Likelihood of Confusion - Fame of the Prior Mark



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 ‘any 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 fifth du Pont factor requires the consideration of evidence of the fame of opposer's mark and to give great weight to such evidence, if it exists.
    • Miss Universe L.P., LLLP v. Community Marketing, Inc., Opposition No. 91160627, (TTAB 2007)
      • We begin our likelihood of confusion analysis with the fifth du Pont factor, which requires us to consider evidence of the fame of opposer's mark and to give great weight to such evidence if it exists. 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 USPQ2d 1894 (Fed. Cir. 2000); Kenner Parker Toys, Inc. v. Rose Art Industries, Inc., 963 F.2d 350, 22 USPQ2d 1453 (Fed. Cir. 1992). As the court noted in Bose Corp.:

        "Fame of an opposer's mark or marks, if it exists, plays a "dominant role in the process of balancing the DuPont factors," Recot, 214 F.3d at 1327, 54 USPQ2d at 1456 [sic – 1897], and "[f]amous marks thus enjoy a wide latitude of legal protection." Id. This is true as famous marks are more likely to be remembered and associated in the public mind than a weaker mark, and are thus more attractive as targets for would-be copyists. Id. Indeed, "[a] strong mark " casts a long shadow which competitors must avoid." Kenner Parker Toys, 963 F.2d at 353, 22 USPQ2d at 1456. A famous mark is one "with extensive public recognition and renown." Id." Bose Corp. v. QSC Audio Products Inc., supra, 63 USPQ2d at 1305.

    • Motion Picture Association of America, Inc. v. Respect Sportswear, Inc., Opposition No. 91153141, (TTAB 2007)
      • We begin our likelihood of confusion analysis with the fifth du Pont factor, which requires us to consider evidence of the fame of opposer's mark and to give great weight to such evidence if it exists. 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); and Kenner Parker Toys, Inc. v. Rose Art Industries, Inc., 963 F.2d 350, 22 USPQ2d 1453 (Fed. Cir. 1992).
  • Case Finding: Evidence of applicant's statement that even applicant considers opposer's mark to be famous is evidence which further corroborates a finding that opposer's mark is famous.
    • Miss Universe L.P., LLLP v. Community Marketing, Inc., Opposition No. 91160627, (TTAB 2007)
      • Finally, we note that, in a "late 2004" internal communication (Roth Discovery Dep. Exh. 5, which Mr. Roth identified as a rough draft of a possible franchise agreement which was never seen by others outside applicant's company), Mr. Spradlin, one of applicant's principals, wrote as follows, inter alia: "The most renowned Contest is the Miss Universe Pageant conceived in the 60's and now owned by Donald Trump and CBS." In its brief, applicant asserts that this statement by Mr. Spradlin was not an acknowledgment that the fame of opposer's mark extended to applicant's services, i.e., gay beauty pageants.

        We find, however, that no such restrictive interpretation is proper for Mr. Spradlin's statement. The statement was included in a draft franchise agreement by which applicant hoped to enlist franchisees for its pageant, but nothing in the statement itself or the reference to opposer's pageant is limited in the way applicant argues. Cf. Palm Bay Imports, Inc. v. Veuve Clicquot Ponsardin, supra, 396 F.3d at 1376, 73 USPQ2d at 1695 ("Moreover, Palm Bay's President, David Taub, admitted that the VEUVE CLICQUOT mark is famous. His later qualification that such fame was limited to the ‘top-end' segment of the market does not diminish the significance of his admission in view of the Board's finding that high-end champagne and less expensive sparkling wines are marketed in the same channels of trade to the same consumers.") We therefore find that Mr. Spradlin's statement is evidence that even applicant considers opposer's mark to be famous, a fact which further corroborates our finding under the fifth du Pont factor that opposer's MISS UNIVERSE mark is famous.
        Based on this undisputed evidence of record, we find that opposer's MISS UNIVERSE mark is famous for purposes of the fifth du Pont factor.5 Such fame must be accorded dominant weight in our likelihood of confusion analysis. Recot, 214 F.3d at 1327, 54 USPQ2d at 1897.

  • Fame must be accorded dominant weight in our likelihood of confusion analysis, thus famous marks enjoy a wide latitude of legal protection.
    • Motion Picture Association of America, Inc. v. Respect Sportswear, Inc., Opposition No. 91153141, (TTAB 2007)
      • "Fame of an opposer's mark or marks, if it exists, plays a "dominant role in the process of balancing the DuPont factors," Recot, 214 F.3d at 1327, 54 USPQ2d at 1456, and "[f]amous marks thus enjoy a wide latitude of legal protection." Id. This is true as famous marks are more likely to be remembered and associated in the public mind than a weaker mark, and are thus more attractive as targets for would-be copyists. Id. Indeed, "[a] strong mark " casts a long shadow which competitors must avoid." Kenner Parker Toys, 963 F.2d at 353, 22 USPQ2d at 1456. A famous mark is one "with extensive public recognition and renown." Id." Bose Corp. v. QSC Audio Products Inc., supra, 63 USPQ2d at 1305.
    • Motion Picture Association of America, Inc. v. Respect Sportswear, Inc., Opposition No. 91153141, (TTAB 2007)
      • Such fame must be accorded dominant weight in our likelihood of confusion analysis. See Recot, supra, at 1327. See also Miss Universe L.P., LLLP v. Community Marketing, Inc., __USPQ2d__ (TTAB 2007).
    • Time Warner Entertainment Company L.P. v. Karen L. Jones, Opposition No. 112,409, (TTAB 2002).
      • We note as well that "[t]he fifth du Pont factor, fame of the prior mark, plays a dominant role in cases featuring a famous or strong mark." Kenner Parker Toys, Inc. v. Rose Art Industries, Inc., 963 F.2d 350, 22 USPQ2d 1453, 1456 (Fed. Cir. 1992); see also Bose Corp. v. QSC Audio Products Inc., No. 01-1216 (Fed. Cir. June 14, 2002); Recot, Inc. v. M.C. Becton, 214 F.3d 1322, 54 USPQ2d 1894 (Fed. Cir. 2000). In view thereof, we shall consider the fifth du Pont factor first.
  • Evidence: Evidence where mark had achieved a degree of renown as a strong mark.
    • Barbara's Bakery, Inc. v. Barbara Landesman, Opposition No. 91157982, (TTAB 2007)
      • The fifth du Pont factor requires us to consider evidence of the fame of opposer's marks. Opposer claims that its marks are famous in the natural foods marketplace and therefore deserving of a broad scope of protection. The evidence of record establishes that opposer's products are sold nationwide in 20,000 stores, including 10,000 mainstream grocery stores and also in "almost every single natural foods store in the country." (Hood Decl. ¶¶ 15-17.) Opposer has had sales of $2 billion over the past ten years (Hood Decl. ¶ 24), and advertising expenditures now reaching $1 million per year, with over $6 million spent in the last eleven years (Hood Decl. ¶ 25). Opposer uses its mark on its website, which had 367,000 visitors in March 2004. (Hood Decl. ¶ 16; Exh. 9.) Opposer asserts that the organic and health foods sector is one of the fastest growing sectors in the prepared foods market (Hood Decl. ¶ 22; Gauger Decl. ¶ 5; Exh. 28), and that "Barbara's Bakery is one of the largest brands across all health food categories." (Hood Decl. ¶ 40.) "As an example of Barbara's longterm success, BARBARA'S shredded biscuit cereals had a 60% market share in its category in both natural foods and mainstream markets in 2003 and was first in its category in 1999, 2002 and 2003." (Hood Decl. ¶ 42.) Based on this evidence, which applicant does not dispute, we find that, although not rising to the level of fame which has been found to exist for other consumer products (compare Recot, Inc. v. M.C. Becton, 214 F.3d 1322, 54 USPQ2d 1894 (Fed. Cir. 2000)(FRITO-LAY), and Kenner Parker Toys Inc. v. Rose Art Industries, Inc., 963 F.2d 350, 22 USPQ2d 1453 (Fed. Cir. 1992)(PLAY-DOH)), opposer's marks BARBARA'S and BARBARA'S BAKERY have achieved a degree of renown, at least in the natural foods marketplace. This evidence is sufficient to establish that opposer's mark is a strong mark.
  • Evidence: Indirect evidence of fame including, but not limited to, the length of time in which the mark has been in use, the large number of requests for licenses of the mark, and the nationwide advertising exposure of the mark, are persuassive that the mark is famous.
    • Time Warner Entertainment Company L.P. v. Karen L. Jones, Opposition No. 112,409, (TTAB 2002).
      • We find that this evidence suffices to establish that opposer's ROAD RUNNER mark is a famous mark, for purposes of the fifth du Pont likelihood of confusion factor. Although there is no direct evidence as to the amounts of opposer's sales and advertising pertaining solely to the Road Runner, opposer's indirect evidence of fame, including but not limited to the length of time in which the mark has been in use, the large number of requests for licenses of the mark, and the nationwide advertising exposure of the mark, persuades us that the mark is famous under the fifth du Pont factor. See Bose Corp. v. QSC Audio Products Inc., supra. In our likelihood of confusion analysis, that fame weighs heavily in opposer's favor. See Recot, Inc. v. M.C. Becton, supra, and Kenner Parker Toys, supra.
  • Evidence: Evidence to establish the fame of a mark.
    • INTERLEGO AG and LEGO SYSTEMS, INC. and KIRKBI AG v. ABRAMS/GENTILE ENTERTAINMENT, INC. and MJJ MULTIMEDIA LLC, Opposition No. 103,612, (TTAB 2002).
      • We are of the firm belief that there exists a strong likelihood of confusion resulting from the contemporaneous use of these two marks on toys. However, if there were even the slightest doubt on the issue of likelihood of confusion (which there is not), this doubt is totally removed when one recognizes that oppposers' mark LEGO is one of the most famous toy marks in the United States. To elaborate, the Director of Marketing for opposer Lego Systems, Inc. (Charles McLeish) testified that in the ten year period preceding March 2000, opposers' total United States sales of LEGO toys exceeded 1 billion dollars. During that same time period, opposers' advertising expenditures for LEGO toys in the United States exceeded 100 million dollars. According to Mr. McLeish's testimony, these sales figures placed LEGO toys in the top five brands of toys in the United States. Finally, Mr. McLeish testified that market studies demonstrated that approximately two-thirds of United States households with children fourteen years of age and younger owned at least one LEGO toy. (McLeish deposition pages 24 to 26).
  • Discussion of niche market fame.
    • ProQuest Information and Learning Company v. Jacques R. Island, Opposition No. 91158016, (TTAB 2007)
      • Accordingly, we would characterize this renown as niche market fame. Within the academic, research, and education fields, the PROQUEST mark has achieved such a level of fame that nearly everyone in those fields recognizes the mark. That fact certainly assists opposer in this case because applicant intends to use his mark in the same fields. Cf. Toro Co. v. ToroHead Inc., 61 USPQ2d 1164, 1182 (TTAB 2001) [in the context of dilution analysis, opposer's claim of niche market fame not considered in absence of proof that the parties' trading fields overlapped]; and Berghoff Restaurant Co. v. Washington Forge, Inc., 225 USPQ 603, 609-610 (TTAB 1985) [opposer's proof of fame of its mark within a limited geographic area sufficient to find its mark famous for purposes of the likelihood of confusion analysis, where applicant's goods were marketed in that geographic area].
  • Fame of a mark can be established by the length of time the mark has been in use, the volume of sales and advertising expenditures, as well as the widespread unsolicited media attention it has garnered.
    • ProQuest Information and Learning Company v. Jacques R. Island, Opposition No. 91158016, (TTAB 2007)
      • Based on this record, we find that the PROQUEST mark is inherently distinctive and strong. Furthermore, opposer has demonstrated the fame of its mark measured by the length of time the mark has been in use, the volume of sales and advertising expenditures, as well as the widespread unsolicited media attention it has garnered. This mark is quite well known in the academic, educational, research and library markets — the exact same fields where applicant has indicated he intends to use his INQUEST mark. Accordingly, this critical factor weighs strongly in favor of finding a likelihood of confusion herein.
  • Fame of the prior mark, if it exists, plays a dominant role in cases featuring a famous or strong mark.
    • Chicago Bears Football Club, Inc. and NFL Properties LLC v. 12TH Man/Tennessee LLC, (TTAB 2007)
      • The evidence of record convinces us that the opposers' BEARS and CHICAGO BEARS marks have acquired significant fame and public recognition for the football exhibition services as well as for ancillary merchandise. Under these circumstances, fame "of the prior mark, another du Pont factor, ‘plays a dominant role in cases featuring a famous or strong mark.'" Century 21 Real Estate Corp., 23 USPQ2d at 1701, quoting, Kenner Parker Toys v. Rose Art Industries, 963 F.2d 350, 22 USPQ2d 1453, 1456 (Fed. Cir. 1992).
    • The B.V.D. Licensing Corporation v. Florencio Rodriguez, Opposition No. 91157529, (TTAB 2007)
      • The fame of opposer's BVD marks also is critical in this case. See Recot Inc. v. M.C. Becton, 214 F.3d 1322, 54 USPQ2d 1894, 1897 (Fed. Cir. 2000) (The "fame of the prior mark, when present, plays a 'dominant' role in the process of balancing the du Pont factors" and famous marks therefore "enjoy a wide latitude of legal protection"). See also, Bose Corp. v. QSC Audio Products Inc., 293 F.3d 1367, 63 USPQ2d 1303 (Fed. Cir. 2002) (WAVE and ACOUSTIC WAVE marks found to be famous and entitled to a broad scope of protection).
    • Nike, Inc. v. WNBA Enterprises, LLC, Opposition No. 91160755, 91160763, (TTAB 2007)
      • Thus, we turn to a discussion of the marks, and first to the factor of fame because this factor "plays a 'dominant role' in the process of balancing the du Pont factors." Recot Inc. v. Becton, 214 F.3d 1322, 54 USPQ2d 1894, 1897 (Fed. Cir. 2000).
    • 7-Eleven, Inc. v. Lawrence I. Wechsler, Opposition No. 91117739, (TTAB 2007)
      • Fame, if it exists, plays a dominant role in the likelihood of confusion analysis. Bose Corp. v. QSC Audio Products Inc., 293 F.3d 1367, 63 USPQ2d 1303, 1305 (Fed. Cir. 2002); Recot Inc. v. M.C. Becton, 214 F.3d 1322; 54 USPQ2d 1894, 1897 (Fed. Cir. 2000); Kenner Parker Toys, Inc. v. Rose Art Industries, Inc., 963 F.2d 350, 22 USPQ2d 1453, 1456 (Fed. Cir. 1992).
    • Leading Jewelers Guild, Inc. v. LJOW Holdings, LLC, Opposition No. 91160856, (TTAB 2007)
      • We next take up the factor of fame, because fame of the prior mark plays a dominant role in likelihood of confusion cases featuring a famous mark. Kenner Parker Toys, Inc. v. Rose Art Industries, Inc., 963 F.2d 350, 22 USPQ2d 1453 (Fed. Cir. 1992).
    • The Sports Authority Michigan, Inc. v. The PC Authority, Inc., Opposition No. 113,785, (TTAB 2001).
