Target Brands, Inc.v.Jackdaddy Inc.

Trademark Trial and Appeal Board

Jan 31, 2020

91235560 (T.T.A.B. Jan. 31, 2020)

Mailed: January 31, 2020

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

Target Brands, Inc.
v.
Jackdaddy, Inc.
_____

Opposition No. 91235560
_____

James R. Steffen, Peter M. Routhier, and David R. Merritt of Faegre Baker Daniels
LLP for Target Brands, Inc.
Kevin J. Keener of Keener and Associates, P.C. for Jackdaddy, Inc.

Before Thurmon, Deputy Chief Administrative Trademark Judge, Bergsman and
English, Administrative Trademark Judges.

Opinion by Thurmon, Deputy Chief Administrative Trademark Judge:

Jackdaddy, Inc. (“Applicant”) seeks registration on the Principal Register of the
mark CADDY JACK (standard characters) for goods in International Class 25.1
Target Brands, Inc. (“Opposer”), opposes registration based on its registered mark

1 Application Serial Number 87291418 was filed on January 6, 2017, based on Applicant’s
alleged bona fide intent to use the mark in commerce under Section 1(b) of the Trademark
Act, 15 U.S.C. § 1051(b). The Application also identifies educational services in International
Class 41, but this opposition is limited to the class 25 goods. 1 TTABVUE 3.
Page references to the application record are to the downloadable .pdf version of the USPTO’s
Trademark Status & Document Retrieval (TSDR) system. References to the pleadings,
evidence, and briefs are to the Board’s TTABVUE docket system.
This Opinion Is Not a
Precedent of the TTAB
Opposition No. 91235560

2

CAT & JACK (standard characters) for goods in International Class 25.2 Opposer
presents two claims: 1) that Applicant lacks a bona fide intent to use the CADDY
JACK mark in commerce, 15 U.S.C. § 1051(b); and, 2) that Opposer has priority and
Applicant’s use of the CADDY JACK mark for the clothing identified in the
Application would create a likelihood of confusion with Opposer’s registered CAT &
JACK mark, 15 U.S.C. § 1052(d). This proceeding has been fully briefed and
submitted for final decision. We find the evidence supports Opposer’s Section 2(d)
claim (likelihood of confusion) and for that reason, the opposition is sustained. We do
not reach the intent to use claim.
I. The Record
We decide this case primarily on the basis of the pleaded Registration and the
opposed Application. Opposer submitted substantial evidence of the use and
promotion of the CAT & JACK mark, but upon examination, there are gaps and
inconsistencies in that evidence on a critical issue.
In the Notice of Opposition, Opposer alleged that it “is a wholly-owned subsidiary
of Target Corporation (‘Target’).”3 Opposer also alleged that it “licenses the CAT &
JACK mark for use by Target.”4 The Notice further alleged, “Through use and
promotion of the CAT & JACK mark by Target, substantial and valuable goodwill

2 Registration Number 5143395, issued February 14, 2017 from an application filed
September 4, 2015. The Registration identifies goods in four other classes, but the class 25
clothing goods are the primary basis for this Opposition.
3 1 TTABVUE 3.
4 Id. at 4.
Opposition No. 91235560

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and public recognition have been built up in the CAT & JACK mark.”5 Applicant
denied these allegations in its Answer.6 Opposer made essentially the same
assertions in its trial brief.7 Applicant did not respond to those assertions in its brief.
Opposer, however, submitted no evidence of its relationship with Target
Corporation or of a license between Opposer and Target Corporation to use the CAT
& JACK mark. The allegations on these points in the Notice of Opposition were
denied and the unsupported attorney argument in Opposer’s brief does not constitute
evidence. Cai v. Diamond Hong, Inc., 901 F.3d 1367, 127 USPQ2d 1797, 1799 (Fed.
Cir. 2018) (“Attorney argument is no substitute for evidence.”).
Opposer submitted a declaration of Renee Kraft, “the Director Counsel for
Trademark & Copyright at Target Brands, Inc. (‘TBI’).”8 Ms. Kraft testified about
Opposer’s actions to enforce and protect the CAT & JACK mark. She also testified
that over “$5.8 billion in sales of good under the CAT & JACK trademark have been
made since the brand launched in 2016.”9 Ms. Kraft even asserted that “TBI has spent
millions of dollars on advertising and marketing goods sold under the CAT & JACK

