Anvil Knitwear, Inc.v.Success Ware, Inc.

Trademark Trial and Appeal Board

Mar 15, 2010

No. 91155386 (T.T.A.B. Mar. 15, 2010)

Mailed:
March 15, 2010

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
______

Anvil Knitwear, Inc.
v.

Success Ware, Inc.
_____

Opposition No. 91155386
to application Serial No. 75542015
filed on August 22, 1998

Opposition No. 911559232
to application Serial No. 75982484
filed on August 22, 1998

_____

James D. Weinberger of Fross Zelnick Lehrman & Zissu, P.C.
for Anvil Knitwear, Inc.

Success Ware, Inc., pro se.
______

Before Walsh, Bergsman and Wellington,
Administrative Trademark Judges.

Opinion by Bergsman, Administrative Trademark Judge:

Success Ware, Inc. (“applicant”) filed intent-to-use
applications on the Principal Register for the mark COURAGE
and an anvil design, shown below, for “clothing, namely,
caps,” in Class 25 (Serial No. 75542015) and “clothing,
namely, t-shirts and sweatshirts,” in Class 25 (Serial No.
75982484).
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Opposition No. 91155386
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Applicant describes its mark as “the word COURAGE and an
anvil design.”
Anvil Knitwear, Inc. (“opposer”) filed notices of
opposition against the registration of applicant’s marks on
the ground of priority of use and likelihood of
confusion pursuant to Section 2(d) of the Trademark Act of
1946, 15 U.S.C. §1052(d). In the notices of opposition,
opposer asserted ownership of the following registrations:
1. Registration No. 0783710 for the mark ANVIL, in
typed drawing form, for “men’s and boys’ shirts,” in Class
25;1
2. Registration No. 0783711 for an anvil design mark,
shown below, for “men’s and boys’ shirts,” in Class 25;2

1 Issued January 19, 1965; Sections 8 and 15 affidavits accepted
and acknowledged; second renewal.
2 Issued January 19, 1965; Sections 8 and 15 affidavits accepted
and acknowledged; second renewal.
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3. Registration No. 0903069 for the mark ANVIL, in
typed drawing form, for “men’s, women’s, boys’, girls’ and
children’s shirts,” in Class 25.3
4. Registration No. 1659008 for the mark ANVIL, in
typed drawing form, for “tank top shirts, sweat shirts and
knitted dresses,” in Class 25.4
5. Registration No. 2201382 for the mark ANVIL, in
typed drawing form, for “caps,” in Class 25.5
Applicant, in its answers, denied the salient
allegations in the notices of opposition. In opposition No.
91155386, applicant filed a pleading captioned
“Counterclaim.” In an order dated August 3, 2006, the Board
noted that applicant’s counterclaim was merely an
amplification of its denials of the allegations set forth in
the notice of opposition. Because the counterclaim did not
attack the validity of any of opposer’s pleaded
registrations, the Board held that it would not give the
counterclaim any further consideration.
In the August 3, 2006 order, the Board also
consolidated the two oppositions.

