Carol Ihlenburgv.Antoinette Young

Trademark Trial and Appeal Board

Jul 27, 2001

No. 91108296 (T.T.A.B. Jul. 27, 2001)

7/27/01 Paper No.
17

GDH/gdh

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

Carol Ihlenburg
v.
Antoinette Young d.b.a. Young Associates
_____

Opposition No. 108,296 to application Serial No. 75/104,152
filed on May 14, 1996
_____

Nancy J. Moriarty and Charles D. McClung of Chernoff,
Vilhauer, McClung & Stenzel, L.L.P. for Carol Ihlenburg.

Joseph H. Roediger of Nelson & Roediger for Antoinette Young
d.b.a. Young Associates.
______

Before Hohein, Hairston and Wendel, Administrative Trademark
Judges.

Opinion by Hohein, Administrative Trademark Judge:

Antoinette Young d.b.a. Young Associates has filed
an application to register the mark "DIGGERS" for "clothing,
namely, jackets, vests, pants and shirts."1

1 Ser. No. 75/104,152, filed on May 14, 1996, which is based on an
allegation of a bona fide intention to use the mark in commerce.

THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Opposition No. 108,296
2
Carol Ihlenburg has opposed registration on the
ground that prior to the filing date of applicant's
application, opposer "adopted and used in commerce the mark
DIGGER for shoes and t-shirts, through her exclusive Licensee,
Larsen Travis Golf Co."; that on March 24, 1997, opposer filed
an application, Ser. No. 75/262,510, to register such mark;
that if applicant's mark becomes registered, it will prevent
opposer from registering her mark; that the respective marks
"are essentially the same and are used on the same or similar
goods"; and that "[u]se by Applicant of the mark DIGGERS, when
applied to Applicant's goods, would be likely to cause
confusion with Opposer's DIGGER mark as used with Opposer's
goods, or to cause mistake or to deceive."
Applicant, in her answer, has admitted that opposer
"is the Applicant for U.S. Trademark Application Serial No.
75/262,510 for the mark DIGGER ... which was filed on March
24, 1997," but has otherwise denied the salient allegations of
the notice of opposition. In particular, applicant has
alleged among other things that any use of the mark "DIGGER"
by opposer or any of her asserted licensees "has been
insufficient to result in the development of a trade identity"
therein and that, as an affirmative defense, "any alleged use
of the mark DIGGER ... has been abandoned" by opposer or any
licensees of opposer.
Opposition No. 108,296
3
The record consists of the pleadings; the file of
the involved application; and, as opposer's case-in-chief, the
testimony, with exhibits, of Frederick H. Ihlenburg, who is
the chief executive officer of Diggers, Inc. in addition to
being the husband and business partner of opposer. Applicant
did not take testimony or otherwise submit any evidence.
Briefs have been filed, but an oral hearing was not requested.
Preliminarily, we note that the record reveals that,
as actually used, opposer's mark is "DIGGERS" rather than
"DIGGER," as pleaded in the notice of opposition, and that the
"DIGGERS" mark has been used in connection with shorts and
equipment bags in addition to the particular goods, namely,
shoes and t-shirts, as set forth in the notice of opposition.
Although opposer asserts in her reply brief that her pleading
should be deemed to be amended, pursuant to Fed. R. Civ. P.
15(b),2 to conform to the evidence presented at trial, based
upon applicant's allegedly implied consent thereto, we note
that only counsel for opposer, and not applicant's attorney,

2 Such rule provides, in relevant part, that:

When issues not raised by the pleadings are tried by
express or implied consent of the parties, they shall be
treated in all respects as if they had been raised in the
pleadings. Such amendment of the pleadings as may be
necessary to cause them to conform to the evidence and to
raise these issues may be made upon motion of any party at
any time, even after judgment; but failure to so amend
does not affect the result of the trial of these issues.
....
Opposition No. 108,296
4
attended the trial deposition of opposer's sole witness.
While perhaps, if applicant's attorney had appeared at the
deposition and failed to object to testimony and/or exhibits
demonstrating opposer's mark to be "DIGGERS" instead of
"DIGGER," such lack of objection could be construed as implied
consent, we fail to see how the absence of applicant's
attorney from the deposition can be viewed as tantamount to
consent to anything which was said or introduced therein on
behalf of opposer.
However, in applicant's trial brief, we observe that
her attorney has repeatedly referred to opposer's mark as
being "DIGGERS" and the single objection specifically raised
by applicant is the contention that opposer "is not entitled
to rely on use of the mark on goods other than those goods
specified in the Notice of Opposition," which as applicant
observes "alleges [prior] use of the mark on shoes and t-
shirts only." In view thereof, we hereby deem opposer's
pleading to be amended pursuant to Fed. R. Civ. P. 15(b) so as
to set forth, in light of the implied consent thereto by
applicant, the mark "DIGGERS" as the mark actually used by
opposer and to state, as so limited in the original notice of
opposition, that prior use of such mark has been in connection
only with respect to "shoes and t-shirts."

