The Sports Authority Michigan, Inc.v.Hanover Catalog Holdings, Inc. et al.

Trademark Trial and Appeal Board

Sep 18, 2000

No. 91108834 (T.T.A.B. Sep. 18, 2000)

9/18/00
az
Opposition No. 108,834
The Sports Authority
Michigan, Inc., by merger
with Intelligent Sports
Inc.,1 and The Sports
Authority, Inc.
v.
Hanover Catalog Holdings,
Inc. and Hanover Direct,
Inc., joined as a party
defendant
Before Cissel, Hohein and Rogers, Administrative Trademark
Judges.
By the Board.
Hanover Catalog Holdings, Inc. has filed an application
for registration of the mark AMERICA’S AUTHORITY IN HOME
FASHIONS (in typed form) for the following services in
International Class 42:
Mail order services featuring goods in the field
of housewares and home textiles, namely, sheets,
pillow cases, pillow shams, toss pillows, dust

1 The records of the Assignment Branch of the U.S. Patent and
Trademark Office reflect a merger of Intelligent Sports Inc. into
The Sports Authority Michigan, Inc. See Reel No. 1699, Frame
0957. See also the Certificate of Merger/Consolidation filed
with the declaration of Michael Lisi on March 19, 1999 as part of
opposers’ response to the summary judgment motion (filed January
29, 1999). Accordingly, the caption of this opposition has been
changed to reflect the merger. See TBMP §512.02.
UNITED STATES PATENT AND TRADEMARK OFFICE
Trademark Trial and Appeal Board
2900 Crystal Drive
Arlington, Virginia 22202-3513
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Opposition No. 108,834
2
ruffles, comforters, duvet covers, blankets,
curtains, draperies, pillows, lamps, mirrors, wall
hangings, wallpaper, drapery hardware, window
shades, shutters and blinds, rugs, furniture,
furniture covers, towels, dishes, tableware,
flatware, tablecloths, glassware.2
The application has since been assigned to Hanover Direct,
Inc.3 We refer to Hanover Catalog Holdings, Inc. and
Hanover Direct, Inc. collectively as “applicants.”
Intelligent Sports Inc. and The Sports Authority, Inc.
have opposed registration of applicants’ mark, alleging as
follows:
[Applicants’ mark] is likely to cause confusion,
or to cause mistake or to deceive with respect to
(1) Opposers’ prior adoption and use of a trade
name and service mark dominated by the word
“AUTHORITY” – to wit – THE SPORTS AUTHORITY . . .
(2) Opposers’ prior adoption and use of a family
of marks formed or dominated by the word
“AUTHORITY” . . . and (3) Opposers’ numerous U.S.
Trademark Registrations for a family of marks
formed or dominated by “AUTHORITY,” including,
without limitation, . . . 32 registrations . . . .
The following are some of the marks asserted by opposers:
1. AUTHORITY (Registration No. 1,245,417) for “apparel,
namely, rainwear, jackets, coats, suits, slacks and
vests”;4

2 Application Serial No. 75/208,182 was filed on November 21,
1996 and claims first use anywhere and first use in commerce on
October 7, 1996.
3 The assignment of the application to Hanover Direct, Inc. has
been recorded with the Assignment Branch of the U.S. Patent and
Trademark Office at Reel No. 1856, Frame No. 0583.
4 Registration No. 1,245,417 issued on July 12, 1983 and claims
first use and first use in commerce on May 11, 1982.
Opposition No. 108,834
3
2. THE SPORTS AUTHORITY (Registration No. 1,527,526) for
“retail store services featuring sporting equipment and
clothing”;5
3. THE SKI AUTHORITY (Registration No. 1,688,221) for
“retail store services featuring ski equipment and
clothing”;6
4. THE KNIFE AUTHORITY (Registration No. 1,688,221) for
“retail store services featuring sporting goods and
equipment, footwear and clothing”;7
5. THE LOW PRICE AUTHORITY (Registration No. 1,937,000)
for “retail store services comprising the sale of
sporting goods and equipment, footwear and clothing”;8
6. AUTHORITY (Registration No. 2,074,354) for “retail
store services in the field of sporting goods and
equipment, apparel, footwear, headgear and related
goods and services”;9 and
7. THE AUTHORITY ON SPORTING GOODS (Registration No.
2,101,178) for “rental of sporting goods, including
protective clothing and equipment;” and “retail store
services in the fields of fitness, sporting goods and
equipment, apparel, footwear, headgear and related
goods.”10
In their answer, applicants have denied the salient
allegations of the notice of opposition.
This case now comes up on applicants’ motion for
summary judgment (filed January 29, 1999). There,

