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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:
`
`PRL USA Holdings, Inc. (petitioner) has petitioned to
`
`
`
`cancel Registration No. 3180680 owned by Thread Pit, Inc.
`
`(respondent) for the mark shown below for goods identified
`
`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
`
`claim of likelihood of confusion under Section 2(d) of the
`
`Trademark Act, 15 U.S.C. § 1052(d) and dilution under
`
`Section 43(c) of the Trademark Act, 15 U.S.C. § 1125. In
`
`connection with these claims, petitioner alleges that it
`
`owns several registrations for the Polo Player mark shown
`
`below and several marks incorporating the word POLO for a
`
`variety of clothing and accessory items and that its marks
`
`have become famous prior to respondent’s use of its mark.
`
`
`
`
`
`Respondent filed an answer by which it admitted to
`
`petitioner’s ownership of the pleaded registrations, that
`
`its goods are “the same as some of the goods contained in
`
`[petitioner’s pleaded] registrations” but otherwise denied
`
`the salient allegations. In addition, respondent asserted
`
`as an affirmative defense that its “use of its mark is a
`
`parody of certain of [respondent’s] marks.” The remaining
`
`2
`
`

`
`Cancellation No. 92047436
`
`“affirmative defenses” simply serve to amplify its general
`
`defense that there is no likelihood of confusion.
`
`THE RECORD
`
`The evidence of record consists of the pleadings; the
`
`file of the subject registration; petitioner’s testimony by
`
`declaration2 with accompanying exhibits A-G of Ellen Brooks,
`
`Director, U.S. Trademark Enforcement for respondent’s parent
`
`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
`
`design mark was found inherently distinctive and famous;
`
`respondent’s testimony by declaration with accompanying
`
`exhibits A-D of Nicholas Moskowitz, respondent’s President
`
`and owner; respondent’s notices of reliance on its subject
`
`registration3 and certain of petitioner’s discovery
`
`responses. Petitioner also submitted a rebuttal declaration
`
`from Ellen Brooks which is the subject of an objection from
`
`respondent addressed below.
`
`
`2 Upon stipulation of the parties, filed January 21, 2010,
`testimony was submitted by declaration.
`
` 3
`
` 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
`
`

`
`Cancellation No. 92047436
`
`In addition, the parties submitted under stipulation
`
`several documents including excerpts from petitioner’s and
`
`respondent’s websites, articles from printed publications,
`
`petitioner’s advertising, and petitioner’s annual reports.
`
`Both parties filed briefs; however, respondent did not
`
`attend the oral hearing.
`
`EVIDENTIARY ISSUE
`
`
`
`As a preliminary matter, we take up for consideration
`
`respondent’s objection, made in its main trial brief, to the
`
`rebuttal declaration of Ellen Brooks. Respondent states
`
`that it was never served with a copy of this declaration.
`
`The filing with the Board does not include a certificate of
`
`service. In addition, petitioner did not submit any
`
`argument in response; therefore, respondent’s assertion that
`
`the declaration was not served stands unrebutted. Every
`
`paper filed with the Board must be served upon the other
`
`parties and proof of service must be made before a paper
`
`will be considered. Trademark Rule 2.119(a). In view
`
`thereof, the May 24, 2010, declaration of Ellen Brooks is
`
`hereby stricken from the record.
`
`PRIORITY/STANDING
`
`Because petitioner has made its pleaded registrations
`
`of record and has shown that the registrations are valid and
`
`subsisting and owned by petitioner, petitioner has
`
`established its standing to cancel respondent’s registration
`
`4
`
`

