`Trademark Trial and Appeal Board
`P.O. Box 1451
`Alexandria, VA 22313-1451
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`Mailed: March 24, 2009
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`Opposition No. 91183146
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`Stokely-Van Camp, Inc.
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`v.
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`William Wooten
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`THIS OPINION IS NOT A
`PRECEDENT OF THE TTAB
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`Baxley
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`Before Holtzman, Cataldo, and Ritchie,
`Administrative Trademark Judges.
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`By the Board:
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`William Wooten ("applicant") filed an application to
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`register HATER-AID in standard character form for "Aerated
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`water; Mineral water; Sparkling water; Colas; Concentrates,
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`syrups or powders used in the preparation of soft drinks;
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`Fruit-flavored drinks; Isotonic drinks; Pop; Powders used in
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`the preparation of isotonic sports drinks and sports
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`beverages; Soft drinks; Sports drinks; Syrups for making
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`soft drinks; Energy drinks; Fruit drinks; Fruit flavored
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`soft drinks" in International Class 32.1
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`Stokely-Van Camp, Inc. ("opposer") filed a notice of
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`opposition to registration of applicant's mark on grounds of
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`likelihood of confusion with its previously registered marks
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`1 Application Serial No. 77210492, filed June 20, 2007, based on
`an assertion of a bona fide intent to use the mark in commerce
`under Trademark Act Section 1(b), 15 U.S.C. Section 1051(b).
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`Opposition No. 91183146
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`which include the word GATORADE for beverage and food
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`products, including sports energy drinks and soft drinks,
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`and for dilution of those marks.2
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`Applicant, in his answer, admitted, among other things,
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`that opposer has prior use of its pleaded marks "in
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`connection with beverage and food products, including sports
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`energy drinks and soft drinks;" that opposer has registered
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`its GATORADE mark and is the owner of thirteen registrations
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`for marks which include the word GATORADE for beverage
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`products; that, since prior to the filing of his
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`application, opposer's GATORADE mark has been both
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`distinctive and famous; and that applicant adopted his
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`involved mark with the knowledge of opposer's GATORADE marks
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`and products. In the answer, applicant denied only that
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`2 Opposer's pleaded registrations include:
` Registration No. 848245 for the mark GATORADE in typed form for
`"fruit flavored soft drink and powder for making the same" in
`International Class 32, issued April 30, 1968, renewed twice;
` Registration No. 1410822 for the mark GATORADE THIRST QUENCHER
`and design in the following form
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`for "thirst quenching soft drink and powder for making the same"
`in International Class 32, issued September 23, 1986, renewed;
`the wording THIRST QUENCHER is disclaimed; and
` Registration No. 2637355 for the mark GATORADE PERFORMANCE
`SERIES in typed form for "non-alcoholic, non-carbonated sports
`drinks" in International Class 32, issued October 15, 2002,
`Section 8 affidavit accepted, Section 15 affidavit acknowledged;
`the wording PERFORMANCE SERIES is disclaimed.
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`2
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`Opposition No. 91183146
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`there is a likelihood of confusion between the marks and
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`that use of applicant's mark is likely to dilute the
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`distinctive quality of opposer's GATORADE mark. In
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`addition, applicant asserted affirmative defenses, including
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`that "the intended use of the mark is to parody Opposer's
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`mark" and that "applicant takes care not to use any portion
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`of Opposer's mark or design in [an] effort to ensure that
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`the marks are distinctive from one another so as not to run
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`the risk of diluting Opposer's mark."
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`This case now comes up for consideration of opposer's
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`motion (filed December 8, 2008) for summary judgment on its
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`pleaded grounds of priority/likelihood of confusion and
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`dilution. The motion has been fully briefed.
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`Summary judgment is an appropriate method of disposing
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`of cases in which there are no genuine issues of material
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`fact in dispute, thus leaving the case to be resolved as a
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`matter of law. See Fed. R. Civ. P. 56(c). The party moving
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`for summary judgment has the initial burden of demonstrating
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`that there is no genuine issue of material fact remaining
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`for trial and that it is entitled to judgment as a matter of
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`law. See Celotex Corp. v. Catrett, 477 U.S. 317 (1987);
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`Sweats Fashions Inc. v. Pannill Knitting Co. Inc., 833 F.2d
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`1560, 4 USPQ2d 1793 (Fed. Cir. 1987). The nonmoving party
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`must be given the benefit of all reasonable doubt as to
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`whether genuine issues of material fact exist, and the
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`3
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`Opposition No. 91183146
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`evidentiary record on summary judgment, and all inferences
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`to be drawn from the undisputed facts, must be viewed in the
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`light most favorable to the nonmoving party. See Opryland
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`USA, Inc. v. Great American Music Show, Inc., 970 F. 2d 847,
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`23 USPQ2d 1471 (Fed. Cir. 1992).