      • We note that the balance must initially tip in opposer's favor, because the Federal Circuit "has acknowledged that fame of the prior mark " ‘plays a dominant role in cases featuring a famous or strong mark.'" Century 21 Real Estate Corp. v. Century Life of America, 970 F.2d 874, 877, 23 USPQ2d 1698, 1701 (Fed. Cir. 1992), quoting, Kenner Parker, 963 F.2d at 352, 22 USPQ2d at 1456. In addition, the Federal Circuit has held that in a particular case, a single duPont factor may be dispositive. Kellogg Co. v. Pack'em Enterprises Inc., 951 F.2d 330, 21 USPQ2d 1142, 1145 (Fed. Cir. 1991).
    • Starbucks U.S. Brands, LLC and Starbucks Corporation d.b.a. Starbucks Coffee Company v. Marshall S. Ruben, Opposition No. 91156879, (TTAB 2006).
      • More significantly, for our purposes, the du Pont factor focusing on the fame of the prior mark plays a dominant role in the process of balancing the du Pont factors in cases featuring a famous or strong mark. Kenner Parker Toys, Inc. v. Rose Art Industries, Inc., 963 F.2d 350, 22 USPQ2d 1453, 1456 (Fed. Cir. 1992); see also Palm Bay Imports Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 73 USPQ2d 1689, 1694 (Fed. Cir. 2005); Bose Corp. v. QSC Audio Products Inc., 293 F.3d 1367, 63 USPQ2d 1303 (Fed. Cir. 2002); and Recot, Inc. v. M. C. Becton, 214 F.3d 1322, 54 USPQ2d 1894 (Fed. Cir. 2000).
    • Blue Man Productions, Inc. v. Erich Tarmann, Opposition No. 91154055, (TTAB 2005).
      • We turn first to the factor of fame, because this factor plays a dominant role in cases featuring a famous or strong mark. Kenner Parker Toys Inc. v. Rose Art Industries, Inc., 963 F.2d 350, 22 USPQ2d 1453 (Fed. Cir. 1992).
    • Fort James Operating Company v. Royal Paper Converting, Inc., Opposition No. 91122964, (TTAB 2007)
      • We next consider the factor of fame, because fame of the prior mark or marks, if it exists, plays a dominant role in likelihood of confusion cases. Recot, Inc. v. M.C. Becton, 214 F.3d 1322, 54 USPQ2d 1894 (Fed. Cir. 2000).
    • Schering-Plough HealthCare Products, Inc. v. Ing-Jing Huang, Opposition No. 91117558, (TTAB 2007)
      • Inasmuch as opposer introduced evidence bearing on the fame of its marks, we now turn to consider this du Pont factor. Fame of the prior mark plays a dominant role in likelihood of confusion cases featuring a famous mark. Bose Corp. v. QSC Audio Products Inc., 293 F.3d 1367, 63 USPQ2d 1303 (Fed. Cir. 2002); Recot Inc. v. M.C. Becton, 214 F.3d 1322, 54 USPQ2d 1894 (Fed. Cir. 2000); and Kenner Parker Toys, Inc. v. Rose Art Industries, Inc., 963 F.2d 350, 22 USPQ2d 1453 (Fed. Cir. 1992).
    • The Christian Broadcasting Network, Inc. v. ABS-CBN International, Cancellation No. 92044366, (TTAB 2007)
      • This du Pont factor requires us to consider the fame of petitioner's mark. Fame, if it exists, plays a dominant role in the likelihood of confusion analysis. Bose Corp. v. QSC Audio Products Inc., 293 F.3d 1367, 63 USPQ2d 1303, 1305 (Fed. Cir. 2002); Recot Inc. v. M.C. Becton, 214 F.3d 1322, 54 USPQ2d 1894, 1897 (Fed. Cir. 2000); Kenner Parker Toys, Inc. v. Rose Art Industries, Inc., 963 F.2d 350, 22 USPQ2d 1453, 1456 (Fed. Cir. 1992). Fame for likelihood of confusion purposes arises "as long as a significant portion of the relevant consuming public . . . recognizes the mark as a source indicator." Palm Bay Imports, Inc. v. Vueve Clicquot Ponsardin Maison Fondee En 1722, 396 F.3d 1369, 73 USPQ2d 1689, 1694 (Fed. Cir. 2005). In this case, the relevant class of consumers would be ordinary television viewers.
  • Fame for likelihood of confusion purposes arises as long as a significant portion of the relevant consuming public recognizes the mark as a source indicator.
    • The Christian Broadcasting Network, Inc. v. ABS-CBN International, Cancellation No. 92044366, (TTAB 2007)
      • Fame for likelihood of confusion purposes arises "as long as a significant portion of the relevant consuming public . . . recognizes the mark as a source indicator." Palm Bay Imports, Inc. v. Vueve Clicquot Ponsardin Maison Fondee En 1722, 396 F.3d 1369, 73 USPQ2d 1689, 1694 (Fed. Cir. 2005). In this case, the relevant class of consumers would be ordinary television viewers.
    • Schering-Plough HealthCare Products, Inc. v. Ing-Jing Huang, Opposition No. 91117558, (TTAB 2007)
      • Fame for likelihood of confusion purposes arises "as long as a significant portion of the relevant consuming public...recognizes the mark as a source indicator." Palm Bay Imports, Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 73 USPQ2d at 1694.
  • Famous marks thus enjoy a wide latitude of legal protection.
    • Chicago Bears Football Club, Inc. and NFL Properties LLC v. 12TH Man/Tennessee LLC, (TTAB 2007)
      • "Famous marks thus enjoy a wide latitude of legal protection." Recot, Inc. v. Becton, 214 F.3d 1322, 54 USPQ2d 1894, 1897 (Fed. Cir. 2000) (FIDO LAY and FRITO-LAY confusingly similar even though the goods at issue were "natural agricultural products, namely, edible dog treats" and snack foods).
  • When a trademark attains dictionary recognition as a part of the language, it is taken to be reasonably famous.
    • The B.V.D. Licensing Corporation v. Florencio Rodriguez, Opposition No. 91157529, (TTAB 2007)
      • It is also significant that opposer's BVD mark repeatedly has been recognized in dictionary entries. B.V.D. Licensing v. Body Action Design, supra, 6 USPQ2d at 1720 ("When a trademark attains dictionary recognition as a part of the language, we take it to be reasonably famous").
  • Case Finding: Mark was found famous after 17 years of use, $50 million in annual sales, advertising in excess of $5 million, and extensive media coverage.
    • Fort James Operating Company v. Royal Paper Converting, Inc., Opposition No. 91122964, (TTAB 2007)
      • In the recent decision of Bose Corp. v. QSC Audio Products Inc., 293 F.3d 1367, 62 USPQ2d 1303 (Fed. Cir. 2002), our principal reviewing court considered the question of whether the ACOUSTIC WAVE product mark (as opposed to the BOSE house mark) was famous for a loudspeaker music system. In finding that the ACOUSTIC WAVE product mark was famous due to 17 years use, annual sales over $50 million, annual advertising in excess of $5 million, and extensive media coverage, the court also observed, at 62 USPQ2d 1306-07:
        "The record evidence demonstrates that the BOSE house mark frequently appears in the advertising and promotional materials. The product, however, is prominently identified as trademarked in the text of nearly every example of the record evidence. In the direct mail advertising and sales promotional material sent by Bose through the mail, the portion of the communication that calls for the order to be placed only refers to the ACOUSTIC WAVE product with its trademark, with no reference to Bose as a mark appearing on the order form. The consumer, when placing a $1000 order, thus asks for the trademarked product. We thus are not faced with a record on which substantially every reference to the marked product is joined with reference to the famous house mark. Instead, the consumer is presented through advertising and other promotional material with frequent references to the marked product standing alone and apart from the famous house mark. This distinction between uniform coupling of the famous house mark with the product marks and communication to consumers that typically gives significant independent reference to the product apart from the house mark is important, because in the latter instance the consumer has a basis on which to disassociate the product mark from the house mark."
  • Case Finding: In finding fame, the Court gave great weight to the fact that the product mark was used independently of the house mark in advertising and promotion of the goods.
    • Fort James Operating Company v. Royal Paper Converting, Inc., Opposition No. 91122964, (TTAB 2007)
      • In other words, in finding fame, the Court gave great weight to the fact that the ACOUSTIC WAVE product mark was used independently of the BOSE house mark in advertising and promotion of the loudspeaker music system.
  • A design mark may not be found famous, despite the amount of use, sales and advertising, where it is overshadowed by the other marks which are almost always featured on the products and in advertising in a far more prominent manner than the "secondary" design mark.
    • Fort James Operating Company v. Royal Paper Converting, Inc., Opposition No. 91122964, (TTAB 2007)
      • Unlike in Bose, the record herein shows that the vast majority of the references to opposer's design marks in advertising and promotional materials are joined with and are subordinate to a reference to one of opposer's other marks, most often the BRAWNY mark. Opposer's design marks are simply overshadowed by the other marks which are almost always featured in a far more prominent manner than the design marks. This is not a case where consumers are presented through advertising and other promotional material with repeated references to opposer's design marks independent of opposer's other marks. Thus, notwithstanding opposer's substantial sales and advertising, we are unable to conclude that opposer's design marks have achieved the renown associated with a famous mark. See Jockey International Inc. v. Mallory & Church Corp., 25 USPQ2d 1233, 1237 (TTAB 1992) [Plaintiff did not meet its burden of showing that its ELANCE mark was famous, notwithstanding that the sales and advertising of underwear displaying the mark was extensive, because "in most instances, the ELANCE mark is overshadowed by the clearly famous mark JOCKEY, which is almost always featured on the products and in advertising in a far more prominent manner than the ‘secondary' mark ELANCE"].
  • Fame for likelihood of confusion purposes arises as long as a significant portion of the relevant consuming public recognizes the mark as a source indicator.
    • The Christian Broadcasting Network, Inc. v. ABS-CBN International, Cancellation No. 92044366, (TTAB 2007)
      • This du Pont factor requires us to consider the fame of petitioner's mark. Fame, if it exists, plays a dominant role in the likelihood of confusion analysis. Bose Corp. v. QSC Audio Products Inc., 293 F.3d 1367, 63 USPQ2d 1303, 1305 (Fed. Cir. 2002); Recot Inc. v. M.C. Becton, 214 F.3d 1322, 54 USPQ2d 1894, 1897 (Fed. Cir. 2000); Kenner Parker Toys, Inc. v. Rose Art Industries, Inc., 963 F.2d 350, 22 USPQ2d 1453, 1456 (Fed. Cir. 1992). Fame for likelihood of confusion purposes arises "as long as a significant portion of the relevant consuming public . . . recognizes the mark as a source indicator." Palm Bay Imports, Inc. v. Vueve Clicquot Ponsardin Maison Fondee En 1722, 396 F.3d 1369, 73 USPQ2d 1689, 1694 (Fed. Cir. 2005). In this case, the relevant class of consumers would be ordinary television viewers.
  • Notwithstanding the fame of petitioner's mark, there must be a reasonable basis for the public to associate respondent's services with petitioner and its service mark.
    • The Christian Broadcasting Network, Inc. v. ABS-CBN International, Cancellation No. 92044366, (TTAB 2007)
      • Notwithstanding the fame of petitioner's mark, there must be a reasonable basis for the public to associate respondent's telephone calling card services with petitioner and its CBN service mark. University of Notre Dame du Lac v. J. C. Gourmet Food Imports Co., 703 F.2d 1372, 217 USPQ 505, 507 (Fed. Cir. 1983). See also Dymo Industries, Inc. v. Schramm, Inc., 181 USPQ 540, 541-542 (TTAB 1974); American Optical Corporation v. Autotrol Corporation, 175 USPQ 725, 729 (TTAB 1972). In the case sub judice, there is no such evidence.
  • While the mark is a famous mark, at least insofar as it pertains to certain services, its "fame" is insufficient in and of itself to establish a likelihood of confusion for any and all goods and services under Section 2(d).
    • The Christian Broadcasting Network, Inc. v. ABS-CBN International, Cancellation No. 92044366, (TTAB 2007)
      • While CBN is a famous mark, at least insofar as it pertains to television broadcasting services and evangelical services, its "fame" is insufficient in and of itself to establish a likelihood of confusion for any and all goods and services under Section 2(d) of the Lanham Act, 15 U.S.C. §1052(d). Recot Inc. v. M.C. Becton, supra, 54 USPQ2d at 1898; University of Notre Dame du Lac v. J. C. Gourmet Food Imports Co., supra. As indicated previously, there must be a reasonable basis for the public to associate respondent's telephone calling card services with petitioner and its CBN service mark. University of Notre Dame du Lac v. J. C. Gourmet Food Imports Co., supra. See also Dymo Industries, Inc. v. Schramm, Inc., supra; American Optical Corporation v. Autotrol Corporation, supra. "The ‘famous mark' argument is less persuasive where, as here, . . . there is no persuasive rationale asserted nor evidence offered to support a finding that the famous mark would likely be associated in the minds of purchasers with the mark challenged." Land O'Lakes, Inc. v. Land O'Frost, Inc., 224 USPQ 1022, 1026-1027 (TTAB 1984).
  • Case Finding: In Kenner Parker Toys, the Court said that the Board incorrectly reasoned that because opposer's mark was famous, consumers would more easily recognize the differences between the marks and, therefore, incorrectly concluded that fame permitted greater, rather than less, tolerance for similar marks.
    • The Christian Broadcasting Network, Inc. v. ABS-CBN International, Cancellation No. 92044366, (TTAB 2007)
      • In Kenner Parker Toys, the Court said that the Board incorrectly reasoned that because opposer's mark was famous, consumers would more easily recognize the differences between the marks and, therefore, incorrectly concluded that fame permitted greater, rather than less, tolerance for similar marks. This skewed the analysis of the du Pont factors. Kenner Parker Toys involved identical products, modeling compounds and related modeling accessories, while this case involves disparate services.
  • Case Finding: In Turner, the Board relied heavily on the fame of the opposer's mark and opposer's licensing of that mark for various products in finding likelihood of confusion.
    • Parfums de Coeur, Ltd. v. Lory Lazarus, Opposition No. 91161331, (TTAB 2007)
      • In Turner, the Board relied heavily on the fame of the opposer's mark and opposer's licensing of that mark for various products in finding likelihood of confusion between GILLIGAN'S ISLAND for suntan lotion and other sun tanning products and GILLIGAN'S ISLAND for a television series: "As is clear from the evidence, opposer's GILLIGAN'S ISLAND television series is well known. Further, as a result of this notoriety, the mark has been the subject of licenses." Turner Entertainment Co. v. Nelson, supra at 1944.
  • Fame for likelihood of confusion purposes and for dilution are not the same.
    • The Toro Company v. ToroHead, Inc., Opposition No. 114,061, (TTAB 2001).
      • At this point, we note that fame for likelihood of confusion purposes and fame for dilution purposes are not necessarily the same.
    • Blue Man Productions, Inc. v. Erich Tarmann, Opposition No. 91154055, (TTAB 2005).
      • Fame for likelihood of confusion purposes and fame for dilution purposes are distinct concepts. Palm Bay Imports Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689 (Fed. Cir. 2005).
  • Fame alone is insufficient to establish a likelihood of confusion.
