`PRECEDENT OF THE TTAB
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`Oral Hearing:
`October 20, 2011
`
` Mailed:
` May 14, 2012
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____
`
`Trademark Trial and Appeal Board
`______
`
`PRL USA Holdings, Inc.
`v.
`Thread Pit, Inc.
`_____
`
`
`
`
`
`Cancellation No. 92047436
`_____
`
`Scott Gelin, G. Roxanne Elings and Anna Dalla Val of
`Greenberg Traurig, LLP for PRL USA Holdings, Inc.
`
`Howard A. Caplan of Lewis Longman & Walker PA for Thread
`Pit, Inc.
`
`______
`
`Before Kuhlke, Bergsman and Wolfson, Administrative
`Trademark Judges.
`
`Opinion by Kuhlke, Administrative Trademark Judge:
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`PRL USA Holdings, Inc. (petitioner) has petitioned to
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`
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`cancel Registration No. 3180680 owned by Thread Pit, Inc.
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`(respondent) for the mark shown below for goods identified
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`as “t-shirts and collared polo shirts,” in International
`
`Class 25.1
`
`
`1 The registration issued on December 5, 2006 from the underlying
`application filed on January 19, 2006.
`
`
`
`Cancellation No. 92047436
`
`
`
`
`
`As grounds for cancellation petitioner asserts the
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`claim of likelihood of confusion under Section 2(d) of the
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`Trademark Act, 15 U.S.C. § 1052(d) and dilution under
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`Section 43(c) of the Trademark Act, 15 U.S.C. § 1125. In
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`connection with these claims, petitioner alleges that it
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`owns several registrations for the Polo Player mark shown
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`below and several marks incorporating the word POLO for a
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`variety of clothing and accessory items and that its marks
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`have become famous prior to respondent’s use of its mark.
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`
`
`
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`Respondent filed an answer by which it admitted to
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`petitioner’s ownership of the pleaded registrations, that
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`its goods are “the same as some of the goods contained in
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`[petitioner’s pleaded] registrations” but otherwise denied
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`the salient allegations. In addition, respondent asserted
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`as an affirmative defense that its “use of its mark is a
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`parody of certain of [respondent’s] marks.” The remaining
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`2
`
`
`
`Cancellation No. 92047436
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`“affirmative defenses” simply serve to amplify its general
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`defense that there is no likelihood of confusion.
`
`THE RECORD
`
`The evidence of record consists of the pleadings; the
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`file of the subject registration; petitioner’s testimony by
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`declaration2 with accompanying exhibits A-G of Ellen Brooks,
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`Director, U.S. Trademark Enforcement for respondent’s parent
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`company Polo Ralph Lauren Corporation; petitioner’s notices
`
`of reliance on respondent’s responses to certain discovery
`
`requests, excerpts from the discovery deposition of Nicholas
`
`Lynn Moskowitz, printed publications, its pleaded
`
`registrations, and court decisions wherein the Polo Player
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`design mark was found inherently distinctive and famous;
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`respondent’s testimony by declaration with accompanying
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`exhibits A-D of Nicholas Moskowitz, respondent’s President
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`and owner; respondent’s notices of reliance on its subject
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`registration3 and certain of petitioner’s discovery
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`responses. Petitioner also submitted a rebuttal declaration
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`from Ellen Brooks which is the subject of an objection from
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`respondent addressed below.
`
`
`2 Upon stipulation of the parties, filed January 21, 2010,
`testimony was submitted by declaration.
`
` 3
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` For future reference, respondent is advised that this was
`unnecessary inasmuch as the subject registration “forms part of
`the record of the proceeding without any action by the parties
`and reference may be made to the file for any relevant and
`competent purpose.” Trademark Rule 2.122(b).
`
`3
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`
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`Cancellation No. 92047436
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`In addition, the parties submitted under stipulation
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`several documents including excerpts from petitioner’s and
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`respondent’s websites, articles from printed publications,
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`petitioner’s advertising, and petitioner’s annual reports.