Opposition No. 108,296
5
Consequently, and inasmuch as applicant's pleaded
affirmative defense of abandonment is considered to have been
waived since no evidence or argument has been offered by
applicant with respect thereto, the issues to be determined in
this proceeding are whether opposer has priority of use of her
"DIGGERS" mark for shoes and t-shirts and, if so, whether
contemporaneous use by applicant of the identical mark
"DIGGERS" in connection with jackets, vests, pants and shirts
is likely to cause confusion.
According to the record, opposer first used the mark
"DIGGERS" in connection with the sale of t-shirts on September
29, 1995. Subsequently, opposer commenced use of her mark
with respect to the sale of softball shoes on January 1, 1996,
which was followed by the first use of such mark in connection
with the sale of paintball shoes on January 15, 1996.
Opposer's t-shirts were introduced first as accessories to its
later development of shoes for softball and paintball since
the former, which were initially sold at various softball
tournaments, were easier to produce than items of footwear.
In particular, opposer had 1,000 t-shirts printed with her
"DIGGERS" mark in September 1995 and had 500 pairs of softball
shoes bearing such mark ordered in November 1995, with sales
of such goods respectively commencing on the dates indicated
above.
Opposition No. 108,296
6
The "DIGGERS" mark appears on woven labels sewn into
t-shirts as well as being printed on the goods themselves.
Such mark is used on footwear by being printed on the heel and
tongue of each shoe in addition to appearing on the outer sole
thereof and, in the case of paintball shoes, on the cover of
the boxes therefor. Use of the "DIGGERS" mark has been
continuous since the introduction of each product with which
it is used, with sales of such products having been made
throughout the United States. In addition, opposer has filed
an intent-to-use application, which was given a filing date of
March 24, 1997 by the Patent and Trademark Office, to register
the mark "DIGGER" for "footwear."3
Opposer's sales of her "DIGGERS" clothing and
footwear have been by her licensees, the first of which was
Larsen Travis Golf Company. According to Mr. Ihlenburg, there
have been several other licensees since then, including
Diggers, Inc., which sells apparel, including footwear, to the
softball industry, while her other licensees sell to the
paintball industry. With respect to the selection of the mark
"DIGGERS," opposer's witness also testified that, inasmuch as

3 A previous application filed by opposer to register the same mark
for the same goods, and which was signed on October 17, 1995, was
inadvertently allowed to become abandoned following issuance of a
notice of allowance when opposer, who was traveling with her husband
on business outside of the United States, was not available to sign
either a statement of use or a request for an extension of time to
file a statement of use by the due date of March 10, 1997.
Opposition No. 108,296
7
"[t]he products which form the basis of the company are
footwear," and since "digging into the ground and forming an
attachment with the ground is the connotation that is
associated with digging or diggers, ... we chose the name
Diggers to show that we were a fast-moving, hard grabbing,
athletic-oriented company." (Ihlenburg dep. at 15-16.)
The approximate dollar volume of sales in the United
States of goods sold under opposer's "DIGGERS" mark has been
indicated to be as follows:4
Year Shoes Clothing and Equipment Bags
1995 $7,000 $1,000 to $1,500
1996 $42,000 $3,000 to $5,000
1997 $500 $3,000 to $5,000
1998 $175,000 none

Mr. Ihlenburg testified that, as to such sales volume for the
year 1999, "we sold slightly more in shoes and we had, I
believe, something in the range of $50,000 in accessories,
which would include clothing, bags and other items." (Id. at
18.) He further indicated that "we are going to come out in
the year 2000 with our full line of softball clothing and
shoes" and estimated that "we are expecting somewhere in the