    • 7-Eleven, Inc. v. Lawrence I. Wechsler, Opposition No. 91117739, (TTAB 2007)
      • Even though we have found that opposer's BIG GULP trademark has a very high degree of public recognition and renown, this factor alone is not sufficient to establish a likelihood of confusion. As stated in past cases, if that were the case, ownership of a famous mark would entitle the owner to a right in gross, and that runs counter to the trademark laws. Recot Inc. v. M.C. Becton, supra, 54 USPQ2d at 1898 ("fame alone cannot overwhelm the other du Pont factors as a matter of law"); University of Notre Dame du Lac v. J. C. Gourmet Food Imports Co., 703 F.2d 1372, 217 USPQ 505, 507 (Fed. Cir. 1983)("[T]he fame of the [plaintiff's] name is insufficient in itself to establish likelihood of confusion under §2(d)").
    • 7-Eleven, Inc. v. Lawrence I. Wechsler, Opposition No. 91117739, (TTAB 2007)
      • While the mark BIG GULP has a high degree of public recognition and renown, at least insofar as it relates to soft drinks, its "fame" is insufficient in and of itself to establish a likelihood of confusion under Section 2(d) of the Lanham Act. Recot Inc. v. M.C. Becton, supra, 54 USPQ2d at 1898; University of Notre Dame du Lac v. J. C. Gourmet Food Imports Co., supra, 217 USPQ at 507.
    • The Sports Authority Michigan, Inc. v. The PC Authority, Inc., Opposition No. 113,785, (TTAB 2001).
      • We do not find this case an appropriate one in which to rule that the presumptive fame of opposer's mark alone can be a dispositive factor. That fame is presumed to attach to opposer's core marks solely because of sales and advertising figures. The record is, however, insufficient to establish that opposer's core marks are in the same class of marks as are PLAY-DOH and FRITO-LAY, which were the marks in, respectively, the Kenner Parker and Recot decisions. Even in those cases, where the record supporting the fame factor was greater, there were other duPont factors favoring the opposers. In this case, the only other duPont factor that favors opposer is the ninth, and that only slightly.
    • The Sports Authority Michigan, Inc. v. The PC Authority, Inc., Opposition No. 113,785, (TTAB 2001).
      • In this case, though the balance initially tips in favor of opposer because of the fame factor, the many other factors that weigh in the balance in favor of applicant are sufficient to overcome the fame factor. Moreover, opposer has produced no evidence that the relevant public, i.e., consumers of diverse retail store services, has become accustomed to seeing the same or similar marks in connection with the operation of retail stores in fields as diverse as sports and apparel, on the one hand, and computer hardware, software and accessories on the other.
  • The famous mark argument is less persuasive where (i) there are significant differences between the mark whose fame is asserted and the mark which is alleged to be confusingly similar and (ii) there is no persuasive rationale asserted nor evidence offered to support a finding that the famous mark would likely be associated in the minds of purchasers with the mark challenged.
    • 7-Eleven, Inc. v. Lawrence I. Wechsler, Opposition No. 91117739, (TTAB 2007)
      • "The ‘famous mark' argument is less persuasive where, as here, (i) there are significant differences between the mark whose fame is asserted and the mark which is alleged to [be] confusingly similar and (ii) there is no persuasive rationale asserted nor evidence offered to support a finding that the famous mark would likely be associated in the minds of purchasers with the mark challenged." Land O'Lakes, Inc. v. Land O'Frost, Inc., 224 USPQ 1022, 1026-1027 (TTAB 1984).
  • Case Finding: Use of the mark for over twenty-five years; annual sales in the $25-$35 million range over the past fifteen years; and annual advertising expenditures during the same period in the $1.1-$1.6 million range were insufficient to establish the mark as a famous mark.
    • Jansen Enterprises, Inc. v. Israel Rind and Stuart Stone, Cancellation No. 92042871, (TTAB 2007)
      • Petitioner claims that its IZZY'S marks are famous due to a long period of continuous use and significant advertising expenditures. More specifically, petitioner refers to its use of IZZY'S for over twenty-five years; annual sales in the $25-$35 million range over the past fifteen years; and annual advertising expenditures during the same period in the $1.1-$1.6 million range. We readily acknowledge that petitioner has enjoyed success with its restaurants. Given this success, and the distinctive nature of the term "IZZY'S," we find petitioner's mark to be strong. We also find, however, that the evidence falls short of establishing fame as contemplated by the case law. Cf. 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 USPQ2d 1894 (Fed. Cir. 2000); and Kenner Parker Toys, Inc. v. Rose Art Industries, Inc., 963 F.2d 350, 22 USPQ2d 1453 (Fed. Cir. 1992).
  • Case Finding: Discussion of evidence deficiencies such that the mark was not found to be a famous mark.
    • The Wet Seal, Inc. v. FD Management, Inc., Opposition No. 91157022, (TTAB 2007)
      • The evidence is insufficient to persuade us that opposer's mark is famous.18 There is no evidence as to how widely or frequently the product catalogues were distributed; and insufficient evidence of the extent or frequency of national exposure of the mark, particularly for the years 2000 and 2001, and no evidence of national advertising from 2003 forward. Further, Ms. Nicholas did not testify as to the advertising expenditures for any years other than 1999, and according to opposer's advertising budget report for 2000, the amount spent on advertising dropped significantly in that year. We only have testimony as to sales figures for a three-year period from 1999-2000. Ms. Nicholas did not testify as to sales for the more recent years 2001 through 2004.19 The figures for the three-year period that we do have, while perhaps demonstrating that opposer achieved some level of success during those years, do not, however, appear extraordinary on their face and opposer has not provided a meaningful context for those figures such as evidence of opposer's market share for the goods. As stated by the Federal Circuit, "[r]aw numbers of product sales and advertising expenses may have sufficed in the past to prove fame of a mark, but raw numbers alone in today's world may be misleading... . Consequently, some context in which to place raw statistics is reasonable." Bose Corp. v. QSC Audio Prods., 293 F.3d 1367, 63 USPQ2d 1303, 1309 (Fed. Cir. 2002). See also Fossil Inc. v. Fossil Group, 49 USPQ2d 1451, 1457 (TTAB 1998); and General Mills Inc. v. Health Valley Foods, 24 USPQ2d 1270 (TTAB 1992).

        FOOTNOTE 18: Applicant's assertion that its own mark ARDENBEAUTY is famous is not supported by the record, and in any event, the fifth du Pont factor requires consideration of evidence pertaining to "the fame of the prior mark," which in this case means opposer's mark.

        FOOTNOTE 19: Opposer submitted over 200 pages of charts containing monthly breakdowns of sales by individual store and/or piece of merchandise from September 2000 through December 2003 but did not provide a figure of its total sales for those years.

  • Case Finding: Discussion of evidence deficiencies such that the mark was not found to be a famous mark.
    • Leading Jewelers Guild, Inc. v. LJOW Holdings, LLC, Opposition No. 91160856, (TTAB 2007)
      • However, we find that the evidence plaintiff has submitted is not sufficient to demonstrate that its mark is famous. The record shows that 27 members (with 150 retail stores) belong to plaintiff. This number of members, standing alone, is not particularly impressive. In addition, although plaintiff has used its collective membership mark since 1979, it offered figures relating to advertising and catalog circulation for the year 2003 only. Such figures for a single year are not especially meaningful. Moreover, as stated by the Federal Circuit, "[r]aw numbers of product sales and advertising expenses may have sufficed in the past to prove fame of a mark, but raw numbers alone in today's world may be misleading" Consequently, some context in which to place raw statistics is reasonable." Bose Corp. v. QSC Audio Products, Inc., 293 F.3d 1367, 63 USPQ2d 1303, 1309 (Fed. Cir. 2002).
  • Case Finding: Discussion of evidence deficiencies such that the mark was not found to be a famous mark.
    • Leading Jewelers Guild, Inc. v. LJOW Holdings, LLC, Opposition No. 91160856, (TTAB 2007)
      • Plaintiff has failed to offer any information concerning the number of jewelry retailers in this country, that is, the number of potential members of an organization such as plaintiff's. It is the duty of a party asserting that its mark is famous to clearly prove it. See Blue Man Productions Inc. v. Tarmann, 75 USPQ2d 1811 (TTAB 2005). In this case, the evidence falls far short of establishing that the MEMBER LEADING JEWELERS GUILD mark is famous. Therefore, this duPont factor is neutral.
  • It is the duty of a party asserting that its mark is famous to clearly prove it.
    • Leading Jewelers Guild, Inc. v. LJOW Holdings, LLC, Opposition No. 91160856, (TTAB 2007)
      • It is the duty of a party asserting that its mark is famous to clearly prove it. See Blue Man Productions Inc. v. Tarmann, 75 USPQ2d 1811 (TTAB 2005). In this case, the evidence falls far short of establishing that the MEMBER LEADING JEWELERS GUILD mark is famous. Therefore, this duPont factor is neutral.
    • Blue Man Productions, Inc. v. Erich Tarmann, Opposition No. 91154055, (TTAB 2005).
      • In view of the extreme deference that is accorded to a famous mark in terms of the wide latitude of legal protection it receives, and the dominant role fame plays in the likelihood of confusion analysis, we think that it is the duty of a plaintiff asserting that its mark is famous to clearly prove it.
    • Nike, Inc. v. WNBA Enterprises, LLC, Opposition No. 91160755, 91160763, (TTAB 2007)
      • We find that the evidence is not sufficient on this record to prove that opposer's S and star design is a famous mark. See Blue Man Productions Inc. v. Tarmann, 75 USPQ2d 1811, 1819 (TTAB 2005) ("it is the duty of a plaintiff asserting that its mark is famous to clearly prove it.").
  • Evidence: Raw numbers of product sales and advertising expenses may have sufficed in the past to prove fame of a mark, but raw numbers alone in today's world may be misleading; consequently, some context in which to place raw statistics is reasonable.
    • Nike, Inc. v. WNBA Enterprises, LLC, Opposition No. 91160755, 91160763, (TTAB 2007)
      • As stated by the Federal Circuit, "[r]aw numbers of product sales and advertising expenses may have sufficed in the past to prove fame of a mark, but raw numbers alone in today's world may be misleading... . Consequently, some context in which to place raw statistics is reasonable." Bose Corp. v. QSC Audio Prods., 293 F.3d 1367, 63 USPQ2d 1303, 1309 (Fed. Cir. 2002). See also Fossil Inc. v. Fossil Group, 49 USPQ2d 1451, 1457 (TTAB 1998); and General Mills Inc. v. Health Valley Foods, 24 USPQ2d 1270 (TTAB 1992).
  • Evidence: Further, sales figures, in and of themselves, while perhaps demonstrating the popularity of a product do not necessarily reflect awareness or recognition of the mark applied to the product.
    • Nike, Inc. v. WNBA Enterprises, LLC, Opposition No. 91160755, 91160763, (TTAB 2007)
      • Further, sales figures, in and of themselves, while perhaps demonstrating the popularity of a product do not necessarily reflect awareness or recognition of the mark applied to the product. See, e.g., In re Bongrain International (American) Corp., 894 F.2d 1316, 13 USPQ2d 1727 (Fed. Cir. 1990).
  • Evidence: Sales figures alone cannot establish fame of a mark where there is no breakdown in sales between those products offered solely under opposer's marks and those products which are co-branded because they do not demonstrate whether consumers' motivation to purchase opposer's products may be attributed to their recognition of opposer's design marks as opposed to the co-branding.
    • Nike, Inc. v. WNBA Enterprises, LLC, Opposition No. 91160755, 91160763, (TTAB 2007)
      • For example, there is no breakdown in sales between those products offered solely under opposer's S and star design marks and those products which are co-branded with league and team logos. Consumers' motivation to purchase opposer's products may be attributed to their recognition of sports team logos rather than any recognition of opposer's S and star design marks.
  • Evidence: Evidence of promotional expenditures are not revealing as to fame where it is unclear whether a substantial portion of those amounts was spent on promotion to consumers.
    • Nike, Inc. v. WNBA Enterprises, LLC, Opposition No. 91160755, 91160763, (TTAB 2007)
      • Opposer's additional evidence is not much more revealing. Ms. Kain testified as to advertising and promotional expenditures for only a two-year period, stating that opposer spent over $7.5 million in marketing and promoting the marks in 2001, and $10 million in 2002 in marketing in association with the NBA and NCAA. In addition, because all of opposer's catalogs (including the catalog relating to the 1996 Olympics) and most of its promotional materials are directed to merchandisers, it is unclear whether a substantial portion of those amounts was spent on promotion to consumers. Nor, in any event, do we have any evidence of the extent to which these materials have been distributed to the trade.
  • Evidence: As to evidence for purposes of establishing fame, internal documents, including marketing recaps, plans and strategies, board meeting presentations, sponsorship and promotional agreements, and annual reports, are not probative evidence of consumer exposure to or awareness of the mark.
    • Nike, Inc. v. WNBA Enterprises, LLC, Opposition No. 91160755, 91160763, (TTAB 2007)
      • Opposer has introduced numerous internal documents, including marketing recaps, plans and strategies, a "board meeting presentation," a sponsorship and promotional agreement, and an annual report, none of which is probative evidence of consumer exposure to or awareness of the mark. We also point out that while these materials are accepted as true and accurate copies of opposer's authentic business documents they are of record only for what they show on their face, at least to the extent that there is no testimony concerning the truth or accuracy of the information contained in those documents.14

        FOOTNOTE 14 "As a result of the manner in which the documentary exhibits were introduced in connection with Ms. Kain's testimony, we cannot clearly determine, with respect to many of the exhibits, which documents relate to which testimony."

  • Evidence: Evidence of fame through endorsements of products by famous athletes can no doubt increase brand awareness, but is of little value where there is no evidence to indicate the frequency or duration of any such promotions.
    • Nike, Inc. v. WNBA Enterprises, LLC, Opposition No. 91160755, 91160763, (TTAB 2007)
      • While endorsements of products by famous athletes can no doubt increase brand awareness, opposer has not indicated the frequency or duration of any such promotions. Nor has opposer provided information regarding banner advertising for more than a single year. We cannot determine from opposer's vague and general statements regarding its asserted "star system" program what, if any, impact this program has had on consumers.
  • The fame of the mark must always be accorded full weight when determining the likelihood of confusion, and that the reasoning behind the broad scope of protection afforded to famous marks applies with equal force when evaluating the likelihood of confusion between marks that are used with goods that are not closely related.
    • Recot, Inc. v. M. C. Becton, Opposition No. 96,518, (TTAB 2000).
      • In our original decision we found that opposer's FRITO LAY mark has become famous as the result of its use in connection with snack foods. There is ample evidence of record to support that finding, and applicant did not argue otherwise. And we are particularly mindful of the Court's instruction, in its decision remanding this case to us, that "the fame of the mark must always be accorded full weight when determining the likelihood of confusion," and that the reasoning behind the broad scope of protection afforded to famous marks "applies with equal force when evaluating the likelihood of confusion between marks that are used with goods that are not closely related." (emphasis added).
  • A mark with extensive public recognition and renown deserves and receives more legal protection than an obscure or weak mark.
    • The Sports Authority Michigan, Inc. v. The PC Authority, Inc., Opposition No. 113,785, (TTAB 2001).
      • With this factor, we look at what fame a mark has achieved in the marketplace. "Thus, a mark with extensive public recognition and renown deserves and receives more legal protection than an obscure or weak mark." Kenner Parker Toys v. Rose Art Industries, 963 F.2d 350, 353, 22 USPQ2d 1453, 1456 (Fed. Cir. 1992). See also, Recot Inc. v. M.C. Becton, 214 F.3d 1322, 1327, 54 USPQ2d 1894, 1897 ("The fifth DuPont factor, fame of the prior mark, when present, plays a ‘dominant' role in the process of balancing the DuPont factors.")