`
`Cancellation No. 92047436
`
`and its priority is not in issue. See King Candy Co., Inc.
`
`v. Eunice King’s Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108
`
`(CCPA 1974).
`
`Accordingly, we turn to the question of likelihood of
`
`confusion.
`
`LIKELIHOOD OF CONFUSION
`
`Petitioner only made some of its pleaded registrations
`
`of record by notice of reliance.4 The most relevant are set
`
`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
`
`sweatshirts, sweat pants, hats, scarves, jerseys,
`jeans, turtlenecks and bikinis” in International
`Class 25, issued January 16, 2007.
`
`
`
`
`For our determination of likelihood of confusion in
`
`
`
`this cancellation, we focus our decision on Reg. No. 2823094
`
`for the Polo Player mark and above-noted clothing items,
`
`specifically, t-shirts. If we do not find likelihood of
`
`confusion with respect to the mark in this registration for
`
`in part identical goods, then there would be no likelihood
`
`of confusion with respect to the marks and goods in
`
`petitioner’s other registrations. See In re Max Capital
`
`Group Ltd., 93 USPQ2d 1243, 1245 (TTAB 2010).
`
`Our likelihood of confusion determination under Section
`
`2(d) is based on an analysis of all of the probative facts
`
`in evidence that are relevant to the factors set forth in In
`
`re E. I. du Pont de Nemours and Co., 476 F.2d 1357, 177 USPQ
`
`563 (CCPA 1973). See also, In re Majestic Distilling Co.,
`
`Inc., 315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir. 2003).
`
`Petitioner presented evidence and argument on the
`
`factors of the relatedness of the goods, channels of trade
`
`6
`
`

`
`Cancellation No. 92047436
`
`and classes of purchasers, the similarity of the marks,
`
`respondent’s intent, and the fame of its mark.
`
`We begin with the factor of fame because fame “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). “[T]he fame of a mark may be
`
`measured indirectly, among other things, by the volume of
`
`sales and advertising expenditures of the goods traveling
`
`under the mark, and by the length of time those indicia of
`
`commercial awareness have been evident.” Bose Corp. v. QSC
`
`Audio Products, Inc., 293 F.3d 1367, 63 USPQ2d 1303, 1305
`
`(Fed. Cir. 2002).
`
`The record shows that petitioner owns seven
`
`registrations that include the Polo Player mark, and has
`
`been using the Polo Player mark in connection with clothing
`
`items, including t-shirts, for over forty years since 1967.
`
`Brooks Test. p. 2. Petitioner expends a substantial sum “in
`
`promoting the sale of Polo Player products in a wide variety
`
`of media and its products are regularly featured in” widely-
`
`distributed magazines such as Vogue, Elle, GQ, Fortune,
`
`Sports Illustrated, Vanity Fair, Town & Country, Travel &
`
`Leisure, Maxim, Rolling Stone, Cosmopolitan, Entertainment
`
`Weekly, Oprah and Golf Digest. Id. p. 3. Petitioner is or
`
`has been the official sponsor of the following sporting
`
`events: Wimbledon, the US Open, and the 2008 and 2010
`
`7
`
`

`
`Cancellation No. 92047436
`
`Olympics. Id. Petitioner also sponsors many individual
`
`sports figures including Tom Watson, Davis Love III, Jeff
`
`Sluman and Luke Donald. Id. p. 4. Petitioner uses its Polo
`
`Player mark in connection with these sponsorships. Id.
`
`Petitioner sells its Polo Player products at 200 of its
`
`stores, in many department and fine retail stores across the
`
`United States (e.g., Macy’s, Nordstrom’s, Saks,
`
`Bloomingdales), and online at its website and those of other
`
`online retailers such as Macys.com and Nordstrom.com. Id.
`
`Petitioner’s sales have also been substantial. Id. and
`
`Stip. Exh. 58-68.5
`
`On this record, we find that petitioner has shown that
`
`its Polo Player mark is famous in the field of clothing and,
`
`indeed, respondent concedes this factor. Resp. Br. p. 9.
`
`See also Pet. Notice of Reliance Exh. B Responses to
`
`Petitioner’s Second Set of Requests for Admissions No. 23.
`
`In view thereof, petitioner’s mark is entitled to broad
`
`protection. Recot, 54 USPQ at 1897. Respondent’s argument
`
`that the fame of petitioner’s mark serves to lessen the
`
`likelihood of confusion is counter to legal precedent of the
`
`Board and the Board’s primary reviewing court, the Court of
`
`
`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
`
`