3 Issued November 24, 1970; Sections 8 and 15 affidavits accepted
and acknowledged; second renewal.
4 Issued October 1, 1991; Sections 8 and 15 affidavits accepted
and acknowledged; renewed.
5 Issued November 3, 1998. Patent and Trademark Office records
show that this registration has been canceled under Section 8 of
the Trademark Act. Accordingly, we will not give this
registration any further consideration.
Opposition No. 91155386
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Evidentiary Issues
A. Applicant’s Notice of Reliance.
During its testimony period, applicant filed a notice
of reliance on a number of documents from a civil action
between the parties and briefs supporting or opposing
motions filed by the parties in this proceeding and in a
prior proceeding between the parties. Opposer filed a
motion to strike the following exhibits attached to
applicant’s notice of reliance on the ground that they are
not the proper subject matter to be introduced into evidence
through a notice of reliance:
1. Exhibit C – the declaration of Christopher
Levesque, opposer’s Vice President of Marketing, in support
of opposer’s motion for summary judgment dismissing
applicant’s complaint for copyright infringement before the
United States District Court for the Central District of
California;
2. Exhibit E-1 – applicant’s brief in response to
opposer’s motion to admit testimony from a prior Board
proceeding;
3. Exhibit E-3 – exhibits from a testimonial
deposition taken during the prior Board proceeding between
the parties;
4. Exhibit F – “Applicant’s Response in opposition
and objection to opposers (sic) response to applicant’s
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objection to opposer’s untimely filing of opposer’s
deposition testimony”; and
5. Exhibit H – applicant’s reply brief in support of
its request for reconsideration of the Board’s decision
denying summary judgment.
Opposer expressly limited its motion to strike to the
ground that the documents are not the proper subject matter
to be introduced into evidence through a notice of reliance.
It reserved the right to raise other grounds of objection,
such as relevance, in its final briefs on the case. In
opposition to the motion to strike, applicant argued that
the documents are relevant. Applicant did not address
opposer’s contention that the documents at issue are not the
proper subject matter for introduction into evidence through
a notice of reliance.
Opposer’s motion to strike Exhibits C, E-1, E-3, F, and
H is granted. The documents at issue are applicant’s copies
of documents filed in this proceeding or in a different
civil action between the parties. Trademark Rule 2.122(e)
provides that a party may introduce into evidence copies of
official records through a notice of reliance. Trademark
Rule 2.122(e) specifically provides that the authenticity of
the official record must be established under the Federal
Rules of Evidence. The term “official records” refers to
the records of public offices or agencies, or records kept
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in the performance of duty by a public officer.
Weyerhaeuser Co. v. Katz, 24 USPQ2d 130, 1231 (TTAB 1992);
Conde Nast Publications Inc. v. Vogue Travel, Inc., 205 USPQ
579, 580 n. 5 (TTAB 1979); see also Fed.R.Evid. 902(4).
Trademark Rule 2.122(e) does not refer to a company’s own
copies of “official documents.” TBMP §704.07 (2nd ed. rev.
2004).
Because opposer did not object to Exhibits A-D, E-3 and
G, we will consider those exhibits for whatever probative
value they may have. In that regard, we note that applicant
introduced those documents to prove that opposer’s anvil
design mark is no longer in use.
Thus, Applicant relies on the documents
to show as evidence that Opposer has
discontinued use of the mark in
question, Registration No. 783,711
and/or has abandoned the mark through
material alteration which must be
considered no longer in use.6

In other words, applicant is attacking the validity of
opposer’s pleaded registration. However, applicant did not
file a counterclaim to cancel opposer’s registration. As
noted above, in an order dated August 3, 2006, the Board
noted that applicant’s purported counterclaim was merely an
amplification of its denials of the allegations set forth in
the notice of opposition, that it did not attack the
validity of any of opposer’s pleaded registrations and,

6 Applicant’s notice of reliance, p.4.
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therefore, the Board would not give the counterclaim any
further consideration. At no time did applicant seek leave
to amend its answer to properly assert a counterclaim to
cancel Registration No. 0783711.
Our rules are clear: “An attack on the validity of a
registration pleaded by an opposer will not be heard unless
a counterclaim or separate petition is filed to seek the
cancellation of such registration.” Trademark Rule
2.106(b)(2)(ii). In view thereof, we will not consider any
evidence or argument relating to whether opposer abandoned
the mark (the anvil design) in Registration No. 0783711.
B. Testimony Deposition of Anthony Corsano.
On August 22, 2008, opposer filed a motion to admit
testimony from the prior Board proceeding between the
parties. Specifically, opposer sought leave to introduce
into evidence the testimony deposition of Anthony Corsano,
then opposer’s Vice-President of Marketing and Sales, taken
on February 14, 2001 in the previous Board proceeding
between the parties. Applicant objected to opposer’s
motion. In an order dated October 14, 2008, the motion was
denied because the testimony at issue was taken in 2001 and
is now stale as it relates to opposer’s sales, advertising
and consumer recognition of opposer’s marks.
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On December 2, 2008, opposer took the testimony
deposition of Anthony Corsano. Applicant did not attend the
deposition.
In its brief, applicant objected to the Corsano
testimony and some of the exhibits on the ground that the
exhibits in the 2008 Corsano deposition were also introduced
in the 2001 Corsano deposition in the prior Board proceeding
between the parties and, therefore, opposer disregarded the
Board’s October 14, 2008 order prohibiting the use of a
prior deposition from another proceeding. Also, applicant
argued that several of the exhibits constituted a new anvil
design mark used by opposer that is not subject to this
proceeding and that those exhibits should not be considered.
Applicant’s objections are not well taken. First,
opposer took Mr. Corsano’s deposition during its assigned
testimony period. There is no prohibition against opposer
having the witness authenticate exhibits that were
previously used in another proceeding.
Second, applicant incorrectly assumed that opposer is
limited to the anvil design represented in Registration No.
0783711. Opposer alleged the following:
3. In 1935, [opposer] adopted and
began using a visual depiction of the
ANVIL name and mark – the design of an
anvil – as a trademark (the “Anvil
Design Trademark”) for wearing apparel.
Beginning long prior to any date of
first use on which Applicant can rely or
the date of filing of its intent-to-use
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application, the trademark has been used
to identify the source of [opposer’s]
apparel and to distinguish that apparel
from the products of others.