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`Both parties filed briefs; however, respondent did not
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`attend the oral hearing.
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`EVIDENTIARY ISSUE
`
`
`
`As a preliminary matter, we take up for consideration
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`respondent’s objection, made in its main trial brief, to the
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`rebuttal declaration of Ellen Brooks. Respondent states
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`that it was never served with a copy of this declaration.
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`The filing with the Board does not include a certificate of
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`service. In addition, petitioner did not submit any
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`argument in response; therefore, respondent’s assertion that
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`the declaration was not served stands unrebutted. Every
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`paper filed with the Board must be served upon the other
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`parties and proof of service must be made before a paper
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`will be considered. Trademark Rule 2.119(a). In view
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`thereof, the May 24, 2010, declaration of Ellen Brooks is
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`hereby stricken from the record.
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`PRIORITY/STANDING
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`Because petitioner has made its pleaded registrations
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`of record and has shown that the registrations are valid and
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`subsisting and owned by petitioner, petitioner has
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`established its standing to cancel respondent’s registration
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`4
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`
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`Cancellation No. 92047436
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`and its priority is not in issue. See King Candy Co., Inc.
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`v. Eunice King’s Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108
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`(CCPA 1974).
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`Accordingly, we turn to the question of likelihood of
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`confusion.
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`LIKELIHOOD OF CONFUSION
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`Petitioner only made some of its pleaded registrations
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`of record by notice of reliance.4 The most relevant are set
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`forth as follows:
`
`Registration No. 2823094 for the mark shown below
`for “tote bags” in International Class 18 and
`“wearing apparel, namely, sweaters and t-shirts”
`in International Class 25, issued March 16, 2004,
`Section 8 and 15 affidavit accepted and
`acknowledged;
`
`
`
`
`
`
`Registration No. 3199839 for the mark shown below
`for “wearing apparel, namely, jackets,
`
`
`4 The printouts of registrations from TESS, the USPTO electronic
`database, attached to the pleading are not sufficient to make the
`remaining registrations of record because the petition for
`cancellation was filed on April 25, 2007, prior to the November
`1, 2007 Trademark Rules amendments. Moreover, respondent’s
`answer only serves as an admission to petitioner’s ownership and
`not to the status of the pleaded registrations. In addition,
`petitioner introduced into the record certain of its
`registrations that it did not plead. With regard to these
`registrations, we only consider them in connection with
`petitioner’s allegation of fame and not for priority or reliance
`on other Section 7(b) presumptions.
`
`5
`
`
`
`Cancellation No. 92047436
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`sweatshirts, sweat pants, hats, scarves, jerseys,
`jeans, turtlenecks and bikinis” in International
`Class 25, issued January 16, 2007.
`
`
`
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`For our determination of likelihood of confusion in
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`
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`this cancellation, we focus our decision on Reg. No. 2823094
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`for the Polo Player mark and above-noted clothing items,
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`specifically, t-shirts. If we do not find likelihood of
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`confusion with respect to the mark in this registration for
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`in part identical goods, then there would be no likelihood
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`of confusion with respect to the marks and goods in
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`petitioner’s other registrations. See In re Max Capital
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`Group Ltd., 93 USPQ2d 1243, 1245 (TTAB 2010).
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`Our likelihood of confusion determination under Section
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`2(d) is based on an analysis of all of the probative facts
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`in evidence that are relevant to the factors set forth in In
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`re E. I. du Pont de Nemours and Co., 476 F.2d 1357, 177 USPQ
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`563 (CCPA 1973). See also, In re Majestic Distilling Co.,
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`Inc., 315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir. 2003).
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`Petitioner presented evidence and argument on the
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`factors of the relatedness of the goods, channels of trade
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`6
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`Cancellation No. 92047436
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`and classes of purchasers, the similarity of the marks,
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`respondent’s intent, and the fame of its mark.
