Stokely-Van Camp, Inc.v.William WootenDownload PDFTrademark Trial and Appeal BoardMar 24, 2009No. 91183146 (T.T.A.B. Mar. 24, 2009) Copy Citation Baxley Mailed: March 24, 2009 Opposition No. 91183146 Stokely-Van Camp, Inc. v. William Wooten Before Holtzman, Cataldo, and Ritchie, Administrative Trademark Judges. By the Board: William Wooten ("applicant") filed an application to register HATER-AID in standard character form for "Aerated water; Mineral water; Sparkling water; Colas; Concentrates, syrups or powders used in the preparation of soft drinks; Fruit-flavored drinks; Isotonic drinks; Pop; Powders used in the preparation of isotonic sports drinks and sports beverages; Soft drinks; Sports drinks; Syrups for making soft drinks; Energy drinks; Fruit drinks; Fruit flavored soft drinks" in International Class 32.1 Stokely-Van Camp, Inc. ("opposer") filed a notice of opposition to registration of applicant's mark on grounds of likelihood of confusion with its previously registered marks 1 Application Serial No. 77210492, filed June 20, 2007, based on an assertion of a bona fide intent to use the mark in commerce under Trademark Act Section 1(b), 15 U.S.C. Section 1051(b). 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. 91183146 2 which include the word GATORADE for beverage and food products, including sports energy drinks and soft drinks, and for dilution of those marks.2 Applicant, in his answer, admitted, among other things, that opposer has prior use of its pleaded marks "in connection with beverage and food products, including sports energy drinks and soft drinks;" that opposer has registered its GATORADE mark and is the owner of thirteen registrations for marks which include the word GATORADE for beverage products; that, since prior to the filing of his application, opposer's GATORADE mark has been both distinctive and famous; and that applicant adopted his involved mark with the knowledge of opposer's GATORADE marks and products. In the answer, applicant denied only that 2 Opposer's pleaded registrations include: Registration No. 848245 for the mark GATORADE in typed form for "fruit flavored soft drink and powder for making the same" in International Class 32, issued April 30, 1968, renewed twice; Registration No. 1410822 for the mark GATORADE THIRST QUENCHER and design in the following form for "thirst quenching soft drink and powder for making the same" in International Class 32, issued September 23, 1986, renewed; the wording THIRST QUENCHER is disclaimed; and Registration No. 2637355 for the mark GATORADE PERFORMANCE SERIES in typed form for "non-alcoholic, non-carbonated sports drinks" in International Class 32, issued October 15, 2002, Section 8 affidavit accepted, Section 15 affidavit acknowledged; the wording PERFORMANCE SERIES is disclaimed. Opposition No. 91183146 3 there is a likelihood of confusion between the marks and that use of applicant's mark is likely to dilute the distinctive quality of opposer's GATORADE mark. In addition, applicant asserted affirmative defenses, including that "the intended use of the mark is to parody Opposer's mark" and that "applicant takes care not to use any portion of Opposer's mark or design in [an] effort to ensure that the marks are distinctive from one another so as not to run the risk of diluting Opposer's mark." This case now comes up for consideration of opposer's motion (filed December 8, 2008) for summary judgment on its pleaded grounds of priority/likelihood of confusion and dilution. The motion has been fully briefed. 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). The party moving for summary judgment has the initial burden of demonstrating that there is no genuine issue of material fact remaining for trial and that it is entitled to judgment as a matter of law. See Celotex Corp. v. Catrett, 477 U.S. 317 (1987); Sweats Fashions Inc. v. Pannill Knitting Co. Inc., 833 F.2d 1560, 4 USPQ2d 1793 (Fed. Cir. 1987). The nonmoving party must be given the benefit of all reasonable doubt as to whether genuine issues of material fact exist, and the Opposition No. 91183146 4 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). As a party moving for summary judgment in its favor on a Section 2(d) claim, opposer must establish that there is no genuine dispute that (1) it has standing to maintain this proceeding; (2) that it is the prior user of its pleaded marks; and (3) that 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, 1735 (TTAB 2001). With regard to whether opposer has standing to maintain this proceeding, applicant has not challenged opposer's standing to cancel the involved registration. In any event, the copies of opposer's registrations for marks including the word GATORADE that were obtained from the USPTO's Trademark Applications and Registrations Retrieval (TARR) database that were submitted as exhibits to opposer's notice of opposition and which show that the registrations are valid and subsisting and owned by opposer are sufficient to establish opposer's standing in this case. See Trademark Rule 2.122(d)(1); Cunningham v. Laser Golf Corp., 222 F.3d Opposition No. 91183146 5 943, 55 USPQ2d 1842, 1844 (Fed. Cir. 2000). No genuine issue of material fact exists on this issue. Furthermore, because opposer's valid and subsisting registrations are of