Sara Lee Corp.v.Goldstone Hosiery Co.

Trademark Trial and Appeal Board

Feb 22, 2001

No. 92022732 (T.T.A.B. Feb. 22, 2001)

2/22/01
Hearing: Paper No. 81
September 21, 2000 JQ
UNITED STATES PATENT AND TRADEMARK OFFICE
_____
Trademark Trial and Appeal Board
_____
Sara Lee Corporation
v.
Goldstone Hosiery Company
_____
Cancellation No. 22,732
_____
J. David Mayberry and William M. Bryner of Kilpatrick
Stockton for Sara Lee Corporation.
Barry A. Cooper and Donna L. Mirman of Gottlieb, Rackman &
Reisman for Goldstone Hosiery Company.
_____
Before Hanak, Quinn and Bucher, Administrative Trademark
Judges.
Opinion by Quinn, Administrative Trademark Judge:
Sara Lee Corporation has petitioned to cancel a
registration owned by Goldstone Hosiery Company of the mark
GOLDEN LEGS for “hosiery for men, women and children.”1 As
grounds for cancellation under Section 2(d) of the Trademark
Act, petitioner alleges that respondent’s mark, when applied
to respondent’s goods, so resembles petitioner’s previously
used and registered famous mark L’EGGS, and the L’EGGS
1 Registration No. 1,767,054, issued April 20, 1993 on the
Supplemental Register; Section 8 affidavit filed and accepted.
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Cancellation No. 22,732
2
family of marks, all for hosiery, as to be likely to cause
confusion.
Respondent, in its amended answer, denied the salient
allegations of the petition for cancellation.
The voluminous record consists of the pleadings; the
file of the involved registration; trial testimony, with
related exhibits, taken by each party (including two surveys
undertaken by petitioner); certified copies of petitioner’s
registrations, discovery depositions and related exhibits,
responses to interrogatories and certain requests for
admissions, official records, and excerpts from printed
publications, all made of record by way of petitioner’s
notices of reliance; and a dictionary listing for the term
“leg,” copies of third-party registrations, and other
official records introduced by respondent in its notices of
reliance.2 The parties filed briefs, and both were
represented by counsel at an oral hearing held before the
Board.3
2 The record includes a non-executed protective agreement to
cover confidential materials. The agreement was submitted with a
request from petitioner for entry of the agreement, which the
Board granted as conceded in an order dated December 27, 1999.
The Board presumes that the parties have since executed the
agreement to provide for the handling of such materials.
3 Petitioner filed, shortly before the oral hearing, a motion “to
submit controlling precedent decided after the close of the
briefing period.” The motion is superfluous inasmuch as the
Board on its own can consider recent case law. Moreover, the
Board is obviously aware of these two opinions involving appeals
of Board decisions to the Federal Circuit, the Board’s primary
reviewing court. The court’s opinions have been considered in
reaching our determination in the present case.
Cancellation No. 22,732
3
The Parties
Petitioner began to develop in 1969 a line of pantyhose
in an effort to fill what petitioner identified as a void in
the hosiery market. According to Anne Jardine, petitioner’s
vice president, consumer marketing, petitioner perceived
that an untapped market existed for the sale of women’s
hosiery through food stores and drug stores, mostly because,
in petitioner’s view, the quality of hosiery offered in
those trade channels was horribly inconsistent. Petitioner
determined that women would buy hosiery in supermarkets and
drug stores if there existed a recognized, reliable brand of
quality hosiery. Petitioner’s product was test marketed,
and then was rolled out nationally in October 1970.
Ms. Jardine testified that petitioner coined the mark
L’EGGS for the product. According to Ms. Jardine, the mark
“combined the simple egg (which played off the shape of the
package in which the product was offered), a women’s leg,
and an apostrophe, which gave it a French flair.” Over the
years, petitioner has used a variety of marks (including
slogans), with each one, almost without exception, featuring
L’EGGS as a portion of the mark. The original L’EGGS mark
first appeared, and is still being used, in the following
stylized fashion as shown below.
