The William Carter Co.v.H.W. Carter & Sons, Inc.

Trademark Trial and Appeal Board

Feb 27, 2004

No. 91115259 (T.T.A.B. Feb. 27, 2004)

Mailed:
Feb. 27, 2004
Paper No. 39
Bottorff
UNITED STATES PATENT AND TRADEMARK OFFICE
_____
Trademark Trial and Appeal Board
______
The William Carter Company
v.
H.W. Carter & Sons, Inc.
_____
Opposition No. 91111355
to application Serial No. 75368211
filed on October 6, 1997
_____
Opposition No. 91111375
to application Serial No. 75326378
filed on July 16, 1997
_____
Opposition No. 91114616
to application Serial No. 75454768
filed on March 23, 1998
_____
Opposition No. 91115259
to application Serial No. 75499446
filed on June 10, 1998
(Consolidated cases)
_____
Neil S. Hirshman, Mary E. Zaug and Paul D. Collier of
Kirkland & Ellis for The William Carter Company.
Gail E. Nickols of Graham, Campaign, P.C. for H.W. Carter &
Sons, Inc.
______
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT
OF THE TTAB
Opposition Nos. 91111355, 91111375, 91114616 and 91115259
2
Before Seeherman, Bottorff and Drost, Administrative
Trademark Judges.
Opinion by Bottorff, Administrative Trademark Judge:
INTRODUCTION
These four consolidated opposition proceedings involve
four intent-to-use applications filed by applicant H.W.
Carter & Sons, Inc. to register the mark CARTER’S WATCH THE
WEAR (in typed form) for various goods. In application
Serial No. 75368211 (involved in Opposition No. 91111355),
applicant seeks to register the mark for “pajamas,
nightgowns, nightshirts and bathrobes” in Class 25. In
application Serial No. 75326378 (involved in Opposition No.
91111375), applicant seeks to register the mark for
“disposable diapers” in Class 16.1 In application Serial
No. 75454768 (involved in Opposition No. 91114616),
applicant seeks to register the mark for “hosiery” in Class
25. In application Serial No. 75499446 (involved in
Opposition No. 91115259), applicant seeks to register the
mark for “toys, namely, board games, card games, stuffed toy
animals, dolls, and jigsaw puzzles” in Class 28.
Opposer, The William Carter Company, has opposed
registration of applicant’s mark in each of these
applications on the ground that applicant’s mark so
Opposition Nos. 91111355, 91111375, 91114616 and 91115259
3
resembles opposer’s previously-used and registered mark
CARTER’S as to be likely to cause confusion, to cause
mistake, or to deceive. See Trademark Act Section 2(d), 15
U.S.C. §1052(d). Opposer pleaded and has proven its
ownership of three subsisting registrations. The first is
Registration No. 328,815, of the mark CARTER’S (in cursive
script) for goods identified in the registration (as
amended) as “underwear,” “pajamas,” and “sleepers” in Class
25.2 The second is Registration No. 1,117,280, of the mark
CARTER’S (typed form) for goods identified in the
registration (as amended) as “bedding for infants, namely,
cribsheets, blankets, towels and face cloths” in Class 24,
and “clothing for infants and children, namely, underwear,
swimwear, shirts, blouses, dresses, skirts, pants, slacks,
shorts, coveralls, creepers, overalls, jackets, vests,
sleepwear, bunting, bibs, booties, bonnets, and slippers” in
Class 25.3 The third is Registration No. 1,830,836, of the
mark CARTER’S (typed form) for goods identified in the
1 This application also includes goods in Classes 3 and 18;
opposer filed a notice of opposition only as to the Class 16
goods.
2 Issued October 8, 1935; third renewal.
3 Issued May 1, 1979; §§8 & 15 affidavits accepted and
acknowledged; renewed. The registration includes a claim of
acquired distinctiveness pursuant to Trademark Act Section 2(f).
Opposition Nos. 91111355, 91111375, 91114616 and 91115259
4
registration (as amended) as “children’s toys and playthings,
namely, rattles [and] dolls” in Class 28.4
In response to each of the notices of opposition,
applicant filed an answer in which it denied certain
allegations essential to opposer’s claim, and made various
other arguments and allegations which we shall discuss more
fully, infra.
Opposition Nos. 91111355 and 91111375 were consolidated
by order of the Board dated October 29, 1998. Opposition
Nos. 91114616 and 91115259 were consolidated by order of the
Board dated March 6, 2000. In each of the two sets of
consolidated oppositions (which proceeded on different trial
schedules), the parties submitted evidence during their
assigned testimony periods.5 All four opposition
proceedings subsequently were consolidated by order of the
Board dated October 1, 2002. Each of the four oppositions
has been separately and fully briefed by the parties, but no
4 Issued April 12, 1994; §§8 & 15 affidavits accepted and
acknowledged. The registration includes a claim of acquired
distinctiveness pursuant to Trademark Act Section 2(f).
5 It appears that the August 29, 2001 testimony deposition of
Fred Rowan, opposer’s chairman, president and CEO, was noticed
and taken by applicant during applicant’s testimony period in
Opposition Nos. 91111355 and 91111375. Although the original
transcript of this deposition is not present in the Board’s file
of these proceedings, we presume that applicant filed it in
compliance with Trademark Rule 2.125(a), because applicant cites
to and relies on it in its brief in each case. In any event, a
copy of the deposition transcript is attached as an exhibit to
each of opposer’s main briefs, and we therefore have been able to
review it.
Opposition Nos. 91111355, 91111375, 91114616 and 91115259
5
oral hearing was requested by either party. In view of the
consolidation of the four proceedings and the presence of
common issues of law and fact, we shall decide each of the
four oppositions in this single opinion.
EVIDENCE OF RECORD
The evidence of record in these consolidated
proceedings consists of:
(1) the pleadings in each case;
(2) the files of applicant’s involved applications;
(3) opposer’s notices of reliance in each of the two
sets of consolidated cases, by which opposer made the
following evidence of record:
(a) status and title copies of opposer’s
Registration Nos. 328,815, 1,117,280 and 1,830,836;
(b) opposer’s requests for admission nos. 1-6 and
13-28 in consolidated Opposition Nos. 91111355 and
91111375, along with its counsel’s affidavit attesting
to the fact that applicant failed to respond thereto;
(c) applicant’s answers to opposer’s interrogatory
nos. 1-5 in both Opposition No. 91114616 and Opposition
No. 91115259;
(d) certain excerpts from (and exhibits to) the
two discovery depositions of applicant’s president and
CEO Norman Moskowitz (i.e., the August 12, 1999
deposition in consolidated Opposition Nos. 91111355 and
Opposition Nos. 91111355, 91111375, 91114616 and 91115259
6
91111375, and the March 16, 2000 deposition in
consolidated Opposition Nos. 91114616 and 91115259);
and
(e) certain labels and tags of applicant’s, and
certain catalogs and literature of opposer’s, all
submitted pursuant to stipulation of the parties;
(4) the April 17, 2001 testimony deposition (with
exhibits) of Suzanne Calkins (opposer’s vice-president of
licensing and business development) in Opposition Nos.
91111355 and 91111375;
(5) the April 17, 2001 testimony deposition (with
exhibits) of David Derby (opposer’s sales executive) in
Opposition No. 91111355;
(6) the July 31, 2001 testimony deposition (with
exhibits) of Suzanne Calkins (opposer’s vice-president of
licensing and business development) in Opposition Nos.
91114616 and 91115259;
(7) the August 29, 2001 testimony deposition (with
exhibits) of Fred Rowan (opposer’s chairman, president and
CEO) in Opposition Nos. 91111355 and 91111375; and
(8) the August 29, 2001 testimony deposition (with
exhibits) of Sherrie Coker (opposer’s consumer relations
supervisor) in Opposition Nos. 91114616 and 91115259, which
also is of record (pursuant to the parties’ stipulation) in
Opposition Nos. 91111355 and 91111375.
Opposition Nos. 91111355, 91111375, 91114616 and 91115259
7
Opposition Nos. 91111355, 91111375, 91114616 and 91115259
8
OPPOSER’S MOTIONS TO STRIKE ARE GRANTED
In each of the four opposition proceedings, opposer has
filed a motion to strike the evidentiary materials attached
as exhibits to applicant’s trial brief on the ground that
such materials were not properly made of record at trial.6
Applicant has not contested opposer’s motions to strike, and
we therefore grant the motions as conceded. See Trademark
Rule 2.127(a), 37 C.F.R. §.127(a). Moreover, the motions to
strike are well-taken; to the extent that the evidence
attached to applicant’s briefs was not properly made of
record at trial, we will give it no consideration. See TBMP
§704.05(b) (2d ed. June 2003) and cases cited therein.7
6 In its October 1, 2002 order, the Board deferred ruling on
opposer’s motions to strike until final hearing.
7 Accordingly, we strike and give no consideration to the
following materials attached as exhibits to applicant’s briefs:
- the copies of registrations allegedly owned by applicant
(Exhibit A to applicant’s brief in each case), which should have
been made of record in accordance with Trademark Rule
2.122(d)(2), 37 C.F.R.
2.122(d)(2), but were not. We note as
well that these registrations were not properly made of record by
virtue of applicant’s introduction of them as exhibits to the
testimony depositions of opposer’s employees Suzanne Calkins and
Fred Rowan; the exhibits are not themselves status and title
copies, and the witnesses did not testify as to the status and
title of the registrations;
- the advertising materials marked as exhibits to the March
16, 2000 discovery deposition of applicant’s witness Norman
Moskowitz (Exhibit C to applicant’s briefs in Opp. Nos. 91111355,
91111375 and 91114616, and Exhibit D to the brief in Opp. No.
91115259), which should have been made of record in accordance
with Trademark Rule 2.120(j)(4), 37 C.F.R.
2.120(j)(4), but were
not;
- the various third-party registrations (Exhibits D and/or E
to applicant’s brief in each case), which should have been made
of record in accordance with Trademark Rule 2.122(e), 37 C.F.R.

2.122(e), but were not; and
Opposition Nos. 91111355, 91111375, 91114616 and 91115259
9
Additionally, we agree with opposer’s contention, made
in its reply briefs in each of the cases, that we must
disregard all factual assertions made by applicant in its
briefs which are not supported by the evidentiary record.
See TBMP
704.06(b). We have given no consideration to any
such unsupported factual assertion (including those listed
in Appendix A to each of opposer’s reply briefs).
Finally, we agree with opposer’s contention, made in
its reply briefs, that any factual assertions made by
applicant in its briefs which derive solely from the court’s
opinion in the parties’ prior litigation may be deemed to be
established facts in this case only to the extent that the
doctrine of issue preclusion (also known as collateral
estoppel) might apply. We turn now to a discussion of the
parties’ prior litigation and its effect on the present
proceedings.
- applicant’s interrogatory answers (except to the extent
they were made of record via opposer’s notice of reliance) and
the third-party registrations attached as exhibits thereto
(Exhibit C to applicant’s brief in Opp. No. 91115259), which
should have been made of record in accordance with Trademark Rule
2.120(j)(5), 37 C.F.R.
2.120(j)(5), but were not.
However, we do not strike Exhibit B to each of applicant’s
briefs, i.e., the copy of the court’s (slip opinion) decision in
the parties’ prior litigation; rather, we take judicial notice
thereof, and note as well that the decision is reported at 913
F.Supp. 796 (S.D.N.Y. 1996). See infra. Also, we do not strike
the third-party registration of the mark CARTERCOPTERS (Reg. No.
2,472,509), because that registration was properly made of record
as an exhibit to the testimony deposition of Fred Rowan in Opp.
No. 91111355. See TBMP
704.03(b)(1)(B).
Opposition Nos. 91111355, 91111375, 91114616 and 91115259
10
THE PARTIES’ PRIOR LITIGATION (AND APPLICANT’S RES JUDICATA
ARGUMENT)
The parties were involved in litigation in 1995 in the
United States District Court for the Southern District of
New York, the outcome of which was decided in a January 25,
1996 opinion by Judge Denny Chin.8 The dispute which gave
rise to the litigation arose from the following facts, as
recounted by Judge Chin [court’s citations to record
omitted]:
In early 1995, AME [American Marketing
Enterprises, Inc., applicant’s licensee]
launched a line of boys’ clothing under the mark
CARTER’S WATCH THE WEAR. The line included
jeans, overalls, shortalls, and shirts, made
primarily from denim and flannel-type fabrics.
