GA Modefine S.A.v.Robert Jerome Thompson

Trademark Trial and Appeal Board

Apr 28, 2008

No. 91164161 (T.T.A.B. Apr. 28, 2008)

Butler Mailed: April 28, 2008

Opposition No. 91164161

GA MODEFINE S.A.

v.

ROBERT JEROME THOMPSON

Before Bucher, Zervas and Wellington, Administrative Trademark
Judges.

By the Board:
Applicant seeks to register the following mark

for “men's, women's, and children's clothing, namely jeans,
jackets, suits, coats, slacks, shorts, shirts, dress shirts, knit
shirts, sweaters, sweatshirts, sweatpants, dresses, skirts,
undergarments, neckties, belts, hats, caps, gloves, shoes,
sneakers, boots.”1 Applicant has disclaimed “JEANSWEAR U.S.A.”
and “MONTREAL KAMPALA CANNES BANGKOK.”

1 Application Serial No. 78305612, filed on September 25, 2003, claiming a
bona fide intention to use the mark in commerce.
UNITED STATES PATENT AND TRADEMARK OFFICE
Trademark Trial and Appeal Board
P.O. Box 1451
Alexandria, VA 22313-1451
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Opposition No. 91164161
2
Opposer, as grounds for the opposition, alleges priority of
use and likelihood of confusion and dilution. Opposer pleads
ownership of registered marks as follows:

(hereinafter sometimes referred to as AJ and design)2 and

(hereinafter sometimes referred to as AJ ARMANI JEANS and
design)3 for a wide variety of goods and services including,
inter alia, leather goods in Class 18, textile goods in Class 24,
clothing items in Class 25, retail store services in Class 35,
and fashion and dress designing in Class 42.
Applicant’s answer is in the nature of a general denial of
the salient allegations of the notice of opposition.
As background, this proceeding commenced on February 10,
2005. Applicant is representing himself. On December 7, 2005,
after opposer’s motion to compel was granted as conceded,
applicant sought, and was granted, substantial time to obtain
counsel. In an order dated April 28, 2006, the Board provided

2 Registration No. 2883471, issued on September 14, 2004, under Trademark Act
Section 44(e).
3 Registration No. 2742849, issued on July 29, 2003, claiming a date of first
use anywhere and a date of first use in commerce of January 1, 2001.

Opposition No. 91164161
3
applicant with information about Board proceedings and, noting
that sufficient time had passed for applicant to obtain counsel,
allowed applicant a final period of thirty days to obtain
counsel. (In all, applicant was allowed five months to find an
attorney.) The Board also reset discovery and trial dates
notwithstanding the status of applicant’s representation in view
of the amount of time that had passed while applicant was seeking
legal counsel. On March 14, 2007, opposer filed a motion for
summary judgment in its favor on its likelihood of confusion
claim only. Such motion was granted as conceded on May 14, 2007
and this opposition proceeding was terminated on the same day.
On July 11, 2007, applicant filed a motion for relief from
final judgment and his response to opposer’s motion for summary
judgment.4 The Board, in an order dated December 6, 2007,
granted applicant’s motion for relief from final judgment as
conceded and denied opposer’s motion for summary judgment. In
denying opposer’s motion, the Board found that a genuine issue of
material fact existed with respected to priority, noting
specifically that opposer failed to carry its burden of
establishing that its asserted trademark registrations are valid
and subsisting because it did not submit appropriate and
sufficient evidence. The Board further found that genuine issues
of material fact exist as to the similarities of the parties’