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`As a party moving for summary judgment in its favor on
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`a Section 2(d) claim, opposer must establish that there is
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`no genuine dispute that (1) it has standing to maintain this
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`proceeding; (2) that it is the prior user of its pleaded
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`marks; and (3) that contemporaneous use of the parties'
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`respective marks on their respective goods would be likely
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`to cause confusion, mistake or to deceive consumers. See
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`Hornblower & Weeks, Inc. v. Hornblower & Weeks, Inc., 60
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`USPQ2d 1733, 1735 (TTAB 2001).
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`With regard to whether opposer has standing to maintain
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`this proceeding, applicant has not challenged opposer's
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`standing to cancel the involved registration. In any event,
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`the copies of opposer's registrations for marks including
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`the word GATORADE that were obtained from the USPTO's
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`Trademark Applications and Registrations Retrieval (TARR)
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`database that were submitted as exhibits to opposer's notice
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`of opposition and which show that the registrations are
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`valid and subsisting and owned by opposer are sufficient to
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`establish opposer's standing in this case. See Trademark
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`Rule 2.122(d)(1); Cunningham v. Laser Golf Corp., 222 F.3d
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`4
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`Opposition No. 91183146
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`943, 55 USPQ2d 1842, 1844 (Fed. Cir. 2000). No genuine
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`issue of material fact exists on this issue.
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`Furthermore, because opposer's valid and subsisting
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`registrations are of record, priority is not in issue.
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`King Candy Co., Inc. v. Eunice King's Kitchen, Inc., 496
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`F.2d 1400, 182 USPQ 108 (CCPA 1974). We also note that in
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`his answer, applicant responded to paragraph 2 of the notice
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`of opposition, wherein opposer alleged that, "[s]ince long
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`prior to the filing date of the application opposed herein,
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`opposer has used the mark GATORADE and other GATORADE marks
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`in connection with beverage and food products, including
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`sports energy drinks and soft drinks," and paragraph 3 of
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`the notice of opposition, wherein opposer alleged that it
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`has registered the GATORADE mark and owns thirteen
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`registrations for marks which include the word GATORADE for
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`"beverage products," with admissions of such allegations.
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`These admissions of fact are conclusive as to the issue of
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`priority. See Brown Company v. American Stencil
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`Manufacturing Company, Inc., 180 USPQ 344, 345 n. 5 (TTAB
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`1973) (admission during pleading results in estoppel
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`precluding ability to prove anything to the contrary).
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`In determining the issue of likelihood of confusion
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`and, in this case, whether there is any genuine issue of
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`material fact relating thereto, we take under consideration
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`all of the du Pont factors which are relevant under the
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`5
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`Opposition No. 91183146
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`present circumstances and for which there is evidence of
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`record. See E.I. du Pont de Nemours & Co., 476 F.2d 1357,
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`177 USPQ 563 (CCPA 1973).
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`We note initially that, in his answer, applicant
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`responded to paragraph 6 of the notice of opposition,
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`wherein opposer alleged that its pleaded "GATORADE mark is a
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`famous mark and has been a famous mark since prior to the
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`filing date of the application opposed herein" with an
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`admission thereof. This admission of fact is conclusive as
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`to the issue of fame of the GATORADE mark. See Brown
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`Company v. American Stencil Manufacturing Company, Inc.,
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`supra.
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`As noted by our principal reviewing court in Kenner
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`Parker Toys Inc. v. Rose Art Industries Inc., 963 F.2d 350,
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`22 USPQ2d 1453, 1456 (Fed. Cir. 1992), cert. denied, 506
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`U.S. 862, 113 S.Ct. 181 (1992), "the fifth duPont factor,
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`fame of the prior mark, plays a dominant role in cases
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`featuring a famous or strong mark. Famous or strong marks
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`enjoy a wide latitude of legal protection." The Federal
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`Circuit reiterated these principles in Recot Inc. v. M.C.
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`Becton, 214 F.3d 1322, 54 USPQ2d 1894, 1897 (Fed. Cir.