  • Achieving fame for a mark in a marketplace where countless symbols clamor for public attention often requires a very distinct mark, enormous advertising investments, and a product of lasting value.
    • The Sports Authority Michigan, Inc. v. The PC Authority, Inc., Opposition No. 113,785, (TTAB 2001).
      • "Achieving fame for a mark in a marketplace where countless symbols clamor for public attention often requires a very distinct mark, enormous advertising investments, and a product of lasting value." Kenner Parker, 963 F.2d at 352, 22 USPQ2d at 1456.
  • Case Finding: Opposer's core marks were possessed of at least a high degree of suggestiveness when conceived, but have acquired sufficient distinctiveness to become strong marks.
    • The Sports Authority Michigan, Inc. v. The PC Authority, Inc., Opposition No. 113,785, (TTAB 2001).
      • In this case, opposer's core marks were possessed of at least a high degree of suggestiveness when conceived, but have acquired sufficient distinctiveness to become strong marks. See The Sports Authority, Inc. v. Prime Hospitality Corp., 89 F.3d 955, 39 USPQ2d 1511 (2d Cir. 1996) (In decision vacating grant of summary judgment on other grounds, appeals court noted that the trial court had found THE SPORTS AUTHORITY to be descriptive but possessed of acquired distinctiveness).
    • The Sports Authority Michigan, Inc. v. The PC Authority, Inc., Opposition No. 113,785, (TTAB 2001).
      • These figures are unquestionably impressive. Cf. TCPIP Holding Co. v. Haar Communications Inc., 244 F.3d 88, 96, 57 USPQ2d 1971, 1975 (2d Cir. 2001) (footnote omitted) ("Some of the holders of these inherently weak marks are huge companies; as a function of their commercial dominance their marks have become famous.")
  • Evidence: Discussion of survey evidence to show the level of brand awareness.
    • The Sports Authority Michigan, Inc. v. The PC Authority, Inc., Opposition No. 113,785, (TTAB 2001).
      • On the other hand, we have little, if any, evidence to show the level of brand awareness that has resulted from opposer's expansion and promotional efforts. There is no survey evidence and we do not have figures regarding household penetration or brand awareness that would tend to establish that opposer provides products and services of lasting value. For comparison, we note the evidence of record in the Kenner Parker and Recot cases: "In the two- to seven-year-old age group, one in every two children currently owns a PLAY-DOH product. A survey showed that 60% of mothers named PLAY-DOH for modeling compound without any prompting. One witness characterized PLAY-DOH as a "piece of gold" which has lasted over thirty years as a successful toy -- a very unusual occurrence in the toy business." Kenner Parker, 963 F.2d at 351, 22 USPQ2d at 1455. "Recot " has manufactured and sold a wide variety of snack food under its mark, FRITO-LAY, for over thirty years. Recot now sells FRITO-LAY products nationwide in supermarkets, grocery stores, mass merchandisers, and wholesale clubs, convenience stores, food services, and vending machines. " In any given year, up to 90 percent of American households purchase at least one FRITO-LAY brand snack." Recot, 214 F.3d at 1326, 54 USPQ2d at 1896.
  • Evidence: Discussion of establishing valuations of a mark.
    • The Sports Authority Michigan, Inc. v. The PC Authority, Inc., Opposition No. 113,785, (TTAB 2001).
      • We do not have a similar record in this case. TSAM's witness Lisi, discussing TSAM's core marks, testified that he had "commissioned two separate US valuations by outside valuation expert [sic] and looked at and worked with them and gone through all of the same factors, consumer recognition, you know, who are our competitors, what is their market share, what is our market share, those sorts of things." (Lisi test. p.92) Yet we have no testimony or reports from the outside valuation expert or experts; not even a statement from Lisi as to the conclusions reached on consumer recognition and market share. Further, Lisi, opposer's chief witness, was equivocal on whether the outside valuations are evidence that TSAM's core marks are famous: "And from that information [i.e., the outside valuations], my personal impression is that the mark The Sports Authority, the mark Sports Authority and design and the family of Authority marks are extremely strong, if not famous." (Lisi test. pp.92-93) While opposer has introduced a number of its annual reports (Lisi test. exh. 25), and hundreds of pages of financial analyses of opposer by financial analysts (Lisi test. exh. 23), there is no testimony or argument asserting that these materials contain any information on household penetration, brand awareness or brand value. Lisi also identified and introduced an affidavit and accompanying exhibit (Lisi test. exh. 22) intended to establish the number of viewer impressions created by opposer's television advertising over a three-year period; but without testimony from the individual who prepared the exhibit, the Lisi testimony is probative of nothing more than that he received the affidavit and report from an officer of opposer's ad agency. Likewise, Lisi introduced a "master list" of what are reported to number over 10,000 incidents of "unsolicited" press coverage of opposer and/or its stores. (Lisi test. exh. 24) However, no individual articles have been produced as a sample and we have no idea whether the articles are positive or negative; we know only that Lisi testified to their collection.
  • Because the fame factor is based on underlying fact finding, relevant evidence must be submitted in support of a request for treatment under the fame factor.
    • The Sports Authority Michigan, Inc. v. The PC Authority, Inc., Opposition No. 113,785, (TTAB 2001).
      • These failures are significant. Because "the fame factor is based on underlying fact finding " relevant evidence must be submitted in support of a request for treatment under the fame factor. This responsibility to create a factual record is heightened under the more deferential standard that [the Federal Circuit] must apply when reviewing PTO fact finding." Packard Press Inc. v. Hewlett-Packard Co., 227 F.3d 1352, 1360, 56 USPQ2d 1351, 1356 (Fed. Cir. 2000)(citations omitted). Opposer has not created a record on which we could find that its marks have attained the same level of fame as PLAY-DOH or FRITO-LAY.
  • Case Finding: The TTAB is not persuaded by the argument that the fame of a mark cuts both ways with respect to the likelihood of confusion; the better known the mark is, the more readily the public becomes aware of even a small difference.
    • Time Warner Entertainment Company L.P. v. Karen L. Jones, Opposition No. 112,409, (TTAB 2002).
      • In B.V.D. Licensing Corp. v. Body Action Design, Inc., 846 F.2d 727, 6 USPQ2d 1719, 1721 (Fed. Cir. 1988), the court stated that "the fame of a mark cuts both ways with respect to the likelihood of confusion. The better known it is, the more readily the public becomes aware of even a small difference."...We are not persuaded by these arguments. First, we note that the language from the B.V.D. Licensing Corp. case quoted above and relied on by applicant, to the effect that the fame of a mark might serve to diminish the likelihood of confusion, is not controlling precedent. "The holding of B.V.D., to the extent it treats fame as a liability [to the owner of the famous mark asserting likelihood of confusion], is confined to the facts of that case." Kenner Parker Toys Inc., supra, 22 USPQ2d at 1457. Thus, the fame of opposer's Road Runner mark, and the familiarity of purchasers with the details of that mark, do not weigh in applicant's favor in our likelihood of confusion analysis. Rather, as discussed above, the fame of opposer's mark necessarily weighs heavily in opposer's favor in this case.
  • Notoriety of a term does not constitute fame for purposes of the du Pont fame factor, which deals with the fame of the mark, not merely the fame of the term.
    • DC Comics v. Pan American Grain Mfg. Co. Inc., Opposition No. 91125404, (TTAB 2005).
      • We agree with applicant that opposer has not demonstrated that KRYPTONITE is famous as a mark for its goods. Opposer has not submitted sales and advertising figures that apply specifically to its KRYPTONITE mark. Although the term "kryptonite" has appeared throughout opposer's various Superman stories in various media for many years, such that the term and the mythological element may be well known, such notoriety does not constitute fame for purposes of the du Pont factor, which deals with the fame of the mark, not merely the fame of the term.
  • Evidence: Case where evidence, in terms of sales, advertising and length of use, to establish fame in a mark were insufficient to establish it as a famous mark, but enough to establish it as a strong mark.
    • Ava Enterprises, Inc. v. Audio Boss USA, Inc., Opposition No. 91125266, (TTAB 2006).
      • With respect to the duPont factor of the fame of the prior mark in terms of sales, advertising and length of use, opposer contends in its brief that its mark should be considered a strong and famous mark in the field and therefore entitled to a broad scope of protection. While the evidence of record is insufficient to establish that opposer's BOSS AUDIO SYSTEMS and design mark is famous, we nevertheless concur with opposer that its sales and advertising figures, its promotional materials and its many years of continuous use establish that it is a strong mark in the field.
  • As the fame of a mark increases, the degree of similarity between the marks necessary to support a conclusion of likely confusion declines.
    • Starbucks U.S. Brands, LLC and Starbucks Corporation d.b.a. Starbucks Coffee Company v. Marshall S. Ruben, Opposition No. 91156879, (TTAB 2006).
      • As the fame of a mark increases, the degree of similarity between the marks necessary to support a conclusion of likely confusion declines. Bose Corp., supra at 1309.
  • There is no excuse for even approaching the well known trademark of a competitor inasmuch as a strong mark casts a long shadow which competitors must avoid.
    • Starbucks U.S. Brands, LLC and Starbucks Corporation d.b.a. Starbucks Coffee Company v. Marshall S. Ruben, Opposition No. 91156879, (TTAB 2006).
      • Moreover, the Federal Circuit has stated repeatedly that there is no excuse for even approaching the well known trademark of a competitor inasmuch as "[a] strong mark " casts a long shadow which competitors must avoid." Kenner Parker Toys Inc., supra at 1456.
  • Extensive media coverage is indicative of fame.
    • Starbucks U.S. Brands, LLC and Starbucks Corporation d.b.a. Starbucks Coffee Company v. Marshall S. Ruben, Opposition No. 91156879, (TTAB 2006).
      • As discussed above, STARBUCKS coffee products and stores have attracted intense unsolicited media attention from national television and radio programs and the press, which has resulted in extensive recognition and renown of the STARBUCKS mark among the general public. See e.g., Bose Corp., 63 USPQ2d at 1309 [extensive media coverage is indicative of fame].
  • Evidence: Discussion of cases where evidence established a mark as famous.
    • Starbucks U.S. Brands, LLC and Starbucks Corporation d.b.a. Starbucks Coffee Company v. Marshall S. Ruben, Opposition No. 91156879, (TTAB 2006).
      • We agree with opposers that this evidence confirms that the STARBUCKS mark is truly a famous mark. The evidence in this case certainly exceeds the extensive public recognition and renown found sufficient to establish fame in other cases.28 FOOTNOTE 28 "See Bose Corp., 63 USPO2d at 1308 [ACOUSTIC WAVE mark famous based on seventeen years of use, annual sales over $50 million, annual advertising in excess of $5 million, and extensive media coverage]; Nina Ricci, S.A.R.L. v. E.T.F. Enters., Inc., 889 F.2d 1070, 12 USPQ2d 1901, 1902 (Fed. Cir. 1989) [NINA RICCI famous for perfume, clothing and accessories based on $200 million in sales, over $37 million in advertising, and over 27 years of use]; Kimberly-Clark Corp. v. H. Douglas Enter., Ltd., 774 F.2d 1144, 227 USPQ 541, 542 (Fed. Cir. 1985) [HUGGIES famous for diapers based on over $300 million in sales over nine years and $15 million in advertising in a single year]; Specialty Brands Inc. v. Coffee Bean Distribs., Inc., 748 F.2d 669, 223 USPQ 1281, 1284 (Fed. Cir. 1984) [SPICE ISLANDS for teas, spices and seasonings famous based on use for 40 years, $25 million annual sales for spices, $12 million sales for tea between 1959 and 1981, and "several million" in advertising]; Giant Food. Inc. v. Nation's Foodservice, Inc., 710 F.2d 1565, 218 USPQ 390, 392-93 (Fed. Cir. 1983) [GIANT FOOD famous for supermarket services and food products based on sales over $1 billion in one year, "considerable amounts of money" in advertising, and 45 years use]; Planters Nut & Chocolate Co. v. Crown Nut Co., 305 F.2d 916, 134 USPQ 504, 506 (CCPA 1962) [MR. PEANUT famous for nuts and nut products based upon $350 million in sales, $10 million in advertising, and over 10 years of use).
  • Because fame plays such a dominant role in the confusion analysis, those who claim fame for product marks that are used in tandem with a famous house mark can properly be put to tests to assure their entitlement to the benefits of fame for the product marks.
    • In re Microsoft Corporation, Serial No. 78/013678, (TTAB 2003).
      • "Because fame plays such a dominant role in the confusion analysis, "those who claim fame for product marks that are used in tandem with a famous house mark can properly be put to tests to assure their entitlement to the benefits of fame for the product marks." Bose Corp. v. QSC Audio Products Inc., 293 F.3d 1367, 63 USPQ2d 1303, 1308 (Fed. Cir. 2002).
  • The fame of opposer's mark extends beyond the services identified in opposer's registration and opposer's mark is accorded more protection precisely because it is more likely to be remembered and associated in the public mind.
    • The NASDAQ Stock Market, Inc. v. Antartica, S.r.l., Opposition No. 91121204, (TTAB 2003).
      • The fame of opposer's mark is particularly significant. It extends beyond the stock market services identified in opposer's registration and opposer's mark is "accorded more protection precisely because [it is] more likely to be remembered and associated in the public mind." Recot, 54 USPQ2d at 1897 (Fed. Cir. 2000) citing Kenner Parker Toys, Inc. v. Rose Art Industries, Inc., 963 F.3d 350, 22 USPQ2d 1453, 1457 (Fed. Cir. 1992) and Specialty Brands, Inc. v. Coffee Bean Distribs., Inc., 748 F.2d 669, 675, 223 USPQ 1281, 1284 (Fed. Cir. 1984). See also, Bose Corp. v. QSC Audio Products Inc., 293 F.3d 1367, 63 USPQ2d 1303 (Fed. Cir. 2002) (Public discussion of trademarked product provides confirmation of context of use of mark and evidence that efforts to promote marked product have been successful).
    • The NASDAQ Stock Market, Inc. v. Antartica, S.r.l., Opposition No. 91121204, (TTAB 2003).
      • "This reasoning applies with equal force when evaluating the likelihood of confusion between marks that are used with goods that are not closely related, because the fame of a mark may also affect the likelihood that consumers will be confused when purchasing these products." Recot, 54 USPQ2d at 1897.
  • Although fame alone cannot overwhelm the other DuPont factors as a matter of law fame deserves its full measure of weight in assessing likelihood of confusion.
    • The NASDAQ Stock Market, Inc. v. Antartica, S.r.l., Opposition No. 91121204, (TTAB 2003).
      • "Although fame alone cannot overwhelm the other DuPont factors as a matter of law, see University of Notre Dame du Lac v. J.C. Gourmet Food Imports Co., Inc., 703 F.3d 1372, 217 USPQ 505 (Fed. Cir. 1983), fame deserves its full measure of weight in assessing likelihood of confusion." Id. at 1898.
  • Fame of the prior mark, when present, plays a "dominant" role in the process of balancing the DuPont factors.
    • The NASDAQ Stock Market, Inc. v. Antartica, S.r.l., Opposition No. 91121204, (TTAB 2003).
      • In this case, we find the fame of opposer's mark a significant factor. Recot, 54 USPQ2d at 1897 ("fame of the prior mark, when present, plays a ‘dominant' role in the process of balancing the DuPont factors").