`
`Cancellation No. 92047436
`
`Appeals for the Federal Circuit. As stated by the Federal
`
`Circuit:
`
`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,
`
`22 USPQ2d 1453, 1456 (Fed. Cir. 1992).
`
`This brings us then to our consideration of the
`
`similarities between petitioner’s and respondent’s goods,
`
`channels of trade and classes of purchasers. We must make
`
`our determinations under these factors based on the goods as
`
`they are recited in the respective registrations. See
`
`Octocom Systems Inc. v. Houston Computers Services, Inc.,
`
`918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990) (“The
`
`authority is legion that the question of registrability of
`
`an applicant’s mark must be decided on the basis of the
`
`identification of goods set forth in the application
`
`regardless of what the record may reveal as to the
`
`particular nature of an applicant’s goods, the particular
`
`channels of trade or the class of purchasers to which sales
`
`of the goods are directed.”); In re Elbaum, 211 USPQ 636
`
`(TTAB 1981).
`
`Petitioner’s and respondent’s registrations both
`
`include t-shirts; thus the goods are in part identical. It
`
`9
`
`

`
`Cancellation No. 92047436
`
`is sufficient for a finding of likelihood of confusion if
`
`the relatedness is established for any item encompassed by
`
`the identification of goods within a particular class in the
`
`subject registration. Tuxedo Monopoly, Inc. v. General
`
`Mills Fun Group, 648 F.2d 1335, 209 USPQ 986 (CCPA 1981);
`
`Baseball America Inc. v. Powerplay Sports Ltd., 71 USPQ2d
`
`1844, 1847 n.9 (TTAB 2004). Respondent argues that its
`
`registration covers only t-shirts and collared polo shirts
`
`whereas petitioner’s various registrations cover a wide
`
`variety of clothing goods such that “the scope of goods on
`
`which the parties marks appear is so vastly different.” We
`
`first note that petitioner’s Registration No. 2823094 only
`
`includes sweaters, t-shirts and tote bags. However, even
`
`considering petitioner’s other registrations and evidence of
`
`use for a wide variety of clothing goods, this does not
`
`mitigate the fact that there is an overlap with the
`
`identical goods, namely, t-shirts.
`
`Moreover, with regard to the channels of trade and
`
`classes of purchasers, because the goods are in part
`
`identical and there are no restrictions in the
`
`identifications as to trade channels and purchasers, we must
`
`presume that the parties’ goods would be sold in the same
`
`channels of trade and to the same relevant purchasers. See
`
`Hewlett-Packard Co. v. Packard Press Inc., 281 F.3d 1261, 62
`
`USPQ2d 1001 (Fed. Cir. 2002).
`
`10
`
`

`
`Cancellation No. 92047436
`
`In addition, respondent’s arguments regarding the
`
`actual conditions of sale are not relevant to our
`
`determination. As noted above, we make our determination
`
`based on the listed goods in the registrations. Thus, the
`
`arguments that petitioner’s goods are expensive and limited
`
`to the high end of the market, and the relevant consumers
`
`are sophisticated purchasers are not persuasive. Because of
`
`the absence of such limitations from the identifications set
`
`forth in the registrations we must consider any ordinary
`
`channel of trade for t-shirts. See In re Bercut-Vandervoort
`
`& Co., 229 UPSQ 763, 764 (TTAB 1986) (applicant may not
`
`restrict scope of the identified goods by extrinsic
`
`evidence). Further, we must make our determination based on
`
`the least sophisticated consumer for the identified goods,
`
`namely, t-shirts. Giersch v. Scripps Networks Inc., 90
`
`USPQ2d 1020, 1027 (TTAB 2009) (citing Alfacell Corp. v.
`
`Anticancer, Inc., 71 USPQ2d 1301, 1306 (TTAB 2004). In sum,
`
`we find that the similarities between petitioner’s and
`
`respondent’s goods, channels of trade and classes of
`
`purchasers favors a finding of likelihood of confusion.
`
`We turn now to a consideration of the first du Pont
`
`factor, i.e., whether the parties’ respective Polo Player
`
`marks
`
` and
`
`are similar or dissimilar when
`
`compared in their entireties in terms of appearance,
`
`11
`
`