4 On July 14, 2007, applicant filed a copy of his certificate of service for
his motion for relief from final judgment and for his response to opposer’s
motion for summary judgment.
Opposition No. 91164161
4
respective marks, including the commercial impressions conveyed,
and as to the strength and fame of opposer’s pleaded marks.
Insofar as discovery closed long ago, only trial dates were
reset.
This case now comes up on the following motions: 1)
opposer’s motion, filed December 14, 2007, for reconsideration of
the Board’s December 6, 2007 decision granting applicant’s motion
for relief from final judgment and 2) opposer’s renewed and
second motion, also filed December 14, 2007, for summary judgment
in its favor on its priority and likelihood of confusion claim
and its dilution claim.5 Applicant, on December 26, 2007, filed
a succinct, combined response to opposer’s motions.
Motion for reconsideration is denied.
In support of its motion for reconsideration, opposer argues
that applicant’s “default” on opposer’s first summary judgment
motion was not an error and consequently, the Board erred in
granting applicant relief by “finding that Applicant has
presented evidence to show that his failure to respond to
Opposer’s Motion for Summary Judgment was due to excusable
neglect.” Opposer also points out that applicant repeatedly
missed deadlines in this proceeding; that applicant chose to

5 On January 14, 2008, opposer filed a motion for an enlargement of the trial
schedule in view of its pending motion for summary judgment and because the
Board had not yet suspended proceedings. On December 15, 2007, opposer filed
its motion for an enlargement of the trial schedule with applicant’s consent.
Proceedings are considered suspended since December 14, 2007, the filing date
of opposer’s renewed and second motion for summary judgment. Trademark Rule
Opposition No. 91164161
5
remain pro se in this proceeding notwithstanding periods of
suspension to permit him to retain counsel; and that applicant
should not be allowed to continue his pattern of delay and
disregard for applicable rules and procedures. Opposer notes
that, due to a mistake in docketing, it inadvertently failed to
respond to applicant’s motion for relief from final judgment.6
In response, applicant argues that, because he sent a mailed
copy and an emailed copy of his filing to opposer, opposer’s
argument that it made a docketing mistake is “completely
inappropriate and not warranted.”7
A motion for reconsideration under Trademark Rule 2.127(b),
provides an opportunity for a party to point out any error the
Board may have made in considering the matter initially, based on
the evidence of record and the prevailing legal authorities
before the Board at the time the motion was considered. Such a
motion may not properly be used to introduce additional evidence,
nor should it be devoted simply to a reargument of the points
presented in a brief on the original motion. Rather, the motion
should be limited to a demonstration that, based on the facts
before it and the applicable law, the Board's ruling is in error

2.127(d). Accordingly, opposer’s motions for enlargement of the trial
schedule are deemed moot.
6 Opposer points out that it otherwise has adhered to the deadlines and due
dates set in this proceeding.
7 Applicant also argues that opposer’s “response” to applicant’s motion for
relief from final judgment is untimely because opposer had ample time for a
(timely) response and chose not to so respond. However, it is opposer’s
timely-filed motion for reconsideration of the Board’s December 6, 2007 order
that is presently before us, not opposer’s “response” to applicant’s motion
for relief from final judgment.

Opposition No. 91164161
6
and requires appropriate change. See TBMP §518 (2nd ed. rev.
2004).
In this case, the Board granted applicant’s motion for
relief from final judgment as conceded, not because the Board
found excusable neglect so as to permit applicant to file his
response late to the first motion for summary judgment. While it
is unfortunate that opposer mistakenly failed to docket a
response to applicant’s motion for relief from final judgment,
based on the circumstances before us when the ruling was made,
the Board did not commit any error of law or fact.
Accordingly, opposer’s motion for reconsideration of the
Board’s December 6, 2007 decision granting applicant’s motion for
relief from final judgment is denied. See also Trademark Rule
2.127(a); and TBMP §502.04 (2d ed. rev. 2004).
Opposer’s renewed and second motion for summary judgment is
granted.

Opposer seeks summary judgment in its favor on its priority
and likelihood of confusion claim and on its dilution claim.
In support of its motion for summary judgment, opposer
argues that there are no genuine issues of material fact that the
parties’ respective marks are similar in sight, sound, meaning,
and commercial impression; that the clothing goods identified by
applicant are the same as the clothing goods identified in
opposer’s registrations; that, because the parties have not
limited their channels of trade, the goods are presumed to be