5 Id. at 5.
6 7 TTABVUE 2-3.
7 32 TTABVUE 7 (“Opposer Target Brands, Inc. (‘Opposer’ or ‘TBI’) is a wholly-owned
subsidiary of Target Corporation (‘Target’), one of the nation’s largest retailers. TBI owns
and licenses for use by Target the CAT & JACK mark …”).
8 18 TTABVUE 3.
9 Id.
Opposition No. 91235560

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trademark since 2016.”10 The evidence of use and promotion of the CAT & JACK mark
was submitted with Ms. Kraft’s declaration.11
Ms. Kraft, however, did not testify about the relationship between TBI and Target.
She did not mention a license, nor did she refer to Target Corporation in her
declaration. To further confuse matters, Ms. Kraft’s assertion that TBI has “spent
millions on advertising and marketing” conflicts with the Notice of Opposition and
Opposer’s trial brief, which both indicate that Target Corporation, as a licensee, uses
and promotes the CAT & JACK mark.
These may appear minor points, but they are not. From the pleadings, arguments,
and even Opposer’s name (Target Brands, Inc.), it appears that two distinct legal
entities are involved in the ownership and use of the CAT & JACK mark. That is a
common arrangement, and when a proper trademark license is in place, the use and
promotion of the mark by the licensee inures to the benefit of the licensor. 15 U.S.C.
§ 1055; Visa, U.S.A., Inc. v. Birmingham Tr. Nat’l Bank, 696 F.2d 1371, 1377 n.4
(Fed. Cir. 1982). When a proper corporate relationship is established, that may also
provide a basis for the use and promotion by one legal entity to inure to the benefit of
another. Moreno v. Pro Boxing Supplies, Inc., 124 USPQ2d 1028, 1036 (TTAB 2017).
But there must be evidence of a license or a proper corporate relationship to support
such a finding. There is no such evidence in the record here, and we find Ms. Kraft’s

10 Id.
11 18-21 TTABVUE.
Opposition No. 91235560

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testimony, when taken together with the allegations in Opposer’s Notice of
Opposition, leaves gaps and creates inconsistencies on these critical facts.
Target Corporation and Opposer chose to structure its business using a distinct
parent and subsidiary relationship. Such a business structure may offer some
advantages, but it also comes with some strictures, and the existence of two separate
and distinct legal entities cannot be turned on or off at will to suit the occasion. Noble
House Home Furnishings, LLC v. Floorco Enters., LLC, 118 USPQ2d 1413, 1422
(TTAB 2016). This result is merely the flip side of the principle that a parent
corporation is not liable for the wrongs of its subsidiary absent disregard of corporate
separateness, such as an “alter ego” relationship. See generally A. Stucki Co. v.
Worthington Indus., Inc., 849 F.2d 593 , 7 USPQ2d 1066, 1068 (Fed. Cir. 1988). For
these reasons, we do not rely on those portions of the Kraft Declaration and
accompanying evidence concerning the use and promotion of the CAT & JACK mark.
Both parties submitted evidence relating to Applicant’s intent to use the CADDY
JACK mark, but we have not considered that evidence because we do not reach the
intent to use issue. We have carefully reviewed the full record, including those parts
not identified above or below. We cite to specific evidence below when such evidence
is particularly relevant to our analysis.
II. The Section 2(d) Claim
To prevail, Opposer must prove three things: 1) that it has standing to bring this
opposition; 2) that it has priority; and, 3) that there is a likelihood of confusion.
Opposition No. 91235560

