The University of Iowa and The Board of Regents, State of Iowav.The University of Southern Mississippi

Trademark Trial and Appeal Board

Jul 29, 2011

No. 91164745 (T.T.A.B. Jul. 29, 2011)

Mailed:
July 29, 2011
Bucher
UNITED STATES PATENT AND TRADEMARK OFFICE
_______

Trademark Trial and Appeal Board
________

The University of Iowa and
The Board of Regents, State of Iowa
v.
The University of Southern Mississippi
________

Opposition No. 91164745
against Serial No. 76483437
_______

Wendy K. Marsh and Kevin H. Collins of Nyemaster Goode West
Hansell & O’Brien, P.C. for The University of Iowa and The
Board of Regents, State of Iowa.

J.T. Martin for The University of Southern Mississippi.
_______

Before Bucher, Kuhlke and Wellington, Administrative Trademark
Judges.
Opinion by Bucher, Administrative Trademark Judge:
The University of Southern Mississippi (also “Southern
Miss,” “USM” or “applicant”) seeks registration on the
Principal Register of the following mark:

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Opposition No. 91164745
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for goods identified in the application as:
“metal car tags, metal key chains, metal money clips,
metal key rings and metal mailboxes” in International
Class 6;
“electric, luminous, neon and mechanical yard signs,
telephones, magnets, radios hung on ropes, hockey,
safety and bicycle helmets” in International Class 9;
“clocks, precious metal money clips, watches, jewelry,
namely class rings and ornamental lapel pins” in
International Class 14;
“bumper stickers, windows decals, paper car flags, bank
checks, paper banners, paper pennants, greeting cards,
post cards, graduation announcements, paper weights,
stationery, binders, note books, and stationery-type
portfolios” in International Class 16;
“umbrellas, backpacks, wallets, brief-case type
portfolios” in International Class 18;
“pillows, diploma frames, picture frames, stadium seats,
plastic banners, non-metal key chains, plastic car
flags, non-metal money clips, non-metal mailboxes,
plastic and non-metal key rings, plastic pennants and
non-metal car tags” in International Class 20;
“plastic beverage containers, mugs, glass beverage
containers, ice buckets, salt and pepper shakers,
birdhouses, pottery dinnerware, dinnerware including
plates and cups, insulated sleeve holders for beverage
cans” in International Class 21;
“afghans, towels, knit stadium blankets, cloth and felt
pennants and cloth banners” in International Class 24;
“t-shirts, polo shirts, sweaters, jerseys, wind suits,
warm-up suits, rainwear, sleepwear, lingerie, neckwear,
infant apparel, baseball caps, headwear, socks, gloves,
Opposition No. 91164745
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ties, golf shoes and outerwear, namely, jackets,
ponchos and overcoats” in International Class 25;
“doormats” in International Class 27;
“footballs, basketballs, Christmas tree ornaments, plush
toy mascots, balloons, beanbags and stuffed toys” in
International Class 28; and
“bottled drinking water” in International Class 32.1
The University of Iowa and The Board of Regents, State of
Iowa (hereinafter “opposers” or simply “Iowa”) have opposed
registration of applicant’s mark, asserting as its ground for
opposition, likelihood of confusion, namely that as used in
connection with applicant’s goods, the mark so resembles
Iowa’s previously used and registered marks shown below:

for “entertainment services-namely,
presenting athletic events at the
university level” in International Class
41;2

1 Application Serial No. 76483437 was filed on January 21, 2003
based upon applicant’s allegation of a bona fide intention to use
the mark in commerce. The drawing is lined for the color gold, but
color is not claimed as a feature of the mark. On November 17, 2006
(subsequent to the filing of this notice of opposition), applicant
filed a Statement of Use (SOU). Once an application has been
published for opposition, a SOU may not be filed until after the
issuance of a notice of allowance. See Trademark Rule 2.88 (A
statement of use that is filed prior to issuance of a notice of
allowance is premature, will not be considered, and will be returned
to the applicant). Therefore, we have given no consideration to
this document.
2 Registration No. 1312703 issued on January 1, 1985; renewed.
The mark consists of a fanciful representation of a hawk’s head.
Opposition No. 91164745
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for “items of jewelry and wrist watches”
in International Class 14;
“stationery and wrapping paper and
checkbook holders” in International
Class 16;
“wallets, attaché cases, waist pouches,
and all-purpose sports and athletic
bags” in International Class 18
“decorative novelty buttons and emblems”
in International Class 20;
“beverage glassware” in International
Class 21;
“flags and banners made of cloth and
fabric” in International Class 24;
“wearing apparel; namely, aprons; infant
wear; namely, bibs; bandannas and
scarves; sport coats and vests;
outerwear; namely, coats, jackets,
parkas, gloves, mittens and scarves;
shirts, jerseys and blouses; underwear;
pajamas and robes; footwear including
socks and athletic shoes; headwear;
sweaters; neckwear; shorts; and sweat
suits, pants and shirts” in
International Class 25;
“sporting goods and toys; namely,
basketballs; footballs; game boards and
puzzles; golf clubs, bags and balls; toy
stuffed animals and dolls; fishing
lures; toy planes, trucks and cars;
football helmets; toss toys; bowling
pins; pool and cue balls; and toy banks”
in International Class 28;3 and

for “entertainment services, namely,
presenting athletic events” in
International Class 41;4

3 Registration No. 1772928 issued on May 25, 1993; renewed.
4 Registration No. 2616009 issued on September 3, 2002; Section 8
affidavit (six-year) accepted and Section 15 affidavit acknowledged.

Opposition No. 91164745
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as to be likely to cause confusion, to cause mistake, or to
deceive under Trademark Act Section 2(d), 15 U.S.C. § 1052(d).
Under this same section of the Lanham Act, Iowa has also
alleged likelihood of confusion with its previously used
common law marks (¶¶ 3 and 5 of the Notice of Opposition)
which are the same marks as those registered but are presented
in the color yellow, on many other goods. Further, to the
extent that opposers’ prior common law usage of the marks
shown below for the pleaded goods and services was not fully
articulated in the pleading, it was tried by implied consent
and we deem the pleadings as amended to assert these marks.

Applicant has filed an answer denying the salient
allegations of the notice of opposition.
Evidentiary Issues
Before addressing the merits of the case, we turn to
numerous objections that each of the involved parties has filed
against its adversary herein.
Opposition No. 91164745
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Opposers’ objections to Testimony Depositions of survey
participants Willingham, Mundheim, Paglomutan, Grillo and Shuler,
and all of the related exhibits
USM elicited testimony in 2010 from a number of Iowa’s
earlier survey participants5 regarding their respective
declarations from 2009. We agree with Iowa that USM attempted
to elicit testimony from each of these witnesses regarding
their memory of declarations signed by the witnesses much
earlier, but the referenced declarations were not before the
witnesses during their respective depositions. Nonetheless,
we do not find it necessary to exclude these depositions in
their entirety. Rather, we have accorded them limited
probative value. In our analysis of likelihood of confusion,
infra, we have given only limited weight to opposers’ survey
results, and consequently, these depositions are less
important.
Opposers’ objections to Testimony Deposition of Kathleen Hayman
("TD-Hayman") 4:1-36:8 and Expert Report of Kathleen Hayman
(Applicant's Exhibit Q) i.e. lay witness, expert witness, or neither?
Ms. Hayman has clearly demonstrated her first-hand
knowledge about the purchasers of collateral products from
applicant’s bookstore in Hattiesburg, MS, over a period of
many years. However, we agree with Iowa that Ms. Hayman does

5 As noted later in this opinion, in support of this litigation,
Iowa commissioned a mall intercept survey involving interviews with
several thousand participants at shopping malls in Dallas,
Des Moines, Los Angeles, Orlando and Phoenix.