4 While not deemed part of opposer's claim of prior proprietary
rights in the mark "DIGGERS," the record does reveal that opposer
first used such mark in connection with both shorts and equipment
bags as early as October 1995 and that the mark has also been used in
connection with sweatshirts, jackets, pants and pullover-type vests.
However, unlike the case with sales of shoes, separate sales figures
for t-shirts were not furnished. Instead, sales thereof were lumped
together with sales of other clothing items and those of equipment
bags.
Opposition No. 108,296
8
neighborhood of 800,000 to a million dollars in sales in the
year 2000 ...." (Id.)
As to advertising expenditures on opposer's behalf
for the goods offered under the "DIGGERS" mark, Mr. Ihlenburg
stated that, "[f]or the most part, our exposure has been print
media of various kinds, magazines, newspapers, catalogs,
fliers, all manner of print materials" and some "television
exposure." (Id. at 18-19.) He additionally testified that
"we're on the Internet through our licensees." (Id. at 19.)
Samples of print media advertising for "'Diggers' The
Ultimate Paintball Shoe" and Internet ads for "Diggers 'The
Ultimate Paintball Shoe'" and "Diggers Paintball Shoes" were
also provided. (Opposer's Exhs. 18-20, respectively.)
Furthermore, according to opposer's witness, her "DIGGERS"
mark "has a high level of exposure" in the paintball industry
and, "[i]n the softball market, we have a low level of
exposure, [but] growing." (Ihlenburg dep. at 20.)
Finally, as to use in the marketplace by applicant
or others of marks similar to opposer's "DIGGERS" mark in
connection with similar products, Mr. Ihlenburg observed that,
"other than Ms. Young, we have never seen anything that would
carry the Diggers name or trademark." (Id. at 21.) He noted,
in particular, with respect to any actual use by applicant of
her "DIGGERS" mark that:
Opposition No. 108,296
9
To the best of my knowledge, she has
nothing more than business cards or a
concept of a line. I do not know of any
product that she's actually produced, even
for sample.

