Stokely-Van Camp, Inc.v.William Wooten

Trademark Trial and Appeal Board

Mar 24, 2009

No. 91183146 (T.T.A.B. Mar. 24, 2009)

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.