  • Evidence: To the extent that any fame attaches to opposer's mark, it is in connection with evidence of opposer's performances.
    • Blue Man Productions, Inc. v. Erich Tarmann, Opposition No. 91154055, (TTAB 2005).
      • Initially, we point out that, to the extent that any fame attaches to opposer's mark, it is in connection with opposer's live musical and theatrical performances. There is literally no evidence of sales, advertising or any public recognition of opposer's mark in connection with magnets, postcards, posters and clothing.
  • Evidence: Even though evidence of money spent to buy media time was submitted, they should have also included evidence about the number of times the commercials were shown.
    • Blue Man Productions, Inc. v. Erich Tarmann, Opposition No. 91154055, (TTAB 2005).
      • As an additional point, although opposer's witness has testified about the millions of dollars spent by Intel to buy media time for these commercials, there is no evidence about the number of times the commercials were shown. It appears that one reason for the high costs for this advertising is that Intel has chosen to run these commercials on programs, including the Super Bowl, where air time is very expensive. But as the Court specifically pointed out with respect to commercials during the Super Bowl, "a 30-second spot commercial shown during a Super Bowl football game may cost a vast sum, but the expenditure may have little if any impact on how the public reacts to the commercial message." Bose Corp. v. QSC Audio Products Inc., 293 F.3d 1367, 63 USPQ2d 1303, 1309 (Fed. Cir. 2002).
  • Evidence: Normally the TTAB looks to the volume of sales and advertising expenditures for the goods and services sold under the mark, and by the length of time those indicia of commercial awareness have been evident, in order to measure the fame of a mark.
    • Blue Man Productions, Inc. v. Erich Tarmann, Opposition No. 91154055, (TTAB 2005).
      • Normally we look to the volume of sales and advertising expenditures for the goods and services sold under the mark, and by the length of time those indicia of commercial awareness have been evident, in order to measure the fame of a mark. Id.
  • Case Finding: Court stated, "It is indeed remarkable to see the thoroughness with which NEXIS can regurgitate a placename casually mentioned in the news."
    • Blue Man Productions, Inc. v. Erich Tarmann, Opposition No. 91154055, (TTAB 2005).
      • We have already said that many of the articles made of record by opposer mention the mark BLUE MAN GROUP only in passing. We are reminded by the diligence of opposer's clipping services of a statement made by the Court of Appeals for the Federal Circuit in another context: "It is indeed remarkable to see the thoroughness with which NEXIS can regurgitate a placename casually mentioned in the news." In re Societe Generale des Eaux Minerales de Vittel S.A., 824 F.2d 957, 3 USPQ2d 1450, 1451 (Fed. Cir. 1987).
  • Evidence: Discussion of evidence used to establish a mark as famous.
    • Blue Man Productions, Inc. v. Erich Tarmann, Opposition No. 91154055, (TTAB 2005).
      • Certainly the evidence of fame in this record is much less compelling than that compiled in other cases where marks have been found to be famous. See Bose Corp. v. QSC Audio Products Inc., supra, and examples given therein. In this respect, the situation is similar to that in Hard Rock Cafe Licensing Corp. v. Elsea, supra at 1409, in which the opposer also submitted only printed publications in its attempt to prove the fame of its mark, and in which the Board stated that "opposer failed to properly introduce any specific evidence regarding the nature and extent of its promotion of its mark in connection with its products and services, U.S. sales figures, advertising and other promotional expenditures or evidence regarding the reputation of opposer's mark to the relevant purchasing group."
  • Evidence: Discussion of the the importance of evidence such as sales figures and promotional expenditures in terms of proving the fame of a mark.
    • Blue Man Productions, Inc. v. Erich Tarmann, Opposition No. 91154055, (TTAB 2005).
      • The Court confirmed, in Packard Press Inc. v. Hewlett- Packard Co., 227 F.3d 1352, 56 USPQ2d 1351, 1356 (Fed. Cir. 2000), the importance of evidence such as sales figures and promotional expenditures in terms of proving the fame of a mark: "We hold that the Board correctly declined to consider the fame factor. Our case law has consistently stated that the conclusion that a mark is famous is based on several important factual findings. See DuPont, 476 F.2d at 1361, 177 USPQ at 567 (indicating that the sales, advertising, and length of use of the mark are to be considered when evaluating the fame of the mark); Recot, 214 F.3d at 1326, 54 USPQ at 1896 (describing relevant evidence of record supporting conclusion that the FRITO-LAY mark is famous). That the fame factor is based on underlying factfinding dictates that relevant evidence must be submitted in support of a request for treatment under the fame factor. This responsibility to create a factual record is heightened under the more deferential standard that this court must apply when reviewing PTO fact finding. See Zurko, 527 U.S. at 165, 50 USPQ2d at 1937; Gartside, 203 F.3d at 1315, 53 USPQ2d at 1775. This is because judicial review under the substantial evidence standard, see Gartside, 203 F.3d at 1314, can only take place when the agency explains its decisions with precision, including the underlying fact findings and the agency's rationale. This necessarily requires that facts be submitted to the agency to create the record on which the agency bases its decision. Because HP did not proffer such evidence in support of its argument that its marks are famous, the Board properly declined to address this issue."
  • Case Finding: The evidence of record is insufficient to support a finding that the mark is famous.
    • Blue Man Productions, Inc. v. Erich Tarmann, Opposition No. 91154055, (TTAB 2005).
      • Although opposer has shown that its mark has achieved some recognition for musical/comedy/theatrical performance services, the evidence of record is insufficient to support a finding that the mark is famous. Thus, we find that the factor of the strength of the mark favors opposer, but not to the extent that it would if the mark were truly famous.
  • Even if opposer had proved that its mark is famous for its services, the factor of fame alone is not sufficient to establish likelihood of confusion. If that were the case, having a famous mark would entitle the owner to a right in gross, and that is against the principles of trademark law.
    • Blue Man Productions, Inc. v. Erich Tarmann, Opposition No. 91154055, (TTAB 2005).
      • Even if opposer had proved that its mark is famous for entertainment services, the factor of fame alone is not sufficient to establish likelihood of confusion. If that were the case, having a famous mark would entitle the owner to a right in gross, and that is against the principles of trademark law. See University of Notre Dame du Lac v. J. C. Gourmet Food Imports Co., Inc., 703 F.2d 1372, 217 USPQ 505, 507 (Fed. Cir. 1983): "The fame of the [plaintiff's] name is insufficient in itself to establish likelihood of confusion under § 2(d). "Likely * * * to cause confusion" means more than the likelihood that the public will recall a famous mark on seeing the same mark used by another. It must also be established that there is a reasonable basis for the public to attribute the particular product or service of another to the source of the goods or services associated with the famous mark. To hold otherwise would result in recognizing a right in gross, which is contrary to principles of trademark law and to concepts embodied in 15 USC § 1052(d)." See also Recot Inc. v. M.C. Becton, 214 F.3d 1322, 54 USPQ2d 1894, 1898 (Fed. Cir. 2000) ("fame alone cannot overwhelm the other du Pont factors as a matter of law").
  • A mark may have acquired sufficient public recognition and renown to demonstrate that it is a strong mark for likelihood of confusion purposes without meeting the stringent requirements to establish that it is a famous mark for dilution purposes.
    • Blue Man Productions, Inc. v. Erich Tarmann, Opposition No. 91154055, (TTAB 2005).
      • A mark may have acquired sufficient public recognition and renown to demonstrate that it is a strong mark for likelihood of confusion purposes without meeting the stringent requirements to establish that it is a famous mark for dilution purposes. Toro Co. v. ToroHead Inc., supra at 1170.
    • The Toro Company v. ToroHead, Inc., Opposition No. 114,061, (TTAB 2001).
      • A mark may have acquired sufficient public recognition and renown to demonstrate that it is a strong mark for likelihood of confusion purposes without meeting the stringent requirements to establish that it is a famous mark for dilution purposes. I.P. Lund Trading ApS v. Kohler Co., 163 F.3d 27, 47, 49 USPQ2d 1225, 1239 (1st Cir. 1998) ("[T]he standard for fame and distinctiveness required to obtain anti-dilution protection is more rigorous than that required to seek infringement protection").
  • Fame for likelihood of confusion purposes and for dilution are not the same; fame for dilution purposes requires a more stringent showing.
    • 7-Eleven, Inc. v. Lawrence I. Wechsler, Opposition No. 91117739, (TTAB 2007)
      • We note that fame for likelihood of confusion purposes and for dilution are not the same, and that fame for dilution purposes requires a more stringent showing. Palm Bay Imports Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1694 (Fed. Cir. 2005); Toro Co. v. ToroHead Inc., 61 USPQ2d 1164, 1170 (TTAB 2001).
  • Evidence of the public recognition and renown of opposer's mark is a significant factor in opposer's favor because the Federal Circuit has acknowledged that fame of the prior mark, another du Pont factor, plays a dominant role in cases featuring a famous or strong mark.
    • The Toro Company v. ToroHead, Inc., Opposition No. 114,061, (TTAB 2001).
      • In addition, we have weighed the evidence of the public recognition and renown of opposer's mark as a significant factor in opposer's favor because the Federal Circuit "has acknowledged that fame of the prior mark, another du Pont factor, ‘plays a dominant role in cases featuring a famous or strong mark.'" Century 21 Real Estate Corp. v. Century Life of America, 970 F.2d 874, 877, 23 USPQ2d 1698, 1701 (Fed. Cir. 1992), quoting, Kenner Parker Toys, 963 F.2d at 352, 22 USPQ2d at 1456. "Famous marks thus enjoy a wide latitude of legal protection." Recot, Inc. v. Becton, 214 F.3d 1322, 1327, 54 USPQ2d 1894, 1897 (Fed. Cir. 2000) (FIDO LAY for edible dog treats confusingly similar to FRITO-LAY snack foods).
  • We hold that in the case of an intent-to-use application, an owner of an allegedly famous mark must establish that its mark had become famous prior to the filing date of the trademark application or registration against which it intends to file an opposition or cancellation proceeding.
    • The Toro Company v. ToroHead, Inc., Opposition No. 114,061, (TTAB 2001).
      • We hold that in the case of an intent-to-use application, an owner of an allegedly famous mark must establish that its mark had become famous prior to the filing date of the trademark application or registration against which it intends to file an opposition or cancellation proceeding.9
  • Long use and/or registration of a mark, without evidence of the extent of consumer exposure to or recognition of the mark over the years, is not sufficient to prove fame.
    • The Wet Seal, Inc. v. FD Management, Inc., Opposition No. 91157022, (TTAB 2007)
      • Long use and/or registration of a mark, without evidence of the extent of consumer exposure to or recognition of the mark over the years,13 is not sufficient to prove fame. More important, the fame of ELIZABETH ARDEN, even if proven, would not be a factor in our determination.
  • Famous marks are entitled to a very broad scope of protection.
    • INTERLEGO AG and LEGO SYSTEMS, INC. and KIRKBI AG v. ABRAMS/GENTILE ENTERTAINMENT, INC. and MJJ MULTIMEDIA LLC, Opposition No. 103,612, (TTAB 2002).
      • Our primary reviewing Court has made it crystal clear that famous trademarks enjoy a very broad scope of protection. Kenner Parker Toys Inc. v. Rose Art Industries Inc., 963 F.2d 350, 22 USPQ2d 1453, 1456 (Fed. Cir. 1992). Given the fact that opposers have demonstrated that in the United States their LEGO trademark is a very famous mark for toys, there is yet another compelling reason supporting our finding that there exists a likelihood of confusion resulting from the contemporaneous use of LEGO and MEGO on identical toys.
    • Time Warner Entertainment Company L.P. v. Karen L. Jones, Opposition No. 112,409, (TTAB 2002).
      • Moreover, opposer's mark is a famous mark which is entitled to a broad scope of protection under Kenner Parker Toys and Recot, Inc., supra.
  • Evidence: Mere length of time that a mark is in use does not by itself establish consumer awareness of the mark such that the mark can be found to be famous.
    • Genesco Inc. and Genesco Brands Inc. v. Gregory Martz, Opposition No. 121,296, (TTAB 2003).
      • Even accepting that opposer's mark which was registered in 1918 (Registration No. 124,004 for J&M in script form) has been used for over a century, mere length of time that a mark is in use does not by itself establish consumer awareness of the mark, such that the mark can be found to be famous. See General Mills Inc. v. Health Valley Foods, 24 USPQ2d 1270, 1277 (TTAB 1992).
  • Evidence: Evidence of long use of a mark and availability of opposer's goods to consumers is not sufficient to establish public recognition and renown of the mark.
    • Genesco Inc. and Genesco Brands Inc. v. Gregory Martz, Opposition No. 121,296, (TTAB 2003).
      • The limited evidence we have of long use of this mark and availability of opposer's goods to consumers through its own retail stores and outlets, and in department stores and specialty stores (with no indication as to how long the goods have been sold in such channels of trade), is not sufficient to establish public recognition and renown of any one, much less all of opposer's "J&M" marks, as that du Pont factor has been interpreted. See The Sports Authority Michigan Inc. v. PC Authority Inc., supra; and Toro Co. v. ToroHead Inc., 61 USPQ2d 1164, 1170 (TTAB 2001). Cf. Kenner Parker Toys Inc. v. Rose Art Industries Inc., 963 F.2d 350, 22 USPQ2d 1453 (Fed. Cir. 1992).
  • Evidence: A lack of information as to the amount of sales and expenditures for and types of advertising of goods under the mark means there is no evidence in the record which establishes that opposer's mark is famous and well known to the purchasing public.
    • Genesco Inc. and Genesco Brands Inc. v. Gregory Martz, Opposition No. 121,296, (TTAB 2003).
      • In particular, there is no information as to the amount of sales and expenditures for and types of advertising of goods under the "J&M Marks." Simply put, there is no evidence in this record which establishes that opposer's various J&M marks, or any one of them, are famous and well known to the purchasing public.
  • Case Finding: Inasmuch as opposer has not established that its "J&M Marks" are renowned under the du Pont factors for purposes of its likelihood of confusion claim, it is clear that opposer likewise has not established that its "J&M Marks" are famous under Section 43(c) for purposes of its dilution claim.
    • Genesco Inc. and Genesco Brands Inc. v. Gregory Martz, Opposition No. 121,296, (TTAB 2003).
      • Inasmuch as opposer has not established that its "J&M Marks" are renowned under the du Pont factors for purposes of its likelihood of confusion claim, it is clear that opposer likewise has not established that its "J&M Marks" are famous under Section 43(c) for purposes of its dilution claim. Opposer cannot prevail on its pleaded ground of dilution. See Section 43(c) of the Trademark Act; and Toro Co. v. ToroHead Inc., supra.
  • Unlike in likelihood of confusion cases, we will not resolve doubts in favor of the party claiming dilution.
    • The Toro Company v. ToroHead, Inc., Opposition No. 114,061, (TTAB 2001).