Opposition No. 91164745
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not qualify as an expert in this proceeding as contemplated by
Fed. R. Evid. 702. On the other hand, we accord her personal
opinions about USM’s eagle head mark the same value as we
would any other of USM’s lay witnesses, pursuant to Fed. R.
Evid. 701.6
Opposers’ objections to Testimony Depositions of court reporter,
Nancy Farris, regarding a conversation she had with a third party,
Mike Banning, as well as a written declaration of Mike Banning
(Exhibit PP) introduced by applicant during this deposition
USM elicited testimony from its court reporter, Nancy
Farris, regarding a conversation that she had with Mike
Banning – an earlier participant in Iowa’s mall intercept
survey – who USM was attempting to depose. During this
deposition, USM’s counsel also questioned Ms. Farris about a
written declaration of Mr. Banning given in 2009. Iowa
objected to this testimony on the basis of hearsay and to Mr.
Banning’s 2009 declaration on the basis of hearsay and as
lacking proper foundation.
We agree with opposers that Ms. Farris’s recounting of
her earlier conversation with Mr. Banning outside the presence
of the parties, and the statements in Mr. Banning’s
declaration, clearly constitute hearsay and are inadmissible.
See Blansett Pharmacal Co. v. Carmirick Laboratories Inc.,

6 We note that Exhibit 1 (2001) to Exhibit Q (2008) was drafted
in the context of a totally unrelated matter preceding USM’s
adoption of the involved eagle head logo (2003), and has absolutely
no relevance to this case.
Opposition No. 91164745
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25 USPQ2d 1473, 1476 (TTAB 1992) [statements attributed to
others are hearsay].
Opposers’ objections to that portion of the Testimony Deposition of
Mr. Fitts as to third-party trademarks and various exhibits
(Applicant's Exhibit 1-6 as well as Exhibits DD and EE) on the
ground of relevancy.
We deem neither this testimony nor the third-party
trademarks as outcome determinative, and therefore choose to
let these into the record without further discussion of these
objections.
Applicant’s objections to the record including the various Notices
of Reliance that were offered by Opposers during the period of
suspension for Opposers to take depositions by written questions
Southern Miss objects to all of Iowa’s evidence
introduced in its notices of reliance on the basis they were
offered “on dates outside of Opposers’ Testimony Period, which
was reset to begin on April 1, 2010 and conclude on May 1,
2010.” (Applicant's Brief, p. iv(2)).
Accordingly, it would seem that the basis for objection
to Iowa’s Notices of Reliance is that they were submitted
prior to the technical opening of Iowa’s testimony period.
However, we recognize the confusion in the timing of Iowa’s
testimony period created by the depositions upon written
questions. Applicant’s objection to opposers' premature
filing of the notice of reliance is a procedural objection

Opposition No. 91164745
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that should have been raised promptly to permit the defect to
be cured. However, Southern Miss waited nine months to raise
this matter until the time of its brief on the case. If, as
here, the objection is one that could have been raised
promptly, and was not timely raised, the objection is deemed
waived. TBMP Section 707.02(b) (3rd ed. 2011). As a result,
we hold that opposer waived its objection to Iowa’s premature
filing of a notice of reliance.
Applicant’s motion to strike opposers’ Separate Statement of
Objections for exceeding the number of pages allowed for
Opposers’ Trial Brief.
We find that Iowa’s main brief at trial complies with all
requirements of Trademark Rule 2.128(b). The brief itself is
forty-four pages.7 Under our practice, an appendix or separate
statement of objections, as Iowa submitted, does not count
toward the brief page limit. See TBMP § 801.03, citing to
Harjo v. Pro-Football Inc., 45 USPQ2d 1789, 1792 (TTAB 1998)
[appropriate evidentiary objections may be raised in appendix
or separate paper rather than in text of brief]; and Marshall
Field & Co. v. Mrs. Fields Cookies, 25 USPQ2d 1321, 1326 (TTAB
1992).

7 We do not count the ESTTA cover sheet, the certificates of
mailing, or Exhibit 1 (at 47-83 of TTABVUE #131 – the slip opinion
from Opposition Nos. 91160755 and 91160763) See Nike Inc. v. WNBA
Enterprises LLC, 85 USPQ2d 1187 (TTAB 2007).
Opposition No. 91164745
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Applicant’s motion to strike opposers’ reply brief as untimely
Opposers filed their reply brief on January 6, 2011 and
served a copy on counsel for Applicant by first-class mail on
the same date. Applicant argues that under Trademark Rule
2.128(a)(1), Iowa’s reply brief was required by to be filed by
December 28, 2010. Iowa’s counsel explains that it
inadvertently logged the due date as January 12, 2011 (thirty
days after USM’s brief rather than the fifteen days of the
rule) and believed its reply brief had been timely filed.
Accordingly, Iowa’s reply brief was filed nine days after
the date upon which it was required to be filed by the
Trademark Rules of Practice. Contrary to applicant’s
assertions, the record does not show that Iowa has taken a
“cavalier attitude toward the procedural rules of practice” of
this Board. The reasons for years of pendency of this
litigation cannot be laid solely at the doorstep of opposers.
Furthermore, in reviewing this litigation, the Board has not
always held applicant “to the strict letter of the procedural
rules in this opposition” during past procedural skirmishes.
On the other hand, the nine-day delay in filing Iowa’s
reply brief was within Iowa’s control. Although it is clear
that this docketing error on the part of Iowa’s counsel
clearly did not occur in bad faith, we cannot tolerate missed
deadlines inasmuch as this tribunal is constantly under
Opposition No. 91164745
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pressure to reduce the length of our proceedings. This is a
case where we must require strict compliance with our rules,
and hence, we have not considered opposers’ reply brief.
Evidence of record
In addition to the pleadings, the file of opposed
application Serial No. 76483437 is part of the record without
any action by the parties. Trademark Rule 2.122(b), 37 C.F.R.
§ 2.122(b).
Opposer has made the following evidence of record: the
Testimony Deposition of Lonnie Shoultz taken January 20, 2010,
with Shoultz Exhibits 1-3; the Testimony Deposition of Dale
Arens taken January 27, 2010, with Arens Exhibits 1- 23; the
Testimony Deposition of Gary Barta taken January 28, 2010,
with Barta Exhibits 1-2; the Testimony Deposition of Philip
Houle taken January 29, 2010, with Houle Exhibits 1-3;
opposers’ Notice of Reliance and Exhibits 1-9 (Paper No. 103);
opposers’ Supplemental Notice of Reliance and Exhibits 10-32
(Paper Nos. 104-106); the Testimony Deposition of Doug Brown
taken September 1, 2010, with Brown Exhibits 1-2 (opposers’
Exhibits 33-34); and the Testimony Deposition of Theresa Laree
Grantham taken September 1, 2010, with Grantham Exhibits 1-2
(opposers’ Exhibits 33-34).
Opposition No. 91164745
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Applicant has made the following evidence of record: the
Testimony Deposition of Rodney Richardson taken June 9, 2010,
with applicant’s Exhibits A-L; the Testimony Deposition of
Kathleen Hayman taken June 10, 2010, with applicant’s Exhibits
M-R; the Testimony Deposition of E. Eugene Fitts, II taken
June 11, 2010, with applicant’s Exhibits S-FF; applicant’s
Notice of Reliance dated July 6, 2010 and accompanying
evidence; the Testimony Deposition of Rocky Willingham taken
June 22, 2010, with applicant’s Exhibit GG; the Testimony
Deposition of Paul Mundheim taken June 23, 2010, with
applicant’s Exhibit HH; the Testimony Deposition of Dee Dee
Galvao taken June 23, 2010, with applicant’s Exhibit II; the
Testimony Deposition of Tom Younger taken June 29, 2010, with
Applicant’s Exhibit JJ; the Testimony Deposition of Royce
Paglomutan taken June 29, 2010, with applicant’s Exhibit KK;
the Testimony Deposition of Thomas Grillo taken June 29, 2010,
with applicant’s Exhibit LL; the Testimony Deposition of
Joseph Fink taken July 1, 2010, with applicant’s Exhibit MM;
the Testimony Deposition of Don Delici taken July 7, 2010,
with applicant’s Exhibit NN; the Testimony Deposition of
Daniel Shuler taken July 22, 2010, with applicant’s Exhibit
OO; and the Testimony Deposition of Nancy L. Farris taken July
28, 2010, with applicant’s Exhibit PP.
Opposition No. 91164745
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The Parties
Opposers/Iowa
The University of Iowa, in Iowa City, has been using the
Hawkeyes mark of Registration Nos. 1312703 and 1772928 for
over thirty years in connection with its NCAA athletic events
and on a variety of collateral goods including clothing,
sporting goods and novelty items. The Iowa Hawkeyes play in
the Big Ten Conference, with a hundred plus years of tradition
of competitive intercollegiate athletic programs with
Illinois, Indiana, Michigan, Michigan State, Minnesota, Ohio
State, Penn State, Purdue and Wisconsin. This provides Iowa
ready access to all the largest media markets through CBS
Sports, ABC/ESPN, the Big Ten Network and CBS College Sports
Network. In 2001, Iowa also began using a second, similar
Hawkeyes mark (Registration No. 2616009) in connection with
all the same goods and services.
These Hawkeyes marks are used by all of the
intercollegiate athletic teams that play for Iowa. Although
color is not claimed in the registrations of record, both
Hawkeyes marks are frequently used in a black and/or gold
color scheme, reflecting the University of Iowa’s school
colors. These marks are placed prominently on the
university’s playing fields, stadiums, arenas, on its website,
Opposition No. 91164745
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on flags and banners hung at
athletic games, and at a wide
variety of events associated with
collegiate sports. At right is a
depiction of Iowa’s mark on the
floor of Carver-Hawkeye Arena.