Cancellation No. 22,732
4
Petitioner owns the following valid and subsisting
registrations issued on the Principal Register: L’EGGS,
L’EGGS (stylized), SUMMER L’EGGS, WINTER L’EGGS (stylized),
OUR L’EGGS FIT YOUR LEGS, NOTHING BEATS A GREAT PAIR OF
L’EGGS, LITTLE L’EGGS (“LITTLE” disclaimed), L’EGGS CLASSICS
(“CLASSICS” disclaimed), GREAT LEGS (stylized), LITTLE
L’EGGS (stylized) (“LITTLE” disclaimed), NOTHING BEATS A
GREAT PAIR OF L’EGGS (stylized), L’EGGSWEAR (stylized) and
THE FIT OF L’EGGS IN A WHOLE NEW FASHION.4 The various
registrations cover, for the most part, hosiery and
pantyhose. Some registrations cover leotards, tights, warm-
up suits, shorts, leggings, knee-highs, socks, footwear and
slippers. Petitioner also has used slogans such as “She’s
Got L’EGGS” and “It Pays To Show Off Your L’EGGS.”
Petitioner’s products are sold in food, drug and mass
merchandising stores, and through petitioner’s own catalogs.
Over the years, sales of goods bearing the L’EGGS marks
total $10 billion. In 1998, petitioner’s sales accounted
for nearly 54% of all women’s sheer hosiery sales in the
United States. Petitioner’s L’EGGS mark enjoys a 98% brand
awareness among female hosiery consumers. The goods are
4 A check of Office records shows that the registrations of the
marks SHE’S GOT LEGS, L’EGGS CLASSICS COLOR EDITIONS (stylized)
(“CLASSICS COLOR EDITIONS” disclaimed) and NOTHINGS MORE FITTING
THAN L’EGGS CLASSICS have been canceled pursuant to Section 8 of
the Act. We take judicial notice of this updated information.
Hawaiian Perfumes, Ltd. v. Diamond Head Products of Hawaii, Inc.,
204 USPQ 144, 146-47 (TTAB 1979).
Cancellation No. 22,732
5
extensively advertised on television and in the print media.
Female celebrities have been featured in some of
petitioner’s television commercials, and petitioner’s L’EGGS
brand products have been promoted in conjunction with
petitioner’s sponsorship of sport competitions, such as the
Olympics, and of concert tours. Promotional expenditures
over the years are in excess of $1.8 billion. Petitioner
also has been the beneficiary of unsolicited publicity in
various printed publications.
Respondent was founded in the late 1970’s by Zoltan
Goldstein who came to the United States from eastern Europe
after surviving the Holocaust. Respondent continues to be
run as a family-operated private company. In 1984,
respondent adopted the mark GOLDEN LEGS to identify its
hosiery line. In addition to this line, respondent services
private label accounts under marks other than GOLDEN LEGS.
Respondent’s hosiery is sold to discount stores, including
“mom-and-pop” and dollar stores. Sales in 1998 exceeded $9
million. Respondent’s advertising efforts have been aimed
at the retail trade, and advertisements have appeared in
various trade publications, including Women’s Wear Daily.
Respondent owned a prior registration of the mark
GOLDEN LEGS for hosiery (Registration No. 1,371,966 issued
on the Supplemental Register on November 19, 1985), but the
Cancellation No. 22,732
6
registration was canceled due to respondent’s inadvertent
failure to file a Section 8 affidavit.
Priority of Use
The first issue for us to consider is priority of use.
Respondent does not dispute petitioner’s priority of use,
and indeed the record establishes petitioner’s use of its
mark L’EGGS long prior to respondent’s first use of its
registered mark.
Likelihood of Confusion
We now turn to the merits of petitioner’s likelihood of
confusion claim. Our determination under Section 2(d) is
based on an analysis of all of the facts in evidence that
are relevant to the factors bearing on the likelihood of
confusion issue. In re E. I. du Pont de Nemours & Co., 476
F.2d 1357, 177 USPQ 563 (CCPA 1973).
In any likelihood of confusion analysis, two key
considerations are the similarities or dissimilarities
between the marks and the similarities or dissimilarities
between the goods. Federated Foods, Inc. v. Fort Howard
Paper Co., 544 F.2d 1098, 192 USPQ 24 (CCPA 1976). These,
and other du Pont factors deemed pertinent in the proceeding
now before us, are discussed below.
Similarity of the Goods
We turn first to compare the goods of the parties.
With respect to this factor, for purposes of our likelihood
Cancellation No. 22,732
7
of confusion analysis, the goods are, at least in part,
legally identical. The record establishes use of
petitioner’s L’EGGS marks in connection with ladies’
hosiery, and many of petitioner’s registrations list
“ladies’ hosiery” in the identification of goods.