The new line, however, also contained non-denim,
non-flannel items such as rugby and other shirts.
In February 1995, AME ran a two-page
advertisement in Children’s Business, a trade
journal that covers the children’s apparel and
toy business, announcing:
American Marketing Enterprises introduces
H.W. Carter & Sons’ new line of fashion
denim, related separates and outerwear for
boys.
. . .
At approximately the same time that AME was
preparing its launch of the new line of boys’
fashion denim, Wm. Carter was also making plans
to rely more heavily on denim in its children’s
clothing.
8 H.W. Carter & Sons, Inc. and American Marketing Enterprises,
Inc. v. The William Carter Co., No. 95 Civ. 1274 (DC). Judge
Chin’s opinion is reported at 913 F.Supp. 796 (S.D.N.Y. 1996).
Opposition Nos. 91111355, 91111375, 91114616 and 91115259
11
. . .
It was in this context that Rowan [Fred Rowan,
opposer’s president] learned of AME’s launch.
Wm. Carter’s attorneys contacted H.W. Carter’s
attorneys almost immediately. AME arranged for
Wm. Carter’s representatives to see the new line.
On February 16, 1995, Wm. Carter’s attorneys
wrote to plaintiffs’ [applicant’s] attorneys,
asserting that “the New Line constitutes a clear
and serious infringement of the valuable
trademark rights of [Wm. Carter.]” The letter
further stated that “[I]f a resolution is not
possible, [Wm. Carter] will have no choice but
to commence trademark infringement litigation
and seek an expedited hearing for an
injunction.” . . . Counsel requested that the
new line be withdrawn, that plaintiffs change
the mark for the new line from CARTER’S WATCH
THE WEAR to WATCH THE WEAR, and that plaintiffs
change the identification of the source of the
new line from H.W. Carter to AME.
Plaintiffs [applicant] responded to the letter
by filing this lawsuit on February 22, 1995
[seeking a declaratory judgment that their use
of the mark CARTER’S WATCH THE WEAR did not
infringe upon Wm. Carter’s trademarks]. The
next day, Wm. Carter filed its counterclaims
[alleging that plaintiff’s use of the mark
CARTER’S WATCH THE WEAR infringed on its
registered trademark CARTER’S].
913 F.Supp. at 801-02 (pp. 13-16 of the slip opinion
attached as Exhibit B to applicant’s briefs).
With this background, Judge Chin stated: “The
principal issue presented is whether plaintiff’s
[applicant’s] use of the trademark CARTER’S WATCH THE WEAR
in their new line of boys’ clothing violates Wm. Carter’s
rights to its trademark CARTER’S. I hold that it does not.”
Opposition Nos. 91111355, 91111375, 91114616 and 91115259
12
913 F.Supp. at 802 (slip op. at 16). (Emphasis added).
Judge Chin found as follows:
Here, H.W. Carter was the first user of the
CARTER’S name in connection with the sale of
children’s outerwear, overalls, denim products,
and what is aptly described as “workwear.”9
Moreover, since 1930 it has continuously used
the mark CARTER’S WATCH THE WEAR in connection
with children’s outerwear, overalls, denim
products and “workwear.” On the other hand, Wm.
Carter did not begin using CARTER’S in the sale
of children’s clothing – other than
undergarments, sleepwear, and layettes – until
the 1950’s. It did not sell any denim products
until the 1970’s.
913 F.Supp. at 802 (slip op. at 17-18). (Emphasis added).
The court then stated its holding as follows:
Accordingly, on the basis of its continuous and
substantial use of the mark CARTER’S WATCH THE
WEAR since 1930, I hold that H.W. Carter is the
senior user of the mark CARTER’S in the sale of
children’s overalls, pants, coats, jackets, and
other “workwear,” which includes playwear made
from denim products.
913 F.Supp. at 803 (slip op. at 20). (Emphasis added). The
court also held: “In light of my decision on the issue of
priority, I need not reach the issue of likelihood of
confusion. … Likewise, I need not reach plaintiff’s
[applicant’s] laches, acquiescence, and estoppel arguments.”
9 Court’s footnote 7: “Defendant [opposer herein] argues that
there is no separate category of children’s clothing called
‘workwear.’ I disagree.”
Opposition Nos. 91111355, 91111375, 91114616 and 91115259
13
913 F.Supp. at 804 (slip op. at 22). The court concluded
its opinion by ordering that:
Judgment will be entered in favor of plaintiffs
on their trademark infringement claims. Their
use of the mark CARTER’S WATCH THE WEAR in the
manufacture, advertisement, promotion and sale
of children’s overalls, pants, coats, jackets,
and “workwear,” including the clothing featured
in AME’s new line, does not infringe any
trademark of defendant or otherwise compete
unfairly with defendant.
913 F.Supp. at 805 (slip op. at 25). (Emphasis added).
In these opposition proceedings, applicant has
repeatedly contended that Judge Chin’s decision establishes,
under the doctrine of res judicata, that applicant, not
opposer, is the senior user of CARTER’S as to “children’s
clothing.” Applicant’s sole basis for this contention is
the following language in the introductory summary to the
court’s opinion: “Because I find that H.W. Carter is the
senior user of the CARTER’S name in the sale of children’s
clothing, judgment will be entered in favor of plaintiffs on
their trademark claims.” 913 F.Supp. at 797 (slip op. at 3).
Applicant argues that “there is no limitation on the type of
children’s clothing in this language – H.W. Carter is not
relegated to workwear or even playwear only.” (See, e.g.,
applicant’s brief in Opposition No. 91111355 at 17.)
We reject applicant’s argument, because it clearly
ignores the more specific language (quoted above) that the
Opposition Nos. 91111355, 91111375, 91114616 and 91115259
14
court used to identify the issue in the prior case, state
its holding, and issue its order. The court’s more
generalized language in the introductory summary applicant
cites must be read in conjunction with, and in the context
of, the actual dispute which gave rise to the litigation,
the court’s explicit statement of the issue to be decided,
and the court’s actual holding and order in the case. What
the court found and expressly decided was not that applicant
has priority vis-à-vis opposer as to any and all children’s
clothing, but rather that applicant has priority as to
“children’s overalls, pants, coats, jackets, and other
‘workwear,’ which includes playwear made from denim
products.” 913 F.Supp. at 803 (slip op. at 20). Because
none of these items is included in the identifications of
goods in the four applications involved in these opposition
proceedings, the court’s decision has no res judicata effect
in these proceedings.
That is, the doctrine of claim preclusion is not
applicable here, because the prior litigation involved a
different set of transactional facts and thus a different
claim than that which is involved in these opposition
proceedings. See Jet Inc. v. Sewage Aeration Systems, 223
F.3d 1360, 55 USPQ2d 1854 (Fed. Cir. 2000); Litton
Industries, Inc. v. Litronix, Inc., 577 F.2d 709, 198 USPQ
280 (CCPA 1978). Nor is applicant’s argument availing under
Opposition Nos. 91111355, 91111375, 91114616 and 91115259
15
the doctrine of issue preclusion,10 because the “issue”
applicant claims was resolved in the prior litigation, i.e.,
applicant’s priority vis-à-vis opposer as to “children’s
clothing” in general, was not actually litigated in the
prior case. The only issue that was actually litigated in
the prior case, and the only issue whose determination was
necessary to the resulting judgment, was the issue of which
party had priority as to “children’s overalls, pants, coats,
jackets, and other ‘workwear,’ which includes playwear made
from denim products.”
Additionally, as discussed above in connection with
opposer’s motions to strike applicant’s untimely evidentiary
submissions, we have given no consideration to any factual
assertions made in applicant’s brief which are not supported
by evidence properly made of record. This includes
applicant’s factual assertions which are based solely on
citations to incidental facts recited in Judge Chin’s
opinion. None of those factual issues was necessary to the
10 Under the doctrine of issue preclusion, “issues which are
actually and necessarily determined by a court of competent
jurisdiction are conclusive in a subsequent suit involving the
parties to the prior litigation.” Mother’s Restaurant
Incorporated v. Mama’s Pizza, Inc., 723 F.2d 1566, 221 USPQ 394,
397 (Fed. Cir. 1983). There are four elements required for
application of the doctrine of issue preclusion: (1) identity of
the issues in a prior proceeding; (2) the issues were actually
litigated; (3) the determination of the issues was necessary to
the resulting judgment; and (4) the party defending against
preclusion had a full and fair opportunity to litigate the issues.
Jet Inc. v. Sewage Aeration Systems, supra; Mother’s Restaurant
Incorporated, supra.
Opposition Nos. 91111355, 91111375, 91114616 and 91115259
16
court’s judgment, and the court’s findings as to those
factual issues have no preclusive effect, or evidentiary
value, in these proceedings.
In short, the only res judicata import of the court’s
decision in the parties’ prior litigation is the court’s
finding that applicant is the senior user of the CARTER’S
name, vis-à-vis opposer, on “children’s overalls, pants,
coats, jackets, and other ‘workwear,’ which includes
playwear made from denim products.”11
APPLICANT’S OTHER “DEFENSES”
In its briefs in the four oppositions, applicant has
made arguments in support of an asserted “prior
11 This is not the first time in this case that the Board has
rejected applicant’s argument regarding the res judicata effect
of the prior litigation. In its May 16, 2000 order denying the
parties’ cross-motions for summary judgment in Opposition No.
91114616, the Board expressly ruled that because the court’s
decision in the prior litigation was limited to “workwear,” goods
not involved herein, that decision has no res judicata effect in
this case. Applicant’s continued assertion of this specious res
judicata argument in its final briefs in each of these opposition
proceedings borders on the frivolous.
Additionally, we agree with opposer’s contention (in its reply
briefs) that applicant has blatantly mischaracterized the court’s
opinion by arguing (in its briefs in Opposition Nos. 91114616 and
91115259) that Judge Chin “saw the [parties’] two trademarks as
distinct from one another.” (See, e.g., applicant’s brief in
Opp. No. 91115259 at 7, 14.) Applicant cites to no portion of
the court’s opinion in which this purported finding or
observation was made by Judge Chin. Indeed, the court expressly
stated that it did not reach the issue of likelihood of
confusion.
Opposition Nos. 91111355, 91111375, 91114616 and 91115259
17
registration” (or “Morehouse”12) defense, and also argues
that opposer is guilty of laches and acquiescence. We
reject all of these defenses.
Prior Registration Defense
Even if we assume that applicant, in its answers to the
notices of opposition, adequately pleaded a prior
registration defense under the principles of notice pleading,
we find that applicant has failed to present any evidence in
support of the defense. As noted above, the copies of
applicant’s registrations which were attached as Exhibit A
to applicant’s final briefs have been stricken and are not
evidence of record. Applicant therefore has failed to
establish that it owns any prior registrations which might
serve as the basis for a prior registration defense.
Moreover, even if applicant had properly made its
alleged registrations of record, its prior registration
defense would fail because the goods identified in those
registrations are not “substantially identical” to any of
the goods involved in the four applications involved in
these opposition proceedings. Applicant argues that the
goods identified in its current applications are within the
natural scope of expansion of the goods identified in its
prior registrations. Even assuming that this is true (and
12 Morehouse Mfg. Corp. v. J. Strickland & Co., 407 F.2d 881, 160
Opposition Nos. 91111355, 91111375, 91114616 and 91115259
18
we make no finding on that question), it does not suffice to
make out the defense. The defense is applicable only if the
goods in the application and the prior registration are
“substantially identical.” See TBC Corp. v. Grand Prix Ltd.,
12 USPQ2d 1311 (TTAB 1989).13
Laches and Acquiescence
Applicant failed to plead laches, acquiescence or any
other affirmative defense in its answers to the notices of
opposition in these cases, and it therefore may not argue
those defenses in its final briefs. See United States
Olympic Committee v. Bata Shoe Corp., 225 USPQ 340 (TTAB
1984); Taffy’s of Cleveland, Inc. v. Taffy’s, Inc., 189 USPQ
154 (TTAB 1975); TBMP §311.02(c). Even if applicant had
pleaded them, however, it is well-settled that laches and
acquiescence are not available as defenses in an opposition
proceeding. See National Cable Television Ass’n v. American
Cinema Editors, Inc., 937 F.2d 1572, 19 USPQ2d 1424 (Fed.