      • "[W]e simply cannot believe that, as a general proposition, Congress could have intended, without making its intention to do so perfectly clear, to create property rights in gross, unlimited in time (via injunction), even in ‘famous' trademarks." Ringling Bros.-Barnum & Bailey Combined Shows v. Utah Division of Travel Development, 170 F.3d 449, 459, 50 USPQ2d 1065, 1073 (4th Cir. 1999). See also Nabisco, 191 F.3d at 224 n.6, 51 USPQ2d at 1894 n.6 (quotation marks omitted)("We agree that the dilution statutes do not prohibit all use of a distinctive mark that the owners prefer not be made .... [W]e agree with the Fourth Circuit that the dilution statutes do not create a ‘property right in gross'"); I.P. Lund, 163 F.3d at 47, 49 USPQ2d at 1239 ("[T]he standard for fame and distinctiveness required to obtain anti-dilution protection is more rigorous than that required to seek infringement protection"). In light of the above guidance, we start by noting that, unlike in likelihood of confusion cases, we will not resolve doubts in favor of the party claiming dilution.
  • A mark, which has attained niche market fame, is entitled to a greater degree of protection.
    • ProQuest Information and Learning Company v. Jacques R. Island, Opposition No. 91158016, (TTAB 2007)
      • Moreover, because we have also found that opposer's mark is famous in the academic, research, and education fields, the same fields in which applicant's mark will be used, opposer's mark is entitled to a greater degree of protection.
  • The factor of fame, when present, plays a dominant role in the balancing of the du Pont Factors.
    • Apple Computer v. TVNET.net, Inc., Opposition No. 91168875, (TTAB 2007).
      • We turn first to the factor of fame, because, when present, evidence pertaining to this factor "plays a ‘dominant role' in the process of balancing the du Pont factors." Recot Inc. v. Becton, 214 F.3d 1322, 54 USPQ2d 1894, 1897 (Fed. Cir. 2000); see also Kenner Parker Toys Inc. v. Rose Art Industries, Inc., 963 F.2d 350, 22 USPQ2d 1453, 1456 (Fed. Cir. 1992).
    • ProQuest Information and Learning Company v. Jacques R. Island, Opposition No. 91158016, (TTAB 2007)
      • Our primary reviewing court has determined that the fame of an opposer's mark plays a "dominant role in the process of balancing the du Pont factors." Recot, Inc. v. M.C. Becton, 54 USPQ2d 1894, 1897-98 (Fed. Cir. 2000), on remand, 56 USPQ2d 1859 (TTAB 2000) [likelihood of confusion between FIDO LAY and FRITO-LAY]; and Kenner Parker Toys v. Rose Art Industries, 963 F.2d 350, 22 USPQ2d 1453, 1456 (Fed. Cir. 1992) [likelihood of confusion between FUNDOUGH and PLAY-DOH - "[F]ame of the prior mark plays a dominant role in cases featuring a famous or strong mark."]
    • Schering-Plough HealthCare Products, Inc. v. Ing-Jing Huang, Opposition No. 91117558, (TTAB 2007)
      • Inasmuch as opposer introduced evidence bearing on the fame of its marks, we now turn to consider this du Pont factor. Fame of the prior mark plays a dominant role in likelihood of confusion cases featuring a famous mark. Bose Corp. v. QSC Audio Products Inc., 293 F.3d 1367, 63 USPQ2d 1303 (Fed. Cir. 2002); Recot Inc. v. M.C. Becton, 214 F.3d 1322, 54 USPQ2d 1894 (Fed. Cir. 2000); and Kenner Parker Toys, Inc. v. Rose Art Industries, Inc., 963 F.2d 350, 22 USPQ2d 1453 (Fed. Cir. 1992).
    • 7-Eleven, Inc. v. Lawrence I. Wechsler, Opposition No. 91117739, (TTAB 2007)
      • Fame, if it exists, plays a dominant role in the likelihood of confusion analysis. Bose Corp. v. QSC Audio Products Inc., 293 F.3d 1367, 63 USPQ2d 1303, 1305 (Fed. Cir. 2002); Recot Inc. v. M.C. Becton, 214 F.3d 1322; 54 USPQ2d 1894, 1897 (Fed. Cir. 2000); Kenner Parker Toys, Inc. v. Rose Art Industries, Inc., 963 F.2d 350, 22 USPQ2d 1453, 1456 (Fed. Cir. 1992).
  • As the fame of a mark increases, the degree of similarity between the marks necessary to support a conclusion of likely confusion declines.
    • ProQuest Information and Learning Company v. Jacques R. Island, Opposition No. 91158016, (TTAB 2007)
      • Moreover, as the fame of a mark increases, the degree of similarity between the marks necessary to support a conclusion of likely confusion declines. Bose Corp. v. QSC Audio Prods. Inc., supra at 1309. Our primary reviewing Court, employing compelling imagery, held that "[a] strong mark " casts a long shadow which competitors must avoid," and "[t]here is no excuse for even approaching the wellknown trademark of a competitor " and " all doubt as to whether confusion, mistake, or deception is likely is to be resolved against the newcomer, especially where the established mark is one which is famous." Kenner Parker Toys, supra.
  • Fame for likelihood of confusion purposes arises as long as a significant portion of the relevant consuming public...recognizes the mark as a source indicator.
    • Schering-Plough HealthCare Products, Inc. v. Ing-Jing Huang, Opposition No. 91117558, (TTAB 2007)
      • Fame for likelihood of confusion purposes arises "as long as a significant portion of the relevant consuming public...recognizes the mark as a source indicator." Palm Bay Imports, Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 73 USPQ2d at 1694.
  • Fame for likelihood of confusion purposes and for dilution are not the same, and that fame for dilution purposes requires a more stringent showing.
    • 7-Eleven, Inc. v. Lawrence I. Wechsler, Opposition No. 91117739, (TTAB 2007)
      • We note that fame for likelihood of confusion purposes and for dilution are not the same, and that fame for dilution purposes requires a more stringent showing. Palm Bay Imports Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1694 (Fed. Cir. 2005); Toro Co. v. ToroHead Inc., 61 USPQ2d 1164, 1170 (TTAB 2001).
  • Likelihood of confusion fame is variable while dilution fame is an either/or proposition.
    • 7-Eleven, Inc. v. Lawrence I. Wechsler, Opposition No. 91117739, (TTAB 2007)
      • Likelihood of confusion fame "varies along a spectrum from very strong to very weak" while dilution fame is an either/or proposition – sufficient fame for dilution either exists or does not exist. Id. See also Carefirst of Maryland Inc. v. FirstHealth of the Carolinas Inc., 77 USPQ2d 1492, 1507 (TTAB 2005)(likelihood of confusion "Fame is relative . . . not absolute").
  • A mark may have acquired sufficient public recognition and renown to be famous for purposes of likelihood of confusion without meeting the more stringent requirement for dilution fame.
    • 7-Eleven, Inc. v. Lawrence I. Wechsler, Opposition No. 91117739, (TTAB 2007)
      • A mark, therefore, may have acquired sufficient public recognition and renown to be famous for purposes of likelihood of confusion without meeting the more stringent requirement for dilution fame. Toro Co. v. ToroHead Inc., supra, citing I.P. Lund Trading ApS v. Kohler Co., 163 F.3d 27, 47 USPQ2d 1225, 1239 (1st Cir. 1998)("[T]he standard for fame and distinctiveness required to obtain anti-dilution protection is more rigorous than that required to seek infringement protection").
  • Likelihood of confusion fame is also known as "public recognition and renown."
    • 7-Eleven, Inc. v. Lawrence I. Wechsler, Opposition No. 91117739, (TTAB 2007)
      • In order to help keep the concepts of likelihood of confusion fame and dilution fame distinct, we will refer to "public recognition and renown" when referring to likelihood of confusion fame. Toro Co. v. ToroHead Inc., supra.
  • Public recognition and renown (fame) alone is not sufficient to establish a likelihood of confusion.
    • 7-Eleven, Inc. v. Lawrence I. Wechsler, Opposition No. 91117739, (TTAB 2007)
      • Even though we have found that opposer's BIG GULP trademark has a very high degree of public recognition and renown, this factor alone is not sufficient to establish a likelihood of confusion. As stated in past cases, if that were the case, ownership of a famous mark would entitle the owner to a right in gross, and that runs counter to the trademark laws. Recot Inc. v. M.C. Becton, supra, 54 USPQ2d at 1898 ("fame alone cannot overwhelm the other du Pont factors as a matter of law"); University of Notre Dame du Lac v. J. C. Gourmet Food Imports Co., 703 F.2d 1372, 217 USPQ 505, 507 (Fed. Cir. 1983)("[T]he fame of the [plaintiff's] name is insufficient in itself to establish likelihood of confusion under §2(d)").
  • The famous mark argument is less persuasive where, 1) there are significant differences between the allegedly famous mark and the mark which alleged to be confusingly similar and 2) there is no persuasive rationale asserted nor evidence offered to support a finding that the famous mark would likely be associated in the minds of purchasers with the mark challenged.
    • 7-Eleven, Inc. v. Lawrence I. Wechsler, Opposition No. 91117739, (TTAB 2007)
      • "The ‘famous mark' argument is less persuasive where, as here, (i) there are significant differences between the mark whose fame is asserted and the mark which is alleged to [be] confusingly similar and (ii) there is no persuasive rationale asserted nor evidence offered to support a finding that the famous mark would likely be associated in the minds of purchasers with the mark challenged." Land O'Lakes, Inc. v. Land O'Frost, Inc., 224 USPQ 1022, 1026-1027 (TTAB 1984).
  • A famous mark has extensive public recognition and renown.
    • Safer, Inc. v. OMS Investments, Inc., Opposition No. 91176445 (TTAB 2010)
      • A famous mark has extensive public recognition and renown. Bose Corp. v. QSC Audio Products Inc., 293 F.3d 1367, 63 USPQ2d 1303, 1305 (Fed. Cir. 2002); Recot Inc. v. M.C. Becton, 214 F.3d 1322, 54 USPQ2d 1894, 1897 (Fed. Cir. 2000); Kenner Parker Toys, Inc. v. Rose Art Industries, Inc., 963 F.2d 350, 22 USPQ2d 1453, 1456 (Fed. Cir. 1992).
  • A strong mark casts a long shadow which competitors must avoid.
    • Eveready Battery Company, Inc. v. Green Planet, Inc., Opposition No. 91180015 (TTAB 2009)
      • Indeed, "[a] strong mark " casts a long shadow which competitors must avoid." Kenner Parker Toys, Inc. v. Rose Art Industries, Inc., 963 F.2d 350, 353, 22 USPQ2d 1453, 1456 (fed. Cir. 1992). A famous mark is one "with extensive public recognition and renown." Id.
  • Advertising expenses and revenues may be insufficient given no evidence regarding the extent to which consumers recognize the the disputed mark standing alone and outside the context of a second trademark which always accompanies the disputed mark.
    • The H.D. Lee Company, Inc. v. Maidenform, Inc., Opposition No. 91168309 (TTAB 2008)
      • In this case, there is no evidence from which to infer from opposer's advertising expenses and revenues the extent to which consumers recognize the ONE TRUE FIT markstanding alone and outside the context of the LEE trademark.
  • Although raw numbers of product sales and advertising expenses may have sufficed in the past to prove fame of a mark, raw numbers alone may be misleading. Some context in which to place raw statistics may be necessary (e.g., the substantiality of the sales or advertising figures for comparable types of products or services).
    • Safer, Inc. v. OMS Investments, Inc., Opposition No. 91176445 (TTAB 2010)
      • Although raw numbers of product sales and advertising expenses may have sufficed in the past to prove fame of a mark, raw numbers alone may be misleading. Some context in which to place raw statistics may be necessary (e.g., the substantiality of the sales or advertising figures for comparable types of products or services). Bose Corp. v. QSC Audio Products Inc., 63 USPQ2d at 1309.
  • Because of the extreme deference accored a famous mark in terms of the wide latitude of legal protection it receives, and the dominant role fame plays in the likelihood of confusion analysis, it is the duty of the party asserting that its mark is famous to clearly prove it.
    • Safer, Inc. v. OMS Investments, Inc., Opposition No. 91176445 (TTAB 2010)
      • Finally, because of the extreme deference that we accord a famous mark in terms of the wide latitude of legal protection it receives, and the dominant role fame plays in the likelihood of confusion analysis, it is the duty of the party asserting that its mark is famous to clearly prove it. Leading Jewelers Guild Inc. v. LJOW Holdings LLC, 82 USPQ2d 1901, 1904 (TTAB 2007).
  • Case Finding: Consumers have not been widely exposed to the mark DEER AWAY and/or DEER AWAY PROFESSIONAL, or that the marks have otherwise become widely known and, therefore, can be considered famous marks.
    • Safer, Inc. v. OMS Investments, Inc., Opposition No. 91176445 (TTAB 2010)
      • On this record, we find that consumers have not been widely exposed to the mark DEER AWAY and/or DEER AWAY PROFESSIONAL, or that the marks have otherwise become widely known and, therefore, can be considered famous marks.
  • Case Finding: In its Request for Reconsideration, applicant submitted seven (7) newspaper articles referencing Sam Edelman. These articles are evidence that Sam Edelman was referenced in seven articles. However, they do not prove that Sam Edelman is well-known in the fashion industry. Apparently, in or around 1987, Sam and Libby Edelman created the "Caroline" ballet flat that sold in the millions. However, it is not apparent from these articles that consumers know that Sam Edelman created the "Caroline" or that consumers recognize Sam Edelman.
    • In re SL&E Training Stable, Inc., Serial No. 78806669 (TTAB 2008)
      • In its Request for Reconsideration, applicant submitted seven (7) newspaper articles referencing Sam Edelman. These articles are evidence that Sam Edelman was referenced in seven articles. However, they do not prove that Sam Edelman is well-known in the fashion industry. Apparently, in or around 1987, Sam and Libby Edelman created the "Caroline" ballet flat that sold in the millions. However, it is not apparent from these articles that consumers know that Sam Edelman created the "Caroline" or that consumers recognize Sam Edelman.
  • Case Finding: MOTOWN and M MOTOWN marks are famous.
    • UMG Recordings, Inc., substituted for Universal Music Group v. Charles O'Rourke, Opposition No. 91178937 (TTAB 2009)
      • Opposer's mark is famous for musical recordings and performances, and opposer has demonstrated that such fame has been exploited by its use of the mark on collateral products, including clothing. See Turner Entertainment Co. v. Nelson, 38 USPQ2d 1942, 1944 (TTAB 1996) for a discussion of cases involving use of a famous or well-known mark on collateral products. As a result, consumers familiar with opposer's famous music industry marks, including the various MOTOWN and M MOTOWN marks, when subsequently confronted with clothing items adorned with applicant's mark would likely conclude it was another variation on the marks used by or authorized by opposer for such goods.
  • Case Finding: The documents are effective to show that the good has been referenced in governmental studies and university sponsored articles, studies or reports, as well as two press releases, and the product has been reported to be effective. However it cannot be inferred that the mark is famous or enjoys public renown because there is no evidence regarding the circulation of these press releases, reports, studies and/or articles. Furthermore, the good was one of many repellants identified in the studies and it was in no way singled out as a particularly well-known product.
    • Safer, Inc. v. OMS Investments, Inc., Opposition No. 91176445 (TTAB 2010)
      • The documents are effective to show that DEER AWAY has been referenced in governmental studies and university sponsored articles, studies or reports, as well as two press releases, and the product has been reported to be effective. We cannot infer that the mark is famous or enjoys public renown because there is no evidence regarding the circulation of these press releases, reports, studies and/or articles. Furthermore, DEER AWAY was one of many repellants identified in the studies and it was in no way singled out as a particularly well-known product.