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`2000), stating that "the fifth DuPont factor, fame of the
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`prior mark, when present, plays a 'dominant' role in the
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`process of balancing the DuPont factors," citing, inter
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`alia, Kenner Parker Toys, 22 USPQ2d at 1456, and reaffirmed
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`6
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`Opposition No. 91183146
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`that "[f]amous marks thus enjoy a wide latitude of legal
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`protection." This broader protection is accorded because
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`the marks are more likely to be remembered and associated in
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`the public mind than a weaker mark. Recot at 54 USPQ2d
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`1897. Under this reasoning, opposer’s GATORADE mark
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`is accorded this broad scope of protection, and applicant's
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`assertion that confusion is unlikely because of the fame of
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`opposer's GATORADE mark is contrary to established precedent
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`and unpersuasive. Thus, we find no genuine issue that
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`opposer’s pleaded marks are famous.
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`Considering next the goods and services involved, we
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`note that the goods identified in applicant's application
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`and some of opposer's pleaded registrations are overlapping.
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`For example, applicant's application includes "powders used
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`in the preparation of soft drinks" and "[f]ruit flavored
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`soft drinks" in the identification of goods, while the
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`identification of goods in opposer's oldest pleaded
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`registration, Registration No. 848245 for the mark GATORADE
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`in typed form, is "fruit flavored soft drink and powder for
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`making same." Thus, there is no genuine issue that the
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`goods are identical in part.
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`Furthermore, there are no restrictions regarding trade
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`channels in the identifications of goods of applicant's
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`application or opposer's pleaded registrations. Because
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`there are no such limitations, we must presume that the
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`7
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`Opposition No. 91183146
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`goods of each would be offered in all the normal channels of
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`trade for goods of this nature and to the normal classes of
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`purchasers. See Canadian Imperial Bank v. Wells Fargo Bank,
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`811 F.2d 1490, 1 USPQ2d 1813 (Fed. Cir. 1987). Thus, and
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`further because the goods are identical in part, we find no
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`genuine issue that the recited goods will be provided in the
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`same channels of trade to the same class of purchasers.
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`Considering now the similarity or dissimilarity of the
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`respective marks, we note that in cases where the
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`plaintiff’s mark is famous and the goods and services are in
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`part identical, the degree of similarity between the marks
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`necessary to support a finding of likelihood of confusion
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`declines. See, e.g., Nina Ricci, S.A.R.L. v. E.F.T.
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`Enterprises, Inc., 889 F.2d 1070 (Fed. Cir. 1989), 12 USPQ2d
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`1901 (Fed. Cir. 1989); Century 21 Real Estate Corp. v.
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`Century Life of America, 970 F.2d 874, 877, 23 USPQ2d 1698,
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`1701 (Fed. Cir. 1992), cert denied, 506 U.S. 1034 (1992).
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`Herein, we find that the pronunciations of opposer's
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`GATORADE mark and applicant's HATER-AID mark are identical
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`in sound, except for the first letter of each mark. While
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`we acknowledge differences in the connotation and commercial
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`impressions of the marks at issue, the nearly identical
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`sounds of the respective marks is sufficient to give those
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`marks a strong similarity. See Krim-Ko Corp. v. The Coca-
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`8
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`Opposition No. 91183146
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`Cola Co., 156 USPQ 523 (CCPA 1968) (BEEP found confusingly
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`similar to VEEP).
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`Keeping in mind that famous marks, such as opposer's
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`GATORADE mark are accorded a wide latitude of protection, we
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`do not find the distinctions between the marks sufficient to
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`obviate the strong similarity between them. See Recot Inc.
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`v. M.C. Becton, supra (Board must consider the similarity or
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`dissimilarity of the marks in their entireties with respect
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`to appearance, sound and connotation, not simply difference
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`in connotation between FIDO LAY and FRITOLAY). As a result,
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`we find no genuine issue that applicant’s HATER-AID mark is
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`highly similar to opposer’s GATORADE marks.
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`In short, every du Pont factor that we have considered
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`supports a finding of likelihood of confusion. Moreover,
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`applicant, in his answer, admitted in response to paragraph
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`9 of the notice of opposition that he adopted the HATER-AID
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`mark with knowledge of opposer's GATORADE marks and
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`products. As stated by the Court in Kenner Parker Toys,
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`Inc. v. Rose Art Industries, Inc., supra at 1456 (citations
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`omitted), "there is no excuse for even approaching the well-
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`known trademark of a competitor...."