Cir. 1991); and DAK Industries, Inc. v. Daiichi Kosho Co.,
25 USPQ2d 1622 (TTAB 1992). Additionally, even if the
defenses were available in this case, applicant has failed
to present evidence sufficient to make out the defenses.
USPQ 715 (CCPA 1969).
13 Again, the Board held as much in its May 16, 2001 summary
judgment decision in Opposition No. 91114616. Applicant’s
continued assertion of this defense in its final briefs in each
opposition borders on the frivolous.
Opposition Nos. 91111355, 91111375, 91114616 and 91115259
19
The mere conclusory assertions in applicant’s briefs
regarding applicant’s alleged prejudicial reliance on
opposer’s “non-action” (e.g., applicant’s expansions of its
product lines, its filing of applications for trademark
registrations, its hiring of marketing consultants, its
advertising and promotional expenditures, etc.) simply are
not supported by any competent evidence in the record.
For the reasons discussed above, the laches and
acquiescence arguments applicant raises for the first time
in its appeal briefs are unavailing in this case.
du Pont Factor 10(d)
As discussed above, laches and acquiescence are not
available as affirmative defenses in an opposition
proceeding. We also have already noted that applicant has
failed to present evidence which proves the requisite
elements of these defenses, qua defenses. We note, however,
that the tenth du Pont14 likelihood of confusion evidentiary
factor requires us to consider, inter alia, evidence of
“laches and estoppel attributable to owner of prior mark and
indicative of lack of confusion.” See generally In re Opus
One Inc., 60 USPQ2d 1812, 1819-22 (TTAB 2001). Although
applicant has not cited this du Pont factor specifically, it
14 In re E. I. du Pont de Nemours and Co., 476 F.2d 1357, 177 USPQ
563 (CCPA 1973).
Opposition Nos. 91111355, 91111375, 91114616 and 91115259
20
nonetheless appears that applicant essentially is relying on
it to a large extent in defending against opposer’s claims.
In the interest of completeness, we will address applicant’s
arguments in the context of this tenth du Pont factor.
Applicant devotes much of the argument in its briefs to
its contention that opposer, in the 1960’s, “encroached”
with its CARTER’S mark into markets and product lines as to
which applicant is the prior user of its CARTER’S WATCH THE
WEAR mark. Applicant argues that this is evidence that
opposer believed that no likelihood of confusion would
result from the parties’ concurrent use of their marks even
on identical goods, and that opposer therefore is guilty of
a “double standard” in claiming, in these opposition
proceedings, that applicant’s use of its mark on goods in
opposer’s product lines is likely to cause confusion. We
are not persuaded.
Even assuming that opposer’s expansion into the
children’s playwear market constituted an entry into
applicant’s traditional workwear market (including denim
playwear), that would not be evidence which is “indicative
of lack of confusion,” in the words of the tenth du Pont
factor. There is no basis in the record for finding that
opposer entered that market because it assumed or believed
that confusion was unlikely to result from its use of its
CARTER’S mark on such goods. Indeed, until Judge Chin’s
Opposition Nos. 91111355, 91111375, 91114616 and 91115259
21
1996 decision held otherwise, opposer obviously believed
that it, not applicant, was the senior user of CARTER’S as
to children’s playwear, and that it therefore had the right
to enter into the denim playwear market as a natural
expansion of its children’s playwear line. Otherwise, it
would not have sued applicant for infringement when
applicant launched its new line in 1995.
Thus, there is no evidence which establishes that when
(and assuming that) opposer expanded (in the 1960’s) into
what was subsequently determined (in 1996) to be applicant’s
market, it did so because it assumed or believed that
confusion was unlikely to result, a fact which, if proven,
would weigh against a finding of likelihood of confusion in
this case. Because a more plausible explanation for such
expansion by opposer was its belief that it was opposer, not
applicant, that had priority as to such goods, we find that
the tenth du Pont factor, i.e., “laches and estoppel
attributable to owner of prior mark and indicative of lack
of confusion,” does not weigh in applicant’s favor but
instead is neutral in this case. See In re Opus One Inc.,
supra.15
15 Even if the evidence of record under du Pont factor 10(d) were
deemed to weigh in applicant’s favor, it would be outweighed by
the evidence of record on the remaining du Pont factors, which
favor opposer. See discussion infra.
Opposition Nos. 91111355, 91111375, 91114616 and 91115259
22
Having addressed applicant’s “defenses,” we turn now to
the merits of opposer’s Section 2(d) ground of opposition in
each of these four consolidated proceedings. To prevail in
each case, opposer must establish its standing to oppose,
its priority of use (or ownership of a registration), and
the existence of a likelihood of confusion.
OPPOSITION NO. 91111355
Opposition No. 91111355 involves applicant’s
application Serial No. 75368211, by which applicant seeks to
register the mark CARTER’S WATCH THE WEAR for “pajamas,
nightgowns, nightshirts and bathrobes.”
STANDING
Opposer has made of record status and title copies of
its Registration No. 328,815 (which is of the mark CARTER’S
(in cursive script) for “underwear, pajamas, sleepers”) and
its Registration No. 1,117,280 (which is of the mark
CARTER’S (in typed form) for, inter alia, “sleepwear.”
(Opposer’s notice of reliance, Exh. A and B.) In view
thereof, and because opposer has asserted a non-frivolous
likelihood of confusion claim, we find that opposer has
established its standing to oppose registration of
applicant’s mark in Opposition No. 91111355. See, e.g.,
Opposition Nos. 91111355, 91111375, 91114616 and 91115259
23
Lipton Industries, Inc. v. Ralston Purina Company, 670 F.2d
1024, 213 USPQ 185 (CCPA 1982).
Opposition Nos. 91111355, 91111375, 91114616 and 91115259
24
PRIORITY
Because opposer has proven the status and title of its
Registration Nos. 328,815 and 1,117,280, priority is not at
issue with respect to the goods identified in those
registrations, i.e., “underwear, pajamas, sleepers” in
Registration No. 328,815, and “sleepwear” in Registration No.
1,117,280. King Candy Co., Inc. v. Eunice King’s Kitchen,
Inc., 496 F.2d 1400, 182 USPQ 108 (CCPA 1974). Thus, as to
the “pajamas, nightgowns and nightshirts”16 identified in
applicant’s application, opposer need not prove priority of
use. In any event, opposer’s priority of use as to these
goods is established by the record. (See, e.g., Derby Depo.
at 11-12; Calkins 4/17/01 Depo. at 21-22.)
As to the other goods identified in applicant’s
application, i.e., “bathrobes,” which are not specifically
identified in any of opposer’s registrations, we find that
opposer has established its priority of use. Applicant has
admitted that it has not used its mark on any of the goods
identified in its application, including bathrobes. See
opposer’s requests for admission nos. 13-16 and 21-24
(Exhibit C to opposer’s notice of reliance), and Moskowitz
8/12/99 Depo. at 42-46 (Exhibit D to opposer’s notice of
reliance). Thus, the earliest date upon which applicant can
rely for priority purposes is the October 6, 1997 filing
Opposition Nos. 91111355, 91111375, 91114616 and 91115259
25
date of its application. Opposer has used its CARTER’S mark
on bathrobes since at least as early as 1989 (Calkins
4/17/01 Depo. at 24-25), a date prior to October 6, 1997.
Thus, we find that priority is not at issue with
respect to the “pajamas, nightgowns, nightshirts” identified
in applicant’s application (and that opposer has proven its
priority as to those goods in any event), and that opposer
has established its priority of use as to the “bathrobes”
identified in applicant’s application.17
LIKELIHOOD OF CONFUSION
Our likelihood of confusion determination under Section
2(d) is based on an analysis of all of the probative facts
in evidence that are relevant to the likelihood of confusion
factors set forth in In re E.I. du Pont de Nemours and Co.,
476 F.2d 1357, 177 USPQ 563 (CCPA 1973). In considering the
16 We take judicial notice that “nightgowns” and “nightshirts” are
species of “sleepwear.” See also Calkins 4/17/01 Depo. at 19.
17 CARTER’S is a surname, and therefore opposer, to demonstrate
priority with respect to its common law uses, must show that
CARTER’S acquired distinctiveness as a mark prior to the filing
date of applicant’s application. Because opposer’s use of its
mark on bathrobes commenced at least five years prior to
applicant’s application filing date, and in view of the
relationship between bathrobes and the sleepwear and other
apparel items identified in opposer’s registrations, as discussed
infra, we find that opposer’s CARTER’S mark, as applied to
bathrobes, had acquired distinctiveness prior to applicant’s
application filing date, and that opposer therefore has priority
of secondary meaning in the CARTER’S designation as applied to
bathrobes, as well as priority of use on such goods. See, e.g.,
Perma Ceram Enterprises, Inc. v. Preco Industries, Ltd., 23
USPQ2d 1134 (TTAB 1992).; cf. Trademark Act Section 2(f), 15
U.S.C. §1052(f); Trademark Rule 2.41(b), 37 C.F.R. §2.41(b).
Opposition Nos. 91111355, 91111375, 91114616 and 91115259
26
evidence of record on these factors, we keep in mind that
“[t]he 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.”
Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d
1098, 192 USPQ 24, 29 (CCPA 1976). Also, it is settled that
where the opposer’s mark is a famous mark, that fame plays a
dominant role in the process of balancing the du Pont
factors. Recot Inc. v. M.C. Becton, 214 F.3d 1322, 1327, 54
F.2d 1894, 1897 (Fed. Cir. 2000). We thus turn first to the
issue of the fame of opposer’s mark.
Fame of Opposer’s Mark
The fifth du Pont evidentiary factor requires us to
consider evidence of the fame of opposer’s mark, and to give
great weight to such evidence if it exists. See Bose Corp.
v. QSC Audio Products Inc., 293 F.3d 1367, 63 USPQ2d 1303,
1309 (Fed. Cir. 2002); Recot Inc. v. M.C. Becton, supra;
Kenner Parker Toys, Inc. v. Rose Art Industries, Inc., 963
F.2d 350, 22 USPQ2d 1453 (Fed. Cir. 1992).
Fame of an opposer’s mark or marks, if it
exists, plays a “dominant role in the process of
balancing the DuPont factors,” Recot, 214 F.3d
at 1327, 54 USPQ2d at 1897, and “[f]amous marks
thus enjoy a wide latitude of legal protection.”
Id. This is true as famous marks are more
Opposition Nos. 91111355, 91111375, 91114616 and 91115259
27
likely to be remembered and associated in the
public mind than a weaker mark, and are thus
more attractive as targets for would-be
copyists. Id. Indeed, “[a] strong mark … casts
a long shadow which competitors must avoid.”
Kenner Parker Toys, 963 F.2d at 353, 22 USPQ2d
at 1456. A famous mark is one “with extensive
public recognition and renown.” Id.
Bose Corp. v. QSC Audio Products Inc., supra, 63 USPQ2d at
1305.
The evidence of record clearly establishes the fame of
opposer’s CARTER’S mark. Opposer’s primary product lines
under the CARTER’S brand are infants’ and children’s
sleepwear, infants’ layette, and infants’ and children’s
playwear. (Calkins 4/17/01 Depo. at 12; Derby 4/17/01 Depo.
at 12; Calkins 7/31/01 Depo. at 11-12.) Opposer’s goods are
available nationwide in department stores, national chain
stores, off-price stores, infant and children specialty
stores, and via mail order and the Internet. (Calkins
4/17/01 Depo. at 26-27.) Opposer operates 149 CARTER’S
retail outlet stores nationwide, which offer for sale
opposer’s complete line of products. (Id. at 34; Calkins
7/31/01 Depo. at 15-16.) Developers of outlet centers look
to bring in opposer’s outlet stores because they are
“destination sites” which attract consumers to the outlet
centers. (Calkins 4/17/01 Depo. at 34; Calkins 7/31/01 Depo.
at 17.)