Otherwise, petitioner’s products such as pantyhose, tights,
leggings and socks are substantially similar to respondent’s
“hosiery for men, women and children.” See: Octocom
Systems Inc. v. Houston Computers Services Inc., 918 F.2d
937, 16 USPQ2d 1783 (Fed. Cir. 1990).
In attempting to distinguish the parties’ products,
respondent points out that about 15-20% of respondent’s
overall sales comprise men’s socks, and 12% of total sales
comprise girls’ tights. Respondent further contends that
“there is no competition between Registrant’s and
Petitioner’s goods because Registrant’s products are of a
higher quality than are Petitioner’s”.5 (brief, p. 18)
Simply put, these distinctions are of little moment in
making our determination. See: Tom Cunningham v. Laser
Golf Corp., 55 USPQ2d 1842 (Fed. Cir. 2000) [identifications
in the involved registrations frame the likelihood of
confusion issue].
5 Respondent also attempts to distinguish the products based on
price. The record reveals, however, that the products are
comparable in price range, between around $1-$5.
Cancellation No. 22,732
8
Trade Channels
Insofar as trade channels are concerned, respondent
contends that “[t]he dissimilarities between the retail
outlets for the predominant consumers of Petitioner’s and
Registrant’s are substantial” and that “Registrant targets
its goods to very different customers than does Petitioner.”
(brief, p. 19) Specifically, respondent points to the fact
that its hosiery is sold in small discount stores while
petitioner’s hosiery is sold in food, drug and mass
merchandising stores. Respondent also points to the
different ways the products are advertised, with
respondent’s efforts being directed solely to the retail
hosiery trade whereas petitioner’s advertising is directed
to the end consumer.
As petitioner is quick to point out, the perceived
differences in trade channels are largely irrelevant.
Nothing in the involved registration limits the trade
channels in which respondent’s hosiery is sold, and we must
assume that the hosiery moves through all normal and usual
channels of trade and methods of distribution. Squirtco v.
Tomy Corporation, 697 F.2d 1038, 216 USPQ 937, 940 (Fed.
Cir. 1983). Those would include the very same trade
channels in which petitioner’s identical goods move. The
record also includes some testimony that respondent has
begun to offer its hosiery to retail chains, although no
Cancellation No. 22,732
9
goods have actually been sold to them as yet.6 The fact
that the parties have advertised their products in different
publications is irrelevant to our analysis.
Conditions of Sale
Respondent contends that hosiery is not an impulse
purchase item, but rather “hosiery is a very personal item
of clothing, so special care has to be taken when faced with
considerations of fit, color, sheerness...” (brief, p. 33)
In this connection, respondent points to the testimony of
Adrienne Weinbaum, a salesperson employed by respondent,
that women spend between five and twenty minutes in
selecting hosiery. Petitioner’s witness, Ms. Jardine,
testified, on the other hand, that consumers spend “next to
no time at all,” literally “nanoseconds,” in buying hosiery.
The parties’ hosiery sells for between $1 and $5.
Given the relatively low price point of these goods, we do
not think that considerations such as size, color or texture
appreciably add to the time spent in making a purchasing
decision. After reviewing the record, our sense is that the
purchase of everyday hosiery tends to be more of an impulse
purchase or, at most, an item purchased without a great deal
of care by ordinary consumers. Such consumers are not
6 Exhibit No. 11 to Zoltan Goldstein’s (respondent’s founder and
president) testimony deposition is an advertisement placed in a
trade publication by respondent wherein respondent states that it
is “now ready to accommodate mass merchants, chain stores,
licensing and private label accounts.”
Cancellation No. 22,732
10
likely to devote a great deal of thought or analysis to the
marks in order to determine whether respondent’s mark
indicates a different source from petitioner. Rather, given
the fame of petitioner’s L’EGGS mark, such consumers are
likely to assume that GOLDEN LEGS is a trademark of
petitioner’s, being a variation on their L’EGGS marks.
In sum, on this du Pont factor, given the relatively
inexpensive nature of hosiery, and the fact that hosiery is
subject to frequent replacement, ordinary consumers are not
likely to exercise any great care in purchasing these goods.
See: Specialty Brands, Inc. v. Coffee Bean Distributors,
Inc., 748 F.2d 669, 223 USPQ 1281, 1282 (Fed. Cir. 1984).
This factor weighs in favor of finding a likelihood of
confusion.