Similarly, the Hawkeyes mark has also been used on Iowa’s

football helmets for more than thirty years.
In fact, based on its long, competitive
traditions, opposers allege that this iconic
university symbol is one of the most widely recognized logos
in all of collegiate athletics. Between the designs as
registered and used, the following four Hawkeyes images are
predominant:

Applicant/Southern Miss
The record contains a brief retrospective on the origins
of the Southern Miss school colors and the evolution over the
years of its team names, such as Tigers, Normalites, Yellow
Jackets, Confederates, Southerners, and General Nat; and in
1972, Golden Eagles beat out Raiders, War Lords, Timber Wolves
and a reprise of Southerners.
Opposition No. 91164745
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Black and gold have been Southern Miss’ colors since the beginning, thanks to Florence Burrow
Pope, who, with her husband Moran, was in the school’s first class in 1912.
Soon after school opened, a committee was appointed to make recommendations concerning
school colors. Florence was on the committee. “We were charged with selecting colors which no
other college in Mississippi had adopted,” she said. “Marye Miller suggested that the colors be
maroon and gray. I suggested that they be black and gold. The two suggestions were submitted
to the student body, and the student body voted to have black and gold as the school colors.”
Since that day, mascots, names, customs and the campus have changed, but black and gold have
remained the school’s colors.
…
The earliest nickname for the University’s athletic teams was Tigers, but early teams were also
referred to as Normalites. Then, in 1924, our teams’ name was changed to Yellow Jackets.
When the school was renamed Mississippi Southern College in 1940, a name change for the athletic
teams was fitting. In April 1940, the student body voted to name the teams Confederates. The
teams were called the Confederates during fall 1940 and spring 1941. In September 1941,
Confederates was dropped, and the teams were named Southerners.
Several years later, in 1953, General Nat (for Gen. Nathan Bedford Forrest) was approved as the
Southerners’ mascot. In 1972, alumni, faculty, students and staff were asked to submit new names
for the athletic teams, and an ad hoc committee appointed by the Alumni Association voted on the
submissions. Our present mascot, the Golden Eagles, was chosen as the athletic teams’ name.
Golden Eagles was chosen over Raiders, War Lords, Timber Wolves and Southerners.
The record shows that until 2002/2003, the mascot design
used by Southern Miss was a full eagle
sometimes called the “attack eagle.”
However, in an era of ever-increasing
emphasis on collateral products and
television imagery, Rodney Richardson, a 1994 graduate of USM
and the owner of a graphic design firm in Hattiesburg, MS, in
2001 proposed the creation of a new athletic mark for the
University of Southern Mississippi. According to Richardson,
[The attack eagle] was a very, very difficult
logo to execute in game day and retail
product. It was — from a licensing
standpoint, it is very difficult to embroider
that logo. It is very difficult to screen
Opposition No. 91164745
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print it in certain applications. It is not
a product-friendly graphic.8

Mr. Richardson suggested replacing the image of a full
eagle with the head of an eagle to derive a “more product-
friendly graphic.”9 During 2002, his company, Rare Design,
presented at least nine phases of imagery for consideration by
USM as the selection project progressed. The general
directions of the folios from each stage of the project give
some indication of the modernization process. With Phase 1,
on April 4th, “Design Direction: 2 – Contemporary South” shows
a series of largely angular-looking eagles, the majority left-
facing and having the words “Southern Miss” as part of a
composite mark.10 Phase 2,
on May 1st shows an elongated
and angular eagle head placed
in composite marks where the image of the bird head is
relatively small compared with the literal elements “Southern
Miss” and “Golden Eagles.” Phase 3, on May 20th, shows a less
angular, larger and more rounded eagle head, but in most of
the “marks” or “primary logo” presentations, the school name
and mascot identification remain as prominent features. One
exception is the “icon” imagery, at the far right below.

8 Rodney Richardson deposition of March 22, 2006, at 23.
9 Id. at 24.
Opposition No. 91164745
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In Phases 4-5, with images dated
July 3rd, the words are still
dominate within the composite marks,
revealing only new variations on typefaces from the Phase 3
images seen above. Phase 6, dated July 31st,11 and Phase 7,
dated August 23rd,
continued the eagle
head imagery above
the terms “Southern Miss” and “Golden Eagles,” making further
changes only in fonts/typefaces. Likewise, the presentations
of October 24th and November
12th continued with an earlier
eagle head design, as shown.

After almost a year of development, on January 29, 2003,
the record shows that a “New Golden Eagle Comes to Roost at
Southern Miss.”12 At a press conference, Southern Miss
unveiled a sleek, new and modern eagle head mark, standing
alone, without any wording. At the same time, and in a move

10 TTABVUE #123, at 137 of 260. These left-facing drawings, as
placed into the record, are black-and-white images. Later phases of
development involved the right-facing images shown above.
11 See TTABVUE #123, at 192 and 193.
12 Applicant’s Appendix I, Richardson Testimony exhibit.
Opposition No. 91164745
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seemingly not discussed anywhere in this ongoing process,
applicant also unveiled a unified color scheme, choosing a
much more vibrant shade of golden yellow than the “Vegas Gold”
seen in the old Southern Miss’s attack eagle.

According to applicant, almost immediately the number of
vendors of applicant’s merchandise increased dramatically, and
the eagle head mark suddenly became USM’s “best selling
logo.”13
Standing and Priority
Because opposers have properly made their pleaded
registrations of record, and thereby have shown that they are
not mere intermeddlers, we find that opposers have established
their standing to oppose registration of applicant’s mark.
See Lipton Industries, Inc. v. Ralston Purina Co., 670 F.2d
1024, 213 USPQ 185 (CCPA 1982); see also Cunningham v. Laser
Golf Corp., 222 F.3d 943, 55 USPQ2d 1842 (Fed. Cir. 2000).
Moreover, because opposers have made the pleaded
registrations summarized above properly of record, Section

13 Kathleen M. Hayman testimony deposition, at 21.

Opposition No. 91164745
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2(d) priority is not an issue in this case as to the marks and
goods and services covered by said registrations. See King
Candy Co. v. Eunice King’s Kitchen, Inc., 496 F.2d 1400, 182
USPQ 108 (CCPA 1974). In addition, opposers have shown,
through an extensive record that includes catalogues, websites
and other documentation, that they established prior common
law trademark rights in the Hawkeyes marks in the color
yellow, as depicted above. Opposers’ common law rights extend
to a wide variety of goods for which it pleaded common law
rights, including college apparel such as polos and rugbys,
house wares, posters, prints, tailgating supplies, CDs, DVDs
and books, pet accessories, and popular college bookstore
items for sports fans and alumni. Accordingly, our likelihood
of confusion analysis includes not only the registered marks
and goods covered by said registrations, but also the Hawkeyes
marks, in yellow, for the various goods identified in the
record.
Likelihood of Confusion
We turn then to the issue of likelihood of confusion.
Our determination of likelihood of confusion must be based
upon our analysis of all of the probative facts in evidence
that are relevant to the factors bearing on the issue of
likelihood of confusion. See In re E. I. du Pont de Nemours &
Opposition No. 91164745
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Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). See also, In re
Majestic Distilling Co., Inc., 315 F.3d 1311, 65 USPQ2d 1201
(Fed. Cir. 2003).
The renown of the prior mark
Opposers have been using these Hawkeyes marks, including
in the color yellow, for over thirty years in connection with
athletic events and on a variety of goods and services
including clothing, sporting goods and novelty items.
Comparing the recognition of Iowa’s collegiate athletics
program with that of Southern Mississippi, applicant’s own
witness admitted that “the stage that [Iowa] would play on
would allow greater recognition [than Southern Miss].”14 The
Hawkeyes football team has made appearances in eleven post-
season bowl games in the past fifteen years, including the
Orange Bowl in January 2010.15 While opposers have not
alleged, and do not make the argument, that Iowa’s marks are
“famous,” based upon revenues generated by the licensing of
its marks, Iowa’s long history in Big Ten Conference athletics
and NCAA post-season play, and the degree of television
exposure throughout each calendar year given to the Hawkeyes
marks, we find that they are at least well-known in the field