  • Case Finding: The evidence establishes that opposer's SCHICK mark is famous for purposes of our likelihood of confusion determination, and, as indicated above, this factor weighs heavily in opposer's favor.
    • Eveready Battery Company, Inc. v. Green Planet, Inc., Opposition No. 91180015 (TTAB 2009)
      • Accordingly, we find that the evidence establishes that opposer's SCHICK mark is famous for purposes of our likelihood of confusion determination, and, as indicated above, this factor weighs heavily in opposer's favor.
  • Case Finding: BASEBALL AMERICA mark is a well-known and famous mark.
    • Baseball America, Inc. v. Powerplay Sports, Ltd., Opposition No. 91120166, (TTAB 2004)
      • Based on this evidence, we find that opposer's BASEBALL AMERICA mark is a well-known and indeed famous mark in the baseball field, a fact which weighs heavily in favor of a finding of likelihood of confusion. See Bose Corp. v. QSC Audio Products Inc., 293 F.3d 1367, 63 USPQ2d 1303, 1309 (Fed. Cir. 2002); Recot Inc. v. M.C. Becton, 214 F.3d 1322, 54 USPQ2d 1894 (Fed. Cir. 2000); and Kenner Parker Toys, Inc. v. Rose Art Industries, Inc., 963 F.2d 350, 22 USPQ2d 1453 (Fed. Cir. 1992).
  • Case Finding: Under the fifth du Pont factor, fame of the prior mark, applicant is correct in noting that there is no evidence that the cited registered mark is famous.
    • In re Davey Products Pty Ltd., Serial No. 77029776 (TTAB 2009)
      • Under the fifth du Pont factor (fame of the prior mark), applicant is correct in noting that there is no evidence that the cited registered mark is famous.
  • Evidence: Discussion of news and magazine articles found to be of little probative value in determining the public recognition of the mark.
    • The H.D. Lee Company, Inc. v. Maidenform, Inc., Opposition No. 91168309 (TTAB 2008)
      • Also, the numerous news and magazine articles of record that reference ONE TRUE FIT are of little probative value in determining the public recognition of the mark. First, most of the publications are specialty or business magazines (e.g., Women's Wear Daily, Brandweek, Promo, Advertising Age, etc.). There is no explanation regarding how articles referencing ONE TRUE FIT in these publications demonstrate recognition of the brand by relevant consumers. Second, many of the articles discuss how opposer will be introducing the brand or make other passing references but do not otherwise evidence widespread public recognition of the ONE TRUE FIT mark.
  • Evidence: Finally, even if applicant had proven that Sam Edelman had a high degree of recognition in the fashion industry, applicant does not make clear how the renown of Sam Edelman would diminish the likelihood of confusion with the registered mark and, in any event, it would not change the result.
    • In re SL&E Training Stable, Inc., Serial No. 78806669 (TTAB 2008)
      • Finally, even if applicant had proven that Sam Edelman had a high degree of recognition in the fashion industry, applicant does not make clear how the renown of Sam Edelman would diminish the likelihood of confusion with the registered mark and, in any event, it would not change the result.
  • Fame may be measured indirectly by the volume of sales and advertising expenditures of the goods and services identified by the marks at issue, by the length of time those indicia of commercial awareness have been evident, widespread critical assessments and through notice by independent sources of the products identified by the marks, as well as the general reputation of the products and services.
    • Safer, Inc. v. OMS Investments, Inc., Opposition No. 91176445 (TTAB 2010)
      • Fame may be measured indirectly by the volume of sales and advertising expenditures of the goods and services identified by the marks at issue, "by the length of time those indicia of commercial awareness have been evident," widespread critical assessments and through notice by independent sources of the products identified by the marks, as well as the general reputation of the products and services. Bose Corp. v. QSC Audio Products Inc., 63 USPQ2d at 1305-1306 and 1309.
  • Fame of an opposer's mark or marks, if it exists, plays a dominant role in the process of balancing the DuPont factors.
    • Eveready Battery Company, Inc. v. Green Planet, Inc., Opposition No. 91180015 (TTAB 2009)
      • Fame of an opposer's mark or marks, if it exists, plays a "dominant role in the process of balancing the DuPont factors," Recot Inc. v. Becton, 214 F.3d 1322, 1327, 54 USPQ2d 1894, 1897 (Fed. Cir. 2000) and "[f]amous marks thus enjoy a wide latitude of legal protection." Id.
  • Fame, if it exists, plays a dominant role in the likelihood of confusion analysis because famous marks enjoy a broad scope of protection or exclusivity of use.
    • Safer, Inc. v. OMS Investments, Inc., Opposition No. 91176445 (TTAB 2010)
      • Fame, if it exists, plays a dominant role in the likelihood of confusion analysis because famous marks enjoy a broad scope of protection or exclusivity of use.
  • Famous marks are more likely to be remembered and associated in the public mind than a weaker mark, and are thus more attractive as targets for would-be copyists.
    • Eveready Battery Company, Inc. v. Green Planet, Inc., Opposition No. 91180015 (TTAB 2009)
      • This is true because famous marks are more likely to be remembered and associated in the public mind than a weaker mark, and are thus more attractive as targets for would-be copyists. Id.
  • It is not necessary that a registered mark be famous to be entitled to protection against a confusingly similar mark.
    • In re Davey Products Pty Ltd., Serial No. 77029776 (TTAB 2009)
      • Moreover, "[i]t is not necessary that a registered mark be famous to be entitled to protection against a confusingly similar mark." In re Big Pig Inc., 81 USPQ2d 1436, 1439 (TTAB 2006).
  • Opposer's sales figures may have little probative value concerning the strength of a mark where there is no context as to market share.
    • Safer, Inc. v. OMS Investments, Inc., Opposition No. 91176445 (TTAB 2010)
      • In addition, applicant introduced opposer's DEER AWAY sales figures in both dollars and units sold.28 The information was designated as confidential and filed under seal so we may only refer to them in general terms. It is not clear why applicant chose to introduce opposer's sales figures but, in any event, on their face the sales figures are not so substantial as to warrant an inference of extensive consumer awareness. Moreover, because there is no context as to market share, the sales figures have little probative value in determining whether opposer's marks are strong.
  • Suggestive marks, in general, are not entitled to the same scope of protection as arbitrary marks.
    • The H.D. Lee Company, Inc. v. Maidenform, Inc., Opposition No. 91168309 (TTAB 2008)
      • Finally, as discussed more fully below, ONE TRUE FIT has a suggestive connotation. Suggestive marks, in general, are not entitled to the same scope of protection as arbitrary marks. Kenner Parker Toys, Inc. v. Rose Art Industries, Inc., 963 F.2d 350, 22 USPQ2d 1453, 1456 (Fed. Cir. 1992), quoting Sure-Fit Products Co. v. Saltzon Drapery Co., 254 F.2d 158, 117 USPQ 295, 296 (CCPA 1958) ("where a party chooses a trademark which is inherently weak, he will not enjoy the wide latitude of protection afforded the owners of strong trademarks. Where a party uses a weak mark, his competitors may come closer to his mark than would be the case with a strong mark without violating his rights"); Milwaukee Nut Co. v. Brewster Food Service, 277 F.2d 190, 125 USPQ 399, 401 (CCPA 1960) (by selecting a suggestive mark, plaintiff was not entitled to same scope of protection afforded an arbitrary mark); In re Lar Mor International, Inc., 221 USPQ 180, 182 (TTAB 1983). Because opposer's mark is suggestive, the evidence of its renown or marketplace strength has to be more unequivocal than opposer has shown in this case.
  • The absence of evidence that a registered mark is famous is not particularly significant in the context of an ex parte proceeding.
    • In re Davey Products Pty Ltd., Serial No. 77029776 (TTAB 2009)
      • Under the fifth du Pont factor (fame of the prior mark), applicant is correct in noting that there is no evidence that the cited registered mark is famous. However, it is settled that the absence of such evidence is not particularly significant in the context of an ex parte proceeding. See In re Thomas, 79 USPQ2d 1021, 1027 n.11 (TTAB 2006).
  • This du Pont factor requires us to consider the fame of opposer's marks.
    • Safer, Inc. v. OMS Investments, Inc., Opposition No. 91176445 (TTAB 2010)
      • This du Pont factor requires us to consider the fame of opposer's marks.
  • Those who claim fame for product marks that are used in tandem with a famous house mark can properly be put to tests to assure their entitlement to the benefits of fame for the product mark.
    • The H.D. Lee Company, Inc. v. Maidenform, Inc., Opposition No. 91168309 (TTAB 2008)
      • In all of the exhibits, LEE is the dominant trademark. Consumers do not have an opportunity to disassociate ONE TRUE FIT from the more prominent LEE trademark. It is incumbent on opposer to produce evidence that product marks can properly be seen as independent of its associated house mark. See Bose Corp. v. QSC Audio Products Inc., 293 F.3d 1367, 63 USPQ2d 1303, 1306-1307 (Fed. Cir. 2002) ("those who claim fame for product marks that are used in tandem with a famous house mark can properly be put to tests to assure their entitlement to the benefits of fame for product marks").
  • To the extent applicant has conceded the fame of opposer's mark, applicant will be considered to have only conceded the type of fame relevant to a likelihood of confusion analysis.
    • UMG Recordings, Inc., substituted for Universal Music Group v. Charles O'Rourke, Opposition No. 91178937 (TTAB 2009)
      • Thus, to the extent opposer is correct in its allegation that applicant has conceded the fame of opposer's MOTOWN mark, applicant will be considered to have only conceded the type of fame relevant to a likelihood of confusion analysis.8 FOOTNOTE 8 "Palm Bay Imports Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1692 (Fed. Cir. 2005) (contrasts fame for likelihood of confusion analysis and for dilution analysis)."
  • When evidence of fame of a mark is present it is always of significance.
    • UMG Recordings, Inc., substituted for Universal Music Group v. Charles O'Rourke, Opposition No. 91178937 (TTAB 2009)
      • FOOTNOTE 14 "Nonetheless, the fame of opposer's mark in the music industry influences our decision in this case, as discussed infra, for when evidence of fame of a mark is present it is always of significance. See Recot Inc. v. M.C. Becton, 214 F.3d 1322, 54 USPQ2d 1894, 1897 (Fed. Cir. 2000)."
  • Case Finding: In considering the various uses on the goods and the advertising, the TTAB cannot conclude, based on this record, that the exposure to the logo has resulted in its making a strong impression on the general public.
    • Morgan Creek Productions, Inc. v. Foria International, Inc., Opposition No. 91173806 (TTAB 2009)
      • As for the print advertising that has been submitted, and even the packaging for the CDs and DVDs, the logo appears in relatively small size, so that it is not likely to be noticed. For example, the focal point of the posters is the title of the film, the names of the actors starring in it, and a picture of the actors or something significant in the film. The logo appears at the bottom of the poster, along with a listing of the producers and various people associated with the film, from the stars to the editor, production designer and person who did the music. We acknowledge that the logo appears quite prominently at the beginning of the films themselves and at the beginning of each trailer, as it takes up the full screen (although even in these cases opposer's logo appears after the equally prominent logo of the company that distributes the films for it, i.e., Warner Brothers in the past and now Universal). However, in considering the various uses on the goods and the advertising, we cannot conclude, based on this record, that the exposure to the logo has resulted in its making a strong impression on the general public.
  • Fame for likelihood of confusion and dilution is not the same. Fame for dilution requires a more stringent showing. Likelihood of confusion fame varies along a spectrum from very strong to very weak while dilution fame is an either/or proposition - it either exists or it does not exist.
    • Lacoste Alligator S.A. v. Maxoly, Inc., Opposition No. 91177866 (TTAB 2009)
      • FOOTNOTE 8 "Although we have found that the alligator design is famous for purposes of opposer's likelihood of confusion claim, we have not addressed the question of whether it is famous in the context of a dilution claim. Fame for likelihood of confusion and dilution is not the same. Fame for dilution requires a more stringent showing. Palm Bay Imports Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1694 (Fed. Cir. 2005); Toro Co. v. ToroHead Inc., 61 USPQ2d 1164, 1170 (TTAB 2001). Likelihood of confusion fame "varies along a spectrum from very strong to very weak" while dilution fame is an either/or proposition - it either exists or it does not exist. Id. See also Carefirst of Maryland Inc. v. FirstHealth of the Carolinas Inc., 77 USPQ2d 1492, 1507 (TTAB 2005) (likelihood of confusion "[f]ame is relative . . . not absolute"). A mark, therefore, may have acquired sufficient public recognition and renown to be famous for purposes of likelihood of confusion without meeting the more stringent requirement for dilution fame. Toro Co. v. ToroHead Inc., 61 USPQ2d at 1170, citing I.P. Lund Trading ApS v. Kohler Co., 163 F.3d 27, 47 USPQ2d 1225, 1239 (1st Cir. 1998) ("[T]he standard for fame and distinctiveness required to obtain anti-dilution protection is more rigorous than that required to seek infringement protection")."
  • The fame factor weighs heavily in favor of finding likelihood of confusion.
    • Boston Red Sox Baseball Club Limited Partnership v. Brad Francis Sherman, Opposition No. 91172268 (TTAB 2008)
      • The fame factor weighs heavily in favor of finding likelihood of confusion. See Recot Inc. v. M.C. Becton, 214 F.3d 1322, 54 USPQ2d 1894 (Fed. Cir. 2000); and Kenner 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 asserting that its mark is famous to clearly prove it.
    • Morgan Creek Productions, Inc. v. Foria International, Inc., Opposition No. 91173806 (TTAB 2009)
      • It is the duty of a party asserting that its mark is famous to clearly prove it. Leading Jewelers Guild Inc. v. LJOW Holdings LLC, 82 USPQ2d 1901, 1904 (TTAB 2007).
  • In view of applicant's admission that opposer's alligator mark is famous, we find that opposer's mark is famous for purposes of likelihood of confusion.
    • Lacoste Alligator S.A. v. Maxoly, Inc., Opposition No. 91177866 (TTAB 2009)
      • In view of applicant's admission that opposer's alligator mark is famous, we find that opposer's mark is famous for purposes of likelihood of confusion. While opposer's evidentiary showing is far from impressive, it would be unduly prejudicial to require more evidence from opposer in light of applicant's admission.8
  • We turn first to the factor of fame, because the fame of the prior mark, if it exists, plays a dominant role in the process of balancing the DuPont factors.
    • Boston Red Sox Baseball Club Limited Partnership v. Brad Francis Sherman, Opposition No. 91172268 (TTAB 2008)
      • We turn first to the factor of fame, because the fame of the prior mark, if it exists, plays a "dominant role in the process of balancing the DuPont factors." Recot, Inc. v. M.C. Becton, 214 F.3d 1322, 54 USPQ2d 1894, 1897 (Fed. Cir. 2000).
  • Although raw numbers of product sales and advertising expenses may have sufficed in the past to prove fame of a mark, raw numbers alone may be misleading and now some context in which to place raw statistics may be necessary.
    • Lacoste Alligator S.A. v. Maxoly, Inc., Opposition No. 91177866 (TTAB 2009)
      • Although raw numbers of product sales and advertising expenses may have sufficed in the past to prove fame of a mark, raw numbers alone may be misleading. Some context in which to place raw statistics may be necessary (e.g., the substantiality of the sales or advertising figures for comparable types of products or services). Bose Corp. v. QSC Audio Products Inc., 63 USPQ2d at 1309.