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`We begin with the factor of fame because fame “plays a
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`‘dominant’ role in the process of balancing the du Pont
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`factors.” Recot Inc. v. Becton, 214 F.3d 1322, 54 USPQ2d
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`1894, 1897 (Fed. Cir. 2000). “[T]he fame of a mark may be
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`measured indirectly, among other things, by the volume of
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`sales and advertising expenditures of the goods traveling
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`under the mark, and by the length of time those indicia of
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`commercial awareness have been evident.” Bose Corp. v. QSC
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`Audio Products, Inc., 293 F.3d 1367, 63 USPQ2d 1303, 1305
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`(Fed. Cir. 2002).
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`The record shows that petitioner owns seven
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`registrations that include the Polo Player mark, and has
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`been using the Polo Player mark in connection with clothing
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`items, including t-shirts, for over forty years since 1967.
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`Brooks Test. p. 2. Petitioner expends a substantial sum “in
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`promoting the sale of Polo Player products in a wide variety
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`of media and its products are regularly featured in” widely-
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`distributed magazines such as Vogue, Elle, GQ, Fortune,
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`Sports Illustrated, Vanity Fair, Town & Country, Travel &
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`Leisure, Maxim, Rolling Stone, Cosmopolitan, Entertainment
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`Weekly, Oprah and Golf Digest. Id. p. 3. Petitioner is or
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`has been the official sponsor of the following sporting
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`events: Wimbledon, the US Open, and the 2008 and 2010
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`7
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`Cancellation No. 92047436
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`Olympics. Id. Petitioner also sponsors many individual
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`sports figures including Tom Watson, Davis Love III, Jeff
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`Sluman and Luke Donald. Id. p. 4. Petitioner uses its Polo
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`Player mark in connection with these sponsorships. Id.
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`Petitioner sells its Polo Player products at 200 of its
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`stores, in many department and fine retail stores across the
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`United States (e.g., Macy’s, Nordstrom’s, Saks,
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`Bloomingdales), and online at its website and those of other
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`online retailers such as Macys.com and Nordstrom.com. Id.
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`Petitioner’s sales have also been substantial. Id. and
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`Stip. Exh. 58-68.5
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`On this record, we find that petitioner has shown that
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`its Polo Player mark is famous in the field of clothing and,
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`indeed, respondent concedes this factor. Resp. Br. p. 9.
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`See also Pet. Notice of Reliance Exh. B Responses to
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`Petitioner’s Second Set of Requests for Admissions No. 23.
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`In view thereof, petitioner’s mark is entitled to broad
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`protection. Recot, 54 USPQ at 1897. Respondent’s argument
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`that the fame of petitioner’s mark serves to lessen the
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`likelihood of confusion is counter to legal precedent of the
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`Board and the Board’s primary reviewing court, the Court of
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`5 We note that the sales figures are not broken down specifically
`as to the Polo Player mark; however, viewed in the context of the
`record as a whole the Polo Player design is ubiquitous on
`petitioner’s goods and in petitioner’s advertising and
`sponsorships. In view thereof, we infer from this that a
`substantial portion of the sales figures are attributable to
`products with which the Polo Player mark is used.
`
`8
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`Cancellation No. 92047436
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`Appeals for the Federal Circuit. As stated by the Federal
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`Circuit:
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`While scholars might debate as a factual
`proposition whether fame heightens or dulls the
`public’s awareness of variances in marks, the
`legal proposition is beyond debate. The driving
`designs and origins of the Lanham Act demand the
`standard consistently applied by this court –
`namely, more protection against confusion for
`famous marks.
`
`Kenner Parker Toys v. Rose Art Indus., Inc., 963 F.2d 350,
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`22 USPQ2d 1453, 1456 (Fed. Cir. 1992).