Opposition Nos. 91111355, 91111375, 91114616 and 91115259
28
Opposer’s total sales of CARTER’S-branded goods for the
year 2000, at wholesale and through its own retail outlet
stores, totaled $450 million.18 (Calkins 7/31/01 Depo. at
17-18.) Opposer typically spends $10 million per year to
advertise and promote the brand. (Id. at 66-67.) Such
advertising includes direct mail circulars featuring
opposer’s products, which are mailed out ten to twelve times
per year in partnership with opposer’s major retailer
customers, reaching 50 million consumers annually. (Id. at
37-42.) Opposer’s products also are prominently displayed
in retailers’ stores with their own in-store fixturing and
signage, and opposer participates with retailers in in-store
events (such as store openings) which feature opposer’s
goods. (Id. at 61-65.) Ms. Calkins testified that
“[r]etailers like to advertise the Carter’s brand name
because it brings consumers into their stores.” (Calkins
7/31/01 Depo. at 24.) A recent study conducted by opposer
shows that CARTER’S has a 95% brand awareness level among
mothers and grandmothers and an 80% repurchase intent among
those same consumers, and that CARTER’S is among the
18 Ms. Calkins testified that opposer’s wholesale sales figures
(i.e., sales through retail channels other than opposer’s own
outlet stores) must be doubled to arrive at the corresponding
retail sales figures. (Calkins 4/17/01 Depo. at 36-37.)
Opposer’s outlet store sales make up forty percent of opposer’s
total sales (Id. at 77); wholesale sales therefore make up sixty
percent of opposer’s total sales, and it is that sixty percent
figure which must be doubled to arrive at opposer’s total retail
sales figures.
Opposition Nos. 91111355, 91111375, 91114616 and 91115259
29
highest-ranking brands in terms of consumers’ “trust level.”
(Calkins 7/31/01 Depo. at 11, 19.)
Opposer’s CARTER’S mark certainly is famous as applied
to infants’ and children’s sleepwear. CARTER’S is and for
many years has been the number one-selling brand of infants’
and children’s sleepwear in the country, in terms of both
dollar amounts and units sold. (Calkins 4/17/01 Depo. at
35-36, 74-76.) In 2000, opposer sold 20 million units of
such sleepwear totaling $125 million at wholesale and
through opposer’s outlet stores, four times more than its
nearest competitor. Sales have been increasing and are
expected to continue increasing at 9% to 10% per year. (Id.
at 66-67.) Opposer’s advertising and promotional activities
often focus on opposer’s sleepwear, because “it’s what
consumers really look to Carter’s for. They expect to find
Carter’s sleepwear, so we gear them to the right stores to
find it.” (Id. at 38.)
Based on this evidence, we find, for purposes of the
fifth du Pont likelihood of confusion evidentiary factor,
that opposer’s CARTER’S mark is a famous mark for infants’
and children’s apparel in general, and as applied to
infants’ and children’s sleepwear in particular. That fame
weighs heavily in opposer’s favor; indeed, in light of the
authorities cited above, the fame of opposer’s mark must be
Opposition Nos. 91111355, 91111375, 91114616 and 91115259
30
deemed a dominant factor in our likelihood of confusion
analysis in this case.19
Similarity of Marks
The first du Pont evidentiary factor requires us to
determine whether applicant’s mark and opposer’s mark, when
compared in their entireties in terms of appearance, sound
and connotation, are similar or dissimilar in their overall
commercial impressions. 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 that
confusion as to the source of the goods offered under the
respective marks is likely to result. 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 (TTAB
1975). Furthermore, although the marks at issue must be
considered in their entireties, it is well-settled that one
feature of a mark may be more significant than another, and
it is not improper to give more weight to this dominant
19 Applicant argues that although opposer’s mark may be famous,
we also should take into account the fame of applicant’s mark in
our likelihood of confusion analysis. We are not persuaded. The
fifth du Pont factor requires us to consider evidence of “the
fame of the prior mark.” Opposer’s mark, not applicant’s mark,
is “the prior mark” as to the goods involved in this case.
Opposition Nos. 91111355, 91111375, 91114616 and 91115259
31
feature in determining the commercial impression created by
the mark. See In re National Data Corp., 753 F.2d 1056, 224
USPQ 749 (Fed. Cir. 1985). Finally, where, as in the
present case, the marks would appear on virtually identical
goods (see discussion infra), the degree of similarity
between the marks which is necessary to support a finding of
likely confusion declines. Century 21 Real Estate Corp. v.
Century Life of America, 970 F.2d 874, 23 USPQ2d 1698 (Fed.
Cir. 1992). Likewise, because opposer’s mark is famous, it
must be accorded a wide latitude of legal protection vis-à-
vis competing marks. Recot Inc. v. M.C. Becton, supra.
Applying these principles in the present case, we find
that in terms of appearance, sound and connotation, the
marks are identical to the extent that they both include the
word CARTER’S, and dissimilar to the extent that applicant’s
mark, but not opposer’s mark, includes the words WATCH THE
WEAR.20 Viewing the marks in their entireties, we find that
the overall commercial impressions created by the marks are
more similar than dissimilar. That is, we find that the
Moreover, applicant’s argument that its mark is famous is not
supported by the evidentiary record.
20 The cursive script in which opposer’s CARTER’S mark appears in
Reg. No. 328,815 does not distinguish the marks in terms of
appearance. That stylization is de minimis, and applicant’s mark
(which applicant seeks to register in typed form) could be
depicted on applicant’s goods in a similar cursive script. See
Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842
(Fed. Cir. 2000); Squirtco v. Tomy Corp., 697 F.2d 1038, 216 USPQ
937 (Fed. Cir. 1983).
Opposition Nos. 91111355, 91111375, 91114616 and 91115259
32
similarity between the marks which results from the presence
of CARTER’S as the first (or only) word in the marks
outweighs the dissimilarities which result from the presence
of the additional wording WATCH THE WEAR in applicant’s mark.
Applicant argues that its CARTER’S WATCH THE WEAR mark
is a “unitary expression” which should not be dissected in
our comparison of the marks. We are not persuaded that
applicant’s mark is a unitary expression. WATCH THE WEAR
would likely be viewed as a unitary expression, i.e., as a
phrase which has a coherence and a meaning (suggesting
durability) which is independent of the three words
considered separately. CARTER’S WATCH THE WEAR, however, is
not a unitary expression. CARTER’S WATCH THE WEAR has no
discernible unitary meaning or coherence, either as a matter
of grammatical construction or of logical connotation.
Rather, the mark consists of and would be perceived as
having two elements, i.e., the name CARTER’S, followed by
the unitary slogan WATCH THE WEAR. Applicant has not
suggested any specific unitary meaning or significance that
could be or would be attributed to the words CARTER’S WATCH
THE WEAR. Contrary to applicant’s argument, the mere fact
that applicant always uses the four words together does not
make of the four words a unitary expression with a coherent,
Opposition Nos. 91111355, 91111375, 91114616 and 91115259
33
independent meaning of its own.21
Having found that CARTER’S WATCH THE WEAR is not a
unitary phrase or expression, we further find that the
dominant feature in the commercial impression created by
applicant’s mark is the possessive name CARTER’S, and that
this dominant feature must be given greater weight in our
analysis of the commercial impression created by applicant’s
mark (and in our comparison of applicant’s mark and
opposer’s mark). In so finding, we are not dissecting the
mark. Rather, for the rational reasons discussed below (see
In re National Data Corp., supra), we find that purchasers
viewing the mark in its entirety would look to the name
CARTER’S as the dominant source-indicating feature of the
mark, and would perceive and understand WATCH THE WEAR to be
a separate, suggestive slogan or tag line appended to that
name.
CARTER’S is the first word of applicant’s mark, a fact
which contributes to its dominance in the commercial
impression created by the mark. See, e.g., Presto Products,
Inc. v. Nice-Pak Products, Inc., 9 USPQ2d 1895 (TTAB 1988).
21 Also unpersuasive is applicant’s contention that CARTER’S WATCH
THE WEAR is a unitary mark because its historical derivation is
the 1929 merger of two companies that previously had used,
respectively, the mark CARTER’S and the mark WATCH THE WEAR.
There is no evidence that purchasers are or would be aware of
this historical derivation. Even if they were so aware, they
still would view the mark as a combination of two separate marks,
CARTER’S and WATCH THE WEAR, rather than as a unitary phrase or
expression.
Opposition Nos. 91111355, 91111375, 91114616 and 91115259
34
The wording WATCH THE WEAR is suggestive of a feature or
characteristic of the goods, i.e., their durability.22 It
therefore would have comparatively less source-indicating
significance to purchasers viewing the mark than the name
CARTER’S would have.23
We agree with opposer’s contention that the parties’
marks are similar because applicant’s mark CARTER’S WATCH
22 Applicant acknowledges that the wording has this suggestive
connotation. See, e.g., applicant’s brief in Opposition No.
91111355, at 8.
23 Opposer has presented testimony which, opposer argues,
suggests that applicant’s own customers abbreviate applicant’s
CARTER’S WATCH THE WEAR mark simply as CARTER’S when referring to
applicant’s goods. Sherrie Coker, opposer’s customer relations
supervisor, testified that between January 1 and August 29 of
2001, she spoke with twenty-three persons who had complaints
about products which they apparently thought were opposer’s
products, but which turned out to be applicant’s products. She
testified that these persons insistently referred to these
products of applicant’s simply as CARTER’S, even after being told
that the products were not opposer’s products, and even if they
were looking at the product labels or tags which included the
words WATCH THE WEAR. We reject applicant’s hearsay objection to
this testimony; the statements made by customers to Ms. Coker are
not offered by opposer for the truth of the matters asserted, but
rather are offered to prove simply that the statements were made.
Nonetheless, we accord little probative weight to these
statements as evidence on the issue of the commercial impression
of applicant’s mark. It appears to be equally likely that these
calls are evidence of actual source confusion; the customers saw
the name CARTER’S on applicant’s products and assumed that the
products were opposer’s, notwithstanding the additional presence
of the words WATCH THE WEAR on the products’ labels. Because
that interpretation of Ms. Coker’s testimony (and the customer
statements she reports) is at least plausible, we are not
persuaded that the testimony necessarily proves opposer’s
contention that applicant’s customers commonly (or ever)
abbreviate or refer to applicant’s mark simply as CARTER’S.
Opposer expressly states in its briefs that it is not offering
this testimony to prove actual confusion under the seventh du
Pont factor, since the customer calls involved goods not at issue
in these cases. Accordingly, we have not considered it as such.
Opposition Nos. 91111355, 91111375, 91114616 and 91115259
35
THE WEAR incorporates opposer’s CARTER’S mark in its
entirety as a prominent and indeed dominant feature of
applicant’s mark. We have given due consideration to the
contribution which the words WATCH THE WEAR make to the
commercial impression of applicant’s mark, and we find that
the presence of these words does not suffice to distinguish
the marks in terms of their overall commercial impressions
as indications of source. WATCH THE WEAR is likely to be
perceived merely as a slogan or tag line appended to the
name CARTER’S, intended to suggest the durability of the
goods. The record shows that opposer also uses and has used
various slogans and tag lines in conjunction with the
CARTER’S name on its sleepwear, either as part of trademarks
or in advertising and promotional campaigns. These include:
CARTER’S FUZZY FLEECE; CARTER’S COMFORT YOU’VE LEARNED TO
LOVE; CARTER’S, IF THEY COULD JUST STAY LITTLE TILL THEIR
CARTER’S WEAR OUT; and CARTER’S DREAMAKERS. (Calkins
4/17/01 Depo. at 22-23.) Given opposer’s past use of such
slogans or tag lines with its famous CARTER’S mark
(especially a slogan which suggests the durability of the
products, i.e., CARTER’S, IF THEY COULD JUST STAY LITTLE
TILL THEIR CARTER’S WEAR OUT), purchasers are more likely to
assume that the wording WATCH THE WEAR in the mark CARTER’S
WATCH THE WEAR is yet another such slogan of opposer’s or
Opposition Nos. 91111355, 91111375, 91114616 and 91115259
36
another variant CARTER’S mark, rather than an indication
that the goods originate from a source other than opposer.