Family of Marks
With respect to petitioner’s claim that it owns a
family of L’EGGS marks, we look to our primary reviewing
court for guidance:
A family of marks is a group of marks
having a recognizable common
characteristic, wherein the marks are
composed and used in such a way that the
public associates not only the
individual marks, but the common
characteristic of the family, with the
trademark owner. Simply using a series
of similar marks does not of itself
establish the existence of a family.
There must be recognition among the
purchasing public that the common
characteristic is indicative of a common
origin of the goods. Recognition of the
Cancellation No. 22,732
11
family is achieved when the pattern of
usage of the common element is
sufficient to be indicative of the
origin of the family.
J & J Snack Foods Corp. v. McDonald’s Corp., 932 F.2d 1460,
18 USPQ2d 1889, 1891 (Fed. Cir. 1991). In the past, the
Board has looked at whether the marks asserted to comprise a
“family” have been used and advertised in promotional
material or used in everyday sales activities in such a
manner as to create common exposure and, thereafter,
recognition of common ownership based upon a feature common
to each mark. American Standard, Inc. v. Scott & Fetzer
Co., 200 USPQ 457, 461 (TTAB 1978).
We do not view petitioner’s evidence as establishing
that it has a family of L’EGGS marks. While the record
includes a few instances where the L’EGGS mark is used
together with another one of petitioner’s marks (including
slogans such as “NOTHING BEATS A GREAT PAIR OF L’EGGS”), the
record does not establish that such conjoint use is
petitioner’s common practice. In point of fact, the
documents highlighted by petitioner (brief, p. 7) on this
point show that while petitioner has engaged in conjoint
promotion of different products in its line, the various
products for the most part bore the L’EGGS mark as opposed
to any of the other marks also claimed by petitioner.
Moreover, the record is devoid of any direct evidence that
purchasers consequently would recognize common ownership
Cancellation No. 22,732
12
based on the feature common to each mark. The mere fact of
adoption, use and/or registration of several marks
incorporating L’EGGS, as in the case here with petitioner,
does not in itself prove that a family of marks exists.
Polaroid Corp. v. Richard Mfg. Co., 341 F.2d 150, 144 USPQ
419 (CCPA 1965); Trek Bicycle Corp. v. Fier, 56 USPQ2d 1527,
(TTAB 2000); and Consolidated Foods Corp. v. Sherwood
Medical Industries, Inc., 177 USPQ 279 (TTAB 1973).
Fame
It hardly need be said that fame of petitioner’s L’EGGS
mark is a critical du Pont factor in petitioner’s favor in
this case. Kenner Parker Toys v. Rose Art Industries, 963
F.2d 350, 22 USPQ2d 1453, 1456 (Fed. Cir. 1992)[“[F]ame of
the prior mark plays a dominant role in cases featuring a
famous or strong mark.”]. Indeed, the record clearly
establishes the widespread fame of petitioner’s L’EGGS mark
for women’s hosiery and pantyhose.
Petitioner’s L’EGGS mark has been the subject of
extensive exposure in the marketplace as a result of
petitioner’s efforts. In addition, petitioner’s L’EGGS mark
and the products sold thereunder have been the subjects of a
significant amount of unsolicited publicity in various
printed publications. In 1998, petitioner’s hosiery was
sold in over 45,000 retail stores nationwide, and through
petitioner’s catalogs which have a distribution run of 50
Cancellation No. 22,732
13
million copies. Petitioner’s claim that its mark is famous
is supported by truly impressive revenue figures,
significant promotional expenditures, and a high degree of
brand awareness. More specifically, petitioner’s sales
spanning a thirty-year period exceed $10 billion, with
promotional expenditures of over $1.8 billion. Further, as
noted above, petitioner’s sheer hosiery market share stands
at 54%, and petitioner’s L’EGGS mark enjoys tremendous brand
awareness. About 98% of female hosiery consumers have heard
of the L’EGGS brand, and 61% of those consumers will name
L’EGGS as a brand of hosiery without prompting. In Women’s
Wear Daily (in the 1993, 1995 and 1997 editions of the
“Fairchild Report,” a bi-annual study of apparel brands
published by WWD), the L’EGGS mark has been listed as the
most recognized brand name in the apparel industry.
Taking into consideration the totality of the evidence
introduced on this factor, we have every confidence in
finding that the mark L’EGGS, as used in connection with
women’s hosiery and pantyhose, is famous. We are not alone
in making this assessment. See: Sara Lee Corp. v. Kayser-
Roth Corp., 81 F.3d 455, 38 USPQ2d 1449 (4th Cir. 1996),
cert. denied, 519 U.S. 976, 117 S.Ct. 412, 136 L.Ed.2d 325
(1996)[“L’eggs [has] become [a] household name...a strong,
distinctive mark”]. This finding of fame plays a
significant role in our analysis. See: Recot Inc. v.