record, priority is not in issue. King Candy Co., Inc. v. Eunice King's Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108 (CCPA 1974). We also note that in his answer, applicant responded to paragraph 2 of the notice of opposition, wherein opposer alleged that, "[s]ince long prior to the filing date of the application opposed herein, opposer has used the mark GATORADE and other GATORADE marks in connection with beverage and food products, including sports energy drinks and soft drinks," and paragraph 3 of the notice of opposition, wherein opposer alleged that it has registered the GATORADE mark and owns thirteen registrations for marks which include the word GATORADE for "beverage products," with admissions of such allegations. These admissions of fact are conclusive as to the issue of priority. See Brown Company v. American Stencil Manufacturing Company, Inc., 180 USPQ 344, 345 n. 5 (TTAB 1973) (admission during pleading results in estoppel precluding ability to prove anything to the contrary). In determining the issue of likelihood of confusion and, in this case, whether there is any genuine issue of material fact relating thereto, we take under consideration all of the du Pont factors which are relevant under the Opposition No. 91183146 6 present circumstances and for which there is evidence of record. See E.I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). We note initially that, in his answer, applicant responded to paragraph 6 of the notice of opposition, wherein opposer alleged that its pleaded "GATORADE mark is a famous mark and has been a famous mark since prior to the filing date of the application opposed herein" with an admission thereof. This admission of fact is conclusive as to the issue of fame of the GATORADE mark. See Brown Company v. American Stencil Manufacturing Company, Inc., supra. As noted by our principal reviewing court in Kenner Parker Toys Inc. v. Rose Art Industries Inc., 963 F.2d 350, 22 USPQ2d 1453, 1456 (Fed. Cir. 1992), cert. denied, 506 U.S. 862, 113 S.Ct. 181 (1992), "the fifth duPont factor, fame of the prior mark, plays a dominant role in cases featuring a famous or strong mark. Famous or strong marks enjoy a wide latitude of legal protection." The Federal Circuit reiterated these principles in Recot Inc. v. M.C. Becton, 214 F.3d 1322, 54 USPQ2d 1894, 1897 (Fed. Cir. 2000), stating that "the fifth DuPont factor, fame of the prior mark, when present, plays a 'dominant' role in the process of balancing the DuPont factors," citing, inter alia, Kenner Parker Toys, 22 USPQ2d at 1456, and reaffirmed Opposition No. 91183146 7 that "[f]amous marks thus enjoy a wide latitude of legal protection." This broader protection is accorded because the marks are more likely to be remembered and associated in the public mind than a weaker mark. Recot at 54 USPQ2d 1897. Under this reasoning, opposer’s GATORADE mark is accorded this broad scope of protection, and applicant's assertion that confusion is unlikely because of the fame of opposer's GATORADE mark is contrary to established precedent and unpersuasive. Thus, we find no genuine issue that opposer’s pleaded marks are famous. Considering next the goods and services involved, we note that the goods identified in applicant's application and some of opposer's pleaded registrations are overlapping. For example, applicant's application includes "powders used in the preparation of soft drinks" and "[f]ruit flavored soft drinks" in the identification of goods, while the identification of goods in opposer's oldest pleaded registration, Registration No. 848245 for the mark GATORADE in typed form, is "fruit flavored soft drink and powder for making same." Thus, there is no genuine issue that the goods are identical in part. Furthermore, there are no restrictions regarding trade channels in the identifications of goods of applicant's application or opposer's pleaded registrations. Because there are no such limitations, we must presume that the Opposition No. 91183146 8 goods of each would be offered in all the normal channels of trade for goods of this nature and to the normal classes of purchasers. See Canadian Imperial Bank v. Wells Fargo Bank, 811 F.2d 1490, 1 USPQ2d 1813 (Fed. Cir. 1987). Thus, and further because the goods are identical in part, we find no genuine issue that the recited goods will be provided in the same channels of trade to the same class of purchasers. Considering now the similarity or dissimilarity of the respective marks, we note that in cases where the plaintiff’s mark is famous and the goods and services are in part identical, the degree of similarity between the marks necessary to support a finding of likelihood of confusion declines. See, e.g., Nina Ricci, S.A.R.L. v. E.F.T. Enterprises, Inc., 889 F.2d 1070 (Fed. Cir. 1989), 12 USPQ2d 1901 (Fed. Cir. 1989); Century 21 Real Estate Corp. v. Century Life of America, 970 F.2d 874, 877, 23 USPQ2d 1698, 1701 (Fed. Cir. 1992), cert denied, 506 U.S. 1034 (1992). Herein, we find that the pronunciations of opposer's GATORADE mark and applicant's HATER-AID mark are identical in sound, except for the first letter of each mark. While we acknowledge differences in the connotation and commercial impressions of the marks at issue, the nearly identical sounds of the respective marks is sufficient to give those