14 Testimonial deposition of Rodney Richardson at 24.
15 Arens testimony deposition at 12.
Opposition No. 91164745
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of national collegiate athletics and, as such, must be
accorded a wider scope of protection.
We turn then, to consider the du Pont factors of the
relatedness of the goods and services, channels of trade and
classes of purchasers. We must make our determinations on
these factors based on applicant’s goods as they are
identified in the application. See Octocom Systems Inc. v.
Houston Computers Services, Inc., 918 F.2d 937, 16 USPQ2d
1783, 1787 (Fed. Cir. 1990) [“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 sales of the goods are directed.”]
Relationship of the goods and services:
Both parties in this proceeding operate large NCAA
collegiate athletic programs. We agree with the thrust of
applicant’s argument that each of these universities is best
known within their respective regions of the country and among
the universities within the respective conference in which
each school plays many of their intercollegiate sports.
However, the record also shows the degree to which Iowa is
Opposition No. 91164745
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afforded regular nation-wide exposure via several different
sports programs and networks.
In addition to their popular entertainment services, the
record demonstrates the variety of broad categories of goods
for which the Hawkeyes marks are licensed. These collateral
goods include almost “everything you can imagine” – apparel,
headwear, footwear, sporting goods, gifts,
luggage and sports bags, wallets,
umbrellas, novelties and holiday items,
jewelry, watches, clocks, toys and games, 16
www.memorycompany.com
house wares, office and school supplies, printed items, auto
accessories, consumables, and tailgating and other promotional
items such as flags and banners.
In reviewing the collateral goods that applicant has
identified in the dozen classes of its application, we find
that opposers have shown, both by the submission of
registrations, and with their common law rights through the
prior use of the Hawkeyes marks in marketing goods, both
legally identical gods and those otherwise closely related to
Southern Miss’s goods in International Classes 6, 9, 14, 16,
18, 20, 21, 24, 25, 27, 28 and 32. Specifically, opposer has
demonstrated common law rights through use of its yellow
Hawkeyes mark on the following goods, inter alia, college

16 Arens Exhibit-13.
Opposition No. 91164745
- 23 -
apparel such as polos and rugbys, house wares, posters,
prints, tailgating supplies, CDs, DVDs and books, pet
accessories, and popular college bookstore items for sports
fans and alumni. Based upon this evidence, we find that the
second du Pont factor weighs strongly in favor of a finding of
likelihood of confusion.17
The similarity of trade channels
We further find that these identical goods are or would
be marketed in some of the same trade channels to identical
classes of customers. To be sure, the parties’ respective
goods will have been marketed in campus stores and through
other means that would be particular to each institution.
However, none of applicant’s listed goods and none of
opposers’ goods or services listed in their registrations,
have any limitations or restrictions as to the trade channels
or purchasers for the goods and services, and we therefore
presume that the identified goods include all trade channels

17 We note that although Southern Miss’s application does not list
any entertainment services, the record shows nearly identical usage
on the respective schools sports’ venues, cheerleaders’ uniforms,
football helmets, basketball court, and ESPN programs. After all,
it is through exposure to these sports entertainment services that
the universities gain goodwill in the marks emblazoned across every
kind of collateral product one can imagine.
Opposition No. 91164745
- 24 -
for such goods, especially national sporting goods outlets,
and online merchants of collegiate paraphernalia.18
Opposers and applicant are both prominent NCAA Division I
universities having potential nationwide markets for their
collegiate merchandise and each having aggressive promotional
outlets through popular sports television exposure on networks
like ESPN, fan clubs and product licensees available through
many websites on the Internet.
The fact that opposer applies its marks to a variety
of sports products [and services] makes it more
likely that purchasers, aware of opposer’s use of
the mark on a variety of sports products [and
services], when seeing a similar mark used in
connection with [the goods offered by another], are
likely to believe that these products are also being
produced or sponsored by opposer.

Nike, Inc. v. WNBA Enterprises, LLC, 85 USPQ2d 1187, 1195
(TTAB 2007).
Applicant’s own witness concedes that there are clear
examples of an overlap in the parties’ respective channels of
trade.19 For example, Conference USA (applicant’s conference)
and the Big Ten Conference (opposers’ conference) have
merchandise available on the same websites.20 Brick-and-mortar
retailers across the country such as Wal Mart, Target, Kohl’s,

18 Even if it were possible at this late stage of the litigation
to amend applicant’s identification of goods to restrict the
channels of trade or classes of purchasers (as suggested in
applicant’s brief), Iowa’s registrations would still have no
restrictions, and hence, we would still be compelled to find an
overlap of channels of trade and classes of purchasers.
19 Accord Testimonial deposition of Rodney Richardson at 39-41.
Opposition No. 91164745
- 25 -
Dick’s Sporting Goods, Nike, Tailgate and Titleist, among many
others, carry nearly identical goods of both parties.21 As a
result, we conclude that this du Pont factor favors Iowa’s
position on likelihood of confusion.
Conditions of Purchase
The fourth du Pont factor requires us to consider
evidence pertaining to the buyers to whom and the conditions
under which the goods are marketed. We find based upon the
evidence that the majority of the items identified in Iowa’s
registration or shown to be covered by common law marks are
relatively inexpensive items.
We note that a mark appearing on collegiate sports teams’
merchandise usually serves as an indication of secondary
source. That is, it refers to or identifies the school or the
team itself. The purchaser’s decision to purchase the product
is not based on who actually manufactured the product, but
rather is based on the ornamental presence of the secondary
source mark on the product. The decision to purchase arises
from the purchaser’s desire to demonstrate his or her
allegiance to, or affiliation with, that secondary source (the
school or sports team), or if the purchaser is purchasing the
product as a gift, to allow the gift recipient to demonstrate

20 See http://www.teamfanshop.com/, Arens Exhibit-9.
21 Id. at 11.
Opposition No. 91164745
- 26 -
that allegiance or affiliation. These more casual purchasers,
upon encountering Southern Miss’s mark, are likely not to
engage in a close inspection of the mark, but buy the product
on impulse.
The most enthusiastic fans (e.g., students, faculty,
staff and alumni) of collegiate athletic teams likely are
knowledgeable about a particular school’s trademarks and,
hence, will exercise a degree of care in looking for and
making their decisions to purchase collateral goods. This will
certainly include Golden Eagles fans around Hattiesburg22 and
Hawkeyes fans in the vicinity of Iowa City. Perhaps not
surprisingly, in opposers’ mall intercept survey in Iowa, many
of the respondents said that Southern Miss’s new Golden Eagle
called to mind their familiar Hawkeyes, but expressed some
misgivings because they recognized differences with USM’s
design. However, we must proceed on the presumption that
these sophisticated purchasers are not the only purchasers of
applicant’s and opposers’ goods. Rather, we find that
purchasers of collegiate merchandise include those who are not
necessarily attuned to minor differences between somewhat
similar sports teams’ logos. As noted above, this population
includes persons such as relatives or friends who are
purchasing the goods as gifts. These less knowledgeable

22 Kathleen M. Hayman testimony deposition, at 19-23, 27-32.
Opposition No. 91164745
- 27 -
purchasers also would include new or casual fans nationwide
who are likely to purchase a school’s athletic merchandise in
years in which the school’s sports teams win national
championships or are otherwise especially successful on a
national level. Such new purchasers are less knowledgeable
than the school’s more longstanding fans that would be much
more familiar with the school and its trademarks.23 In short,
although some purchasers of the parties’ goods will be
knowledgeable fans who are likely to notice if a logo is
different from the team logo to which they are accustomed,
there are others who may not be so perceptive about subtle
differences between the logos of sports teams. These less
knowledgeable purchasers are likely to exercise a lesser
degree of care in purchasing the goods given the inexpensive
nature of many of the products sold under the marks. In
selecting the applicable standard of care, we are constrained
to make our determination based upon the least sophisticated
consumers. Alfacell Corp. v. Anticancer, Inc., 71 USPQ2d
1301, 1306 (TTAB 2004). For all of the reasons discussed
above, we find that the du Pont factor focusing on the
conditions of purchase weighs in favor of a finding of
likelihood of confusion.