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`This brings us then to our consideration of the
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`similarities between petitioner’s and respondent’s goods,
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`channels of trade and classes of purchasers. We must make
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`our determinations under these factors based on the goods as
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`they are recited in the respective registrations. See
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`Octocom Systems Inc. v. Houston Computers Services, Inc.,
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`918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990) (“The
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`authority is legion that the question of registrability of
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`an applicant’s mark must be decided on the basis of the
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`identification of goods set forth in the application
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`regardless of what the record may reveal as to the
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`particular nature of an applicant’s goods, the particular
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`channels of trade or the class of purchasers to which sales
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`of the goods are directed.”); In re Elbaum, 211 USPQ 636
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`(TTAB 1981).
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`Petitioner’s and respondent’s registrations both
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`include t-shirts; thus the goods are in part identical. It
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`9
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`Cancellation No. 92047436
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`is sufficient for a finding of likelihood of confusion if
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`the relatedness is established for any item encompassed by
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`the identification of goods within a particular class in the
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`subject registration. Tuxedo Monopoly, Inc. v. General
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`Mills Fun Group, 648 F.2d 1335, 209 USPQ 986 (CCPA 1981);
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`Baseball America Inc. v. Powerplay Sports Ltd., 71 USPQ2d
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`1844, 1847 n.9 (TTAB 2004). Respondent argues that its
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`registration covers only t-shirts and collared polo shirts
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`whereas petitioner’s various registrations cover a wide
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`variety of clothing goods such that “the scope of goods on
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`which the parties marks appear is so vastly different.” We
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`first note that petitioner’s Registration No. 2823094 only
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`includes sweaters, t-shirts and tote bags. However, even
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`considering petitioner’s other registrations and evidence of
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`use for a wide variety of clothing goods, this does not
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`mitigate the fact that there is an overlap with the
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`identical goods, namely, t-shirts.
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`Moreover, with regard to the channels of trade and
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`classes of purchasers, because the goods are in part
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`identical and there are no restrictions in the
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`identifications as to trade channels and purchasers, we must
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`presume that the parties’ goods would be sold in the same
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`channels of trade and to the same relevant purchasers. See
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`Hewlett-Packard Co. v. Packard Press Inc., 281 F.3d 1261, 62
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`USPQ2d 1001 (Fed. Cir. 2002).
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`10
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`Cancellation No. 92047436
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`In addition, respondent’s arguments regarding the
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`actual conditions of sale are not relevant to our
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`determination. As noted above, we make our determination
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`based on the listed goods in the registrations. Thus, the
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`arguments that petitioner’s goods are expensive and limited
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`to the high end of the market, and the relevant consumers
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`are sophisticated purchasers are not persuasive. Because of
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`the absence of such limitations from the identifications set
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`forth in the registrations we must consider any ordinary
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`channel of trade for t-shirts. See In re Bercut-Vandervoort
`
`& Co., 229 UPSQ 763, 764 (TTAB 1986) (applicant may not
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`restrict scope of the identified goods by extrinsic
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`evidence). Further, we must make our determination based on
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`the least sophisticated consumer for the identified goods,
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`namely, t-shirts. Giersch v. Scripps Networks Inc., 90
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`USPQ2d 1020, 1027 (TTAB 2009) (citing Alfacell Corp. v.
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`Anticancer, Inc., 71 USPQ2d 1301, 1306 (TTAB 2004). In sum,
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`we find that the similarities between petitioner’s and
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`respondent’s goods, channels of trade and classes of
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`purchasers favors a finding of likelihood of confusion.
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`We turn now to a consideration of the first du Pont
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`factor, i.e., whether the parties’ respective Polo Player
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`marks
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` and
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`are similar or dissimilar when
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`compared in their entireties in terms of appearance,
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`11
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`Cancellation No. 92047436
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`connotation and commercial impression.6 We make this
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`determination in accordance with the following principles.