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A. Standing
Standing is a requirement that must be established in every inter partes
proceeding. Empresa Cubana Del Tabaco v. Gen. Cigar Co., 753 F.3d 1270, 111
USPQ2d 1058, 1062 (Fed. Cir. 2014); John W. Carson Found. v. Toilets.com Inc., 94
USPQ2d 1942, 1945 (TTAB 2010). Opposer’s standing is established by its pleaded
registration, which the record shows to be valid and subsisting, and owned by
Opposer.12 See, e.g., Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842,
1844 (Fed. Cir. 2000); Otter Prods. LLC v. BaseOneLabs LLC, 105 USPQ2d 1252,
1254 (TTAB 2012).
B. Priority
Opposer’s pleaded registration has a priority date of September 4, 2015. 15 U.S.C.
§ 1057(c). Applicant did not counterclaim to cancel Opposer’s registration, and
Applicant’s earliest potential priority date is January 6, 2017, the filing date of its
application. Opposer, therefore, has established priority with respect to the goods
identified in the Registration and Application. Penguin Books Ltd. v. Eberhard, 48
USPQ2d 1280, 1286 (TTAB 1998) (citing King Candy Co. v. Eunice King’s Kitchen,
Inc., 496 F.2d 1400, 182 USPQ 108, 110 (CCPA 1974)).
C. Likelihood of Confusion
Our determination under Section 2(d) is based on an analysis of all of the
probative evidence of record bearing on the likelihood of confusion. In re E.I. du Pont
de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973) (setting forth

12 1 TTABVUE 7-9.
Opposition No. 91235560

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factors to be considered); see also In re Majestic Distilling Co., 315 F.3d 1311, 65
USPQ2d 1201, 1203 (Fed. Cir. 2003). In any likelihood of confusion analysis, two key
considerations are the similarities between the marks and the similarities between
the goods and services. See Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d
1098, 192 USPQ 24, 29 (CCPA 1976) (“The fundamental inquiry mandated by § 2(d)
goes to the cumulative effect of differences in the essential characteristics of the goods
and differences in the marks.”).
Opposer bears the burden of establishing that there is a likelihood of confusion by
a preponderance of the evidence. Cunningham, 55 USPQ2d at 1844. We consider the
likelihood of confusion factors about which there is evidence. du Pont, 177 USPQ at
567-68 (consider factors “when of record”); Cai v. Diamond Hong, Inc., 127 USPQ2d
at 1800 (“Not all of the du Pont factors are relevant to every case, and only factors of
significance to the particular mark need be considered.”(quoting In re Mighty Leaf
Tea, 601 F.3d 1342, 94 USPQ2d 1257, 1259 (Fed. Cir. 2010)).
The parties have presented evidence or argument regarding the following du Pont
factors:
(1) The similarity or dissimilarity of the marks in their entireties as to
appearance, sound, connotation and commercial impression.
(2) The similarity or dissimilarity and nature of the goods or services as
described in an application or registration or in connection with which
a prior mark is in use.
(3) The similarity or dissimilarity of established, likely-to-continue trade
channels.
(4) The conditions under which and buyers to whom sales are made, i.e.
“impulse” vs. careful, sophisticated purchasing.
Opposition No. 91235560

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(5) The fame of the prior mark (sales, advertising, length of use).
du Pont, 177 USPQ at 567.
1. Strength of the CAT & JACK Mark
We begin our analysis with the fifth du Pont factor, which asks whether Opposer’s
mark is strong.13 “A mark’s strength is measured both by its conceptual strength
(distinctiveness) and its marketplace strength (secondary meaning).” In re
Chippendales USA, Inc., 622 F.3d 1346, 96 USPQ2d 1681, 1686 (Fed. Cir. 2010)); see
also Top Tobacco, L.P. v. N. Atl. Operating Co., Inc., 101 USPQ2d 1163, 1171-72
(TTAB 2011); Tea Bd. of India v. Republic of Tea Inc., 80 USPQ2d 1881, 1899 (TTAB
2006); 2 J. THOMAS MCCARTHY, MCCARTHY ON TRADEMARKS AND UNFAIR COMPETITION
§ 11:83 (5th ed. 2019).
To evaluate the conceptual strength of a word mark, we place the mark in one of
the following classes: “(1) generic, (2) descriptive, (3) suggestive, and (4) arbitrary or
fanciful. The lines of demarcation, however, are not always bright.” Abercrombie &
Fitch Co. v. Hunting World, Inc., 537 F.2d 4, 9 (2d Cir. 1976). Market strength also
“varies along a spectrum from very strong to very weak.” Joseph Phelps Vineyards,
LLC v. Fairmont Holdings, LLC, 857 F.3d 1323, 122 USPQ2d 1733, 1734 (Fed. Cir.
2017).