23 Id.
Opposition No. 91164745
- 28 -
Against this backdrop, specifically, the renown of
opposers’ marks and the legally identical nature of the
parties’ respective goods, we consider the similarities and
dissimilarities of the marks. The greater the degree of
renown of the senior user’s mark, the lower the tolerance of
the Lanham Act for similarities. See Nina Ricci S.A.R.L. v.
E.T.F. Enterprises Inc., 889 F.2d 1070, 12 USPQ2d 1901, 1904
(Fed. Cir. 1989), quoting, Planter’s Nut & Chocolate Co. v.
Crown Nut Co., Inc., 305 F.2d 916, 134 USPQ 504, 511 (CCPA
1962) [“ … there is ‘no excuse for even approaching the well-
known trademark of a competitor’”]; and Century 21 Real Estate
Corp. v. Century Life of America, 970 F.2d 874, 23 USPQ2d 1698
(Fed. Cir. 1992), cert. denied 506 U.S. 1034 (1992) [where the
goods are identical, “the degree of similarity [between the
marks] necessary to support a conclusion of likely confusion
declines.”].
Similarity of the marks
We now turn to consider the similarity or dissimilarity
of the marks when compared in their entireties. Iowa asserts
rights in both its registered
marks and its common law marks,
wherein the hawk logo is
Opposition No. 91164745
- 29 -
depicted in the color yellow. Although applicant does not
claim that color is a feature of its applied-for mark,
applicant has depicted its mark in
the color gold in both the drawing
and the lining statement of its
application. In actual usage,
its Golden Eagle mark is identical to the yellow color of
Iowa’s Hawkeyes marks for which opposers have demonstrated
prior common law rights.
As to this du Pont factor, it is applicant’s contention
that the respective marks create radically different
commercial impressions. Specifically, applicant argues that
each of the Iowa Hawkeyes marks is a collection of four
separate silhouette shapes put together in close proximity
creating a two dimensional image that is then displayed
against backgrounds of changing colors. Applicant suggests
that each Iowa’s Hawkeyes mark has the simplicity of a
stenciled or stamped image. By contrast, Southern Miss argues
that its new eagle head is more complex, having the “fierce
eyed gaze of independence” and the “black peak of the beak” to
create a “symbol of courage and power” reminiscent of “Roman
soldiers … going into battle [with] a crimson banner with a
golden eagle emblazoned on the banner.”
Opposition No. 91164745
- 30 -
However, in reviewing this extensive record, we are not
persuaded that these alleged distinctions between the marks
are significant when the respective marks are compared in
their entireties. Granted, the parties’ respective marks are
not identical when dissected into their component parts and
the minute details of each part are compared with other parts.
See Dan Robbins & Associates, Inc. v. Questor Corporation,
599 F.2d 1009, 202 USPQ 100 (CCPA 1979).
However, in the normal marketing environment, purchasers
would not usually have the luxury of examining marks in such
minute detail. Hence, it is well-settled that the test under
this du Pont factor 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 commercial impressions such that confusion as to the
source of the goods and services offered under the respective
marks is likely to result. Ordinary purchasers who are
familiar with opposers’ marks on collateral goods, upon later
encountering applicant's mark on identical collateral items,
would not necessarily remember fine details about the mark
they had previously seen, given consumers’ imperfect recall,
and they are likely to remember the marks as being essentially
the same.
Opposition No. 91164745
- 31 -
We know that the average purchaser is not infallible in
his/her recollection of trademarks and often retains only a
general, rather than a specific, recollection of marks that
may previously have been seen in the marketplace. In re Mucky
Duck Mustard Co., 6 USPQ2d 1467 (TTAB 1988). When, as here,
the marks at issue are both design marks, the similarity of
the marks must be decided primarily on the basis of visual
similarity. Design marks without any wording may be
particularly difficult to recall clearly and may therefore be
somewhat more likely to result in confusion when used for the
same or similar goods. See In re United Service Distributors,
Inc., 229 USPQ 237 (TTAB 1986) [the silhouette of two profiles

facing right within a
teardrop background is
confusingly similar to a
silhouette of two profiles
facing left in an oval
background]; In re Steury

Corp., 189 USPQ 353 (TTAB 1975) [for recreational vehicles, a

design consisting
of three horizontal
bars is confusingly
similar to a design
of two horizontal bars]; and Matsushita Electric Industrial
Opposition No. 91164745
- 32 -
Co., Ltd. v. Sanders Associates,
Inc., 177 USPQ 720 (TTAB 1973)
[for electrical equipment, two

triangular arrow designs are confusingly similar].
In the case at hand, we find that the visual resemblance
of these respective marks is much closer than applicant
contends. Furthermore, as noted above, in cases such as this,
where applicant’s goods are virtually identical to the
opposers’ goods, the degree of similarity between the marks
that is required to support a finding of likely confusion is
less than it would be if the goods were not identical.
Century 21 Real Estate Corp., 23 USPQ2d at 1701.
It is in this context that we find that the commercial
impressions of the marks are essentially the same. Both
parties’ marks present the head of a bird of prey facing
right, and basically oval in shape. Both contain identical
colors. These images are very similar to each other in style
and proportion. They both involve a bold profile image of the
head of a large bird. That Southern Miss’s eagle may be a bit
more literal and fierce than Iowa’s original Hawkeyes mark
does not overcome the overall similarities. Furthermore,
applicant’s argument that its mark is “complex” while
opposers’ marks are stencil-like does not persuade us that
consumers will note the difference in the marketplace.
Opposition No. 91164745
- 33 -
The general rule is that in an opposition, the background
trade dress of applicant is not to be considered as a means
for distinguishing marks because the trade dress is not part
of what applicant seeks to register and could be changed.
However, the Board must try to visualize the mark as it may be
used in the marketplace, and in this case, the record
illustrates the mark as actually used by applicant will be
even more similar to opposers’ marks. See Kenner Parker Toys,
22 USQP2d at 1458 [“The trade dress of the marks enhances
their inherently similar commercial impression”]. The
respective images taken from various catalogues and online
sources accentuate the strong similarities.24
25

In evaluating the likelihood of confusion, we may take
into account whether the trade dress in evidence demonstrates
that the applicant’s trademark projects a confusingly similar
commercial impression. Specialty Brands, Inc. v. Coffee Bean

24 See 3 J.T. McCarthy, MCCARTHY ON TRADEMARKS AND UNFAIR COMPETITION,
§ 20.15 (4th Ed. 2010).
25 See TTABVUE #104 at 118, 119 126 & 128 of 149, and TTABVUE #107
at 141, 142, 143, 149 & 152 of 173.