Whether changes to opposer’s anvil design mark constitute a
new mark is a question of fact that would need to be decided
in this case if that issue were before us. However, as
indicated above, opposer pleaded ownership of Registration
No. 0783711 for an anvil design and because applicant did
not file a counterclaim to attack the validity of the
registration, applicant cannot now argue that opposer has
abandoned that mark.
In view of the foregoing, applicant’s objections to the
deposition of Anthony Corsano are overruled.
The Record
By rule, the record includes applicant’s application
file and the pleadings. Trademark Rule 2.122(b),
37 CFR §2.122(b).
A. Opposer’s evidence.
1. Notice of reliance on copies of the opposer’s
pleaded registration prepared and issued by the Patent and
Trademark Office showing both the current status and title
to the registrations; and
2. Testimony deposition of Anthony Corsano, opposer’s
President and Chief Operating Officer, with attached
exhibits.

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B. Applicant’s evidence.
Applicant submitted the notice of reliance discussed
above.
Standing
Because opposer has properly made its pleaded
registrations of record, opposer has established its
standing. Cunningham v. Laser Golf Corp., 222 F.3d 943,
55 USPQ2d 1842, 1844 (Fed. Cir. 2000); Lipton Industries,
Inc. v. Ralston Purina Co., 670 F.2d 1024, 213 USPQ 185, 189
(CCPA 1982).
Priority
Because opposer’s pleaded registrations are of record,
Section 2(d) priority is not an issue in this case as to the
marks and the goods covered by the registrations. King
Candy Co. v. Eunice King’s Kitchen, Inc., 496 F.2d 1400,
182 USPQ 108, 110 (CCPA 1974). With respect to “caps,”
opposer may not rely on its pleaded registration because it
has expired. Nevertheless, Mr. Corsano testified that
opposer sells caps and the catalogs show use of the word
mark ANVIL used to identify caps since 1995.7 There was no
evidence regarding the use of anvil design on caps.8

7 Corsano Dep., p. 28 and Exhibit 5.
8 Most of the exhibits attached to the Corsano deposition were
illegible and, therefore, had no probative value.
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Likelihood of Confusion
Our determination under Section 2(d) is based on an
analysis of all of the probative facts in evidence that are
relevant to the factors bearing on the issue of likelihood
of confusion. In re E. I. du Pont de Nemours & Co.,
476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973). See also,
In re Majestic Distilling Company, Inc., 315 F.3d 1311,
65 USPQ2d 1201, 1203 (Fed. Cir. 2003). In any likelihood of
confusion analysis, two key considerations are the
similarities between the marks and the similarities between
the goods and/or services. See Federated Foods, Inc. v.
Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29
(CCPA 1976) (“The fundamental inquiry mandated by §2(d) goes
to the cumulative effect of differences in the essential
characteristics of the goods and differences in the marks”).
A. The similarity or dissimilarity and nature of opposer’s
gods and the good described in the application.

Applicant is seeking to register its marks for caps, t-
shirts and sweatshirts. Opposer’s anvil design registration
is for “men’s and boys’ shirts” and its word mark ANVIL has
been registered for, inter alia, shirts and sweatshirts.
Furthermore, Mr. Corsano testified that opposer sells caps
identified by the ANVIL word mark. In view thereof, the
goods of the parties are in part identical.

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B. The similarity or dissimilarity of likely-to-continue
trade channels and classes of consumers.