13 The fifth du Pont factor addressed “the fame of the prior mark,” but this factor has been
used to evaluate strength of the mark in a broader sense, as explained in the text above. We
address this factor first because it is relevant to our evaluation of other factors.
Opposition No. 91235560

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We find the CAT & JACK mark is arbitrary for clothing and thus is conceptually
strong. Applicant submitted evidence showing a “cat” is a type of mammal14 and
“Jack” is a common personal name.15 There is no apparent connection between the
meanings of these terms, either separately or when combined into the mark CAT &
JACK, and clothing.
For the reasons given in our discussion of the record, we do not consider the
evidence Opposer submitted showing use and promotion of the CAT & JACK mark.
While this mark may have market strength, we cannot take judicial notice of the
critical connection between the owner of a mark and a user of the mark when the two
appear to be separate legal entities. If the mark was used by Target Corporation
under license, there must be some evidence to support that fact. We, therefore, make
no findings as to the market strength of the CAT & JACK mark.
2. Similarity of the Goods, Trade Channels and Purchasing
Conditions
“The authority is legion that the question of registrability of an applicant’s mark
must be decided on the basis of the identification of goods set forth in the application
regardless of what the record may reveal as to the particular nature of an applicant’s
goods, the particular channels of trade or the class of purchasers to which the sales
of goods are directed.” Octocom Sys., Inc. v. Houston Comput. Servs. Inc., 918 F.2d
937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990). See also Stone Lion Capital Partners,
LP v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1161 (Fed. Cir. 2014);

14 29 TTABVUE at Exh. 9.
15 Id. at Exh. 1.
Opposition No. 91235560

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Paula Payne Prods. v. Johnson Publ’g Co., 473 F.2d 901, 177 USPQ 76, 77 (CCPA
1973). We group these three du Pont factors because of the shared focus on the
identification of the goods.16
Almost every specific type of clothing identified in the Application17 is also
identified in the Registration.18 The following chart shows the number of overlapping
items.
Application goods Registration goods
boxer shorts boxers
scarves scarves
slippers slippers
sweat shirts sweatshirts
sweaters sweaters
swim wear swimwear
underwear underwear
belts belts
gloves gloves
hats hats
jackets jackets
jeans jeans
pants pants
robes robes
shoes shoes

16 Our analysis here covers the second, third and fourth du Pont factors listed above.
17 The Application identifies the following goods in class 25: “Boxer shorts; Scarves; Short-
sleeved shirts; Slippers; Sweat shirts; Sweaters; Swim wear; T-shirts; Turtle neck shirts;
Turtleneck sweaters; Underwear; Belts; Boxer shorts; Fleece pullovers; Gloves; Hats;
Jackets; Jeans; Pants; Robes; Rugby shirts; Shoes; Shorts; Socks.”
18 The Registration identifies the following goods in class 25: “Clothing and apparel, namely,
dresses, skirts, tutus, blouses, shorts, vests, bottoms, trousers, slacks, pants, jeans, bibs not
of paper, overalls, rompers, sweaters, tank tops, sweatshirts, sweatpants, shirts, graphic t-
shirts, tops, jackets, blazers, suits, suit coats, suit sets, overcoats, coats, body suits, leggings,
snow pants, uniforms, costumes for use in children's dress up play, wraps, stoles, scarves,
ties, swimwear, gloves, mittens, mufflers, earmuffs, belts, hosiery, tights, socks; infantwear,
clothing layettes, one piece garments for infants and toddlers; athletic wear, namely, shirts,
sweatshirts, pants, shorts; intimate apparel namely, bras, underwear, undergarments,
panties, boxers, camisoles, sleepwear, pajamas, robes, nightgowns; footwear, namely, shoes,
boots, sandals and slippers; headwear, namely, hats, caps, beanies, and head bands.”
Opposition No. 91235560