In summary, we find that the differences in appearance,
sound and meaning which result from the presence in
applicant’s mark of the words WATCH THE WEAR are not
sufficient to overcome the basic and essential similarity
between the marks which results from the presence in both
marks of the name CARTER’S. This is especially so when we
take into account the identical nature of the parties’ goods
(see discussion infra) and the concomitant lesser degree of
similarity between the marks which is necessary to support a
finding of likelihood of confusion, see Century 21 Real
Estate Corp. v. Century Life of America, supra, and the fame
of opposer’s mark, which “casts a long shadow” which
competitors must avoid. See Kenner Parker Toys, Inc. v.
Rose Art Industries, Inc., supra.
For the reasons discussed above, we find that the first
du Pont factor weighs in opposer’s favor.
Similarity of Goods
Opposer’s registrations include “pajamas” and
“sleepwear,” inter alia, in their identifications of goods.
As identified in the registrations, those goods are legally
identical to and/or encompass the “pajamas,” “nightgowns”
and “nightshirts” identified in applicant’s application.
Opposition Nos. 91111355, 91111375, 91114616 and 91115259
37
Opposer also has proven that it is the prior user of its
CARTER’S mark on bathrobes for infants and children, goods
which are legally identical to and encompassed by the
“bathrobes” identified in applicant’s application. Thus, we
find that the parties’ goods, as identified in the
application and registrations, respectively, are legally
identical. See Canadian Imperial Bank of Commerce v. Wells
Fargo Bank, N.A., 811 F.2d 1490, 1 USPQ2d 1813 (Fed. Cir.
1987). The second du Pont factor accordingly weighs in
opposer’s favor in our likelihood of confusion analysis.
Trade Channels and Classes of Purchasers
Having found that the parties’ goods are legally
identical, we find that the trade channels and classes of
purchasers for these goods are legally identical as well.
Moreover, the identifications of goods in applicant’s
application and in opposer’s registrations include no
limitations or restrictions as to trade channels or classes
of purchasers, and we therefore presume that both parties’
goods are or can be marketed in all normal trade channels
and to all normal classes of purchasers for such goods. See
Canadian Imperial Bank of Commerce v. Wells Fargo Bank, N.A.,
Opposition Nos. 91111355, 91111375, 91114616 and 91115259
38
supra.
The record establishes that the normal trade channels
for these goods include department stores (such as Macy’s
and Hecht’s), national chain stores (such as Sears and J.C.
Penney), off-price stores (such as Marshall’s), infant and
children specialty stores, outlet stores, discount stores
(such as Target), mail order sales and Internet sales.
(Calkins 4/17/01 Depo. at 26-27.) Opposer markets its
CARTER’S-branded goods in all of these trade channels except
for discount stores (id. at 31), and applicant’s
unrestricted application likewise would entitle applicant to
market its goods in these same trade channels.24 The normal
purchasers of these goods are general consumers, including
the mothers, grandmothers and gift-givers who are opposer’s
target consumers (id. at 15, 67) and to whom applicant’s
unrestricted application likewise would entitle applicant to
market its goods.
In summary, we find that the trade channels and classes
of purchasers for the parties’ respective goods are similar
and indeed overlapping. The third du Pont factor therefore
weighs in opposer’s favor.
24 Applicant argues that, in actual practice, opposer sells a
significant amount (roughly forty percent) of its sleepwear items
through its own 148 outlet stores (Calkins 4/17/01 Depo. at 77-
78), a trade channel in which applicant’s goods would not be sold.
However, the remaining sixty percent of opposer’s goods are
marketed in the other normal trade channels for such goods, the
Opposition Nos. 91111355, 91111375, 91114616 and 91115259
39
Purchasing Conditions
We find that the goods at issue are inexpensive,
ordinary consumer items, which are purchased by ordinary
consumers (such as mothers, grandmothers, and gift-givers)
with no more than ordinary care. They are not expensive
items; opposer’s sleepwear items cost an average of eight to
ten dollars at retail. (Calkins 4/17/99 Depo. at 24.)
Nothing in the record establishes that there is anything
about these goods or the level of care with which they are
purchased which necessarily would lessen the likelihood of
confusion.25 The fourth du Pont factor accordingly weighs
in opposer’s favor, or is neutral at best.
Similar Marks in Use on Similar Goods
same trade channels in which applicant’s goods also must be
presumed to be marketed.
25 We note that opposer’s CARTER’S-branded goods, as marketed in
department stores and other retail stores, almost always are
displayed to customers in opposer’s own in-store fixtures, with
signage bearing opposer’s mark. (Rowan Depo. at 12-16; Calkins
4/17/01 Depo. at 64, 68.) We are not persuaded by applicant’s
argument that the likelihood of confusion is lessened to any
appreciable extent because opposer’s goods typically are
displayed in opposer’s own in-store fixtures. Opposer’s goods
and competitors’ goods still are displayed in the same sections
of the stores. Moreover, the fact that retailers display
opposer’s goods in opposer’s own fixtures and with opposer’s own
signage appears to be the result of opposer’s dominance in the
market and popularity among purchasers. If anything, opposer’s
use of in-store fixturing and signage dedicated to the prominent
display of opposer’s goods enhances the strength and fame of
opposer’s mark, and such fame can never weigh against opposer in
our likelihood of confusion analysis. See Kenner Parker Toys,
Inc. v. Rose Art Industries, Inc., supra.
Opposition Nos. 91111355, 91111375, 91114616 and 91115259
40
The sixth du Pont factor requires us to consider “the
number and nature of similar marks in use on similar goods.”
The evidence of record in this case does not show the
existence of any such third-party uses of CARTER’S marks (or
marks similar thereto) on the goods at issue.26 The absence
of evidence of similar marks in use on similar goods weighs
in opposer’s favor in our likelihood of confusion analysis.
Actual Confusion
There is no evidence of any instances of actual
confusion between opposer’s mark and applicant’s mark as
applied to the goods involved in Opposition No. 91111355,
i.e., sleepwear and bathrobes. However, there likewise is
no evidence that applicant has ever used its mark on such
goods. In such circumstances, we cannot conclude that there
has been any opportunity for actual confusion to have arisen,
and the absence of evidence of actual confusion therefore is
factually unsurprising and legally irrelevant. See Gillette
Canada Inc. v. Ranir Corp., 23 USPQ2d 1768 (TTAB 1992). The
26 The third-party registrations applicant submitted with its
brief have been stricken and are not of record. Even if they had
been properly made of record, they (like the CARTERCOPTERS
registration (Reg. No. 2,472,509) which applicant has properly
made of record – see supra at footnote 7) are not evidence that
the marks depicted therein are in use or that purchasers are
familiar with them, and they therefore are not probative evidence
under the sixth du Pont factor. See Olde Tyme Foods Inc. v.
Roundy’s Inc., 961 F.2d 200, 22 USPQ2d 1542 (Fed. Cir. 1992).
Opposition Nos. 91111355, 91111375, 91114616 and 91115259
41
seventh and eighth du Pont evidentiary factors therefore are
neutral in this case.27
House Mark
The record shows that opposer uses its CARTER’S mark as
a house mark for a wide variety of products relating to
children and infants, including sleepwear, playwear,
layette, underwear, swimwear, shoes, hosiery, outerwear,
hats and gloves, bedding, wallpaper, rugs, room décor,
accessories, diaper bags, dolls, plush toys, wooden toys and
puzzles, strollers, bouncy seats, play yards and toiletries.
(Calkins 4/17/01 Depo. at 16-18.) Ms. Calkins testified as
follows:
Q. Why does Carter’s license the use of the
Carter’s mark for such a broad array of
products?
A. We have determined that – we’ve
determined that Carter’s is really a lifestyle
brand and consumers have told us. We’ve done a
lot of research with them and they’ve told us
that they want Carter’s to expand into different
categories. And it makes sense for the brand to
be in those categories related to children.
27 As noted above, the testimony of opposer’s customer relations
supervisor Sherrie Coker might be construed as evidence that
actual source confusion has occurred with respect to goods which
are not at issue in this proceeding. However, opposer has
expressly stated that it is not relying on such testimony as
evidence on the issue of actual confusion, and we therefore will
not consider it as such. Applicant’s contentions that the
testimony is either hearsay or shows merely de minimis actual
confusion likewise are moot.
Opposition Nos. 91111355, 91111375, 91114616 and 91115259
42
(Id.) Based on this evidence, we find that the ninth du
Pont factor weighs in opposer’s favor in this case.28
Extent of Potential Confusion
Given the fame of opposer’s mark and the fact that
opposer sells 20 million sleepwear units annually, and given
the relatively inexpensive cost of these goods, we find that
the extent of potential confusion which would result from
applicant’s use of a confusingly similar mark to sell the
same type of goods in the same trade channels and to the
same purchasers is substantial, not de minimis. The twelfth
du Pont factor therefore weighs in opposer’s favor in this
case.
Conclusion
For the reasons discussed above, we find that the
evidence of record pertaining to the du Pont factors leads
inevitably to the conclusion that confusion is likely to
result from applicant’s use of its mark on the goods
identified in the application. Because opposer also has
established its standing and either its priority of use or
its ownership of a registration, opposer’s Section 2(d)
28 In its brief, applicant contends that its CARTER’S WATCH THE
WEAR likewise is a house mark used on a wide variety of apparel.
This claim is not substantiated by the record.
Opposition Nos. 91111355, 91111375, 91114616 and 91115259
43
ground of opposition in Opposition No. 91111355 is
sustained.
OPPOSITION NO. 91111375
We turn next to opposer’s Section 2(d) ground of
opposition to applicant’s application Serial No. 75326378,
by which applicant seeks to register the mark CARTER’S WATCH
THE WEAR (in typed form) for “disposable diapers.”
STANDING
Opposer has made of record a status and title copy of
its pleaded Registration No. 1,117,280, which is of the mark
CARTER’S (in typed form) for, inter alia, layette29 items
including blankets, towels, face cloths, underwear, bunting,
bibs, booties and bonnets. (Opposer’s notice of reliance,
Exh. B.) Opposer also has proven that it uses its CARTER’S
mark diaper bags and diaper covers. (Calkins 4/17/01 Depo.
at 12-13, 42-43, and 48-49.) In view thereof, and because
opposer has asserted a non-frivolous likelihood of confusion
claim, we find that opposer has established its standing to
29 Ms. Calkins testified that “[l]ayette is … baby clothes for
newborns. It’s really meant to be the first thing a baby needs
and wears. It includes underwear, bodysuits, stretchies,
receiving blankets, hooded towels, and washcloths, gowns, bibs,
bonnets, booties, creepers. Those are primarily the items that
fall into layette.” (Id. at 42.) We take judicial notice that
Webster’s Ninth New Collegiate Dictionary (1990), at p. 678,
defines “layette” as “a complete outfit of clothing and equipment
for a newborn infant.”
Opposition Nos. 91111355, 91111375, 91114616 and 91115259
44
oppose registration of applicant’s mark in Opposition No.
91111375. See, e.g., Lipton Industries, Inc. v. Ralston
Purina Company, supra.
PRIORITY
Applicant has not used its mark on the “disposable
diapers” identified in its intent-to-use application.
(Opposer’s requests for admission nos. 17 and 25 (Exhibit C
to opposer’s notice of reliance); Moskowitz 8/12/99 Depo. at
50-51 (Exhibit D to opposer’s notice of reliance)). Thus,
the earliest date upon which applicant can rely for priority
purposes is the July 16, 1997 filing date of its application.
Opposer has not used its CARTER’S mark on disposable
diapers. (Rowan Depo. at 42; Calkins 4/17/01 Depo. at
78.)30 However, opposer bases its Section 2(d) claim in
this opposition on its ownership of Registration No.