(Id.)
Turning first to determination of the issue of
priority of use, it is clear from both the uncontroverted
testimony and the answers to certain interrogatories that
opposer is the prior user of the "DIGGERS" mark in connection
with her t-shirts, softball shoes and paintball shoes.
Opposer, in this regard, has made substantially continuous,
commercially significant sales of such goods bearing her mark
since as early as September 29, 1995 with respect to t-shirts,
January 1, 1996 as to softball shoes, and January 15, 1996 in
the case of paintball shoes. Each of such dates is plainly
prior to the May 14, 1996 filing date of applicant's involved
intent-to-use application for her "DIGGERS" mark, which in the
absence of testimony or other proof of an actual date of first
use is the earliest date for priority purposes upon which
applicant can rely in this proceeding. See, e.g., Lone Star
Mfg. Co., Inc. v. Bill Beasley, Inc., 498 F.2d 906, 182 USPQ
368, 369 (CCPA 1974); Columbia Steel Tank Co. v. Union Tank &
Supply Co., 277 F.2d 192, 125 USPQ 406, 407 (CCPA 1960); and
Zirco Corp. v. American Tel. & Tel. Co., 21 USPQ2d 1542, 1544
(TTAB 1991).
Opposition No. 108,296
10
This brings us to consideration of the pertinent
factors set forth in In re E. I. du Pont de Nemours & Co., 476
F.2d 1357, 177 USPQ 563, 567 (CCPA 1973), for determining
whether a likelihood of confusion exists. As previously
noted, the marks at issue are identical in all respects. Both
applicant's "DIGGERS" mark and opposer's "DIGGERS" mark not
only have the same sound, appearance and connotation but, when
utilized in connection with the respective goods of the
parties--including articles of clothing such as shirts and t-
shirts--engender the same overall commercial impression. The
principal focus of our inquiry, therefore, is on the factor of
the similarity or dissimilarity in the parties' goods and the
nature thereof as those goods are described in applicant's
application and are in use by opposer.
Here, it is plain that the respective goods of the
parties are in part identical and are otherwise closely
related, at least insofar as articles of apparel other than
softball and paintball shoes are concerned. Applicant's
goods, as identified in her application, are set forth as
"clothing, namely, jackets, vests, pants and shirts," while
opposer's goods include t-shirts, an item of clothing which is
encompassed by the term "shirts" in applicant's application.
Such items, on their face, are common, everyday items of
outerwear which would be sold to the same classes of ordinary
Opposition No. 108,296
11
purchasers through identical channels of trade. When such
goods are sold by two different parties under the same,
arbitrary mark "DIGGERS," it is obvious that confusion as to
the source or sponsorship of applicant's jackets, vests, pants
and shirts and opposer's t-shirts is inherently likely to
occur.
However, where the goods of the parties on their
face are specifically different, as is the case between
opposer's softball and paintball shoes, on the one hand, and
applicant's jackets, vests, pants and shirts, on the other
hand, it is incumbent upon opposer, as the party having the
burden of proof, to show that such goods are related in some
viable fashion and/or that they are marketed or promoted under
circumstances and conditions that could bring them to the
attention of the same purchasers or prospective customers in a
situation that could cause such consumers reasonably to
assume, because of the identity of the parties' marks, that
the particular goods share a common source or sponsorship.
See, e.g., Amcor, Inc. v. Amcor Industries, Inc., 210 USPQ 70,
78 (TTAB 1981). Here, it is clear that opposer's "DIGGERS"
footwear is not simply a type of athletic shoes, such as
sneakers, which are commonly worn, like applicant's "DIGGERS"
jackets, vests, pants and shirts, as everyday items of
outerwear. Instead, the shoes in connection with which
Opposition No. 108,296
12
opposer utilizes her "DIGGERS" mark are softball and paintball
shoes. Such shoes prominently feature cleats and are
specifically designed and used solely as items of sporting
equipment to improve players' performance in the sport of
softball and in the game of paintball. Opposer's softball and
paintball shoes plainly are not suitable for everyday wear, as
is the case with applicant's clothing.
Moreover, the mere fact that clothing of some sort
happens to be worn by those engaged in playing softball or
paintball does not, without more, suffice to establish that
shoes for playing such activities would be seen by ordinary
consumers of opposer's footwear and applicant's clothing items
as being commercially or otherwise closely related to articles
of apparel of the kinds applicant intends to offer. Stated
otherwise, the record contains nothing to demonstrate that
sporting equipment such as softball and paintball shoes would
be viewed by the purchasing public as affiliated or otherwise
originating with the same source which produces and/or sells
apparel such as jackets, vests, pants and shirts. Absent such
evidence of a viable relationship between the specific goods,
as was the case in, for example, In re Kangaroos USA Inc., 223
USPQ 1025 (TTAB 1984), opposer has failed to meet her burden
of proving that confusion is likely from the contemporaneous
use of the mark "DIGGERS" by opposer for softball and
Opposition No. 108,296
13
paintball shoes and by applicant for jackets, vests, pants and
shirts. Moreover, while opposer in her reply brief
characterizes both her shoes and applicant's clothing as being
items of "wearing apparel," it is settled that the mere fact
that a term may be found which encompasses the parties'
products does not mean that customers will view the goods as
related in the sense that they will assume that they emanate
from or are associated with a common source. See, e.g.,
General Electric Co. v. Graham Magnetics Inc., 197 USPQ 690,
694 (TTAB 1977) and Harvey Hubbell Inc. v. Tokyo Seimitsu Co.,
Ltd., 188 USPQ 517, 520 (TTAB 1975).
Accordingly, while we find that there is a
likelihood of confusion from the contemporaneous use by the
parties of the mark "DIGGERS" in connection with opposer's t-
shirts and applicant's jackets, vests, pants and shirts,
opposer has failed to satisfy her burden of demonstrating that
confusion is likely to occur in connection with the use of
such mark by opposer for softball and paintball shoes and by
applicant for jackets, vests, pants and shirts. As to the
latter, we note that our principal reviewing court has
cautioned that "[w]e are not concerned with mere theoretical
possibilities of confusion, deception, or mistake or with de
minimis situations but with the practicalities of the
commercial world, with which the trademark laws deal."
Opposition No. 108,296
14
Electronic Design & Sales Inc. v. Electronic Data Systems
Corp., 954 F.2d 713, 21 USPQ2d 1388, 1391 (Fed. Cir. 1992),
quoting from Witco Chemical Co. v. Whitfield Chemical Co., 418
F.2d 1403, 1405, 164 USPQ 43, 44-45 (CCPA 1969), aff'g, 153
USPQ 412 (TTAB 1967).
Decision: The opposition is sustained in part and
dismissed in part as indicated.