenth du Pont factor was applied in the context of an ex parte appeal, nor has applicant cited any such cases. It is true that du Pont itself was an ex parte case, but it did not involve laches or estoppel, on its facts. The only reported ex parte case we have found in which the applicant attempted to overcome a Section 2(d) refusal by asserting estoppel is the predu Pont case of In re National Distillers and Chemical Corporation, 132 USPQ 271 (CCPA 1962). The Court rejected the applicant's estoppel argument in that case, and held that laches, estoppel and acquiescence are applicable only in inter partes proceedings, not in the context of ex parte appeals: "We think that the clear intent of Congress was that section 19 [Trademark Act Section 19, 15 U.S.C. §1069] be limited to inter partes proceedings, and this for the very sound reason that the equitable principles of laches, estoppel and acquiescence are based on facts and should not be applied either in favor of or against one not a party to the proceeding. An ex parte proceeding arising from the refusal of the Patent Office to register a trademark does not become an inter partes proceeding in the sense of section 19 of the Lanham Act (15 U.S.C. 1069), as urged by applicant, merely because the applicant and the Patent Office appear many times in opposing roles." 132 USPQ at 276. It is unclear whether this statement of the law was implicitly overruled by the Court in du Pont. However, that question, as well as the privity question, are moot in this case because the evidence of record does not demonstrate any laches or estoppel attributable to the owner of the registration cited as a bar to registration of applicant's mark. 14 According to the allegation of use in the cited registration registrant commenced use of its mark in 1925. Use of the Highland Orange Association mark apparently commenced in 1898, and continued until some undetermined time between 1953, when its registration was renewed, and the expiration of its registration in 1973. See infra at footnote 16. Applicant commenced use of its mark in 1997.
  • Absent any evidence in the record, the TTAB may not infer that a party has consented to the other's use of a mark.
    • In re Association of the United States Army, Serial No. 76578579, (TTAB 2007).
      • Even assuming, as applicant contends, that the United States Army consents to applicant's use of its mark, there is nothing in the record from which we might infer that the United States Army also consents to applicant's registration of the mark. See In re Thomas, 79 USPQ2d 1021 (TTAB 2006).
    • In re Association of the United States Army, Serial No. 76578579, (TTAB 2007).
      • Indeed, there is no evidence that the United States Army is even aware that applicant has applied to register the mark. See In re Opus One Inc., supra.
  • Registrant's failure to respond to applicant's letters that registrants have consented to registration does not support applicant's claim that registrant has consented or has no objection to the registration of applicant's mark.
    • In re Mark Thomas, Serial No. 78334625, (TTAB 2006).
      • Nor will we infer from registrants' failure to respond to applicant's letters that registrants have consented to registration or that registrants have no objection to the registration of applicant's mark. The registrants clearly had no obligation to respond to applicant's inquiries. Therefore, their failure to respond does not support applicant's claim that they have no objection.
    • In re Mark Thomas, Serial No. 78334625, (TTAB 2006).
      • Similarly, we cannot conclude that registrant had no objection to applicant's earlier registration simply because registrant failed to object to it. We are not privy to registrant's reasons for not challenging the registration and we will not speculate about them. We do, however, note that any objections registrant may have had to applicant's earlier registration were eliminated once the registration was cancelled.
  • Priority under Article 7 of the Pan American Convention.
    • Mario Diaz v. Servicios De Franquicia Pardo's S.A.C., Opposition No. 91159871, (TTAB 2007).
      • Applicant has moved for summary judgment by asserting priority under Article 7 of the Pan American Convention as an affirmative defense to opposer's Section 2(d) claim. Article 7 provides as follows: "Any owner of a mark protected in one of the contracting states in accordance with its domestic law, who may know that some other person is using or applying to register or deposit an interfering mark in any other of the contracting states, shall have the right to oppose such use, registration or deposit and shall have the right to employ all legal means, procedure or recourse provided in the country in which such interfering mark is being used or where its registration or deposit is being sought, and upon proof that the person who is using such mark or applying to register or deposit it, had knowledge of the existence and continuous use in any of the Contracting States of the mark on which opposition is based upon goods at the same class, the opposer may claim for himself the preferential right to use such mark in the country where the opposition is made or priority to register or deposit in such country, upon compliance with the requirements established by the domestic legislation in such country and by this Convention."
  • The Section 7(b) presumptions accorded a registration on the Principal Register, including the presumption of use of the mark, accrue only to the benefit of the owner of the registration, and thus only come into play in an inter partes proceeding when the registration is made of record by its owner.
    • Nike, Inc. v. WNBA Enterprises, LLC, Opposition No. 91160755, 91160763, (TTAB 2007)
      • However, third-party registrations are not evidence of use.17

        FOOTNOTE 17 "The Section 7(b) presumptions accorded a registration on the Principal Register, including the presumption of use of the mark, accrue only to the benefit of the owner of the registration, and thus only come into play in an inter partes proceeding when the registration is made of record by its owner. See TBMP §704.03(b)(1)(B)."