  • Raw numbers of product sales and advertising expenses may have sufficed in the past to prove fame of a mark, but raw numbers alone in today's world may be misleading; consequently, some context in which to place raw statistics is reasonable.
    • Morgan Creek Productions, Inc. v. Foria International, Inc., Opposition No. 91173806 (TTAB 2009)
      • As the Federal Circuit has stated: "Raw numbers of product sales and advertising expenses may have sufficed in the past to prove fame of a mark, but raw numbers alone in today's world may be misleading . Consequently, some context in which to place raw statistics is reasonable." Bose Corp. v. QSC Audio Prods., 293 F.3d 1367, 63 USPQ2d 1303, 1309 (Fed. Cir. 2002).
  • Finally, because of the extreme deference accorded a famous mark in terms of the wide latitude of legal protection it receives, and the dominant role fame plays in the likelihood of confusion analysis, it is the duty of the party asserting that its mark is famous to clearly prove it.
    • Lacoste Alligator S.A. v. Maxoly, Inc., Opposition No. 91177866 (TTAB 2009)
      • Finally, because of the extreme deference that we accord a famous mark in terms of the wide latitude of legal protection it receives, and the dominant role fame plays in the likelihood of confusion analysis, it is the duty of the party asserting that its mark is famous to clearly prove it. Leading Jewelers Guild Inc. v. LJOW Holdings LLC, 82 USPQ2d 1901, 1904 (TTAB 2007).
  • Case Finding: Opposer's evidence of long use, substantial sales, extensive media recognition and coverage, and significant exposure of the RED SOX marks to the public, demonstrates that opposer's RED SOX marks are famous for opposer's services and, thus, entitled to a broad scope of protection. That protection extends to cover opposer's licensed merchandise, including clothing.
    • Boston Red Sox Baseball Club Limited Partnership v. Brad Francis Sherman, Opposition No. 91172268 (TTAB 2008)
      • Furthermore, opposer's evidence of long use, substantial sales, extensive media recognition and coverage, and significant exposure of the RED SOX marks to the public, demonstrates that opposer's RED SOX marks are famous for opposer's entertainment services and, thus, entitled to a broad scope of protection. That protection extends to cover opposer's licensed merchandise, including clothing.
  • It is the duty of a party asserting that its mark is famous to clearly prove it.
    • Morgan Creek Productions, Inc. v. Foria International, Inc., Opposition No. 91173806 (TTAB 2009)
      • It is the duty of a party asserting that its mark is famous to clearly prove it. Leading Jewelers Guild Inc. v. LJOW Holdings LLC, 82 USPQ2d 1901, 1904 (TTAB 2007). Because of the lack of context for opposer's sales and advertising figures, and the manner in which the mark is displayed in many of the advertisements and packaging for the product, we find that opposer has not met this burden.
  • The fact that opposer has received this publicity in a trade paper is not significant in terms of showing that the general public is familiar with opposer's logo.
    • Morgan Creek Productions, Inc. v. Foria International, Inc., Opposition No. 91173806 (TTAB 2009)
      • The record contains no information as to whether The Hollywood Reporter singled out opposer for this issue because of its reputation in the industry, or whether it does this for many companies as a revenue-raising technique. In any event, the fact that opposer has received this publicity in a trade paper is not significant in terms of showing that the general public is familiar with opposer's logo.
  • The TTAB may turn first to consider the factor of fame, since when fame is present it plays a dominant role in the determination of likelihood of confusion.
    • Morgan Creek Productions, Inc. v. Foria International, Inc., Opposition No. 91173806 (TTAB 2009)
      • We turn first to consider the factor of fame, since when fame is present it plays a dominant role in the determination of likelihood of confusion. See Bose Corp. v. QSC Audio Products Inc., 293 F.3d 1367, 63 USPQ2d 1303, 1305 (Fed. Cir. 2002); Recot Inc. v. M.C. Becton, 214 F.3d 1322, 54 USPQ2d 1894, 1897 (Fed. Cir. 2000); Kenner Parker Toys, Inc. v. Rose Art Industries, Inc., 963 F.2d 350, 22 USPQ2d 1453, 1456 (Fed. Cir. 1992).
  • Fame may be measured indirectly by the volume of sales and advertising expenditures of the goods and services identified by the marks at issue, by the length of time those indicia of commercial awareness have been evident, widespread critical assessments and notice by independent sources of the products identified by the marks, as well as the general reputation of the products and services.
    • Lacoste Alligator S.A. v. Maxoly, Inc., Opposition No. 91177866 (TTAB 2009)
      • Fame may be measured indirectly by the volume of sales and advertising expenditures of the goods and services identified by the marks at issue, "by the length of time those indicia of commercial awareness have been evident," widespread critical assessments and notice by independent sources of the products identified by the marks, as well as the general reputation of the products and services. Bose Corp. v. QSC Audio Products Inc., 63 USPQ2d at 1305-1306 and 1309.
  • Fame, if it exists, plays a dominant role in the likelihood of confusion analysis because famous marks enjoy a broad scope of protection or exclusivity of use. A famous mark has extensive public recognition and renown.
    • Lacoste Alligator S.A. v. Maxoly, Inc., Opposition No. 91177866 (TTAB 2009)
      • This du Pont factor requires us to consider the fame of opposer's of marks. Fame, if it exists, plays a dominant role in the likelihood of confusion analysis because famous marks enjoy a broad scope of protection or exclusivity of use. A famous mark has extensive public recognition and renown. Bose Corp. v. QSC Audio Products Inc., 293 F.3d 1367, 63 USPQ2d 1303, 1305 (Fed. Cir. 2002); Recot Inc. v. M.C. Becton, 214 F.3d 1322, 54 USPQ2d 1894, 1897 (Fed. Cir. 2000); Kenner Parker Toys, Inc. v. Rose Art Industries, Inc., 963 F.2d 350, 22 USPQ2d 1453, 1456 (Fed. Cir. 1992).
  • Discussion of importance for providing context for produciton ad sales figures.
    • Morgan Creek Productions, Inc. v. Foria International, Inc., Opposition No. 91173806 (TTAB 2009)
      • The length of use and the numbers provided by opposer seem substantial at first glance. However, in the slightly more than twenty years it has been in business, opposer has produced 34 movies.16 It is not clear from the record whether this would be considered a small number of films compared to the total number of films that are distributed in the United States each year. Nor has opposer provided evidence as to how the attendance for its films compares to the attendance for other films. Opposer has provided no context for these numbers in terms of comparing the sales figures over the same period with those of others, or comparing the number of movies opposer produces with the number of films produced each year, or showing opposer's market share compared with that of other production companies or motion picture studios, or even comparing opposer's annual advertising expenditures with those of other production companies or movie studios.
Safer, Inc. v. OMS Investments, Inc., Opposition No. 91176445 (TTAB 2010) Eveready Battery Company, Inc. v. Green Planet, Inc., Opposition No. 91180015 (TTAB 2009) UMG Recordings, Inc., substituted for Universal Music Group v. Charles O'Rourke, Opposition No. 91178937 (TTAB 2009) In re Davey Products Pty Ltd., Serial No. 77029776 (TTAB 2009) Morgan Creek Productions, Inc. v. Foria International, Inc., Opposition No. 91173806 (TTAB 2009) Lacoste Alligator S.A. v. Maxoly, Inc., Opposition No. 91177866 (TTAB 2009) The H.D. Lee Company, Inc. v. Maidenform, Inc., Opposition No. 91168309 (TTAB 2008) Boston Red Sox Baseball Club Limited Partnership v. Brad Francis Sherman, Opposition No. 91172268 (TTAB 2008) 7-Eleven, Inc. v. Lawrence I. Wechsler, Opposition No. 91117739, (TTAB 2007) Apple Computer v.TVNET.net, Inc., Opposition No. 91168875, (TTAB 2007) Barbara's Bakery, Inc. v. Barbara Landesman, Opposition No. 91157982, (TTAB 2007) Fort James Operating Company v. Royal Paper Converting, Inc., Opposition No. 91122964, (TTAB 2007) Jansen Enterprises, Inc. v. Israel Rind and Stuart Stone, Cancellation No. 92042871, (TTAB 2007) Leading Jewelers Guild, Inc. v. LJOW Holdings, LLC, Opposition No. 91160856, (TTAB 2007) Miss Universe L.P., LLLP v. Community Marketing, Inc., Opposition No. 91160627, (TTAB 2007) Motion Picture Association of America, Inc. v. Respect Sportswear, Inc., Opposition No. 91153141, (TTAB 2007) Nike, Inc. v. WNBA Enterprises, LLC, Opposition No. 91160755, 91160763, (TTAB 2007) Parfums de Coeur, Ltd. v. Lory Lazarus, Opposition No. 91161331, (TTAB 2007) ProQuest Information and Learning Company v. Jacques R. Island, Opposition No. 91158016, (TTAB 2007) Schering-Plough HealthCare Products, Inc. v. Ing-Jing Huang, Opposition No. 91117558, (TTAB 2007) The B.V.D. Licensing Corporation v. Florencio Rodriguez, Opposition No. 91157529, (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) Chicago Bears Football Club, Inc. and NFL Properties LLC v. 12TH Man/Tennessee LLC, Opposition No. 91150925, (TTAB 2007) Starbucks U.S. Brands, LLC and Starbucks Corporation d.b.a. Starbucks Coffee Company v. Marshall S. Ruben, Opposition No. 91156879, (TTAB 2006) Blue Man Productions, Inc. v. Erich Tarmann, Opposition No. 91154055, (TTAB 2005) DC Comics v. Pan American Grain Mfg. Co. Inc., Opposition No. 91125404, (TTAB 2005) Baseball America, Inc. v. Powerplay Sports, Ltd., Opposition No. 91120166, (TTAB 2004) Genesco Inc. and Genesco Brands Inc. v. Gregory Martz, Opposition No. 121,296, (TTAB 2003) In re Microsoft Corporation, Serial No. 78/013678, (TTAB 2003) The NASDAQ Stock Market, Inc. v. Antartica, S.r.l., Opposition No. 91121204, (TTAB 2003) INTERLEGO AG and LEGO SYSTEMS, INC. and KIRKBI AG v. ABRAMS/GENTILE ENTERTAINMENT, INC. and MJJ MULTIMEDIA LLC, Opposition No. 103,612, (TTAB 2002) Time Warner Entertainment Company L.P. v. Karen L. Jones, Opposition No. 112,409, (TTAB 2002) The Sports Authority Michigan, Inc. v. The PC Authority, Inc., Opposition No. 113,785, (TTAB 2001) The Toro Company v. ToroHead, Inc., Opposition No. 114,061, (TTAB 2001) Grand Total
Leading Jewelers Guild Inc. v. LJOW Holdings LLC, 82 USPQ2d 1901 (TTAB 2007) 3
In re Big Pig Inc., 81 USPQ2d 1436 (TTAB 2006)
In re Thomas, 79 USPQ2d 1021 (TTAB 2006)
Blue Man Productions Inc. v. Tarmann, 75 USPQ2d 1811 (TTAB 2005) 2
Carefirst of Maryland Inc. v. FirstHealth of the Carolinas Inc., 77 USPQ2d 1492 (TTAB 2005) 2
Palm Bay Import Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689 (Fed. Cir. 2005) 8
Bose Corp. v. QSC Audio Prods., 293 F.3d 1367, 63 USPQ2d 1303 (Fed. Cir. 2002) 22
Sports Authority Michigan Inc. v. PC Authority Inc., 63 USPQ2d 1782 (TTAB 2002)
TCPIP Holding Co. v. Haar Communications Inc., 244 F.3d 88, 57 USPQ2d 1971 (2d Cir. 2001)
Toro Co. v. ToroHead Inc., 61 USPQ2d 1164 (TTAB 2001) 5
In re Gartside, 203 F.3d 1305 (Fed. Cir. 2000)
Packard Press Inc. v. Hewlett- Packard Co., 227 F.3d 1352, 56 USPQ2d 1351 (Fed. Cir. 2000) 2
Recot Inc. v. M.C. Becton, 214 F.3d 1322, 54 USPQ2d 1894 (Fed. Cir. 2000) 25
Dickinson v. Zurko, 527 U.S. 150, 50 USPQ2d 1930 (1999)
Fossil Inc. v. Fossil Group, 49 USPQ2d 1451 (TTAB 1998) 2
Hard Rock Cafe Licensing Corp. v. Elsea, 48 USPQ2d 1400 (TTAB 1998)
I.P. Lund Trading ApS v. Kohler Co., 163 F.3d 27, 47 USPQ2d 1225 (1st Cir. 1998)
The Sports Authority Inc. v. Prime Hospitality Corp., 89 F.3d 955, 39 USPQ2d 1511 (2d Cir. 1996)
Turner Entertainment Co. v. Nelson, 38 USPQ2d 1943 (TTAB 1996) 3
Century 21 Real Estate Corp. v. Century Life of America, 970 F.2d 874, 23 USPQ2 14698 (Fed. Cir. 1992) 3
General Mills Inc. v. Health Valley Foods, 24 USPQ2d 1270 (TTAB 1992) 3
Jockey International Inc. v. Mallory & Church Corp., 25 USPQ2d 1233 (TTAB 1992)
Kenner Parker Toys Inc. v. Rose Art Industries Inc., 963 F.2d 350, 22 USPQ2d 1453 (Fed. Cir. 1992) 24
In re Bongrain International Corp., 894 F.2d 1316, 13 USPQ2d 1727 (Fed. Cir. 1990)
Nina Ricci S.A.R.L. v. E.T.F. Enterprises Inc., 889 F.2d 1070, 12 USPQ2d 1901 (Fed. Cir. 1989)
B.V.D. Licensing Corp. v. Body Action Design Inc., 846 F.2d 727, 6 USPQ2d 1719 (Fed. Cir. 1988) 2
In re Societa Generale des Eaux Minerals de Vittel S.A., 824 F.2d 957, 3 USPQ2d 1450 (Fed. Cir. 1987)
Berghoff Restaurant Co. v. Washington Forge Inc., 225 USPQ 603 (TTAB 1985)
Kimberly-Clark Corp. v. H. Douglas Enterprises, Ltd., 774 F.2d 1144, 227 USPQ 541 (Fed. Cir. 1985)
Land O'Lakes Inc. v. Land O'Frost Inc., 224 USPQ 1022 (TTAB 1984) 2
Specialty Brands Inc. v. Coffee Bean Distributors Inc., 748 F.2d 669, 223 USPQ 1281 (Fed. Cir. 1984) 2
Giant Food Inc. v. Nation's Foodservice Inc., 710 F.2d 1565, 218 USPQ 390 (Fed. Cir. 1983)
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) 4
In re Lar Mor International, Inc., 221 USPQ 180 (TTAB 1983)
Dymo Industries Inc. v. Schramm Inc., 181 USPQ 540 (TTAB 1974)
Planters Nut & Chocolate Co. v. Crown Nut Co., 305 F.2d 916, 134 USPQ 504 (CCPA 1962)
Milwaukee Nut Co. v. Brewster Food Service, 277 F.2d 190, 125 USPQ 399 (CCPA 1960)
Sure-fit Products Co. v. Saltzson Drapery Co., 254 F.2d 158, 117 USPQ 295 (CCPA 1958)
Grand Total 4 2 3 2 4 8 5 2 8 1 2 3 3 3 4 3 6 1 4 4 3 7 3 3 9 11 1 3 4 1 4 1 4 6 3 135
No Statutes Listed

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