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Application goods Registration goods
socks socks
shorts shorts

The only items identified in the Application that are not identical are “short-
sleeved shirts, T-shirts, turtle neck shirts, turtleneck sweaters, fleece pullovers and
rugby shirts.” The Registration, however, includes “shirts” and “sweaters,” which
include the “short-sleeved shirts, T-shirts, turtle neck shirts, turtleneck sweaters,
and rugby shirts” identified in the Application. The goods from the Application not
identical to or covered by the Registration are fleece pullovers. Even that item is
highly similar to the goods listed in the Registration. The goods, therefore, are almost
entirely identical and even the sole exception is highly similar.19
Our analysis of the trade channels and purchasing conditions also focuses on the
identification of goods found in the application and registration. “We must presume
that Applicant’s and Registrant’s goods will be sold in the same channels of trade and
will be bought by the same classes of purchasers, because the goods are identical and
legally identical in part and there are no limitations as to channels of trade or classes
of purchasers in either the application or cited registration.” In re i.am.symbolic, llc,
127 USPQ2d 1627, 1629 (TTAB 2018) (citing In re Viterra Inc., 671 F.3d 1358, 101

19 Under this du Pont factor, Opposer need not prove, and we need not find, similarity as to
each product listed in the description of goods. It is sufficient for finding likelihood of
confusion that relatedness is established for any item encompassed by the identification of
goods in a particular class in the application. Tuxedo Monopoly, Inc. v. Gen. Mills Fun Grp.,
648 F.2d 1335, 209 USPQ 986, 988 (CCPA 1981); In re i.am.symbolic, llc, 116 USPQ2d 1406,
1409 (TTAB 2015), aff’d 866 F.3d 1315, 123 USPQ2d 1744 (Fed. Cir. 2017); Inter IKEA Sys.
B.V. v. Akea, LLC, 110 USPQ2d 1734, 1745 (TTAB 2014); General Mills Inc. v. Fage Dairy
Processing Indus. SA, 100 USPQ2d 1584, 1588 n.1 (TTAB 2011), judgment set aside on other
grounds, 110 USPQ2d 1679 (TTAB 2014).
Opposition No. 91235560

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USPQ2d 1905, 1908 (Fed. Cir. 2012)). Applicant’s argument that it intends to market
its goods to “adults, namely professional and well educated men and women”20 is
irrelevant because there are no trade channel limitations in the Application. Stone
Lion Capital Partners, 110 USPQ2d at 1162.
We find the parties’ goods, as identified in the Application and Registration, are
almost entirely identical, that such goods are likely to use the same trade channels
and be purchased under similar conditions by the same classes of purchasers. These
facts make confusion more likely.
3. Similarity of the Marks
We compare the marks in their entireties as to appearance, sound, connotation
and commercial impression. du Pont, 177 USPQ at 567. “Similarity in any one of
these elements may be sufficient to find the marks confusingly similar.” In re Davia,
110 USPQ2d 1810, 1812 (TTAB 2014); accord Krim-Ko Corp. v. Coca-Cola Bottling
Co., 390 F.2d 728, 156 USPQ 523, 526 (CCPA 1968) (“It is sufficient if the similarity
in either form, spelling or sound alone is likely to cause confusion.”) (citation omitted).
The test is not whether the marks can be distinguished when subjected to a side-
by-side comparison, but rather whether the marks are sufficiently similar in terms of
their overall commercial impression so that confusion as to the source of the goods or
services offered under the respective marks is likely to result. Cai v. Diamond Hong,
Inc., 127 USPQ2d at 1801; Midwestern Pet Foods, Inc. v. Societe des Produits Nestle