  • Even though the parties had an agreement to not sell a particular class of goods, the general public would be unaware of the agreement and still likely to believe the goods are related.
    • The Wet Seal, Inc. v. FD Management, Inc., Opposition No. 91157022, (TTAB 2007)
      • However, opposer's ARDEN B clothing is sold exclusively in opposer's own ARDEN B clothing stores, and the ARDEN B stores sell, almost exclusively, opposer's house brand of clothing. Opposer has expressed no intention of expanding the sale of its merchandise to include the stores of others or the brands of merchandise of others. Applicant argues that because opposer's goods are only sold in opposer's stores, and since opposer is prohibited by the parties' agreement from selling cosmetics under the ARDEN B mark, the parties' clothing and cosmetic products in this case will never in fact be sold together. Applicant's statement is true, but not compelling. First, purchasers are not going to be aware that opposer is prohibited from selling cosmetic products under the ARDEN B mark. Further, where products are closely related, merely because the products in fact would not be sold together would not necessarily prevent consumers, when encountering the products in different outlets, from believing the products come from the same source. See Freedom Savings and Loan Association v. Fidelity Bankers Life Insurance Company, 224 USPQ 300, 304 (TTAB 1984) ("It is not necessary that goods be competitive or be sold together or through the same outlets if they can be shown to be related in some manner that would suggest to persons encountering them, even at different locations, sources, or offices a likelihood of common sponsorship").
  • A settlement Agreement may not negate a finding of potential likelihood of confusion.
    • The Wet Seal, Inc. v. FD Management, Inc., Opposition No. 91157022, (TTAB 2007)
      • In addition to its claim of priority based on the parties' settlement agreement, which we have found unpersuasive, applicant also argues that the settlement agreement "negates any potential likelihood of confusion" between the two marks. Brief, p. 3. Applicant has not explained how the agreement "negates" the likelihood of confusion and we do not find that it does. As we noted earlier, the agreement contains no provisions regarding opposer's rights in the term ARDEN alone or apart from ELIZABETH ARDEN in connection with fragrances and cosmetics; and nothing precluding opposer from using the mark ARDEN B, at least in its present form, or from asserting its rights in this mark for clothing and clothing stores against applicant. In fact, if anything, the agreement implies that there would be a likelihood of confusion between certain "ARDEN" marks for fragrance and cosmetic products on the one hand, and for clothing and clothing store services on the other.23
  • Having found that there exists a likelihood of confusion, we elect to sustain the opposition on this basis alone. We will not consider opposers' claim, which was unpled but which was tried by the consent of the parties, that the current applicants are bound by a 1985 settlement agreement entered into by opposers and Mego Corp., the former owner of the old MEGO mark. See American Paging Inc. v. American Mobilephone Inc., 13 USPQ2d 2036, 2039 (TTAB 1989), aff'd 17 USPQ2d 1726 (Fed. Cir. 1990) and cases cited therein.
    • INTERLEGO AG and LEGO SYSTEMS, INC. and KIRKBI AG v. ABRAMS/GENTILE ENTERTAINMENT, INC. and MJJ MULTIMEDIA LLC, Opposition No. 103,612, (TTAB 2002)
  • Apple Computer v. TVNET.net, Inc., Opposition No. 91168875, (TTAB 2007) In re Association of the United States Army, Serial No. 76578579, (TTAB 2007) The Christian Broadcasting Network, Inc. v. ABS-CBN International, Cancellation No. 92044366, (TTAB 2007) The Wet Seal, Inc. v. FD Management, Inc., Opposition No. 91157022, (TTAB 2007) In re Thomas H. Wilson, Serial No. 75/285,881, (TTAB 2001) Grand Total
    In re Thomas, 79 USPQ2d 1021 (TTAB 2006) 1
    In re Opus One Inc., 60 USPQ2d 1812 (TTAB 2001) 1
    Coach House Restaurant Inc. v. Coach and Six Restaurants Inc., 934 F.2d 1551, 19 USPQ2d 1401 (11th Cir. 1991) 1
    Octocom Services Inc. v. Houston Computers Services Inc., 918 F.2d 937, 16 USPQ2d 1783 (Fed. Cir. 1990) 1
    Freedom Savings and Loan Association v. Fidelity Bankers Life Insurance Company, 224 USPQ 300 (TTAB 1984) 1
    Interstate Brands Corp. v. Celestial Seasonings Inc., 576 F.2d 926, 198 USPQ 151 (CCPA 1978) 1
    The Procter & Gamble Company v. Keystone Automotive Warehouse Inc., 191 USPQ 468 (TTAB 1976) 1
    In re National Distillers and Chemical Corporation, 132 USPQ 271 (CCPA 1962) 1
    Grand Total 1 2 1 1 3 8
    No Statutes Listed