Opposition No. 91164161
7
sold in the same channels of trade; that opposer’s marks are
strong as evidenced by the fact that there are no other AJ marks
for clothing; and that opposer has priority of use.
More particularly, opposer argues that the AJ component of
its marks is the dominant feature of its marks; that the AJ
component of applicant’s mark is also dominant with the remaining
terms being non-distinctive and disclaimed, making the other
wording in applicant’s mark insufficient to distinguish the
parties’ marks. Opposer argues that applicant’s responses to
opposer’s document requests include samples of proposed
advertising and packaging evidencing applicant’s intent to use
“AJ’S JEANSWEAR” without the other components of the applied-for
mark and that no evidence has been submitted by applicant that
his use of AJ in his mark has a different meaning than opposer’s
use of AJ in its mark or that his mark conveys a different
commercial impression.
As to the goods, opposer’s AJ and design registration (No.
2883471) includes the following Class 25 goods:
Clothing, namely, pullovers, cardigans, sweaters, trousers,
skirts, jackets, blouses, shirts, jeans, sweatpants, shorts,
sweatshirts, suits, dresses, overcoats, coats, raincoats,
belts, jerseys, neckwear, socks and stockings, tights,
vests, waistcoats, jumpers, tracksuits, blousons, gymsuits,
knickers, T-shirts, anoraks, suspenders, loungewear,
underwear, beachwear, sleepwear, headwear, overalls, hats
and caps, gloves, shoes, sandals, boots and slippers.

Opposer’s AJ ARMANI JEANS and design registration (No. 2742849)
includes the following Class 25 goods:
Opposition No. 91164161
8
Clothing, namely, pullovers, cardigans, sweaters, trousers,
skirts, jackets, blouses, shirts, jeans, sweatpants, shorts,
sweatshirts, suits, dresses, overcoats, coats, raincoats,
belts, jerseys, neckwear, socks and stockings, vests,
waistcoats, jumpers, tracksuits, blousons, T-shirts,
anoraks, suspenders, loungewear, headwear, overalls, hats
and caps, gloves, shoes, sandals, boots and slippers.

Opposer points out that the following identical or nearly
identical goods are identified in both the AJ ARMANI JEANSWEAR
and design registrations and the application:
men's, women's, and children's clothing, namely jeans,
jackets, suits, coats, slacks, shorts, shirts, dress shirts,
knit shirts, sweaters, sweatshirts, sweatpants, dresses,
skirts, undergarments, neckties, belts, hats, caps, gloves,
shoes, sneakers, boots.

Opposer argues that its AJ marks are the only registered AJ
marks that cover clothing. As a result, opposer contends that
the consuming public is accustomed to seeing only opposer as the
source of clothing items with the label AJ. Thus, opposer
argues, its AJ marks are very strong and applicant’s use of his
mark would dilute the distinctive quality of opposer’s AJ marks.
Opposer argues that its marks are famous and very well known.
Opposer’s motion is supported by certified copies of its
pleaded registrations showing that the registrations are valid
and subsisting and are owned by opposer. Opposer’s motion is
further supported by the declaration of its attorney introducing
numerous exhibits, including discovery responses from applicant.8

8 Among the submissions introduced by opposer’s attorney are a copy of the
USPTO assignment record and a copy of the TARR record for a third-party
registration (No. 1349538), cancelled under Trademark Act §8 in 1992, for the
mark AJ’S JEANSWEAR U.S.A. MONTREAL KAMPALA CANNES BANGKOK and design. The
exhibit was introduced for the purpose of showing that applicant was at no
time the record owner of such registration. Opposer’s introduction of such
Opposition No. 91164161
9
Opposer’s motion is also supported by the declaration of
opposer’s chief financial officer (“CFO”) stating, among other
things, that opposer has been using both its marks in commerce in
the United States for clothing since as early as 2000. Opposer’s
CFO also provides monetary figures in Euros for total sales since
2000 and for the year 2006 as well as monetary figures for
promoting and advertising activities in the United States since
2000.9
In response, applicant argues that opposer “has not shown
any new grounds” in support of its motion by way of argument
(referred to applicant as “memorandum”), declaration or exhibits.
Applicant also argues that “there is a genuine factual dispute
and material facts exist.” Applicant requests resumption of
proceedings.
In a motion for summary judgment, the moving party has the
burden of establishing the absence of any genuine issue of
material fact and that it is entitled to judgment as a matter of
law. See Fed. R. Civ. P. 56. A genuine dispute with respect to