5 Registration No. 1,527,526 issued on February 28, 1989 and
claims a date of first use on June 29, 1987 and a date of first
use in commerce on May 19, 1988.
6 Registration No. 1,688,221 issued on May 19, 1992 and claims
first use and first use in commerce in September, 1989.
7 Registration No. 1,963,911 issued on March 26, 1996 and claims
first use and first use in commerce on September 30, 1992.
8 Registration No. 1,937,000 issued on November 21, 1995 and
claims first use and first use in commerce in January, 1992.
9 Registration No. 2,074,354 issued on June 24, 1997 and claims
first use and first use in commerce in December, 1987.
10 Registration No. 2,101,178 issued on September 30, 1997 and
claims first use and first use in commerce in December, 1995.
Opposition No. 108,834
4
applicants contend that “the sheer differences in the
overall commercial impressions of the marks themselves is
dispositive to a finding that a likelihood of confusion does
not exist between Hanover’s AMERICA’S AUTHORITY IN HOME
FASHIONS mark and every one of TSA’s [opposers’] AUTHORITY
marks.” Specifically, applicants maintain that “the marks
should be evaluated by comparing the overall impression
created by each mark taken as a whole, rather than by
breaking the marks up into their component parts for
comparison”; that AUTHORITY is the only word common to
applicants’ mark and opposers’ marks; that AUTHORITY is not
the first word in any of the marks; that HOME FASHIONS is
the dominant term in applicants’ mark; that because
AUTHORITY is “sandwiched” between the first term and the
dominant term in applicants’ mark, AUTHORITY does not carry
sufficient weight to render applicants’ mark confusingly
similar to opposers’ marks; and that the commercial
impression of applicants’ mark is “markedly different” from
the commercial impression of any of opposers’ marks.
Further, applicants maintain that “[t]he differences in
Hanover’s and TSA’s [opposers’] respective goods and
services and the channels of trade as well as the extensive
registration of third party AUTHORITY marks supplement and
reinforce this conclusion [of no likelihood of confusion].”
Opposition No. 108,834
5
In response to applicants’ motion for summary judgment,
opposers contend that “prior to Applicant’s application,
[opposers established] a Family of AUTHORITY marks, with the
members of the family all having the AUTHORITY surname”;
“that opposers’ Family of AUTHORITY marks have [sic] been
extensively advertised and promoted since their adoption”;
that opposers’ “Family of AUTHORITY Marks are [sic] not only
‘strong,’ but they are famous, and thus entitled to far-
reaching protection against third-party uses beyond mere
identical uses”; that “Applicant has focused on the
incorrect portions of the AMERICA’S AUTHORITY IN HOME
FASHIONS mark to avoid a finding of similarity”; that “[i]n
comparing a ‘family of marks’ to those of a junior user’s
mark, the use of a surname is an important consideration for
weighing this factor”; and that “in comparing the marks
under a ‘family of marks’ analysis, the main focus . . .
should be on the dominant, or non-descriptive portions of
the mark.” Opposers also contend that the AUTHORITY portion
of the mark is the dominant portion, noting that applicants
have disclaimed “America’s” and “home fashions.” Further,
opposers argue that the parties offer overlapping goods and
services; that “[b]oth parties offer their goods and
services through identical marketing channels, including the
Internet, mail order services, direct mail advertising and
other printed material”; that because opposers use and
Opposition No. 108,834
6
license their marks “on a wide variety of goods and
services, some of which are not at all related to sporting
goods, consumers are likely to believe that [opposers are]
connected to Applicant’s operation in some way, if not
directly, by authorizing or sponsoring Applicant's
activities”; and that many of the registrations for
AUTHORITY marks listed by applicants are owned by opposers
or have been “challenged” by opposers and the registrations
do not prove actual use of the marks.
In turn, applicants filed a reply brief on April 19,
1999. We have not considered applicants’ reply brief,
however, because it exceeds the page limit allowed for reply
briefs under Trademark Rule 2.127(a).11
We begin our discussion by noting that 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.
Societe Des Produits Marnier Lapostolle v. Distillerie
Moccia S.R.L., 10 USPQ2d 1241, 1244 (TTAB 1989); and Fed. R.
Civ. P. 56(c). The purpose of summary judgment is to avoid
an unnecessary trial where additional evidence would not
reasonably be expected to change the outcome. Pure Gold,
Inc. v. Syntex (U.S.A.), Inc. 739 F.2d 624, 222 USPQ 741