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`Applicant has asserted parody as a defense herein. In
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`particular, applicant contends that his HATER-AID mark is a
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`"blatant parody" of opposer's GATORADE mark and that his
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`mark is "intended to illustrate the rivalry between" the
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`9
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`Opposition No. 91183146
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`University of Florida Gators, for whom the GATORADE beverage
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`was first invented, and the University of Tennessee
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`Volunteers and "to parody a product that has become famous
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`for supporting the Gators." Applicant's brief at 3.
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`However, applicant has volunteered no evidence of the extent
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`to which the relevant purchasing public, i.e., purchasers in
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`all the normal channels of trade for goods of this nature,
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`are aware either of the origins of opposer's GATORADE mark,
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`or the rivalry between the University of Florida and
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`University of Tennessee.3 Although applicant relies upon
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`one of his product labels to show the intended parody and
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`the context in which his mark is used, we must determine
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`likelihood of confusion based solely on the marks at issue
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`without regard to additional matter with which those marks
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`are used. See Interstate Brands Corp. v. McKee Foods Corp.,
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`53 USPQ2d 1910, 1914-15 (TTAB 2000).
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`3 Applicant submitted as exhibits in support of his brief in
`opposition line-saved excerpts, as opposed to actual printouts,
`from the internet websites www.gatorade.com and www.sfgate.com
`that are intended to show the origins of opposer's GATORADE mark.
`However, these excerpts are not properly authenticated by a
`declaration of the person who accessed these websites and are
`therefore not properly before the Board. See Raccioppi v. Apogee
`Inc., 47 USPQ2d 1368 (TTAB 1998).
` Applicant also submitted line-saved copies of dictionary
`definitions of the word "hater," which were obtained from
`http://dictionary.reference.com,
`http://slangdictionary/forgematrix.com and
`www.urbandictionary.com. Of these definitions, only the
`definition from http://dictionary.reference.com is indicated to
`exist in a printed format. See In re CyberFinancial.Net Inc., 65
`USPQ2d 1789 (TTAB 2002). Further, opposer submitted an actual
`printout of that definition, which indicates that such definition
`is for the word "hate" and not for the word "hater."
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`10
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`Opposition No. 91183146
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`Moreover, because opposer has established trademark
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`rights in the admittedly famous GATORADE mark, any claim
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`applicant may make to the use of his HATER-AID mark as a
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`parody is not a true "defense." Even if we assume that
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`applicant's HATER-AID mark parodies opposer's GATORADE mark,
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`that is not enough to prevent likelihood of confusion in
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`this case. See Elvis Presley Enterprises Inc. v. Capece,
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`141 F.3d 188, 46 USPQ2d 1737, 1744 (5th Cir. 1998); Dr.
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`Seuss Enterprises L.P. v. Penguin Books USA, 109 F.3d 1394,
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`42 USPQ2d 1184, 1193 (9th Cir. 1977). As stated by the
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`Board in Columbia Pictures Industries, Inc. v. Miller, 211
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`USPQ 816 (TTAB 1981): "The right of the public to use words
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`in the English language in a humorous and parodic manner
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`does not extend to use of such words as trademarks if such
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`use conflicts with the prior use and/or registration of the
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`substantially same mark by another." See also Hard Rock
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`Café Licensing Corp. v. Pacific Graphics, Inc., 776 F.Supp.
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`1454, 1462, 21 USPQ2d 1368, 1374 (W.D. Wash. 1991);
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`Starbucks U.S. Brands, LLC and Starbucks Corporation D.B.A.
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`Starbucks Coffee Company v. Marshall S. Ruben, 78 USPQ2d1741
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`(TTAB 2006). We accordingly find that opposer has carried
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`its burden of proof that no genuine issues of material fact
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`remain as to likelihood of confusion and that opposer is
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`entitled to judgment as a matter of law on that claim.
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`11
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`Opposition No. 91183146
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`In view thereof, opposer's motion for summary judgment
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`in its favor is granted with regard to the
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`priority/likelihood of confusion claim. Having found that
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`opposer is entitled to summary judgment on the issue of
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`priority and likelihood of confusion, we need not and do not
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`reach opposer’s claim of dilution.
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`Judgment is hereby entered against applicant, the opposition
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`is sustained, and registration to applicant is refused.
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`12