`
`Cancellation No. 92047436
`
`connotation and commercial impression.6 We make this
`
`determination in accordance with the following principles.
`
`The test, under this du Pont factor, is not whether the
`
`marks can be distinguished when subjected to a side-by-side
`
`comparison, but rather whether the marks are sufficiently
`
`similar in terms of their overall commercial impressions
`
`that confusion as to the source of the goods offered under
`
`the respective marks is likely to result. The focus is on
`
`the recollection of the average purchaser, who normally
`
`retains a general rather than a specific impression of
`
`trademarks. See Sealed Air Corp. v. Scott Paper Co., 190
`
`USPQ 106 (TTAB 1975). Further, in view of the fame of
`
`petitioner’s mark we keep in mind that a famous mark enjoys
`
`a wide scope of protection and “[T]here is no ‘excuse for
`
`even approaching the well-known trademark of a competitor.’”
`
`Nina Ricci S.A.R.L. v. E.T.F. Enterprises Inc., 889 F.2d
`
`1070, 12 USPQ2d 1901, 1904 (Fed. Cir. 1989), quoting,
`
`Planter’s Nut & Chocolate Co. v. Crown Nut Co., Inc., 305
`
`F.2d 916, 134 USPQ 504, 511 (CCPA 1962). Finally, we are
`
`cognizant of the principle that the more closely related the
`
`goods are, the less similarity in the marks is required to
`
`support a conclusion of likelihood of confusion. Century 21
`
`
`6 We do not consider the element of sound as we are making our
`determination only on petitioner’s design mark.
`
`
`12
`
`

`
`Cancellation No. 92047436
`
`Real Estate Corp. v. Century Life of America, 970 F.2d 874,
`
`23 USPQ2d 1698, 1701 (Fed. Cir. 1992).
`
`With regard to appearance, we find them to be very
`
`similar. The horses are in identical positions with the
`
`left front leg curling back and crossing the right rear
`
`legs, the reins drape in the same manner, and the mallet
`
`extends from the rider at the same angle. In addition, the
`
`horses and riders are similarly portrayed in silhouette.
`
`Moreover, both marks contain no other elements, either
`
`design or words. The only difference in the appearance of
`
`the marks is the position of the rider, which in both marks
`
`appears as a polo player, where he is depicted as falling
`
`off the horse in respondent’s mark. While there may be some
`
`difference in commercial impression between the two
`
`depictions, as respondent posits, i.e., “a competent in
`
`control rider versus a completely out of control rider,” we
`
`find the overall commercial impression of the polo player to
`
`be very similar. In particular, with regard to such goods
`
`where the mark is frequently applied as a small logo in the
`
`upper corner of the t-shirt, it requires close inspection to
`
`distinguish the different attributes of the rider. Given
`
`the fame of petitioner’s mark, the points of similarities in
`
`appearance, connotation and commercial impression outweigh
`
`the dissimilarities. In view thereof, we find the marks to
`
`be similar.
`
`13
`
`