11 The consented motion (filed April 9, 1999) to extend the time
for filing a reply brief is therefore denied as moot.
Opposition No. 108,834
7
(Fed. Cir. 1984). A party moving for summary judgment has
the burden of demonstrating the absence of any genuine issue
of material fact, and that it is entitled to summary
judgment as a matter of law. Celotex Corp. v. Catrett, 477
U.S. 317, 106 S. Ct. 2548 (1986). The evidence must be
viewed in a light favorable to the non-movant, and all
justifiable inferences are to be drawn in the non-movant’s
favor. Opryland USA, Inc. v. Great American Music Show,
Inc., 961 F.2d 200, 22 USPQ2d 1542 (Fed. Cir. 1992).
In determining whether there is any genuine issue of
material fact relating to the ultimate legal question of
likelihood of confusion, we must consider those of the 13
evidentiary factors listed in In re E. I. du Pont de Nemours
& Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (CCPA 1973),
for which evidence is of record and which are pertinent to
the case in question. See Nina Ricci S.A.R.L. v. E.T.F.
Enterprises Inc., 889 F.2d 1070, 12 USPQ2d 1901 (Fed. Cir.
1989). As noted in the du Pont decision itself, each of the
factors may from case to case play a dominant role.
The first factor that we consider is "the similarity or
dissimilarity of the marks in their entireties as to
appearance, sound, connotation and commercial impression."
No element, even disclaimed elements, of the involved marks
Opposition No. 108,834
8
may be ignored. See In re National Data Corp., 753 F.2d
1056, 1060, 224 USPQ 749, 752 (Fed. Cir. 1985).12
Turning first to opposers’ THE CLUB AUTHORITY and PARTS
AUTHORITY marks, we find that they are so markedly different
from applicants’ mark AMERICA’S AUTHORITY IN HOME FASHIONS
in appearance, sound, connotation and commercial impression
that there is no likelihood of confusion between applicants’
mark and such marks.
Next, turning to the remaining marks pleaded by
opposers, we note that AUTHORITY is the only term common to
opposers’ marks and applicants’ mark and that such marks of
opposers comprise the word AUTHORITY alone or in combination
with one or more sporting, apparel or footwear terms. In
contrast, applicants’ mark begins with the possessive form
of a geographic term and terminates with HOME FASHIONS.
Opposers’ pleaded marks do not contain geographic terms and
do not include any terms in the possessive form.13 Also,
HOME FASHIONS is a term that does not appear in any of
opposers’ pleaded marks, and is not a sporting, apparel or

12 The consuming public is unaware of what words have been
disclaimed during prosecution of the trademark application at the
U.S. Patent and Trademark Office. Id.
13 We recognize that opposers have filed a declaration by Michael
Lisi, the senior vice president, general counsel and secretary
for The Sports Authority Michigan, Inc., in which he states that
opposers own and use common law marks such as AMERICA’S AUTHORITY
ON OUTDOOR SPORTS. However, many of such marks, including
AMERICA’S AUTHORITY ON OUTDOOR SPORTS, have not been pleaded in
the notice of opposition. Because opposers may not seek to avoid
applicant's motion by relying on unpleaded marks, we have not
considered such marks.
Opposition No. 108,834
9
footwear term. Thus, to the extent that opposers’ marks
identify an “authority,” the “authority” is in a field
completely unrelated to that of applicants. Further, HOME
FASHIONS, i.e., terms which modify AUTHORITY in applicants’
mark, are positioned after AUTHORITY, while in all but one
of opposers’ pleaded marks, the term which modifies
AUTHORITY, e.g., SPORTS or SKI, is positioned before
AUTHORTIY.14 The differences in the locations of these
terms which modify AUTHORITY in the respective marks assist
in differentiating the commercial impressions of the marks.
In view of foregoing, when considering opposers’ pleaded
marks and applicants’ mark in their entireties, we believe
that they differ so substantially in appearance, sound,
connotation and commercial impression that there is no
likelihood that applicants’ use of its mark will result in
confusion.
We would hold for applicants on the question of
likelihood of confusion even if we were to find that one or
more of opposers’ pleaded marks is famous as applied to
their goods and services; that opposers have a family of
marks; that opposers have a family of marks which “have
become very strong and famous”; that opposers’ goods and
services are closely related to the services identified in

14 The exception is Registration No. 2,101,178 for THE AUTHORITY
ON SPORTING GOODS.
Opposition No. 108,834
10
applicants’ application; that the parties’ goods and
services move through the same channels of trade to the same
classes of purchasers; and that the goods and services are
purchased casually rather than with care. Simply put,
opposers, in responding to the motion for summary judgment,
have not set out any evidence that they could produce at
trial which could reasonably be expected to cause us to come
to a different conclusion. The first du Pont factor simply
outweighs all of the others that might be pertinent to this
case. See Kellog Co. v. Pack’em Enterprises Inc., 951 F.2d
330, 21 USPQ2d 1142 (Fed. Cir. 1991) (affirming entry of
judgment when a single du Pont factor, i.e., the
dissimilarity of the marks, was dispositive of the
likelihood of confusion issue).
Accordingly, after carefully considering all of the
parties’ arguments and submissions, viewing the evidence in
a light favorable to opposers, and drawing all justifiable
inferences in favor of opposers, we believe that there is no
genuine issue as to any fact that would be material to our
decision on opposers’ claim of likelihood of confusion, and
that applicant is entitled to judgment on this question as a
matter of law. Applicants’ motion for summary judgment on
Opposition No. 108,834
11
the opposition is, therefore, granted and the opposition is
hereby dismissed.
R. F. Cissel
G. D. Hohein
G. F. Rogers
Administrative Trademark
Judges, Trademark Trial
and Appeal Board