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`The test, under this du Pont factor, is not whether the
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`marks can be distinguished when subjected to a side-by-side
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`comparison, but rather whether the marks are sufficiently
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`similar in terms of their overall commercial impressions
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`that confusion as to the source of the goods offered under
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`the respective marks is likely to result. The focus is on
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`the recollection of the average purchaser, who normally
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`retains a general rather than a specific impression of
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`trademarks. See Sealed Air Corp. v. Scott Paper Co., 190
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`USPQ 106 (TTAB 1975). Further, in view of the fame of
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`petitioner’s mark we keep in mind that a famous mark enjoys
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`a wide scope of protection and “[T]here is no ‘excuse for
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`even approaching the well-known trademark of a competitor.’”
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`Nina Ricci S.A.R.L. v. E.T.F. Enterprises Inc., 889 F.2d
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`1070, 12 USPQ2d 1901, 1904 (Fed. Cir. 1989), quoting,
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`Planter’s Nut & Chocolate Co. v. Crown Nut Co., Inc., 305
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`F.2d 916, 134 USPQ 504, 511 (CCPA 1962). Finally, we are
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`cognizant of the principle that the more closely related the
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`goods are, the less similarity in the marks is required to
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`support a conclusion of likelihood of confusion. Century 21
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`6 We do not consider the element of sound as we are making our
`determination only on petitioner’s design mark.
`
`
`12
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`Cancellation No. 92047436
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`Real Estate Corp. v. Century Life of America, 970 F.2d 874,
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`23 USPQ2d 1698, 1701 (Fed. Cir. 1992).
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`With regard to appearance, we find them to be very
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`similar. The horses are in identical positions with the
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`left front leg curling back and crossing the right rear
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`legs, the reins drape in the same manner, and the mallet
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`extends from the rider at the same angle. In addition, the
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`horses and riders are similarly portrayed in silhouette.
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`Moreover, both marks contain no other elements, either
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`design or words. The only difference in the appearance of
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`the marks is the position of the rider, which in both marks
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`appears as a polo player, where he is depicted as falling
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`off the horse in respondent’s mark. While there may be some
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`difference in commercial impression between the two
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`depictions, as respondent posits, i.e., “a competent in
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`control rider versus a completely out of control rider,” we
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`find the overall commercial impression of the polo player to
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`be very similar. In particular, with regard to such goods
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`where the mark is frequently applied as a small logo in the
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`upper corner of the t-shirt, it requires close inspection to
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`distinguish the different attributes of the rider. Given
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`the fame of petitioner’s mark, the points of similarities in
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`appearance, connotation and commercial impression outweigh
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`the dissimilarities. In view thereof, we find the marks to
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`be similar.
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`13
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`Cancellation No. 92047436
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`Respondent argues that there is no evidence of actual
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`confusion. However, we cannot determine on this record that
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`there has been any meaningful opportunity for actual
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`confusion to have occurred in the marketplace, and
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`accordingly, we cannot conclude that the alleged absence of
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`actual confusion is entitled to much weight in our
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`likelihood of confusion analysis. See Gillette Canada Inc.
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`v. Ranir Corp., 23 USPQ2d 1768 (TTAB 1992). Moreover,
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`evidence of actual confusion is not a prerequisite to
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`finding likelihood of confusion and this factor is neutral
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`as to both parties. Herbko International, Inc. v. Kappa
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`Books, Inc., 308 F.3d 1156, 64 USPQ2d 1375 (Fed. Cir. 2002)
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`(“[A] showing of actual confusion is not necessary to
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`establish a likelihood of confusion.”)