1,117,280, which is of the mark CARTER’S for the various
layette and underwear items mentioned above. Because
opposer has proven the status and title of this registration,
priority is not at issue with respect to the goods
identified therein. King Candy Co. v. Eunice King’s Kitchen,
Inc., supra. Moreover, opposer also has proven that it has
used its CARTER’S mark on diaper bags since the early 1990’s
30 Nor has opposer used its mark on cloth diapers. (Calkins
4/17/01 Depo. at 44.)
Opposition Nos. 91111355, 91111375, 91114616 and 91115259
45
and on diaper covers since at least as early as 1989.
(Calkins 4/17/01 Depo. at 47-49.)
Accordingly, we find that priority is not at issue with
respect to the layette and underwear items identified in
opposer’s Registration No. 1,117,280, and that opposer has
proven priority of use with respect to its diaper bags and
diaper covers.31
LIKELIHOOD OF CONFUSION
Fame of Opposer’s Mark
As discussed above in connection with Opposition No.
91111355, we find that opposer’s mark is famous as applied
to infants’ and children’s apparel in general, and sleepwear
in particular. The evidence of record also establishes that
opposer’s mark is famous as applied to its layette items,
including infants’ undergarments.
31 CARTER’S is a surname, and therefore opposer, to demonstrate
priority with respect to its common law uses, must show that
CARTER’S acquired distinctiveness as a mark prior to the filing
date of applicant’s application. Because opposer’s use of its
mark on diaper bags and diaper covers commenced at least five
years prior to applicant’s application filing date, and in view
of the obvious relationship between diaper covers, diaper bags
and the layette and underwear items identified in opposer’s
registrations, we find that opposer’s CARTER’S mark, as applied
to diaper covers and diaper bags, had acquired distinctiveness
prior to applicant’s application filing date, and that opposer
therefore has priority of secondary meaning in the CARTER’S
designation as applied to diaper bags and diaper covers, as well
as priority of use on such goods. See, e.g., Perma Ceram
Enterprises, Inc. v. Preco Industries, Ltd., supra; cf. Trademark
Act Section 2(f), 15 U.S.C. §1052(f); Trademark Rule 2.41(b), 37
C.F.R. §2.41(b).
Opposition Nos. 91111355, 91111375, 91114616 and 91115259
46
Opposer’s CARTER’S mark long has been the top-selling
brand of layette in the country in terms of both dollars and
units sold. (Calkins 4/17/01 Depo. at 56, 74-76.) In the
year 2000, opposer’s total layette sales (at wholesale and
through opposer’s own outlet stores) were between $175
million and $200 million. (Id. at 57.) Likewise in the
year 2000, opposer sold over 40 million units of its
CARTER’S-branded baby products, which is over ten products
for every baby born in the United States, according to Ms.
Calkins’ unchallenged testimony. (Id.) Opposer’s market
share for layette in 2000 was 28% in its target market
(i.e., all retail trade channels except for discount stores
such as K-Mart), which is five times the share of its
nearest competitor. (Id. at 56-57.)32 Opposer’s layette
sales have been increasing and are expected to continue
increasing at 9% to 10% per year. (Id. at 67-68.)
Opposer’s layette items are prominently featured in
opposer’s advertising and promotional activities, upon which
opposer spends approximately $10 million annually. (Id. at
57-67.) Additionally, opposer’s wholesale shipments of
children’s underwear (ages eighteen months to twelve years
old) totaled approximately $3 million in 2000, and its
32 When the discount stores are factored in, opposer’s market
share is smaller than 28%, but is still the largest share in the
market in terms of both dollars and units sold. (Calkins 4/17/01
Depo. at 74-76.)
Opposition Nos. 91111355, 91111375, 91114616 and 91115259
47
wholesale shipments of diaper bags in that year totaled
approximately $4 million. (Id. at 47, 48.)
Based on this evidence, we find that opposer’s mark is
famous as applied to its layette products, including
infants’ undergarments. The fame of opposer’s mark in the
fields of layette and infants’ and children’s sleepwear,
where opposer dominates the market, “casts a long shadow”
which, we find, extends to the “disposable diapers” involved
in the present opposition.33 See Recot Inc. v. M.C. Becton,
supra. Thus, we find that the fifth du Pont factor weighs
in opposer’s favor, and that it indeed must play a dominant
role in our likelihood of confusion analysis.
Similarity of Marks
For the reasons discussed above with respect to
Opposition No. 91111355, we find that applicant’s mark
CARTER’S WATCH THE WEAR is similar, rather than dissimilar,
to opposer’s mark CARTER’S. This is especially so given the
33 Contrary to applicant’s contention, in finding that the “long
shadow” cast by opposer’s famous mark extends to applicant’s
disposable diapers, we are not granting opposer “rights in gross”
in its mark as applied to any and all infant’s and children’s
products. Rather, we are finding that the fame of opposer’s mark
for layette (and sleepwear) is of sufficient scope that it
extends to, and must be given great weight in, our analysis of
the registrability of applicant’s mark as applied to the goods at
issue here, i.e., disposable diapers. See Recot Inc. v. M.C.
Becton, supra. The same goes for the hosiery involved in
Opposition No. 91114616 and, to a lesser extent, the toys
involved in Opposition No. 91115259. See discussion infra.
Opposition Nos. 91111355, 91111375, 91114616 and 91115259
48
fame of opposer’s mark and the resulting enhanced scope of
protection to be accorded that mark.
Similarity of Goods
The following general principles apply to our
determination of whether the “disposable diapers” identified
in applicant’s application34 are similar or dissimilar to
the layette and underwear identified in opposer’s
Registration No. 1,117,280, and to the diaper bags and
diaper covers as to which opposer has proven its priority.
It is not necessary that the respective goods be
identical or even competitive in order to support a finding
of likelihood of confusion. Rather, it is sufficient that
the goods are related in some manner, or that the
circumstances surrounding their marketing are such, that
they would be likely to be encountered by the same persons
in situations that would give rise, because of the marks
used thereon, to a mistaken belief that they originate from
or are in some way associated with the same source or that
there is an association or connection between the sources of
the respective goods. See In re Martin’s Famous Pastry
34 Applicant argues that it intends to market disposable diapers
for adults as well as for infants, and that use of its mark on
adult diapers is not likely to cause confusion vis-à-vis
opposer’s infants’ and children’s products. However, applicant’s
identification of goods is not restricted to adult diapers but
rather encompasses disposable diapers for infants and children.
Opposition Nos. 91111355, 91111375, 91114616 and 91115259
49
Shoppe, Inc., 748 F.2d 1565, 223 USPQ 1289 (Fed. Cir. 1984);
In re Melville Corp., 18 USPQ2d 1386 (TTAB 1991); In re
International Telephone & Telegraph Corp., 197 USPQ2d 910
(TTAB 1978).
We find that the “disposable diapers” identified in
applicant’s application are similar and related to the
“underwear” identified in opposer’s registration. Ms.
Calkins testified that diapers are related to underwear
because “they basically have the same end use, but for
different age and sized children. Diapers are really
underwear for babies.” (Calkins 4/17/01 Depo. at 47.) We
agree. Until they are toilet-trained, babies and young
children wear diapers under their clothes. Additionally, we
find that disposable diapers are related to the other
layette items identified in opposer’s registration
(especially the various undergarments for babies such as
undershirts and bodysuits) which are worn in conjunction
with diapers. (Id. at 42.) It is not dispositive that
opposer’s underwear and layette items are made of fabric
while applicant’s disposable diapers are made of paper, or
that layette and underwear do not serve the utilitarian
absorbent function of diapers and thus are not
interchangeable with diapers, as applicant argues. Layette
and disposable diapers are complementary products in which
babies are dressed.
Opposition Nos. 91111355, 91111375, 91114616 and 91115259
50
We also find that applicant’s disposable diapers are
related to opposer’s diaper covers and diaper bags. The
complementary relationship of these products is apparent
from their very names. Diaper covers are “fabric, little
panties that you wear over a diaper to cover it. And they
typically coordinate back to an outfit.” (Id. at 49.)
Applicant argues that diaper covers and disposable diapers
are not related because diaper covers cannot be worn in lieu
of diapers, and because diaper covers are apparel items
rather than purely functional items like diapers. Again,
however, the fact that the products are not interchangeable
or identical is not dispositive. These goods clearly are
complementary; diaper covers are worn over diapers.
Likewise, opposer’s diaper bags clearly are complementary
and related to applicant’s disposable diapers. Diaper bags
“are bags that parents carry to put diapers in, to put baby
wipes, to put baby lotions. So it’s really a bag to carry
diapers when you’re out with your baby.” (Id. at 47.)
Contrary to applicant’s argument, the fact that diaper bags
can be used to carry items in addition to diapers (such as
layette items, wipes, lotions, formula, etc.) does not
negate or detract from the obvious complementary
relationship between diapers and diaper bags.
Applicant’s president, Mr. Moskowitz, testified that he
regards disposable diapers as being within applicant’s
Opposition Nos. 91111355, 91111375, 91114616 and 91115259
51
natural zone of expansion. (Moskowitz 8/12/99 Depo. at 85-
86.) If it is natural for a company like applicant, which
traditionally has focused on children’s workwear, to expand
into the disposable diaper field, then a fortiori it would
be natural for purchasers to assume that a company like
opposer, which is famous for its layette and other infant
clothing items, also would sell disposable diapers. That
opposer has not yet done so is not dispositive, for purposes
of the second du Pont factor. Furthermore, Ms. Calkins
testified that at least one disposable diaper maker
(Pampers) is expanding into the children’s apparel field and
will be using the PAMPERS brand on such goods. (Calkins
4/17/01 Depo. at 42.) Mr. Moskowitz testified that he is
aware of another manufacturer (Braha) which produces both
disposable diapers and children’s clothing. (Moskowitz
8/12/99 Depo. at 83-84.)
Based on the evidence discussed above, we find that the
“disposable diapers” identified in applicant’s application
are sufficiently similar and related to the layette and
underwear items identified in opposer’s Registration No.
1,117,280, as well as to opposer’s diaper covers and diaper
bags, that confusion is likely to result if these goods are
marketed under confusingly similar marks. We have carefully
considered applicant’s arguments to the contrary (including
those not specifically discussed herein), but we are not
Opposition Nos. 91111355, 91111375, 91114616 and 91115259
52
persuaded. The second du Pont factor weighs in opposer’s
favor.
Trade Channels and Classes of Purchasers
Applicant’s identification of goods includes no
restrictions or limitations as to trade channels or classes
of purchasers, so we must presume that applicant’s
disposable diapers will be marketed in all normal trade
channels and to all normal classes of purchasers for such
goods. See Canadian Imperial Bank of Commerce v. Wells
Fargo Bank, N.A., supra. Likewise, opposer’s registration
includes no such restrictions or limitations as to the
layette and underwear items identified therein. Opposer
currently markets those items, as well as its diaper bags
and diaper covers, in department stores, national chain
stores, outlet stores, off-price stores and specialty stores.
(Calkins 4/17/01 Depo. at 51-53.)
The record shows that there is an overlap in the trade
channels for disposable diapers, on one hand, and for
layette, infants’ and children’s underwear, diaper bags and
diaper covers, on the other. Ms. Calkins testified that
disposable diapers and opposer’s CARTER’S-branded layette
and other infant products are available at both specialty
store chains such as Babies R Us and Buy Buy Baby, as well
as at off-price stores such as Sam’s Club and Costco. (Id.
Opposition Nos. 91111355, 91111375, 91114616 and 91115259
53
at 53-54.) Mr. Moskowitz acknowledged in his discovery
deposition that disposable diapers and children’s apparel
both can be purchased at discount stores such as Target,
Wal-Mart and K-Mart. (Moskowitz 8/12/99 Depo. at 87-89.)35
Although opposer does not currently market its CARTER’S-
branded layette and underwear products in these discount
store trade channels, they are among the normal trade
channels for such goods and thus are encompassed within the
scope of opposer’s registration for such goods.36
We also find that the normal classes of purchasers of
disposable diapers obviously include parents and others who
are responsible for the care of infants. These also are
among the normal classes of purchasers of opposer’s layette
items, underwear, diaper bags and diaper covers. (Calkins
4/17/01 Depo. at 15, 67.)