material is in anticipation of an argument from applicant and is based on
applicant having attached a TARR printout of the cancelled, third-party
registration as an exhibit to his answer in support of his averment that his
mark is “the same as the Original AJ’S JEANWEAR and design mark” which “has
priority over the Opposer’s [registrations] by virtue of Original’s earlier …
effective filing date.”
9 The Board noted in its December 6, 2007 order that the introduction of this
information in Euros was not particularly enlightening. Opposer now provides
an equivalent in U.S. dollars in its brief for its CFO’s statements as
follows: 1) since 2000, opposer has sold approximately $1.8 million in
clothing bearing the AJ and design marks; 2) in 2006, opposer sold
approximately $1.5 million in clothing bearing the AJ and design marks; 3)
since 2000, opposer has spent approximately $5 million in advertising and
promotion of the AJ and design marks in the United States.

Opposition No. 91164161
10
a material fact exists if sufficient evidence is presented that a
reasonable fact finder could decide the question in favor of the
non-moving party. See Opryland USA Inc. v. Great American Music
Show, Inc., 970 F.2d 847, 23 USPQ2d 1471 (Fed. Cir. 1992). Thus,
all doubts as to whether any particular factual issues are
genuinely in dispute must be resolved in the light most favorable
to the non-moving party. See Olde Tyme Foods Inc. v. Roundy’s
Inc., 961 F.2d 200, 22 USPQ2d 1542 (Fed. Cir. 1992).
Nonetheless, if the moving party meets its burden, that is,
if the moving party has supported its motion with affidavits or
other evidence which if unopposed would establish its right to
judgment, the nonmoving party may not rest on mere denials or
conclusory assertions, but rather must proffer countering
evidence, by affidavit or as otherwise provided in Fed. R. Civ.
P. 56, showing that there is a genuine factual dispute for trial.
See Octocom Systems, Inc. v. Houston Computer Services, Inc., 918
F.2d 937, 16 USPQ2d 1783 (Fed. Cir. 1990); and TBMP §528.01 (2d
ed. rev 2004).
In this case, opposer has introduced new evidence in support
of its priority: certified copies of its pleaded registrations.
This proof, in addition to establishing that there are no genuine
issues of material fact regarding opposer's standing, removes the
issue of priority from this case. See King Candy Co. v. Eunice
King's Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108, 110 (CCPA
Opposition No. 91164161
11
1974). Thus, no genuine issue of material fact exists as to
opposer’s priority of use.
With respect to likelihood of confusion, we are guided by
the factors set forth in the case In re E.I. du Pont de Nemours &
Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1793). It is not
required that every du Pont factor be considered but only “those
factors that are relevant and of record.” See M2 Software, Inc.
v. M2 Communications, Inc., 450 F.3d 1378, 78 USPQ2d 1944, 1947
(Fed. Cir. 2006).
A comparison of the clothing items identified in opposer’s
registrations to the clothing items identified in applicant’s
application shows that they are, as opposer points out, identical
in large part and otherwise overlapping. Thus, no genuine issue
of material fact exists with respect to the relatedness of the
parties goods which are, in fact, the same, overlapping and
related clothing items.
Insofar as applicant seeks a registration unrestricted with
respect to channels of trade (or classes of purchasers to which
sales of the goods are directed), and opposer’s registrations are
also unrestricted, the parties’ respective goods are presumed to
travel in the same channels of trade (and are further presumed to
be sold to the same class of purchasers).10 See Octocom Systems,