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`Petitioner argues that respondent was aware of
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`petitioner’s mark before adopting its mark and in fact
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`designed its mark “with the intention to be similar to the
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`Polo Player Mark.” Pet. Br. p. 24. Respondent argues that
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`while it was aware of petitioner’s mark “[t]he creative
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`process did not include copying and pasting any horse or
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`rider image [and] [t]he intent of the design of Registrant’s
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`mark was to parody the elite in society as embodied by the
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`sport of polo.” Resp. Br. p. 2; Moskowitz Decl. p.2. With
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`regard to the parody argument, respondent argues that it
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`falls under the last du Pont factor namely “[a]ny other
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`14
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`Cancellation No. 92047436
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`established fact probative of the effect of use,” du Pont,
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`at 177 USPQ at 567, contending:
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`One factor is the satiric, parodic nature of
`Registrant’s mark. ... Numerous visitors to the
`Thread Pit website placed satiric, humorous
`comments about Registrant’s mark. ... These and
`other comments clearly demonstrate that
`Registrant’s mark communicates an element of
`satire, ridicule, joking, or amusement.
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`Resp. Br. pp. 10-11.
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`Parody is not a defense if the marks are otherwise
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`confusingly similar. Boston Red Sox Baseball Club LP v.
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`Sherman, 88 USPQ2d 1581, 1592 (TTAB 2008);7 Starbucks U.S.
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`Brands, LLC and Starbucks Corporation D.B.A. Starbucks
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`Coffee Company v. Marshall S. Ruben, 78 USPQ2d 1741, 1754
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`(TTAB 2006); Columbia Pictures Industries, Inc. v. Miller,
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`211 USPQ 816, 820 (TTAB 1981) (“The right of the public to
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`use words in the English language in a humorous and parodic
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`manner does not extend to use of such words as trademarks if
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`such use conflicts with the prior use and/or registration of
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`the substantially same mark by another.”)
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`Respondent has stated that its mark is “a parody of the
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`societal elite as embodied by the sport of polo, which is
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`7 Respondent’s statement that the Board “held that SEX ROD was a
`parody” is incorrect. In that case, the Board stated that
`“[e]ven assuming for the sake of argument that SEX ROD is a
`parody of opposer’s “RED SOX” marks, as applicant asserts, there
`is nothing in the parody itself which changes or detracts from
`the vulgar meaning inherent in the term.” Boston Red Sox, 88
`USPQ2d at 1589. Clearly, the Board did not hold that the mark in
`that case was a parody, but merely stated that if were it would
`not be a defense to the Section 2(a) claim.
`
`
`15
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`Cancellation No. 92047436
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`perceived to be a sport reserved for the elite. The rider
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`falling off the horse is the parody of that elite, luxury
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`lifestyle. And of the humor in seeing someone fall off a
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`horse, somewhat like in slapstick comedy.” Moskowitz Decl.
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`p. 2 ¶8. This is similar to the circumstances in Nike, Inc.
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`v. Peter Maher and Patricia Hoyt Maher, 100 USPQ2d 1018,
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`1023 (TTAB 2011). In that case, the Board found that where
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`“a defendant appropriates a trademarked symbol such as a
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`word or picture, not to parody the product or company
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`symbolized by the trademark, but only as a prominent means
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`to promote, satirize or poke fun at religion or religious
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`themes, this is not ‘parody’ of a trademark.” Similarly,
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`here, parodying a lifestyle is not a parody of a trademark.
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`See also Elvis Presley Enterprises Inc. v. Capece, 141 F.3d
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`188, 46 USPQ2d 1737, 174-46 (5th Cir. 1998).
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`In view of the above, respondent’s assertion of parody
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`does not provide it with a defense to petitioner’s claim
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`under Section 2(d.
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`Considering the similarity of the marks in their
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`entireties, the fame of petitioner’s mark, the identical
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`nature of the goods and the overlap in trade channels and
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`purchasers, we conclude that the evidence of record as it
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`pertains to the relevant du Pont factors supports a
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`likelihood of confusion between petitioner’s Polo Player
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`mark and respondent’s Polo Player mark.
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`16
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`Cancellation No. 92047436
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`In view of our decision on likelihood of confusion we
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`do not reach the claim of dilution.
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`Decision: The petition for cancellation is granted.
`
`17