Applicant contends that disposable diapers are sold in
some trade channels (such as supermarkets and drugstores) in
which layette and apparel such as opposer’s are not sold,
35 Applicant asserts in its brief that disposable diapers and
children’s and infants’ apparel would be sold in different aisles
or sections of these stores, but there is no testimony or other
evidence in the record to support that assertion. Even if there
were such evidence, the fact that the goods might be sold in
different sections of stores is not dispositive, especially given
the complementary nature of the products and the fame of
opposer’s CARTER’S mark.
36 In discount stores such as Target, opposer markets lines of
layette and children’s apparel under the marks TYKES and BABY
TYKES. These products bear hangtags with the wording “a division
of Carter’s.” (Calkins 4/17/01 Depo. at 31-32, 71 and 74.)
Opposition Nos. 91111355, 91111375, 91114616 and 91115259
54
and that layette and apparel are sold in some trade channels
(such as department stores) in which disposable diapers are
not sold. Assuming that is the case, however, it is not
dispositive. Even if the respective trade channels do not
overlap exactly and in all respects, they still overlap in
the manners discussed above. Likewise, as discussed above
in connection with Opposition No. 91111355, it is not
dispositive that approximately 40% of opposer’s sales are
made through opposer’s own outlet stores, a trade channel in
which applicant’s goods presumably would not travel.
Based on the evidence discussed above, we find that the
trade channels for the parties’ respective goods are
overlapping, that the classes of purchasers for such goods
likewise are overlapping, and that the third du Pont
evidentiary factor accordingly weighs in opposer’s favor.
Purchasing Conditions
We find that the goods at issue here are ordinary
consumer items, which are purchased by ordinary consumers
with no more than ordinary care. Opposer’s layette items
often are sold in multipacks which retail for between six
and ten dollars; special gift items may retail for twenty
dollars. (Calkins 4/17/01 Depo. at 70-71.) Applicant
argues that disposable diapers often are purchased in bulk,
and that they therefore can be among the more expensive
Opposition Nos. 91111355, 91111375, 91114616 and 91115259
55
items on the purchaser’s grocery list. However, applicant
has presented no evidence to support these assertions.
Instead, we find that disposable diapers are normal consumer
goods, and that there is nothing about their cost or the
manner in which they are marketed that would cause
purchasers to use more than ordinary care in purchasing
them. The fourth du Pont factor accordingly weighs in
opposer’s favor, or is neutral at best.37
Similar Marks in Use on Similar Goods
For the reasons discussed supra in connection with
Opposition No. 91111355, we find that there is no evidence
of any similar marks in use on similar goods. The sixth du
Pont factor therefore weighs in opposer’s favor in the
present opposition.
Actual Confusion
For the reasons discussed supra in connection with
Opposition No. 91111355, we find that there is no evidence
of any instances of actual confusion between opposer’s mark
and applicant’s mark as applied to the goods involved in
37 Also, for the reasons discussed above in connection with
Opposition No. 91111355, the fact that opposer’s layette and
underwear, when sold in department stores, may be displayed with
in-store fixturing featuring opposer’s goods does not weigh
against opposer under either the third or the fourth du Pont
factor. See supra at footnote 25.
Opposition Nos. 91111355, 91111375, 91114616 and 91115259
56
this opposition proceeding, but neither is there any
evidence from which we could conclude that there has been
any opportunity for actual confusion to have arisen. The
seventh and eighth du Pont evidentiary factors therefore are
neutral in this case.
House Mark
For the reasons discussed supra in connection with
Opposition No. 91111355, we find that opposer uses its
CARTER’S mark as a house mark for a wide variety of products
relating to children and infants, and that the ninth du Pont
factor therefore weighs in opposer’s favor in this case.
Extent of Potential Confusion
Given the fame of opposer’s mark and the fact that
opposer sells 40 million units of layette and other infant
products annually, and given the relationship between these
goods of opposer’s and disposable diapers, including their
overlapping trade channels and classes of purchasers, we
find that the extent of potential confusion which would
result from applicant’s use of a confusingly similar mark is
substantial, not de minimis. The twelfth du Pont factor
Opposition Nos. 91111355, 91111375, 91114616 and 91115259
57
therefore weighs in opposer’s favor in this case.
Conclusion
For the reasons discussed above, we find that the
evidence of record pertaining to the du Pont factors leads
inevitably to the conclusion that confusion is likely to
result from applicant’s use of its mark on the “disposable
diapers” identified in the application. Because opposer
also has established its standing and either its priority of
use or its ownership of a registration, opposer’s Section
2(d) ground of opposition in Opposition No. 91111375 is
sustained.
OPPOSITION NO. 91114616
We turn next to opposer’s Section 2(d) ground of
opposition to applicant’s application Serial No. 75454768,
by which applicant seeks to register the mark CARTER’S WATCH
THE WEAR (in typed form) for “hosiery.”
STANDING
Opposer has made of record a status and title copy of
its pleaded Registration No. 1,117,280, which is of the mark
CARTER’S (in typed form) for goods which include “clothing
for infants and children, namely, … booties … and slippers.”
Opposer also has proven that it has used its CARTER’S mark
Opposition Nos. 91111355, 91111375, 91114616 and 91115259
58
on children’s socks and hosiery since 1991. (Calkins
7/31/01 Depo. at 26-27.) In view thereof, and because
opposer has asserted a non-frivolous likelihood of confusion
claim, we find that opposer has established its standing to
oppose registration of applicant’s mark in Opposition No.
91114616. See, e.g., Lipton Industries, Inc. v. Ralston
Purina Company, supra.
PRIORITY
Opposer has proven the status and title of its pleaded
Registration No. 1,117,280, so priority is not at issue with
respect to the infants’ and children’s “booties” and
“slippers” included in that registration’s identification of
goods. King Candy Co. v. Eunice King’s Kitchen, Inc., supra.
Opposer also has proven that it has used its CARTER’S mark
on children’s socks and hosiery since 1991. (Calkins
7/31/01 Depo. at 26-27.) The earliest date on which
applicant may rely for priority purposes is the March 28,
1998 filing date of its intent-to-use application.38
Therefore, we find that priority is not an issue with
respect to opposer’s infants’ and children’s booties and
slippers, and that opposer has established its priority of
38 Applicant’s earliest wholesale shipment of hosiery occurred in
August 1998. (Moskowitz 3/16/00 Depo. at 49-50.)
Opposition Nos. 91111355, 91111375, 91114616 and 91115259
59
use with respect to its other types of children’s socks and
hosiery.39
LIKELIHOOD OF CONFUSION
Fame of Opposer’s Mark
The evidence establishes that opposer had approximately
$9 million in wholesale sales of hosiery in the year 2000,
which translates to approximately $15-$16 million in retail
sales, a figure which is consistent with sales in previous
years. (Calkins 7/31/01 Depo. at 28-29.) These sales
figures show that opposer’s use of the mark has been
significant. Moreover, the overall fame of opposer’s mark
in the fields of layette and infants’ and children’s
sleepwear, where opposer dominates the market, “casts a long
shadow” which, we find, extends to the hosiery products
involved in the present opposition. See Recot Inc. v. M.C.
39 CARTER’S is a surname, and therefore opposer, to demonstrate
priority with respect to its common law uses, must show that
CARTER’S acquired distinctiveness prior to the filing date of
applicant’s application. Because opposer’s use of its mark on
children’s hosiery commenced at least five years prior to
applicant’s application filing date, and in view of the obvious
relationship between children’s hosiery and the other children’s
apparel items identified in opposer’s registrations, we find that
opposer’s CARTER’S mark, as applied to children’s hosiery (and to
the extent that opposer’s registrations do not encompass such
hosiery), had acquired distinctiveness prior to applicant’s
application filing date, and that opposer therefore has priority
of secondary meaning in the CARTER’S designation as applied to
children’s hosiery, as well as priority of use on such goods.
See, e.g., Perma Ceram Enterprises, Inc. v. Preco Industries,
Ltd., supra; cf. Trademark Act Section 2(f), 15 U.S.C. §1052(f);
Trademark Rule 2.41(b), 37 C.F.R. §2.41(b).
Opposition Nos. 91111355, 91111375, 91114616 and 91115259
60
Becton, supra. Thus, we find that the fifth du Pont factor
weighs in opposer’s favor, and that it indeed must play a
dominant role in our likelihood of confusion analysis.
Similarity of Marks
For the reasons discussed at length in connection with
Opposition No. 91111355, supra, we find that opposer’s
CARTER’S mark is similar, rather than dissimilar, to
applicant’s CARTER’S WATCH THE WEAR mark. This is
especially so in view of the fame of opposer’s mark, see
Kenner Parker Toys, supra, and the legal identity of the
parties’ goods (discussed infra), which decreases the degree
of similarity between the marks which is necessary to
support a finding of likelihood of confusion. See Century
21 Real Estate Corp., supra.
Similarity of Goods
Applicant’s goods are identified in the application as
“hosiery,” without further limitation or restriction; the
identification thus encompasses all types of hosiery,
including infants’ and children’s hosiery. See Canadian
Imperial Bank of Commerce v. Wells Fargo Bank, N.A., supra.
We find that applicant’s hosiery products are complementary
or alternatives for, and thus related to, the infants’ and
children’s booties and slippers identified in opposer’s
Opposition Nos. 91111355, 91111375, 91114616 and 91115259
61
registration.40 Opposer also has proven that it is the
prior user of its CARTER’S mark on infants’ and children’s
hosiery, which Ms. Calkins identified as “primarily socks,
tights and booty [sic – bootie] socks.” (Calkins 7/31/01
Depo. at 26-27.) These goods obviously are encompassed
within and legally identical to the “hosiery” identified in
applicant’s application. Finally, we also find that
applicant’s “hosiery” is complementary and related to
opposer’s layette and sleepwear items generally, and that
the fame of opposer’s mark as applied to those products is
such that purchasers are likely to assume that hosiery sold
under applicant’s similar mark originates from or is
sponsored by opposer.
For each of these reasons, we find that the second du
Pont factor weighs in opposer’s favor in this case.
Trade Channels and Classes of Purchasers
Applicant’s identification of goods includes no
restrictions or limitations as to trade channels or classes
of purchasers, so we must presume that applicant’s “hosiery”
is or will be marketed in all normal trade channels and to
40 Applicant has argued that the “booties” identified in opposer’s
registration are “shoes” rather than “hosiery.” Opposer responds
by arguing that booties are socks worn by infants. The parties
have submitted dictionary definitions supporting both meanings of
the term. Whether they are shoes or socks, or both, we find that
“booties” are footwear for infants, and that they therefore are
related to infants’ hosiery.
Opposition Nos. 91111355, 91111375, 91114616 and 91115259
62
all normal classes of purchasers for such goods. See
Canadian Imperial Bank of Commerce, supra. Opposer markets
its infants’ and children’s hosiery products in department
stores, national chain stores, children’s apparel specialty
stores and off-price stores. (Calkins 7/31/01 Depo. at 14,
28.) These trade channels are among the normal trade
channels for such goods, and thus they are legally identical
to the trade channels in which applicant’s goods are
presumed to move. Likewise, opposer’s other hosiery items
are marketed to mothers, grandmothers and gift-givers
(Calkins 4/17/01 Depo. at 16-17), who are among the normal
classes of purchasers for such goods and who thus must be
presumed to be the among the classes of purchasers of
applicant’s hosiery as well.
For these reasons, we find that applicants’ goods and
opposer’s goods are marketed in the same trade channels and
to the same classes of purchasers.41 The third du Pont
factor weighs in opposer’s favor.
Purchasing Conditions
Opposer’s hosiery items retail for less than ten
dollars on average. (Calkins 7/31/01 Depo. at 27.) The
41 For the reasons discussed above in connection with Opposition
No. 91111355, it is not dispositive that opposer also sells its
goods in its own outlet stores. The overlap in remaining trade
Opposition Nos. 91111355, 91111375, 91114616 and 91115259
63
average retail prices for applicant’s hosiery items are
$1.99 for one pair, $3.99 for three pairs and $5.99 for six
pairs. (Applicant’s answer to opposer’s interrogatory no.