Cancellation No. 22,732
14
Becton, 54 USPQ2d 1894 (Fed. Cir. 2000), on remand, 56
USPQ2d 1859 (TTAB 2000); and Kenner Parker Toys Inc. v. Rose
Art Industries Inc., supra at 1458[factors that both marks
appear on inexpensive products purchased by diverse buyers
without exercising much care accentuate the significance of
a famous mark].
Third-Party Use
In considering the fame factor, we have taken into
account, of course, respondent’s evidence of third-party
uses and registrations of marks containing the term “LEGS.”
The record includes a dictionary definition of the term
“leg:” the part of a garment that covers the leg: the leg
of a stocking; trouser leg.” Random House Unabridged
Dictionary (2d ed. 1993).
Given this meaning, and the fact that the term also is
defined in the same dictionary as “either of the two lower
limbs of a...human being...that support and move the body,”
it comes as no surprise that there are a number of third-
party uses and registrations of marks in the hosiery and
wearing apparel fields wherein the term “LEG” or “LEGS”
appears.
Turning first to the registration evidence, respondent
has introduced over twenty third-party registrations. Such
evidence, as often stated, is of little probative value in
determining likelihood of confusion issues. These
Cancellation No. 22,732
15
registrations do not establish that the marks shown therein
are in use, much less that consumers are so familiar with
them that they are able to distinguish among such marks by
focusing on components other than the ones shared by the
marks. AMF Inc. v. American Leisure Products, Inc., 474
F.2d 1403, 177 USPQ 268 (CCPA 1973). Any value that these
registrations have to the likelihood of confusion analysis
is limited to their showing, as in the case of a dictionary
listing, the sense in which the word “leg” or “legs” is
employed in the language. In this case, the registrations
show that the words “LEG” or “LEGS” have in the past
appealed to others in the hosiery field as an appropriate
portion of part of a mark. Smith Bros. Mfg. Co. v. Stone
Mfg. Co., 476 F.2d 1004, 177 USPQ 462 (CCPA 1973).
Respondent also has introduced testimony and evidence
regarding actual use of “LEG” or “LEGS” as a part of marks
by third parties in the hosiery field. The bulk of this
evidence comes from the testimony of Ms. Weinbaum, a
salesperson for respondent. At the instruction of Mr.
Goldstein, Ms. Weinbaum visited various stores in the New
York City metropolitan area to identify third-party uses in
the trade. Ms. Weinbaum identified about a dozen uses, and
purchased hosiery bearing six of the marks.
This evidence of third-party uses is balanced by
petitioner’s evidence of the considerable fame of its L’EGGS
Cancellation No. 22,732
16
mark for hosiery. We have no problem maintaining the view
that petitioner’s L’EGGS mark is famous, even in the face of
respondent’s evidence.
The probative value of the third-party uses also is
diminished by the fact that respondent failed to furnish any
evidence regarding the extent of use of the marks by these
third parties. See: Smith Bros. Mfg. Co. v. Stone Mfg.
Co., supra at 463. In point of fact, some of the testimony
(highlighted by petitioner in its reply brief at pp. 6-8)
would suggest that the actual use of the various marks has
been minimal.
In considering this factor, we have taken into account
petitioner’s testimony and evidence showing that petitioner
has been fairly vigorous in policing its L’EGGS mark. That
is not to say that petitioner’s protection efforts have been
perfect; nevertheless, petitioner has been vigilant over the
years, resulting in a number of successful actions against
allegedly confusingly similar marks.
In sum, respondent’s evidence is of limited probative
value to support its position.
Similarity of the Marks
We next turn our focus to the similarity between the
marks. As noted above, the parties’ goods are, in
significant part, identical. In such situations, “the
degree of similarity [between the marks] necessary to
Cancellation No. 22,732
17
support a conclusion of likely confusion declines.” Century
21 Real Estate Corp. v. Century Life of America, 970 F.2d
874, 23 USPQ2d 1698, 1700 (Fed. Cir. 1992). In comparing
the marks, we again note that petitioner’s L’EGGS mark is
famous as applied to women’s hosiery.