Opposition No. 91164745
- 34 -
Distributors, Inc., 748 F.2d 669, 223 USPQ 1281, 1284 (Fed.
Cir. 1984) [Applicant’s labels for SPICE VALLEY spices depicting
a sailing vessel negates applicant’s claim that its mark
conveyed a different commercial impression from that of SPICE
ISLANDS]; and American Rice, Inc. v. H.I.T. Corporation, 231
USPQ 793 (TTAB 1986) [the “contest award” ribbon device on
applicant’s package undercuts applicant’s argument that its
mark conveys a different commercial impression].
In sum, the overall similarity in appearance of the marks
on the goods, particularly in light of the use of identical
color schemes, creates virtually identical commercial
impressions. The points of similarity strongly outweigh the
minor dissimilarities. Esso Standard Oil Co. v. Sun Oil Co.,
229 F.2d 37, 108 USPQ 161, 163 (D.C. Cir. 1956). Hence, we
find that opposers have shown a similarity in these parties’
respective marks that favors a finding of likelihood of
confusion.
The number and nature of similar marks in use on similar goods.
Defendants in inter partes cases often attempt to whittle
down the scope of protection of the plaintiffs’ marks. And
this is clearly a legitimate inquiry under the sixth du Pont
factor. However, Iowa, as the owner of marks registered on
the Principal Register, is entitled to a presumption that the
marks are valid and distinctive. 15 U.S.C. §§ 1057(b),
Opposition No. 91164745
- 35 -
1115(a) [marks registered on the Principal Register are
entitled to certain presumptions, including presumption of
validity and use]. In the present case, it is undisputed that
Iowa’s marks are arbitrary as the designs certainly do not
describe or suggest the relevant goods and services.
Consequently, there can be no dispute but that Iowa’s marks,
on their face, are valid, distinctive and entitled to some
scope of protection.
Nonetheless, applicant argues at some length that the
relevant marketplace is replete with bird head designs, that
the Hawkeyes mark resides in a crowded field, and that, hence,
Iowa’s Hawkeyes marks are quite weak. Under the sixth du Pont
factor, it is appropriate that we consider the evidence of
record pertaining to the number and nature of similar marks in
use on similar goods. “The purpose of a defendant introducing
third party uses is to show that customers have become so
conditioned by a plethora of such similar marks that customers
have been educated to distinguish between different such marks
on the bases of minute distinctions.” Palm Bay Imports Inc.
v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d
1369, 73 USPQ2d 1689, 1694 (Fed. Cir. 2005).
Most of the third-party marks highlighted by applicant
involve eagle head or hawk head trademarks. The marks, in the
form of sports team logos, were placed prominently on the
Opposition No. 91164745
- 36 -
front of goods like caps and shirts. These items were ordered
by Mr. Gene Fitts from various colleges and universities
around the country during the course of this litigation
(mostly 2006-07). Fitts deposition at 27, Exhibit DD3-20.
Based upon this evidence, Southern Miss alleges that there are
many other colleges, universities and even professional sports
teams having logos similar to Iowa’s marks, which
organizations are offering similar goods through the same
channels of trade. Southern Miss contends that the purchasing
public is conditioned to distinguish slight differences
between bird head design marks, and that even minute
differences in appearance are sufficient to distinguish the
marks from each other, allowing Iowa’s Hawkeyes marks and
Southern Miss’s Golden Eagle mark to coexist without
confusion. Iowa takes issue with applicant’s persistent
arguments that the Hawkeyes marks are weak.
We concur with applicant that birds of prey such as
eagles and hawks are popular mascots for collegiate and
professional sports teams. Hence, it is not surprising that
fanciful representations of the heads of such birds commonly
show up in service marks and trademarks owned by such
enterprises.
Images of these majestic birds of prey tend to accentuate
the strong, sharp beak, the fierce eyes and swept-back head
Opposition No. 91164745
- 37 -
feathers. On the other hand, it does not necessarily follow
that all marks incorporating images of birds will therefore be
deemed weak. See Playboy Enters., Inc. v. Chuckleberry
Publ'g, 486 F. Supp. 414, 429 (S.D.N.Y. 1980) [where a common
subject has “been used in a suggestive as opposed to descriptive
manner, courts have readily granted protection from similar
marks”]. Iowa should be able to establish a reasonable zone of
protection around its Hawkeyes marks in spite of the existence
of many other representations of bird heads.
In spite of the fact the record has substantially no
details about the sales, advertising, or media exposure of
these various marks, and despite opposers’ repeated
objections, we turn to a closer examination of the logos that
applicant has placed into the record.
We note that some of these composite marks contain other
distinctive matter, including words. Where a composite mark
contains literal elements (e.g., the university name, the team
name or mascot, or even one or more letters), there is
arguably much less chance of confusion – even among the most
uninitiated of sports fans:
Opposition No. 91164745
- 38 -

26
29
27 28
30
31
32
While applicant is correct that Central Methodist
University’s composite mark, above, includes “a graphic
execution of separate shapes of a single color put together in
proximity” (as applicant claims is the case for the original
Hawkeyes mark), the similarities end there. This image is
clearly in motion, is quite angular and very green, and the
composite is dominated by the literal elements “Central
Methodist University.” Similarly, St. Joseph’s University’s
mark, above, is red and is dominated by the word “Hawks.”

26 Eagles: Central Methodist University (Fayette, MO); the school
colors are green and white; Fitts, Exhibit DD-3.
27 Mountain Hawks: Lehigh University (Bethlehem, PA); the school
colors are brown and white; Fitts, Exhibit DD-15.
28 Thunderbirds: Southern Utah University (Cedar City, Utah); the
school colors are red, white and black; Fitts, Exhibit DD-17.
29 Purple Eagles: Niagara University (Lewiston, NY); the school
colors are purple and white; Fitts, Exhibit DD-16.
30 Redhawks: Seattle University (Seattle, WA); the school colors
are red and white; Fitts, Exhibit DD-11 and 11A.
31 Hawks: St. Joseph’s University; the school colors are crimson
and gray.
Opposition No. 91164745
- 39 -
33
Applicant also submitted for the record
the logos of the Atlanta Hawks and the
Philadelphia Eagles. These marks are
clearly composed of images of a hawk and an
eagle, respectively. A not unimportant
distinction is that these Atlanta and 34
Philadelphia teams are professionals in the NBA (basketball)
and NFL (football), respectively, and professional sports
organizations do not field teams in more than one sport.
Moreover, the Philadelphia Eagles logo bears much more
resemblance to the eagle marks of several smaller colleges
(more infra), as well as Southern Miss’s former logo (USM’s
“attack eagle”) seen earlier –– than the Philadelphia Eagles
logo bears resemblance to the bird head marks involved herein:

32 Golden Eagles: John Brown University (Siloam Springs, AR);
school colors are royal blue and gold; Fitts, Exhibit DD-19.
33 Atlanta Hawks of the NBA.
34 Philadelphia Eagles of the NFL.
Opposition No. 91164745
- 40 -
As to any other NCAA Division I schools having a hawk
head or an eagle head design without any wording, we note the
variety of possible designs, varying degrees of anatomical
detail, and a variety of color combinations used by schools
having a hawk or an eagle as the school’s mascot:
35
36
37
38

When making a visual comparison between Iowa’s Hawkeyes
marks and each of these designs, we find that none of these
Division I third-party marks remotely resembles Iowa’s
Hawkeyes designs. Certainly, none is as similar to Iowa’s
marks as is applicant’s mark. Moreover, whether some of these
third-party marks (e.g., those having commercial impressions

35 Eagles: Eastern Michigan University (Ypsilanti, MI); the
school colors are green and white; Fitts, Exhibit DD-5.
36 Eagles: Winthrop University (Rock Hill, SC); school colors are
garnet and gold; Fitts, Exhibit DD-13.
37 Eagles: Georgia Southern University (Statesboro, GA); school
colors are blue and white; Fitts, Exhibit DD-6.
Opposition No. 91164745
- 41 -
quite distinct from the marks of Iowa and USM) are similar to
each other is not relevant to our analysis, and has no bearing
on the question of whether the marks in this case are likely
to cause confusion.
In this vein, applicant includes
information about the new “Golden Eagle
Graphic” that Marquette University announced
39
prospectively would be available on its merchandise on August
1, 2007. Although Marquette’s design of a Golden Eagle head
is arguably closer to Iowa’s involved marks than is any one of
the other third-party Division I university marks applicant
has located (or even any one of the various other “Golden
Eagles” of college teams displayed in this record), it does
consist of Marquette’s school colors of gold and navy blue.
In any case, there is no evidence of record showing that the
mark has actually been used by Marquette, let alone the extent
of any such use. For this reason, we cannot consider this
logo in assessing the sixth du Pont factor, which is the
number of marks in actual use.
Even if the adoption of a quite similar mark to the
Hawkeyes by one of the smaller colleges who do not compete in