10 Although not discussed directly by opposer, consideration of the class of
purchasers is also relevant because neither the registrations nor the
application are restricted in any way.
Opposition No. 91164161
12
Inc. v. Houston Computer Services, Inc., 918 F.2d 937, 16 USPQ2d
1783 (Fed. Cir. 1990).
Opposer, by way of the declaration of its CFO and its
indication that its AJ marks are the only AJ marks registered for
clothing (i.e., in Class 25), has supported its position that its
marks are strong. Applicant has not provided any countering
evidence. Thus, there exists no genuine issue of material fact
with respect to the strength of opposer’s AJ marks.
Turning next to the similarity of the marks, we must compare
the marks in their entireties as to appearance, sound,
connotation and commercial impression. See Palm Bay Imports,
Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d
1369, 73 USPQ2d 1689 (Fed. Cir. 2005). Nevertheless, it is well
settled that one feature of a mark may be more significant than
another, and it is not improper to give more weight to this
dominant feature in determining the commercial impression created
by the mark. See In re National Data Corp., 753 F.2d 1056, 224
USPQ 749, 751 (Fed. Cir. 1985).
Here, opposer has made a showing that the parties’ marks are
similar and have the same meaning. Opposer points out that AJ is
the dominant component of the parties’ respective marks. More
particularly, it is the only term of opposer’s AJ and design
mark; makes up a dominant component of opposer’s AJ ARMANI JEANS
and design mark because it is the first term reading left to
right and is in larger lettering than the terms ARMANI JEANS; and
Opposition No. 91164161
13
makes up a dominant component of applicant’s mark because it is
displayed in larger lettering than the remaining wording, which,
in applicant’s mark, has been disclaimed, and is centered in the
design, which draws the attention of the viewer to such term.
Disclaimed matter is often “less significant in creating the
mark’s commercial impression.” See In re Code Consultants, Inc.,
61 USPQ2d 1699, 1702 (TTAB 2001). See also Cunningham v. Laser
Golf Corp., 222 F.3d 1056, 55 USPQ2d 1842, 1846 (Fed. Cir. 2000),
quoting, In re National Data Corp., 753 F.2d 1056, 224 USPQ 749,
752 (Fed. Cir. 1985) (regarding descriptive terms, our primary
reviewing Court has noted that the “descriptive component of a
mark may be given little weight in reaching a conclusion on
likelihood of confusion ….”). In addition, the possessive aspect
of the AJ component in applicant’s mark is minimized because the
“’s” is much smaller in comparison to the letters AJ. Moreover,
the “’s” has a minimal effect in distinguishing the marks in
sound and commercial impression. See, e.g., In re Chatam
International Inc., 380 F.3d 1340, 71 UPSQ2d 1944, 1946 (Fed.
Cir. 2004) (“… GASPAR is [] the dominant feature of the
registered mark, GASPAR’S, albeit in possessive form.”).
Applicant has not provided any countering evidence that AJ is not
the dominant feature of the involved marks. The carrier design
elements in each mark and the font types used by opposer differ
from those used by applicant. However, the differences are not
sufficiently distinct so as to distinguish the marks, accounting
Opposition No. 91164161
14
for the strength of the term AJ, the dominant feature of the
parties’ marks. Thus, no genuine issue of material fact exists
and we find that the parties marks are similar.
Accordingly, we find that opposer has carried its burden of
proof and that no genuine issues of material fact remain as to
opposer's standing, priority, or the ground of likelihood of
confusion. In view thereof, opposer's motion for summary
judgment is granted and the opposition is sustained with respect
to opposer’s claim of priority and likelihood of confusion based
on both the AJ and design mark and the AJ ARMANI JEANS mark and
design, and registration to applicant is refused.11
☼☼☼

11 Insofar as opposer’s motion for summary judgment is sustained on its
priority of use and likelihood of confusion claim, we need not reach a
determination on opposer’s dilution claim. See American Paging Inc. v.
American Mobilphone Inc., 13 USPQ2d 2036, 2039-40 (TTAB 1989), aff'd without
opinion, 17 USPQ2d 1726 (Fed. Cir. 1990). Also, we note that a plaintiff
must meet more stringent requirements to establish that its mark is famous for
dilution purposes. In addition, opposer must establish that the parties’ mark
are substantially similar, which is different than confusingly similar. See
Toro Co. v. ToroHead Inc., 61 USPQ2d 1164 (TTAB 2001).