1(c); Exhibit E to opposer’s notice of reliance.) We
therefore find that the goods at issue here are ordinary
consumer items, which are purchased by ordinary consumers
with no more than ordinary care. The fourth du Pont factor
accordingly weighs in opposer’s favor, or is neutral at
best.42
Similar Marks in Use on Similar Goods
For the reasons discussed supra in connection with
Opposition No. 91111355, we find that there is no evidence
of any similar marks in use on similar goods. The sixth du
Pont factor therefore weighs in opposer’s favor in the
present opposition.
Actual Confusion
For the reasons discussed supra in connection with
Opposition No. 91111355, we find that there is no evidence
channels supports a finding of likelihood of confusion under the
third du Pont factor.
42 For the reasons discussed above in connection with Opposition
No. 91111355, the fact that opposer’s hosiery items, when sold in
department stores, may be displayed with in-store fixturing
featuring opposer’s goods does not weigh against opposer under
either the third or the fourth du Pont factor. See supra at
footnote 25.
Opposition Nos. 91111355, 91111375, 91114616 and 91115259
64
of any instances of actual confusion between opposer’s mark
and applicant’s mark as applied to hosiery. However, the
only evidence of record as to applicant’s actual sales of
hosiery shows that applicant sold approximately $120,000 at
wholesale in 1998. (Moskowitz 3/16/2000 Discovery Depo. at
68.) We cannot conclude from this evidence that there has
been any significant opportunity for actual confusion to
have occurred. The seventh and eighth du Pont evidentiary
factors therefore are neutral in this case.
House Mark
For the reasons discussed supra in connection with
Opposition No. 91111355, we find that opposer uses its
CARTER’S mark as a house mark for a wide variety of products
relating to children and infants, and that the ninth du Pont
factor therefore weighs in opposer’s favor in this case.
Extent of Potential Confusion
Given the fame of opposer’s mark and the volume of
opposer’s hosiery sales, and given the legally identical
nature of the parties’ goods, trade channels and classes of
purchasers, we find that the extent of potential confusion
which would result from applicant’s use of a confusingly
similar mark is substantial, not de minimis. The twelfth du
Opposition Nos. 91111355, 91111375, 91114616 and 91115259
65
Pont factor therefore weighs in opposer’s favor in this
case.
Conclusion
For the reasons discussed above, we find that the
evidence of record pertaining to the du Pont factors leads
inevitably to the conclusion that confusion is likely to
result from applicant’s use of its mark on the “hosiery”
identified in the application. Because opposer also has
established its standing, and its ownership of a
registration and its priority of use, opposer’s Section 2(d)
ground of opposition in Opposition No. 91114616 is
sustained.
OPPOSITION NO. 91115259
We turn finally to opposer’s Section 2(d) ground of
opposition to applicant’s application Serial No. 75499446,
by which applicant seeks to register the mark CARTER’S WATCH
THE WEAR (in typed form) for “toys, namely board games, card
games, stuffed toy animals, dolls, jigsaw puzzles.”
STANDING
Opposer has made of record a status and title copy of
its pleaded Registration No. 1,830,836, which is of the mark
CARTER’S (in typed form) for goods which include “children’s
Opposition Nos. 91111355, 91111375, 91114616 and 91115259
66
toys and playthings, namely, rattles [and] dolls.”
(Opposer’s notice of reliance, Exhibit C.) Opposer also has
proven that, since 1992, it has licensed use of its CARTER’S
mark on soft plush toys, including stuffed animals.
(Calkins 7/31/01 Depo. at 30-31.) In view thereof, and
because opposer has asserted a non-frivolous likelihood of
confusion claim, we find that opposer has established its
standing to oppose registration of applicant’s mark in
Opposition No. 91115259. See, e.g., Lipton Industries, Inc.
v. Ralston Purina Company, supra.
PRIORITY
Opposer has proven the status and title of its pleaded
Registration No. 1,830,836, so priority is not at issue with
respect to the “children’s toys and playthings, namely,
rattles [and] dolls” identified in that registration. King
Candy Co. v. Eunice King’s Kitchen, Inc., supra. Opposer
also has proven that it has used its CARTER’S mark on soft
plush toys, including stuffed animals, since 1992. (Calkins
7/31/01 Depo. at 29-31.) Applicant has not used its mark on
toys (answer to interrogatory no. 1 in 91115259; Exhibit F
to opposer’s notice of reliance), so the earliest date on
which applicant may rely for priority purposes is the June
10, 1998 filing date of its intent-to-use application.
Opposition Nos. 91111355, 91111375, 91114616 and 91115259
67
Therefore, we find that priority is not an issue with
respect to the “children’s toys and playthings, namely,
rattles [and] dolls” identified in opposer’s registration,
and that opposer has established its priority of use with
respect to soft plush toys including stuffed toy animals.43
LIKELIHOOD OF CONFUSION
Fame of Opposer’s Mark
Opposer’s wholesale sales of CARTER’S-branded toys
totaled approximately $12 million in the year 2000, which
translates to between $18 and $20 million in retail sales.
(Calkins 7/31/01 Depo. at 32-33.)44 These sales figures
43 CARTER’S is a surname, and therefore opposer, to demonstrate
priority with respect to its common law uses, must show that
CARTER’S acquired distinctiveness prior to the filing date of
applicant’s application. Because opposer’s use of its mark on
soft plush stuffed animal toys commenced at least five years
prior to applicant’s application filing date, and in view of the
obvious relationship between those goods and the “dolls”
identified in opposer’s registration, we find that opposer’s
CARTER’S mark, as applied to soft plush stuffed animal toys, had
acquired distinctiveness prior to applicant’s application filing
date, and that opposer therefore has priority of secondary
meaning in the CARTER’S designation as applied to soft plush
stuffed animal toys, as well as priority of use on such goods.
See, e.g., Perma Ceram Enterprises, Inc. v. Preco Industries,
Ltd., supra; cf. Trademark Act Section 2(f), 15 U.S.C. §1052(f);
Trademark Rule 2.41(b), 37 C.F.R. §2.41(b).
44 Applicant argues that opposer’s sales of educational toys (as
opposed to plush toys) should not be included in a determination
of opposer’s total sales because opposer did not commence use of
its mark on such toys until 1999, subsequent to the filing date
of applicant’s application. We disagree. Regardless of when
opposer began use of its mark on particular toys, its sales of
those toys contribute to the total volume of opposer’s sales of
toys, a figure which is probative evidence in our determination
of the current fame of opposer’s mark in the marketplace. It is
Opposition Nos. 91111355, 91111375, 91114616 and 91115259
68
must be viewed in the context of the overall fame of
opposer’s mark in the fields of layette and infants’ and
children’s sleepwear, where opposer dominates the market.
See Recot v. M.C. Becton, supra.
Thus, in this opposition involving toys, we find that
the fame of opposer’s mark weighs in opposer’s favor, albeit
to a somewhat lesser extent than it does in the other three
consolidated oppositions.
Similarity of Marks
For the reasons discussed at length in connection with
Opposition No. 91111355, supra, we find that opposer’s
CARTER’S mark is similar, rather than dissimilar, to
applicant’s CARTER’S WATCH THE WEAR mark. This is
especially so in view of the legal identity of the parties’
“dolls” and “stuffed toy animals” (discussed infra), which
decreases the degree of similarity between the marks which
is necessary to support a finding of likelihood of confusion.
See Century 21 Real Estate Corp., supra.
Similarity of Goods
We find that the “dolls” identified in applicant’s
application are legally identical to the “dolls” identified
in opposer’s registration, and that the “stuffed toy
that current fame of the mark which is relevant to our likelihood
Opposition Nos. 91111355, 91111375, 91114616 and 91115259
69
animals” identified in applicant’s application are legally
identical to the stuffed toy animals as to which opposer has
proven prior use of its mark. In view of the legally
identical nature of these particular items, we need not
decide whether the other Class 28 items identified in
applicant’s application are related to any of opposer’s
goods, although we note that applicant itself contends that
such items are “an obvious accessory for children” and that
they therefore are within the natural zone of expansion for
a company marketing children’s clothing. (Applicant’s brief
at 1.)
The second du Pont factor weighs in opposer’s favor.
Trade Channels and Classes of Purchasers
Applicant’s identification of goods includes no
restrictions or limitations as to trade channels or classes
of purchasers, so we must presume that applicant’s goods
will be marketed in all normal trade channels and to all
normal classes of purchasers for such goods. See Canadian
Imperial Bank of Commerce, supra. In view thereof, and in
view of the legally identical nature of the parties’
respective “dolls” and “stuffed toy animals,” we find that
the trade channels for such items, and the classes of
purchasers for such items, are overlapping to a large
of confusion analysis, under the fifth du Pont factor.
Opposition Nos. 91111355, 91111375, 91114616 and 91115259
70
extent.45 The third du Pont factor weighs in opposer’s
favor.
Purchasing Conditions
Opposer’s toys, including its dolls and stuffed
animals, retail for under twenty dollars. (Calkins 7/31/01
Depo. at 30, 32.) The items identified in applicant’s
application likewise are inexpensive. We therefore find
that the goods at issue here are ordinary consumer items,
which are purchased by ordinary consumers with no more than
ordinary care. The fourth du Pont factor accordingly weighs
in opposer’s favor, or is neutral at best.46
Similar Marks in Use on Similar Goods
For the reasons discussed supra in connection with
Opposition No. 91111355, we find that there is no evidence
of any similar marks in use on similar goods. The sixth du
Pont factor therefore weighs in opposer’s favor in the
present opposition.
45 As discussed above in connection with the other oppositions,
sixty percent of opposer’s toys are sold in retail channels other
than opposer’s own outlet stores.
46 For the reasons discussed above in connection with Opposition
No. 91111355, the fact that opposer’s toys, including its dolls
and stuffed animals, when sold in department stores, may be
displayed with in-store fixturing featuring opposer’s goods does
not weigh against opposer under either the third or the fourth du
Pont factor. See supra at footnote 25.
Opposition Nos. 91111355, 91111375, 91114616 and 91115259
71
Actual Confusion
For the reasons discussed supra in connection with
Opposition No. 91111355, we find that there is no evidence
of any instances of actual confusion between opposer’s mark
and applicant’s mark as applied to the goods involved in
this opposition proceeding, but neither is there any
evidence from which we could conclude that there has been
any opportunity for actual confusion to have arisen.
Applicant has not used its mark on toys. The seventh and
eighth du Pont evidentiary factors therefore are neutral in
this case.
House Mark
For the reasons discussed supra in connection with
Opposition No. 91111355, we find that opposer uses its
CARTER’S mark as a house mark for a wide variety of products
relating to children and infants, and that the ninth du Pont
factor therefore weighs in opposer’s favor in this case.
Extent of Potential Confusion
Given the fame of opposer’s mark and the volume of
opposer’s toy sales, and given that the parties’ goods are
legally identical in part, with overlapping trade channels
and classes of purchasers, we find that the extent of
Opposition Nos. 91111355, 91111375, 91114616 and 91115259
72
potential confusion which would result from applicant’s use
of a confusingly similar mark is substantial, not de
minimis. The twelfth du Pont factor therefore weighs in
opposer’s favor in this case.
Conclusion
For the reasons discussed above, we find that the
evidence of record pertaining to the du Pont factors leads
inevitably to the conclusion that confusion is likely to
result from applicant’s use of its mark on at least some of
the items identified in the application. Because opposer
also has established its standing and either its priority of
use or its ownership of a registration, opposer’s Section
2(d) ground of opposition in Opposition No. 91115259 is
sustained.
DECISION: Opposer’s oppositions to registration of
applicant’s mark in each of these consolidated proceedings,
i.e., Opposition Nos. 91111355, 91111375,47 91114616 and
91115259, are sustained.
47 Application Serial No. 75326378, involved in Opposition No.
91111375, shall proceed to issuance of a notice of allowance as
to the unopposed Class 3 and Class 18 goods identified therein.