In comparing the marks, the “LEGS” portion of
respondent’s mark is identical in sound to petitioner’s mark
L’EGGS. Also, although there are specific differences
between the spellings of “L’EGGS” and “LEGS,” the terms look
alike such that the marks L’EGGS and GOLDEN LEGS are similar
in overall appearance.
In addition, respondent’s mark is constructed similarly
to several of petitioner’s marks which begin with a modifier
and end with “L’EGGS,” including SUMMER L’EGGS, WINTER
L’EGGS and LITTLE L’EGGS.
A significant fact in our comparison of the marks
concerns the way in which respondent at present actually
uses its mark. Petitioner’s marks are registered in both
typed form and special form. The drawing of the mark in
respondent’s involved registration is in typed form. Such a
typed drawing indicates that respondent is not restricting
its word mark to a particular form. Trademark Rule
2.52(a)(1). In comparing the marks, “we must not be misled
by considering [respondent’s] mark only in its printed or
type-written form, with all characters being of equal
Cancellation No. 22,732
18
height.” Philips Petroleum Co. v. C.J. Webb, Inc., 442 F.2d
1376, 170 USPQ 35, 36 (CCPA 1971). See also: Squirtco v.
Tomy Corp., supra. In view of respondent’s typed mark, we
must consider all reasonable manners in which GOLDEN LEGS
could be depicted, and in particular, the Board can and
should in this case give special consideration to the
manners in which respondent has actually depicted it mark.
INB National Bank V. Metrohost Inc., 22 USPQ2d 1585, 1588
(TTAB 1992); and In re Richardson Ink Co., 171 USPQ 818
(TTAB 1971). In the present proceeding, we have the benefit
of exhibits which illustrate how the respondent’s mark is
actually used in commerce.
After this cancellation proceeding was commenced,
respondent commissioned a redesign of its packaging.
Respondent’s redesign significantly enhanced the prominence
of the word “LEGS” as its mark appeared on the packaging.
In addition, this redesign began to appear in respondent’s
advertisements in trade magazines. The mark, as actually
used on packaging and in advertisements, is reproduced below
(ex. no. 1, J. Velez dep.):
The prominence of the “LEGS” portion of respondent’s
mark as actually used and as actually encountered by
Cancellation No. 22,732
19
prospective purchasers is clear. This certainly would
increase the likelihood that purchasers would see a
similarity between the parties’ marks and, therefore, would
mistakenly believe that respondent’s hosiery originated from
the same source as the hosiery sold under petitioner’s
L’EGGS mark. See: Jockey International Inc. v. Mallory &
Church Corp., 25 USPQ2d 1233, 1235-36 (TTAB 1992). See
also: Specialty Brands, Inc. v. Coffee Bean Distributors,
Inc., supra at 1284[trade dress may provide evidence of
whether a word mark projects a confusingly similar
commercial impression].
In sum, we find, when the parties’ marks are considered
in their entireties, that the mark L’EGGS and a number of
petitioner’s other marks are similar in overall commercial
impression to respondent’s mark GOLDEN LEGS.
Survey Evidence
Petitioner introduced the results of two shopping mall
intercept surveys, with the supporting testimony of Dr.
Thomas Dupont, a survey expert, who designed the surveys and
analyzed the results. Petitioner conducted the original
survey which was then criticized by respondent’s survey
expert. Petitioner subsequently conducted a replication
survey which, according to petitioner, tested the
criticisms.
Cancellation No. 22,732
20
In the original survey, a total of 422 respondents were
interviewed at six shopping malls (Washington, DC, Los
Angeles, Dallas/Fort Worth, Cleveland, Philadelphia and
Nashville). The survey was taken of women, aged eighteen
years and older, who had bought or worn hosiery in the six
months prior to the survey. The interviewer handed 212
qualified respondents a white card as shown below.
After viewing the card, each respondent was asked the
following question: “What company do you think puts out
that brand of hosiery?” Respondents who answered something
other than “don’t know” to the first question were then
asked: “Why do you say that?”
A second control group of 210 respondents saw a
different control name (Golden Step, Golden Spirit, Golden
Sheers, Golden Fit, Golden Touch or Golden Kicks), and then
were asked the same two questions. As explained by Dr.
Dupont, the purpose of this control group was to control the
survey for “noise,” that is, the tendency of consumers in
this particular situation to attribute manufacture to L’EGGS
because it is a familiar brand.