38 RedHawks: Miami University (Oxford, OH); the school colors are
red and white; Fitts, Exhibit DD-18.
39 Golden Eagles: Marquette University is located in Milwaukee,
WI and is an NCAA Division I team in the Big East Conference.
Fitts, Exhibit EE-1.
Opposition No. 91164745
- 42 -
NCAA Division I intercollegiate sports were of concern to
Iowa, we note that these design marks are quite different in
color and overall appearance as well:
40 41 42
43 4 45
We find that these half-dozen marks are of little
probative value under the sixth du Pont factor. Even if we
were to assume that each of these schools sells collegiate
merchandise bearing a bird head design mark, we find that
these schools are unlikely to have had any measurable effect
on the strength of Iowa’s marks in the national marketplace,
or any effect on the ability of relevant purchasers to
distinguish between Iowa’s and Southern Miss’s bird head

40 Golden Eagles: The University of Minnesota, Crookston campus;
the school colors are maroon and gold; Fitts, Exhibit DD-7.
41 Eagles: The athletic teams of Northwestern College; the school
colors include dark violet; Fitts, Exhibit DD-9.
42 Redhawks: The athletic teams of Southeast Missouri State; red
is a prominent school color; Fitts, Exhibit DD-12.
43 Warhawks: The University of Wisconsin–Whitewater campus; the
school colors are purple and white; Fitts, Exhibit DD-14.
44 Eagles: Robert Morris University Illinois; the school colors
are maroon and gold; Fitts, Exhibit DD-20.
45 Eagles: Chadron State College; the school colors are cardinal
and white; Fitts, Exhibit DD-4.

Opposition No. 91164745
- 43 -
design marks. The Board has in the past been unpersuaded by
such an argument, even in a case when the involved design mark
was found to be laudatory (unlike the current opposers’
designs):
… By relying on the third-party star marks in the
restaurant field, applicant would have us conclude that
small variations in the star marks used in the field,
including opposer’s and applicant’s marks, are sufficient
to avoid confusion.

We have carefully considered the evidence of third-party
use, but find that it is not persuasive to reach the
result urged by applicant. We are not the least bit
surprised that the word “star” and/or various star
designs appear in connection with restaurants, as they
undoubtedly do in connection with many other goods and/or
services. That is to say, we recognize that a star
design is a common shape, and that such designs, as well
as the word “star”, are laudatory in nature.
Nonetheless, applicant’s evidence of third-party use is
balanced by opposer's evidence of its marks’ considerable
notoriety. We have no problem concluding that opposer’s
marks are strong, even in the face of applicant's
evidence. …

We see some other problems which limit the probative
value of the evidence of third- party use. Many of the
marks being used are less similar to opposer's marks than
are applicant's marks. Further, applicant has not
furnished any evidence regarding the extent of use of the
marks by these third parties. The geographic locations
of these restaurants, in many instances, are relatively
obscure. Moreover, the pictures of these restaurants
tend to indicate that the operations are small and local
in nature.

In sum, the evidence of third-party use is of limited
probative value to support applicant’s position.

Carl Karcher Enterprises Inc. v. Stars Restaurants Corp.,
35 USPQ2d 1125, 1131 (TTAB 1995)
We have reviewed carefully all of the third-party marks
displayed throughout the record. We also note applicant’s
Opposition No. 91164745
- 44 -
emphasis on the number of bird head designs that are, like
both Southern Miss’s and Iowa’s bird head design marks, right-
facing images. We have considered the similarities and
dissimilarities of each third-party mark in relation to the
Hawkeyes marks as to overall design, the depth and complexity
of the image, sharp corners and angular patterns versus soft,
oval or rounded imagery, as well as the general shape, the
proportions, the colors, the curvature of the head and beak,
and the overall commercial impression conveyed by each design.
We have compared the cumulative “look and feel” of each mark
against that of the Hawkeyes marks. Indeed, as a result of
this exercise, we reach a conclusion different from the one
urged on us by applicant and that taken by the dissent herein
– namely, that these third-party marks serve to demonstrate
the myriad ways one can design a composite mark incorporating
the imagery of a bird of prey without moving close to mimicry
of opposers’ marks. In spite of applicant’s arguments to the
contrary, we find that none of these third-party marks is as
similar to the parties’ marks as the respective marks are to
each other.
Applicant argues that the Hawkeyes marks are generally
oval in shape, and we agree. Yet while an oval shape does not
characterize most of the third-party marks seen above, and
does not describe most of the early stages of USM’s year-long
Opposition No. 91164745
- 45 -
modernization process, we note that the final design applicant
selected and applied-for is, like Iowa’s marks, fairly
characterized as largely oval.
While the many third-party uses of bird head designs by
other universities and colleges may narrow somewhat the scope
of protection for Iowa’s marks, making this one du Pont factor
weigh slightly in applicant’s favor, it is not sufficient on
balance to overcome the other du Pont factors. In particular,
while there may be a number of third-party universities having
bird head logos, they can often be distinguished by a number
of prominent characteristics,46 but especially the colors
employed. The evidence of record does not show the popularity
among these third-party universities’ marks of a combination
of a vivid amber shade of yellow and black. On this point, we
disagree with the conclusion of the dissent.
Opposers’ claim there are multiple instances of actual confusion
Iowa points to nine specific examples, as set forth infra
(footnote 47), in which it asserts that persons have been
confused by the involved marks, and argues this actual
confusion amounts to strong proof of a likelihood of
confusion. See e.g. In re Majestic Distilling Co., Inc.,

46 As noted earlier, these include the depth and complexity of the
image, sharp corners and angular patterns versus soft, oval or
rounded imagery, as well as the general shape, the proportions, the
colors and the curvature of the head and beak.
Opposition No. 91164745
- 46 -
315 F.3d 1311, 1317, 65 USPQ2d 1201 (Fed. Cir. 2003) [“A
showing of actual confusion would of course be highly
probative, if not conclusive, of a high likelihood of
confusion.”]. We agree with Iowa that these examples serve to
corroborate the strong similarity of the marks in that sports
leagues, manufacturers, marketers and shared university
licensees have been confused.47
However, we also agree with applicant that most of the
instances of confusion cited by Iowa do not involve actual
consumers, and hence they are not strong evidence of confusion
in the marketplace. Rather, as seen above in our discussion
of the similarity in appearance and commercial impressions of
the respective marks, these multiple examples are at least
“illustrative of how and why confusion is likely.” See
Molenaar, Inc. v. Happy Toys Inc., 188 USPQ 469, 471 (TTAB
1975).
Opposers’ Survey
Finally, in support of their case, opposers submitted
evidence of likelihood of confusion drawn from an empirical

47 We point specifically to the two eBay listings; Nike’s jacket
embroidered with Iowa's Hawkeyes logo but Southern Miss's school
name; Knights Apparel’s sending to Iowa a proof design for Iowa’s
approval that included photographs of a shirt having Southern Miss’s
mark; Iowa received a proof from Adidas Group, LLC, which
incorrectly used Southern Miss’s Golden Eagle mark to identify
Iowa’s team; and Press Pass Inc. sent Iowa proofs of collector
trading cards displaying the Golden Eagle mark of Southern Miss.
Opposition No. 91164745
- 47 -
survey conducted for this litigation. Opposers assert that
the results of this survey strongly support a finding of
likelihood of confusion.
Iowa commissioned a mall intercept survey involving
interviews with a very large group of respondents (i.e.,
several thousand participants) at shopping malls in five
geographically separate metropolitan areas (Dallas,
Des Moines, Los Angeles, Orlando and Phoenix). Iowa claims
that the survey indicates that the net measured likelihood of
confusion is approximately 31%.
However, applicant attacks the probative value of
opposers’ made-for-litigation survey, contending that this
work product suffers from several flaws in methodology and
administration.
Upon review of the survey, we conclude that there are
flaws in the manner in which the survey was conducted that
diminish the reliability of Iowa’s survey results. For
example, based on testimony submitted by applicant, we cannot
be sure that all participants were given identically prepared,
color exhibits displaying the mark of the Texas Longhorns (the
control) and/or the applied-for mark of the University of
Southern Mississippi. Several of the survey administrators in
the regional units contracted to run this survey may have
sacrificed reliability with their intercept and interview
Opposition No. 91164745
- 48 -
methodologies, as detailed in applicant’s myriad criticisms.
And finally, many of the survey results from Des Moines, for
example, clearly reflected respondents finding similarity
between the marks involved herein. However, the gist of
several repeated statements was that although USM’s Golden
Eagle mark called to mind their well-known Iowa Hawkeyes mark,
it was not that mark. This sophisticated response with the
clear feel of “call to mind” associations cannot be correctly
counted as an indication of consumer confusion. While the
results that Iowa touts from this survey are indeed consistent
with a finding of a likelihood of confusion, they are not
reliable enough to play a significant role in supporting
Iowa’s case herein.
Any other established fact probative of the effect of use

