Hawaiian Moon, Inc.v.Rodney Doo

Trademark Trial and Appeal Board

Apr 27, 2006

No. 91165327 (T.T.A.B. Apr. 27, 2006)

Lykos Mailed: April 27, 2006

Opposition No. 91165327
Hawaiian Moon, Inc.
v.
Rodney Doo
Before Quinn, Bucher and Kuhlke, Administrative Trademark
Judges.

By the Board:

Applicant seeks to register the mark HAWAIIAN MOON for
"clothing and sportwear, namely shirts and dresses”
in International Class 25.1 Opposer has opposed
registration on the grounds that applicant's mark, when used
on the identified goods, so resembles opposer's previously
used mark HAWAIIAN MOON for "clothing, namely shirts, and
dresses and bottoms"2 and retail clothing store services as
to be likely to cause confusion, mistake, or to deceive

1 Application Serial No. 76571974, filed January 27, 2004,
alleging August 28, 2000 as the date of first use anywhere and in
commerce, with a disclaimer of HAWAIIAN.

2 Application Serial No. 76602164, filed July 13, 2004, alleging
December 2, 1999 as the date of first use anywhere and in
commerce. Opposer's application has been suspended pending
disposition of applicant's mark.
UNITED STATES PATENT AND TRADEMARK OFFICE
Trademark Trial and Appeal Board
P.O. Box 1451
Alexandria, VA 22313-1451

THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
prospective consumers within the meaning of Section 2(d) of
the Trademark Act.3
Applicant, in it answer, denied most of the salient
allegations of the notice of opposition, but admitted that
its applied-for mark is identical to opposer's pleaded mark.
This case now comes up for consideration of opposer's
motion for summary judgment on its claims of likelihood of
confusion and priority of use. The motion is fully
briefed.4
First, we will review the parties' respective
arguments. Opposer argues that it has standing to bring the
present opposition proceeding because its application has
been suspended pending disposition of applicant's
applied-for mark. As to its claim of likelihood of
confusion, opposer maintains that no genuine issue of
material fact exists because applicant has admitted that the

3 To the extent, if any, opposer intended to assert a claim of
dilution in the notice of opposition, we find that opposer has
failed to properly plead such a claim. See Toro Co. v. Torohead Inc., 61
USPQ2d 1164 (TTAB 2001); and Polaris Industries Inc. v. DC Comics,
59 USPQ2d 1798 (TTAB 2000).

4 Applicant has move to strike opposer's reply brief as
impermissible under the Trademark Rules of Practice as well as
to strike opposer’s additional evidence submitted concurrently
therewith. Contrary to applicant's assertions, the Board does
have the discretion to consider reply briefs. See Trademark Rule
2.127(a). Moreover, because the additional evidence submitted by
opposer is directed to the statements made by applicant in its
responsive brief, applicant's motion to strike is denied. The
Board has considered opposer’s reply brief and supplemental
evidence in its determination.
parties’ marks are identical, and it is undisputed that the
goods at issue are identical. On the issue of priority,
opposer maintains that it purchased HAWAIIAN MOON logo
artwork on September 7, 1999, hang tags on October 15, 1999
and woven labels on October 29, 1999, all for the intended
purpose of bearing opposer's mark on apparel; that it has
used its mark in interstate commerce at least as early as
November 1999 when it ran a promotional campaign on a radio
station and provided the radio station personnel with
matching shirts, all bearing the mark HAWAIIAN MOON on the
labels; that applicant, in response to opposer’s requests
for admissions, admitted that it did not commence interstate
use of its HAWAIIAN MOON mark until August 28, 2000; and
that as such, opposer has established its claim of prior
use.
In support of its motion for summary judgment, opposer
has attached the declaration of Mr. Aaron Chan, president of
opposer, with the following exhibits attached thereto:
copies of the March 16, 2005 and March 7, 2005 Office
actions issued by the examining attorney regarding opposer's
pending application; opposer's first set of requests for
admissions and applicant's responses thereto; a copy of a
photograph of radio personnel wearing matching shirts with
the term “Aloha” printed on the front from opposer’s
promotional campaign in November 1999; and invoices showing
opposer's purchases of radio advertising spots, logo
artwork, hang tags, and labels in September and October of
1999.5
In response to opposer's motion for summary judgment,
applicant contends that opposer has failed to submit proper
documentary evidence of prior use; that specifically,
opposer has not submitted hang tags, labels, or an article
of clothing bearing a hang tag or label with opposer's mark;
that the photograph of the radio personnel in the matching
“Aloha” shirts is undated and shows no labels bearing
opposer’s HAWAIIAN MOON mark; and that the copies of the
invoices referring to the purchase of hang tags, logo
artwork and labels contain no pictures of such items.
Applicant has submitted with its responsive brief his
own declaration averring that he is the owner of the Yat Loy
Company Inc., Ltd., a cutting facility for Hawaiian style
garments; that the store was founded in 1904; that he is the
owner of a Japanese trademark registration for the mark
HAWAIIAN MOON; that in August 2000 he displayed clothing