marks a strong similarity. See Krim-Ko Corp. v. The Coca- Opposition No. 91183146 9 Cola Co., 156 USPQ 523 (CCPA 1968) (BEEP found confusingly similar to VEEP). Keeping in mind that famous marks, such as opposer's GATORADE mark are accorded a wide latitude of protection, we do not find the distinctions between the marks sufficient to obviate the strong similarity between them. See Recot Inc. v. M.C. Becton, supra (Board must consider the similarity or dissimilarity of the marks in their entireties with respect to appearance, sound and connotation, not simply difference in connotation between FIDO LAY and FRITOLAY). As a result, we find no genuine issue that applicant’s HATER-AID mark is highly similar to opposer’s GATORADE marks. In short, every du Pont factor that we have considered supports a finding of likelihood of confusion. Moreover, applicant, in his answer, admitted in response to paragraph 9 of the notice of opposition that he adopted the HATER-AID mark with knowledge of opposer's GATORADE marks and products. As stated by the Court in Kenner Parker Toys, Inc. v. Rose Art Industries, Inc., supra at 1456 (citations omitted), "there is no excuse for even approaching the well- known trademark of a competitor...." Applicant has asserted parody as a defense herein. In particular, applicant contends that his HATER-AID mark is a "blatant parody" of opposer's GATORADE mark and that his mark is "intended to illustrate the rivalry between" the Opposition No. 91183146 10 University of Florida Gators, for whom the GATORADE beverage was first invented, and the University of Tennessee Volunteers and "to parody a product that has become famous for supporting the Gators." Applicant's brief at 3. However, applicant has volunteered no evidence of the extent to which the relevant purchasing public, i.e., purchasers in all the normal channels of trade for goods of this nature, are aware either of the origins of opposer's GATORADE mark, or the rivalry between the University of Florida and University of Tennessee.3 Although applicant relies upon one of his product labels to show the intended parody and the context in which his mark is used, we must determine likelihood of confusion based solely on the marks at issue without regard to additional matter with which those marks are used. See Interstate Brands Corp. v. McKee Foods Corp., 53 USPQ2d 1910, 1914-15 (TTAB 2000). 3 Applicant submitted as exhibits in support of his brief in opposition line-saved excerpts, as opposed to actual printouts, from the internet websites www.gatorade.com and www.sfgate.com that are intended to show the origins of opposer's GATORADE mark. However, these excerpts are not properly authenticated by a declaration of the person who accessed these websites and are therefore not properly before the Board. See Raccioppi v. Apogee Inc., 47 USPQ2d 1368 (TTAB 1998). Applicant also submitted line-saved copies of dictionary definitions of the word "hater," which were obtained from http://dictionary.reference.com, http://slangdictionary/forgematrix.com and www.urbandictionary.com. Of these definitions, only the definition from http://dictionary.reference.com is indicated to exist in a printed format. See In re CyberFinancial.Net Inc., 65 USPQ2d 1789 (TTAB 2002). Further, opposer submitted an actual printout of that definition, which indicates that such definition is for the word "hate" and not for the word "hater." Opposition No. 91183146 11 Moreover, because opposer has established trademark rights in the admittedly famous GATORADE mark, any claim applicant may make to the use of his HATER-AID mark as a parody is not a true "defense." Even if we assume that applicant's HATER-AID mark parodies opposer's GATORADE mark, that is not enough to prevent likelihood of confusion in this case. See Elvis Presley Enterprises Inc. v. Capece, 141 F.3d 188, 46 USPQ2d 1737, 1744 (5th Cir. 1998); Dr. Seuss Enterprises L.P. v. Penguin Books USA, 109 F.3d 1394, 42 USPQ2d 1184, 1193 (9th Cir. 1977). As stated by the Board in Columbia Pictures Industries, Inc. v. Miller, 211 USPQ 816 (TTAB 1981): "The right of the public to use words in the English language in a humorous and parodic manner does not extend to use of such words as trademarks if such use conflicts with the prior use and/or registration of the substantially same mark by another." See also Hard Rock Café Licensing Corp. v. Pacific Graphics, Inc., 776 F.Supp. 1454, 1462, 21 USPQ2d 1368, 1374 (W.D. Wash. 1991); Starbucks U.S. Brands, LLC and Starbucks Corporation D.B.A. Starbucks Coffee Company v. Marshall S. Ruben, 78 USPQ2d1741 (TTAB 2006). We accordingly find that opposer has carried its burden of proof that no genuine issues of material fact remain as to likelihood of confusion and that opposer is entitled to judgment as a matter of law on that claim. Opposition No. 91183146 12 In view thereof, opposer's motion for summary judgment in its favor is granted with regard to the priority/likelihood of confusion claim. Having found that opposer is entitled to summary judgment on the issue of priority and likelihood of confusion, we need not and do not reach opposer’s claim of dilution. Judgment is hereby entered against applicant, the opposition is sustained, and registration to applicant is refused. Copy with citationCopy as parenthetical citation