`
`Cancellation No. 92047436
`
`Respondent argues that there is no evidence of actual
`
`confusion. However, we cannot determine on this record that
`
`there has been any meaningful opportunity for actual
`
`confusion to have occurred in the marketplace, and
`
`accordingly, we cannot conclude that the alleged absence of
`
`actual confusion is entitled to much weight in our
`
`likelihood of confusion analysis. See Gillette Canada Inc.
`
`v. Ranir Corp., 23 USPQ2d 1768 (TTAB 1992). Moreover,
`
`evidence of actual confusion is not a prerequisite to
`
`finding likelihood of confusion and this factor is neutral
`
`as to both parties. Herbko International, Inc. v. Kappa
`
`Books, Inc., 308 F.3d 1156, 64 USPQ2d 1375 (Fed. Cir. 2002)
`
`(“[A] showing of actual confusion is not necessary to
`
`establish a likelihood of confusion.”)
`
`Petitioner argues that respondent was aware of
`
`petitioner’s mark before adopting its mark and in fact
`
`designed its mark “with the intention to be similar to the
`
`Polo Player Mark.” Pet. Br. p. 24. Respondent argues that
`
`while it was aware of petitioner’s mark “[t]he creative
`
`process did not include copying and pasting any horse or
`
`rider image [and] [t]he intent of the design of Registrant’s
`
`mark was to parody the elite in society as embodied by the
`
`sport of polo.” Resp. Br. p. 2; Moskowitz Decl. p.2. With
`
`regard to the parody argument, respondent argues that it
`
`falls under the last du Pont factor namely “[a]ny other
`
`14
`
`

`
`Cancellation No. 92047436
`
`established fact probative of the effect of use,” du Pont,
`
`at 177 USPQ at 567, contending:
`
`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.
`
`Resp. Br. pp. 10-11.
`
`Parody is not a defense if the marks are otherwise
`
`confusingly similar. Boston Red Sox Baseball Club LP v.
`
`Sherman, 88 USPQ2d 1581, 1592 (TTAB 2008);7 Starbucks U.S.
`
`Brands, LLC and Starbucks Corporation D.B.A. Starbucks
`
`Coffee Company v. Marshall S. Ruben, 78 USPQ2d 1741, 1754
`
`(TTAB 2006); Columbia Pictures Industries, Inc. v. Miller,
`
`211 USPQ 816, 820 (TTAB 1981) (“The right of the public to
`
`use words in the English language in a humorous and parodic
`
`manner does not extend to use of such words as trademarks if
`
`such use conflicts with the prior use and/or registration of
`
`the substantially same mark by another.”)
`
`Respondent has stated that its mark is “a parody of the
`
`societal elite as embodied by the sport of polo, which is
`
`
`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
`
`

`
`Cancellation No. 92047436
`
`perceived to be a sport reserved for the elite. The rider
`
`falling off the horse is the parody of that elite, luxury
`
`lifestyle. And of the humor in seeing someone fall off a
`
`horse, somewhat like in slapstick comedy.” Moskowitz Decl.
`
`p. 2 ¶8. This is similar to the circumstances in Nike, Inc.
`
`v. Peter Maher and Patricia Hoyt Maher, 100 USPQ2d 1018,
`
`1023 (TTAB 2011). In that case, the Board found that where
`
`“a defendant appropriates a trademarked symbol such as a
`
`word or picture, not to parody the product or company
`
`symbolized by the trademark, but only as a prominent means
`
`to promote, satirize or poke fun at religion or religious
`
`themes, this is not ‘parody’ of a trademark.” Similarly,
`
`here, parodying a lifestyle is not a parody of a trademark.
`
`See also Elvis Presley Enterprises Inc. v. Capece, 141 F.3d
`
`188, 46 USPQ2d 1737, 174-46 (5th Cir. 1998).
`
`In view of the above, respondent’s assertion of parody
`
`does not provide it with a defense to petitioner’s claim
`
`under Section 2(d.
`
`Considering the similarity of the marks in their
`
`entireties, the fame of petitioner’s mark, the identical
`
`nature of the goods and the overlap in trade channels and
`
`purchasers, we conclude that the evidence of record as it
`
`pertains to the relevant du Pont factors supports a
`
`likelihood of confusion between petitioner’s Polo Player
`
`mark and respondent’s Polo Player mark.
`
`16
`
`

`
`Cancellation No. 92047436
`
`In view of our decision on likelihood of confusion we
`
`do not reach the claim of dilution.
`
`Decision: The petition for cancellation is granted.
`
`17

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