After accounting for the “noise,” the survey shows that
around 21% of the respondents indicated that GOLDEN LEGS
Cancellation No. 22,732
21
hosiery is put out by the same entity that makes L’EGGS
hosiery. Almost an identical percentage stated that it was
the mark L’EGGS that caused them to believe that GOLDEN LEGS
was put out by the same source as L’EGGS hosiery. Dr.
Dupont’s conclusion is that “[t]hese converging estimates
give us a high degree of confidence that at least 21% of
consumers will mistakenly believe that GOLDEN LEGS is put
out by L’eggs.” (Dupont dep., ex. no. 2, p. 3)
Respondent countered with the testimony of Dr.
Alexander Simonson, a university professor of marketing and
a survey researcher with ten years of experience in
designing and conducting surveys for litigation. Dr.
Simonson essentially criticized the methodology used in
conducting the survey. More specifically, he stated that
the survey’s instructions encouraged guessing; that the card
bearing respondent’s mark which was shown to the respondents
omitted the category of men’s hosiery products; that the
universe is flawed in that men and teens under 18 years of
age were excluded; that the survey does not reflect a random
geographic sampling, but rather one that is oversampled in
the southern part of the country; that the names used in the
control groups resulted in skewed results; and that the
survey did not track actual market conditions since the
respondents were not exposed to the parties’ respective
packaging and trade dress. Respondent also criticized
Cancellation No. 22,732
22
petitioner’s replication survey because it did not employ a
control group.
In response to two of these criticisms, namely the
encouragement of guessing and the perceived
misidentification of the product category on the sample
card, petitioner, under the guidance of Dr. Dupont,
undertook a replication survey. Accordingly, the stimulus
card shown to respondents indicated that the GOLDEN LEGS
product is “hosiery for men, women and children” (as opposed
to the earlier version “hosiery for women and children”).
The instructions were modified in relevant part to read “For
any of my questions please give me an opinion if you have
one, but if you don’t know or have no opinion, that’s OK”
(as opposed to the earlier instruction “Please give me your
opinion, even if you are not absolutely sure”). With the
exception of the stimulus card and the guessing
instructions, the survey methodology and procedures were
identical in both surveys. No control group was used in the
second survey.
The replication survey, taken of 122 respondents, shows
results which are very similar to the results of the
original survey. Dr. Dupont concluded that the replication
survey results “clearly demonstrate that the two ‘flaws’
which Prof. Simonson found to be most serious
(‘misidentification of the product category’ and
Cancellation No. 22,732
23
‘encouragement of guessing’) had absolutely no impact on the
survey results.” (Dupont dep., ex. no. 2).
We note, at the outset, that “[i]t is notoriously easy
for one survey expert to appear to tear apart the
methodology of a survey taken by another.” Carl Karcher
Enterprises v. Stars Restaurants Corp., 35 USPQ2d 1125, 1133
(TTAB 1995) citing J.T. McCarthy, McCarthy on Trademarks and
Unfair Competition §32:178. Courts and the Board long have
recognized that there is no such thing as a perfect survey
and, like any survey, the one presently before us involves a
bit of a guessing game by the survey’s respondents.
Petitioner’s surveys employ a fairly standard format
used in likelihood of confusion cases, the so-called
Eveready format. Union Carbide Corp. v. Ever-Ready, Inc.,
531 F.2d 366, 188 USPQ 623 (7th Cir. 1976), cert. denied,
429 U.S. 830, 50 L.Ed.2d 94, 97 S.Ct. 91, 191 USPQ 416
(1976). This survey format has been approved by a number of
courts. See also: Miles Laboratories Inc. v. Naturally
Vitamin Supplements Inc., 1 USPQ 1445 (TTAB 1986). See
generally: J.T. McCarthy, McCarthy on Trademarks and Unfair
Competition, §32:174 (4th ed. 2000). We find that the
surveys here support petitioner’s position on the issue of
likelihood of confusion.
The replication survey certainly disposed of two of the
significant criticisms made by respondent’s expert. The
Cancellation No. 22,732
24
replication survey results were remarkably similar to the
ones of the original survey. Further, we see no major
problem with the universe selected by Dr. Dupont inasmuch as
it included consumers most likely to purchase the parties’
products, that is, women who are eighteen years of age or
older. We also find no fault with the choice of survey
cities. See: Carl Karcher Enterprises Inc. v. Stars
Restaurant Corp., supra at 1132-33. Likewise, the controls
in the original survey appear to be proper, and the lack of
controls in the replication survey are of little moment.