It is appropriate to consider, under the thirteenth
du Pont factor, applicant’s intentions to adopt and use its
claimed mark. L.C. Licensing Inc. v. Berman, 86 USPQ2d 1883,
1890 (TTAB 2008). The record establishes that applicant was
aware of Iowa’s Hawkeyes marks when it adopted its new mark.
Even without any specific proof of intent to confuse,48 its
actions in adopting its mark are relevant. In this regard, we

48 See Ava Enterprises Inc. v. Audio Boss USA Inc., 77 USPQ2d
1783, 1789 (TTAB 2006).
Opposition No. 91164745
- 49 -
focus specifically on the final months of USM’s modernization
effort of 2002.
During 2002, applicant spent an entire year on an
extensive process-driven effort to update its primary mark.
At the time of Mr. Richardson’s internal presentation on
November 12, 2002, the Rare Design final stage portfolio shows
that a black-and-white image of the proposed eagle head was
still paired with the words “Southern Miss” and “Golden
Eagles.” Yet at the press conference unveiling the new mark
to the public, on January 29, 2003, USM had both moved toward
a primary mark without any wording, and to a color identical
to that of the Iowa Hawkeyes. The perception that USM’s new
mark was confusingly similar to Iowa’s mark came up
immediately at the press conference. The record has a variety
of other anecdotes in the years since that day in January 2003
reflecting on the similarity between these respective marks.
The record clearly establishes that applicant moved much
closer to Iowa’s well-known marks with its 2003 mark which is
the subject of its application. There were certainly a myriad
of ways in which USM could have modernized its primary logo
without moving so close to the well-known Hawkeyes marks. For
example, even the bird head designs within a composite mark
containing the words “Southern Miss” and “Golden Eagles,” as
contemplated in all the earliest iterations of Rare Design’s
Opposition No. 91164745
- 50 -
regular folios throughout 2002, certainly would have lessened
the points of similarity with Iowa’s marks.
In addition to adopting a bird head having overall design
similarities, USM’s new mark unveiled in January 2003
reflected a significant shift in color for applicant. Mr.
Richardson’s year-long study which is of record does not deal
with this element of the modernization effort, namely, the
change in color. Prior to 2002, applicant’s attack eagle was
a darker, fallow shade of moderate amber, sometimes called
“Vegas Gold.” Yet, if one looks carefully at the bird head
design appearing on USM merchandise approved by the athletic
department since 2003, applicant’s eagle head appears in a
light brilliant amber shade of yellow – substantially
identical in shade and hue to Iowa’s well-known common law
uses of its luminous vivid amber Hawkeyes marks seen
nationwide for years. Interestingly, while applicant
indicated in its press releases of January 2003 that it was
moving toward a uniform shade of “gold,” the details of the
school’s official color palette contained in its graphic
standards, and as used in print and digital media in non-
athletic settings, is actually a shade of amber verging on
orange rather than the vivid amber shade of yellow used by its
athletic programs.
Opposition No. 91164745
- 51 -
At the very least, we find that USM did not exercise care
in the choice of this particular mark, and essentially ignored
concerns and comments about how similar its new logo was to
Iowa’s marks.49 This approach to mark development is a far cry
from the conventional wisdom that there is “no excuse for even
approaching the well-known trademark of a competitor.”
Planter’s Nut, 134 USPQ at 511. Accordingly, applicant’s
standard of care in adopting this particular mark enters into
our likelihood of confusion determination herein under the
final du Pont factor, and it weighs against applicant.50
It is well established that as a newcomer, applicant had
both the opportunity and the obligation to avoid confusion,
and one who adopts a mark similar to the mark of another for
related goods or services does so at his own peril. W.R.
Grace & Co. v. Herbert J. Meyer Industries, Inc., 190 USPQ 308
(TTAB 1976). This is especially relevant where the senior,
established mark is one that is well known in the field. Nina
Ricci S.A.R.L. v. E.T.F. Enterprises Inc., 889 F.2d 1070,
12 USPQ2d 1901, 1904 (Fed. Cir. 1989).

49 Taken in its entirety, the record presents various examples,
occurring both before and after USM unveiled its modernized Golden
Eagle in January 2003, that suggest a somewhat cavalier attitude
about the potential for likelihood of confusion with Iowa’s marks.
50 We hasten to add that our determination herein does not rely
upon our resolution of this particular “catch-all” du Pont factor.
Opposition No. 91164745
- 52 -
Conclusion
On balance, the relevant du Pont factors weigh in favor
of a likelihood of confusion herein. In spite of the fact
that the sixth du Pont factor may weigh slightly in
applicant’s favor, given the legally identical goods, the
legally identical trade channels of the identified goods and
the actual trade channels of opposers’ common law usages, the
same classes of ordinary consumers, the similarity of the
marks, and the renown of Iowa’s marks, we find a likelihood of
confusion as between applicant’s mark and opposers’ marks,
such that registration of applicant’s mark is barred under
Trademark Act Section 2(d).
Finally, to the extent that any doubts might exist as to
the correctness of our conclusion, we must resolve such doubts
in favor of the prior user and registrant. See Century 21
Real Estate Corp., 23 USPQ2d at 1701; Ava Enterprises Inc. v.
Audio Boss USA Inc., 77 USPQ2d 1783 (TTAB 2006); and Baseball
America Inc. v. Powerplay Sports Ltd., 71 USPQ2d 1844 (TTAB
2004).
Decision: The opposition is sustained as to opposers’
claim of likelihood of confusion and registration to applicant
is hereby refused under Section 2(d) of the Lanham Act.
Opposition No. 91164745
- 53 -
- o O o -
Wellington, Administrative Trademark Judge, dissenting:
I respectfully dissent from the majority decision and do
not believe there is a likelihood of confusion between the
parties’ marks.
In contrast with the majority, I find the sixth du Pont
factor weighs heavily in applicant’s favor and the parties’
marks may be distinguished as two visually different bird head
logos being used in connection with two different college
sports teams, albeit on the same goods. The record
demonstrates that there are numerous third-party uses of bird
head logos as mascots or otherwise in connection with sports
teams. As a result, the relevant consumers have become so
conditioned by such similar uses that they will know to
distinguish such marks based on what may otherwise be
considered minimal differences. This conditioning transcends
any varying degrees of consumer sophistication; that is, one
would be hard-pressed to find a member of the general public
who is unaware that bird heads are commonly used as logos on
merchandise to represent school and professional sports teams.
With the above “conditioning” in mind, the fact that both
marks are bird head sports logos is hardly relevant and
consumers will look to certain distinguishing features of the
Opposition No. 91164745
- 54 -
marks. In particular, consumers will notice that opposers’
marks depict a “stencil-like” image of a bird head that is
quite different from the numerous third-party uses of bird
head sports logos. Applicant’s mark, on the other hand,
comprises a much more realistic bird head and is more in line
with the third-party uses of bird head logos of record.
Furthermore, and for sake of clarity, I note that neither the
application nor the pleaded registrations claim any specific
color as a feature of the respective marks. Regardless, the
fact that the marks may be presented in a similar gold or
yellow color has little persuasive value given the popularity,
as shown by the evidence, of such colors in other bird head
sports logos. Ultimately, given the importance I believe is
due to the sixth du Pont factor in this case and the overall
dissimilarity of the parties’ marks, I would not find a
likelihood of confusion.