Because the goods identified in the application and the
cited registrations are in part identical, we must presume
that the channels of trade and classes of purchasers are the
same. See Genesco Inc. v. Martz, 66 USPQ2d 1260, 1268 (TTAB
2003) (“Given the in-part identical and in-part related
nature of the parties’ goods, and the lack of any
restrictions in the identifications thereof as to trade
channels and purchasers, these clothing items could be
offered and sold to the same classes of purchasers through
the same channels of trade”); In re Smith and Mehaffey,
31 USPQ2d 1531, 1532 (TTAB 1994) (“Because the goods are
legally identical, they must be presumed to travel in the
same channels of trade, and be sold to the same class of
purchasers”).
With respect to caps, because there are no restrictions
as to channels of trade or classes of consumers in
applicant’s description of goods, we must assume that
applicant’s caps will be sold in all of the normal channels
of trade to all of the normal purchasers for such goods,
including opposer’s channels of trade and purchasers.
Canadian Imperial Bank of Commerce v. Wells Fargo Bank,
811 F.2d 1490, 1 USPQ2d 1813, 1815 (Fed. Cir. 1987); Toys R
Us v. Lamps R Us, 219 USPQ 340, 343 (TTAB 1983).
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C. The similarity or dissimilarity of the marks in their
entireties as to appearance, sound, connotation and
commercial impression.

We now turn to the du Pont likelihood of confusion
factor focusing on the similarity or dissimilarity of the
marks in their entireties as to appearance, sound,
connotation and commercial impression. In re E. I. du Pont
De Nemours & Co., 177 USPQ at 567. In a particular case,
any one of these means of comparison may be critical in
finding the marks to be similar. In re White Swan Ltd.,
9 USPQ2d 1534, 1535 (TTAB 1988); In re Lamson Oil Co.,
6 USPQ2d 1041, 1042 (TTAB 1988). In comparing the marks, we
are mindful that where, as here, the goods are in part
identical, the degree of similarity necessary to find
likelihood of confusion need not be as great as where there
is a recognizable disparity between the goods. Century 21
Real Estate Corp. v. Century Life of America, 970 F.2d 874,
23 USPQ2d 1698, 1700 (Fed. Cir. 1992); Schering-Plough
HealthCare Products Inc. v. Ing-Jing Huang, 84 USPQ2d 1323,
1325 (TTAB 2007); Jansen Enterprises Inc. v. Rind,
85 USPQ2d 1104, 1108 (TTAB 2007).
Because the similarity or dissimilarity of the marks is
determined based on the marks in their entireties, the
analysis cannot be predicated on dissecting the marks into
their various components; that is, the decision must be
based on the entire marks, not just part of the marks. In
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re National Data Corp., 753 F.2d 1056, 224 USPQ 749, 751
(Fed. Cir. 1985); see also Franklin Mint Corp. V. Master
Mfg. Co., 667 F.2d 1005, 212 USPQ 23, 234 (CCPA 1981) (“It
is axiomatic that a mark should not be dissected and
considered piecemeal; rather, it must be considered as a
whole in determining likelihood of confusion”). On the
other hand, different features may be analyzed to determine
whether the marks are similar. Price Candy Company v. Gold
Medal Candy Corporation, 220 F.2d 759, 105 USPQ 266, 268
(CCPA 1955). In fact, there is nothing improper in stating
that, for rational reasons, more or less weight has been
given to a particular feature of a mark, provided the
ultimate conclusion rests on a consideration of the marks in
their entireties. In re National Data Corp., 224 USPQ at
751.
First, we compare opposer’s ANVIL word mark with
applicant’s mark, shown below:

While the words “Anvil” and “Courage” are different,
applicant’s design is an “anvil.” On the one hand, in
analyzing applicant’s mark, the word “Courage” generally
would be considered the dominant part of the mark because
consumers would use the word “Courage” in requesting the
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products. In re Dakin’s Miniatures, Inc., 59 USPQ2d 1593,
1596 (TTAB 1999); In re Appetito Provisions Co.,
2 USPQ2d 1553, 1554 (TTAB 1987). On the other hand, the
common portions of the marks must be considered and no
portion of the marks may be disregarded. Price Candy
Company v. Gold Medal Candy Corporation, 105 USPQ at 268.
In this regard, words and the symbols identified by those
words are given the same significance in determining the
similarity of the marks. Shunk Mfg. Co., v. Tarrant Mfg.
Co., 318 F.2d 328, 137 USPQ 881, 883 (CCPA 1963); see also
Spaulding Bakeries Inc. v. Interstate Brands Corp.,
209 USPQ 355, 356 (TTAB 1980); Roush Bakery Products Co.,
Inc. v. Ridlen, 203 USPQ 1086, 1089 (TTAB 1979). The reason
that words and symbols are considered equivalents is that
purchasers do not often have an opportunity for a side-by-
side comparison of the marks. Thus, consumers must rely on
their memories of or recollections of past experiences,
which may be hazy and of a general or overall nature, and as
a consequence, a pictorial representation may trigger the
recollection of the literal equivalent. Spaulding Bakeries
Inc. v. Interstate Brands Corp., 209 USPQ at 356; Roush
Bakery Products Co., Inc. v. Ridlen, 203 USPQ at 1089.
In this case, the pictorial representation of an anvil
in applicant’s mark is clear and unequivocal. There is no
question but that opposer’s word mark ANVIL aptly describes
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the design element in applicant’s mark. Moreover, the word
“Anvil” and the anvil design in applicant’s mark are neither
suggestive nor descriptive of clothing, but, on the
contrary, they are completely arbitrary. Furthermore there
is nothing in the record to show that word “Anvil” is
commonly used to identify or describe clothing. Thus, while
the word “Courage” may be the dominant feature of
applicant’s mark, the anvil design is an essential element
and the anvil design in applicant’s mark may trigger the
recollection of opposer’s ANVIL mark. See In re Sloppy
Joe’s International, Inc., 43 UPSQ2d 1350, 1355 (TTAB 1997)
(SLOPP JOE’S and portrait of Ernest Hemingway is similar to
HEMINGWAY because the portrait of Ernest Hemingway is not an
ancillary or subordinate design).
Although opposer’s ANVIL mark and applicant’s COURAGE
and design mark are not similar in appearance or sound, we
find that they are similar in meaning and commercial
impression.
Now we compare opposer’s anvil design mark, shown
below, and applicant’s mark, shown below.
Registrant’s Mark Applicant’s Mark

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As discussed above, the word “Courage” is the dominant
part of applicant’s mark. On the other hand, both marks
have realistic albeit not identical anvil designs. In fact,
in comparing the marks, we note that applicant’s mark
incorporates the opposer’s entire mark; just merely turning
the anvil design in a different direction does not alter the
commercial impression. Likelihood of confusion is often
found where the entirety of one mark is incorporated within
another. The Wella Corp, v. California Concept Corp., 558
F.2d 1019, 194 USPQ 419, 422 (CCPA 1977) (CALIFORNIA CONCEPT
and surfer design for men’s cologne, hair spray, conditioner
and shampoo is likely to cause confusion with the mark
CONCEPT for cold permanent wave lotion and neutralizer);
Coca-Cola Bottling Co. v. Seagram & Sons, Inc., 526 F.2d
556, 188 USPQ 105, 106 (CCPA 1975) (BENGAL LANCER and
soldier design for club soda, quinine water and ginger ale
is likely to cause confusion with BENGAL LANCER for gin); In
re West Point-Pepperell, Inc., 468 F.2d 200, 175 USPQ 558
(CCPA 1972) (WEST POINT PEPPERELL and griffin design for
fabrics is likely to cause confusion with WEST POINT for
woolen piece goods).
We find that although there are differences in the
sound of the marks, we find that the marks share visual
similarities and that they are similar in meaning and
commercial impression.
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Before leaving the similarity of the marks, we note
that if applicant wished to register a mark that merely
conveyed the commercial impression engendered by the word
“Courage,” it could have done that by simply seeking to
register the word “Courage.” However, applicant did not do
that. Instead, it filed an application to register a mark
that includes a design of an anvil and it did so with
knowledge of opposer’s marks as this is at least the third
proceeding between the parties regarding an anvil design.
Thus, applicant was unquestionably bound by the duty imposed
on all junior users to select marks that are sufficiently
distinguishable from marks that have federally recorded
superior rights. Jockey International v. Butler,
3 USPQ2d 1067, (TTAB 1987); Miles Laboratories Inc. v.
Naturally Vitamin Supplements Inc., 1 USPQ2d 1445, 1455
(TTAB 1986). Applicant did not fulfill this duty when it
adopted its COURAGE and design mark and filed the
applications at issue.
D. Balancing the factors.
In view of the similarity of the marks, the identity of
the goods, and the presumption that the goods move in the
same channels of trade and are sold to the same classes of
consumers, we find that applicant’s mark COURAGE and design
for clothing, namely, t-shirts, sweatshirts and caps is
likely to cause confusion with opposer’s ANVIL mark and
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anvil design mark for clothing, including t-shirts,
sweatshirts and caps.
Decision: The oppositions are sustained and
registration to applicant is refused.