5 The Board also notes that opposer has enclosed portions of the
record (i.e. opposer's admission requests and applicant’s
responses thereto, opposer's interrogatories and respondent's
responses thereto, and the Board's final order) from an earlier
case involving both parties, Cancellation No. 92042101, Hawaiian
Moon, Inc. v. Rodney Doo. By way of background, in that case,
the Board canceled applicant's Registration No. 2483280 for the
mark HAWAIIAN MOON for “clothing and sportswear, namely, shirts,
shorts, skirts, dresses, caps, swimwear and sweatshirts” on the
ground that applicant fraudulently procured its trademark
registration. The Board found that not all of the goods covered

by the statement of use were then being sold in interstate
commerce.
bearing the HAWAIIAN MOON at a trade show in Las Vegas,
Nevada; and that since that time he has continuously sold in
interstate commerce clothing bearing the HAWAIIAN MOON mark.
Attached to applicant's declaration are various exhibits,
including excerpts from an undated book entitled "Master
Book of Hawaiian Shirt" and an undated photo of a label
bearing the mark HAWAIIAN MOON from the Yat Loy Company
appearing therein; a copy of applicant’s Japanese trademark
registration; and examples of applicant's labels bearing the
mark HAWAIIAN MOON. Applicant also submitted the
declaration of Mr. James Wray, applicant’s attorney, stating
that opposer has failed to meet its burden of proof on
summary judgment by failing to submit hang tags or labels
bearing its mark.
In reply, opposer argues that applicant has failed to
submit any evidence of his own use or use by a related
company prior to opposer's date of first use of November
1999; that applicant admits, and his evidence shows, that he
did not commence use of his mark in interstate commerce
until August 2000; and that applicant’s evidence of a
Japanese registration is irrelevant. With its reply,
opposer has submitted a second declaration from Mr. Chan,
with new exhibits, including a photograph dated March 16,
2006, of a shirt bearing the mark HAWAIIAN MOON on a label
which, according to Mr. Chan, is identical to the label on
the shirts worn by the radio personnel during the November
1999 promotional campaign. Opposer has also submitted the
declaration of Mr. Michael Lowe, an account executive with
KCCN FM radio station, stating that as part of the opening
of opposer’s store, he and other radio employees wore
HAWAIIAN MOON shirts on November 6, 1999.
Summary judgment is an appropriate method of disposing
of cases in which there are no genuine issues of material
fact in dispute, thus leaving the case to be resolved as a
matter of law. See Fed. R. Civ. P. 56(c). A party moving
for summary judgment has the burden of demonstrating the
absence of any genuine issue of material fact, and that it
is entitled to summary judgment as a matter of law. See
Celotex Corp. v. Catrett, 477 U.S. 317, 106 S.Ct. 2548
(1986). The nonmoving party must be given the benefit of
all reasonable doubt as to whether genuine issues of
material fact exist, and the evidentiary record on summary
judgment, and all inferences to be drawn from the undisputed
facts, must be viewed in the light most favorable to the
nonmoving party. See Opryland USA, Inc., v. Great American
Music Show, Inc., 970 F.2d 847, 23 USPQ2d 1471 (Fed. Cir.
1992). When the moving party's motion is supported by
evidence sufficient to indicate that there is no genuine
issue of material fact, and that the moving party is
entitled to judgment, the burden shifts to the nonmoving
party to demonstrate the existence of specific genuinely-
disputed facts that must be resolved at trial. The
nonmoving party may not rest on the mere allegations of its
pleadings and assertions of counsel, but must designate
specific portions of the record or produce additional