In sum, we find Dr. Simonson’s criticisms to be largely
without substantial merit, and that the surveys’ results
buttress our finding of likelihood of confusion. So as to
be clear on this point, even if we were to throw out the
surveys and accord them no probative value whatsoever, we
would reach the same result on the ultimate question herein
in view of the weight of the du Pont factors in petitioner’s
favor.
Actual Confusion
The next factor to consider is actual confusion.
Petitioner has introduced testimony and evidence regarding
one instance of what it characterizes as actual confusion.
The alleged confusion, on the part of a retail store
salesperson, Jaslyn Velez, was the result of a question
posed to her at the store. The question regarding a common
Cancellation No. 22,732
25
source of the parties’ respective products was posed by an
individual (Ms. Walsh) on petitioner’s behalf. Thus, we
view this instance as somewhat contrived. Ms. Velez went on
to testify that, prior to the question posed by Ms. Walsh,
she never made an association between the sources of the two
parties’ products. In any event, given the years of
overlapping use of the parties’ goods, we find this lone
instance, even if viewed as credible, to be de minimis.
On the flip side, the absence of evidence of actual
confusion does not trouble us in the least. Given the
relatively inexpensive nature of the parties’ hosiery,
consumers would be unlikely to go to the trouble to report
any confusion. Further, it was not until only recently in
1997 that respondent began to emphasize the “LEGS” portion
of its mark which, in our view, enhances the likelihood of
confusion.
Intent
Given the prominence of petitioner and its L’EGGS marks
in the marketplace, and Mr. Goldstein’s involvement in the
hosiery business for many years, we are rather surprised by
Mr. Goldstein’s testimony that he was unaware of petitioner
and its L’EGGS mark until the petition was filed. Having
said this, we also note testimony regarding Mr. Goldstein’s
lack of formal education outside of Torah studies at
Yeshiva, and that due to his strict religious observations,
Cancellation No. 22,732
26
he spends little time on reading English publications or
watching television. We further note Mr. Goldstein’s
explanation regarding the talmudic genesis of respondent’s
mark. Lastly, we note that before adopting its mark,
respondent did not conduct a trademark clearance search.
Notwithstanding Mr. Goldstein’s lack of exposure to the
secular world, it still is surprising that Mr. Goldstein did
not encounter, at least in a business context, the famous
L’EGGS mark of petitioner, a direct competitor. Be that as
it may, our more serious concern involves respondent’s
changes to its mark after it became aware of petitioner and
its marks. As discussed above, after the petition for
cancellation was filed, respondent redesigned it packaging
so as to emphasize the “LEGS” portion of its mark. While we
note respondent’s fairly extensive testimony regarding the
innocence of the changes to the packaging, such conduct, at
a minimum, calls into question respondent’s post-adoption
intentions.
In any event, there is “no excuse for even approaching
the well-known trademark of a competitor...and that all
doubt as to whether confusion, mistake, or deception is
likely is to be resolved against the newcomer, especially
where the established mark is one which is famous...” Nina
Ricci S.A.R.L. v. E.T.F. Enterprises Inc., 889 F.2d 1070, 12
USPQ2d 1901, 1904 (Fed. Cir. 1989). See also: Giant Food,
Cancellation No. 22,732
27
Inc. v. Nation’s foodservice, Inc., 710 F.2d 1565, 218 USPQ
390 (Fed. Cir. 1983).
Conclusion
Given the voluminous record in this case and the
lengthy briefs, the Board is compelled to make an additional
point. Both parties’ briefs have made and debated, and we
have considered, arguments other than those specifically
mentioned in this opinion. We find it unnecessary, however,
to comment on each and every one.
We agree with petitioner that after commencement of
these proceedings, respondent’s business practices have
appeared to edge closer to the L’EGGS brand. The redesign
of respondent’s mark, followed by respondent’s first
substantial advertising efforts, and then respondent’s
attempt to sell its hosiery in the same retail outlets in
which petitioner’s hosiery is sold, all add up to the
“collision course” referred to by petitioner.
Based on the record before us, we conclude that
consumers familiar with petitioner’s ladies’ hosiery and
pantyhose sold under petitioner’s L’EGGS marks would be
likely to believe, upon encountering respondent’s mark
GOLDEN LEGS for hosiery for men, women and children, that
the goods originated with or are somehow associated with or
sponsored by the same entity.
Cancellation No. 22,732
28
Decision: The opposition is sustained, and
registration to applicant is refused.