20 33 TTABVUE 23. Applicant similarly notes that Opposer sells children’s clothing under its
CAT & JACK mark. The marketing evidence cited above supports that assertion, but we
must compare the goods as identified in the Application and Registration. There are no limits
to children’s clothing in the Registration.
Opposition No. 91235560

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S.A., 685 F.3d 1046, 103 USPQ2d 1435, 1440 (Fed. Cir. 2012). The focus is on the
recollection of the average purchaser, who normally retains a general rather than a
specific impression of trademarks. See Sealed Air Corp. v. Scott Paper Co., 190 USPQ
106, 108 (TTAB 1975). In this case, because the goods at issue are clothing without
any restrictions or limitations as to channels of trade, classes of consumers, or price
points, we find that the average purchaser is an ordinary consumer.
The marks CADDY JACK and CAT & JACK are visually similar. The first two
letters “CA” are the same and the last word “JACK” is the same. The middle portions
of the marks are different, but we find this difference is outweighed by the
similarities. The marks are similar in sound, too. Each mark begins and ends with
an identical sound, and each mark has three syllables. When the full marks are
pronounced, they sound similar. The word “caddy” and the words “cat and” sound
similar, particularly when the latter two words are spoken quickly. Nevertheless,
“exact similitude is not required to conclude that two marks are confusingly similar.”
Hercules Inc. v. Nat’l Starch & Chem. Corp., 223 USPQ 1244, 1246 (TTAB 1984)
(NATROL is similar to NATROSOL).
Applicant argues that the marks have different meanings and create different
commercial impressions.21 To support this argument, Applicant submitted dictionary

21 33 TTABVUE 19-20.
Opposition No. 91235560

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definitions of the words caddie,22 caddy,23 cat,24 and jack.25 Applicant also submitted
evidence regarding the word Jack as a personal name.26 We found above that the CAT
& JACK mark is arbitrary and has no clear meaning in connection with clothing. The
evidence shows multiple meanings of the word “caddy,” including “a person hired to
carry a [golf] players clubs, find the ball, etc.”27 Applicant argues that its mark will
be understood as a golf caddy named Jack.28
The marks may have different meanings to consumers, but the evidence merely
shows the definitions of the different words used in the marks. There is no consumer
perception evidence. Applicant’s argument about the likely meaning of the CADDY
JACK mark to clothing consumers is speculative. Perhaps some consumers perceive
the mark CAT & JACK as referring to a cat and a person named Jack. We lack the
evidence needed to make a finding on the likely meaning of these marks to consumers.
The meaning of the marks, however, is not critical because we have found the
marks similar in appearance and sound. That similarity makes confusion more likely.
In re Davia, 110 USPQ2d at 1812.

22 29 TTABVUE at Exh. 7 (this definition is for caddie or caddy).
23 Id. at Exh. 8.
24 Id. at Exh. 9.
25 Id. at Exh. 13. This definition is not for the personal name “Jack” but for the word “jack.”
We find that most consumers would recognize the word Jack as a personal name, given the
way the word is used in the marks.
26 Id. at Exh. 1.
27 Id. at Exh. 7.
28 33 TTABVUE 19.
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4. Weighing the Likelihood of Confusion Factors
Every relevant likelihood of confusion factor indicates that confusion is likely. The
CAT & JACK mark is conceptually strong. The goods are identical in large part. The
trade channels and purchasing conditions are presumed to overlap, as well. The
marks are similar in appearance and sound. When these facts are taken together, it
is clear that confusion is likely.
Decision: The opposition is sustained under Section 2(d) and registration to
Applicant in International Class 25 is refused.29

29 The application will proceed to issuance of a notice of allowance with respect to unopposed
International Class 41.