evidence showing the existence of a genuine issue of
material fact for trial.
Based on the submissions of the parties, we find that
opposer has met its burden of demonstrating that there are
no genuine issues of material fact, and that opposer is
entitled to judgment as a matter of law.
A plaintiff moving for summary judgment in its favor on
a Section 2(d) claim must establish that there is no genuine
dispute that (1) it has standing to maintain the proceeding;
(2) it is the prior user of its pleaded mark; and (3)
contemporaneous use of the parties' respective marks on
their respective goods would be likely to cause confusion,
mistake or to deceive consumers. See Hornblower & Weeks,
Inc. v. Hornblower & Weeks, Inc., 60 USPQ2d 1733 (TTAB
2001).
A. Standing
With regard to whether opposer has standing to maintain
this proceeding, we note that applicant has not challenged
opposer's standing to oppose the involved application. As
discussed in more detail below, we find that the evidence of
opposer's prior use of its HAWAIIAN MOON mark and the fact
that applicant's involved mark was cited as a potential bar
under Section 2(d) to registration of opposer's mark as set
forth in opposer's pending application are sufficient to
establish opposer's standing to bring this case. As such,
no genuine issue of material fact exists on the issue of
standing.
B. Priority
We turn next to the issue of whether there is a genuine
issue of material fact regarding opposer's asserted priority
of use. To establish priority on a likelihood of confusion
claim brought under Trademark Act Section 2(d), a party must
prove that, vis-à-vis the other party, it owns "a mark or
trade name previously used in the United States ... and not
abandoned...." Trademark Act Section 2, 15 U.S.C. Section
1052. A plaintiff may establish its own prior proprietary
rights in a mark through actual use or through use analogous
to trademark use, such as use in advertising brochures,
trade publications, catalogues, newspaper advertisements and
Internet websites which creates a public awareness of the
designation as a trademark identifying the party as a
source. See Trademark Act Sections 2(d) and 45, 15 U.S.C.
Section 1052(d) and 1127; T.A.B. Systems v. PacTel Teletrac,
77 F.3d 1372, 37 USPQ2d 1879 (Fed. Cir. 1996), vacating
Pactel Teletrac v. T.A.B. Systems, 32 USPQ2d 1668 (TTAB
1994).
The crux of the parties’ dispute on this issue lies in
their disagreement regarding the probative value of
opposer’s evidence of prior use. We find that the
declarations of Mr. Aaron Chan relied on by opposer contain
unequivocal statements regarding opposer’s date of first use
in interstate commerce of its HAWAIIAN MOON mark, and are
sufficient to establish opposer’s date of first use as
November 6, 1999. In particular, the first declaration of
Mr. Aaron Chan includes the following statements:
3. Since November 6, 1999, opposer has sold
clothing with labels bearing the trademark
"HAWAIIAN MOON."

4.The clothing that Opposer has been selling under
its trademark "HAWAIIAN MOON” includes shirts,
skirts and dresses, and other clothing items
(“Opposer’s Goods”).

5. Opposer has operated a retail clothing store
service under the service mark "HAWAIIAN MOON"
since November 6, 1999.

6.Since November 6, 1999, Opposer has advertised,
sold and distributed the Opposer's Goods under its
trademark "HAWAIIAN MOON."

Mr. Chan’s second declaration, submitted with opposer’s
reply brief, merely provides supplemental and more detailed
information regarding opposer’s date of first use of its
mark, and is entirely consistent with the statements made in
the first declaration. To illustrate, below are relevant
excerpts from the second declaration:
3. Since November 6, 1999, opposer has sold
clothing with labels and hang tags bearing the
trademark "HAWAIIAN MOON."

4.The clothing that Opposer has been selling under
its trademark "HAWAIIAN MOON” includes shirts,
skirts and dresses, and other clothing items
(“Opposer’s Goods”).

5.Opposer is and has continuously since November
6, 1999 been advertising, selling, and
distributing Opposer’s Goods in connection with
its trademark “HAWAIIAN MOON.”

6. Continuously since November 6, 1999, all of
Opposer’s Goods sold at opposer’s "HAWAIIAN MOON"
retail store have had affixed to them labels and
hang tags bearing the trademark "HAWAIIAN MOON."

Thus, the declarations of Mr. Chan, coupled with the
documentary evidence consisting of the photograph of the
label submitted with opposer's reply brief, are sufficient
to establish opposer's date of first use as November 6,
1999.
We now turn to applicant’s evidence of use. Applicant,
in response to opposer's admission requests, has admitted
that his earliest date of first use is August 28, 2000
(admission nos. 16 and 17). Applicant has not moved to
withdraw or amend his admissions. These admissions alone
demonstrate that no genuine issue of material fact exists as
to opposer's pleaded claim of priority.
Notwithstanding the above, the admissions are
consistent with the statements contained in applicant’s own
declaration that applicant did not commence use of its mark
until August 28, 2000. This is also the first use date set
forth in the involved application. While applicant alludes
to prior use of the mark HAWAIIAN MOON by another entity,
the Yat Loy Company, and has stated in his declaration that
he is the owner of the other company, he has submitted no
evidence to establish a relationship between the Yat Loy
Company’s use of the mark HAWAIIAN MOON and his own use of
the HAWAIIAN MOON mark (i.e., an assignment document of the
mark to applicant). Moreover, none of the evidence of the
Yat Loy Company’s use of the mark is dated. In addition,
applicant’s Japanese registration has no probative value in
this proceeding. We therefore find that opposer has
established that there is no genuine issue of fact that it
is the prior user of its pleaded HAWAIIAN MOON mark.
C. Likelihood of Confusion
Turning to the issue of likelihood of confusion, we are
guided by the factors set forth in the case of In re E.I. du
Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA
1973). Our determination of likelihood of confusion is
based on an analysis of all of the facts in evidence that
are relevant to the factors bearing on the issue of
likelihood of confusion. Our primary reviewing Court has
held that only those du Pont factors shown to be material or
relevant in the particular case and which have evidence
submitted thereon are to be considered. See Olde Tyme
Foods, Inc. v. Roundy’s, Inc., 961 F.2d 200, 22 USPQ2d 1542
(Fed. Cir. 1992).
In this particular case, the two key factors are the
degree of similarity of the parties' marks and the degree of
similarity of their respective goods and services. See
Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d
1098, 192 USPQ 24 (CCPA 1976). It is clear that there is no
genuine issue of material fact that the marks at issue are
identical and consist of the following word mark -- HAWAIIAN
MOON. Indeed, applicant, in its answer to the opposition,
admitted that the parties' marks are identical.
With regard to the similarity of the goods at issue,
the goods identified in applicant’s involved application,
"clothing and sportwear, namely shirts and dresses” are
identical to the goods recited in opposer’s pending
application -- "clothing, namely shirts, and dresses . . .”
Indeed, we note that applicant does not dispute in its
responsive brief that the parties’ respective goods are
identical.
As to opposer’s retail store services featuring the
sale of opposer’s clothing, it is well settled that
confusion is likely to result from the use of the same or
similar mark for goods and for retail store services
involving the sale of those goods. See e.g., In re U.S.
Shoe Corp., 229 USPQ 707 (TTAB 1985). We therefore find
that there is no genuine issue of material fact and that
confusion is likely to result as a matter of law.
Based on the foregoing, we find that there is no
genuine issue of material fact for trial. Moreover, as a
matter of law, our finding that confusion is likely is
consistent with the case law holding that in circumstances
where the marks are identical and used on identical goods,
confusion is not only likely but also inevitable. See
Reflange Inc. v. R-Con Int’l, 17 USPQ2d 1125 (TTAB 1990).
Accordingly, opposer’s motion for summary judgment is
granted; the opposition is sustained, and registration of
applicant's mark is refused.