TriStar Pictures, Inc.v.Christian St. FortDownload PDFTrademark Trial and Appeal BoardJul 13, 202191239967 (T.T.A.B. Jul. 13, 2021) Copy Citation Mailed: July 13, 2021 UNITED STATES PATENT AND TRADEMARK OFFICE _____ Trademark Trial and Appeal Board _____ TriStar Pictures, Inc. v. Christian St. Fort ___ Opposition No. 91239967 ___ Richard S. Mandel, Lynn S. Fruchter and Joelle A. Milov of Cowan, Liebowitz & Latman, P.C. for Opposer TriStar Pictures, Inc. Robert Varkonyi of Zabrebelsky Law P.A. for Applicant Christian St. Fort. ______ Before Kuczma, Adlin and Hudis, Administrative Trademark Judges. Opinion by Adlin, Administrative Trademark Judge: Applicant Christian St. Fort seeks registration of JU’MAÑJI, in standard characters, for “clothing, namely t-shirts” in International Class 25.1 In its amended notice of opposition, Opposer TriStar Pictures, Inc., a movie studio, alleges prior use of JUMANJI in connection with a film “franchise,” including associated merchandise, 1 Application Serial No. 87581011, filed August 23, 2017 under Section 1(b) of the Trademark Act, 15 U.S.C. § 1051(b), based on Applicant’s alleged bona fide intent to use the mark in commerce. The application was later amended to allege first use dates of October 12, 2017. This Opinion is Not a Precedent of the TTAB Opposition No. 91239967 2 and pleads ownership of several registrations of the mark, in typed/standard character form, for: equipment sold as a unit for playing a parlor type game, in International Class 28;2 production of an animated television series, in International Class 41;3 board games, jigsaw puzzles, battery-operated, hand-held and table-top diskette segment LCD games with and without sound effects, in International Class 28;4 toys, games and playthings, namely, pvc vinyl toy figures; dolls; stuffed toys; plush toys; action figures; board games; trading cards; jigsaw puzzles; plastic interlocking toy building block sets; plastic figures for interlocking toy building block sets; collectible toy figures; squeeze toys; hand held units for playing electronic games, in International Class 28;5 downloadable video game software; dvds featuring motion pictures in the field of action, adventure, comedy and fantasy; video game discs; computer game software for use with personal computers, computer software for betting, gaming and gambling services, smartphone software applications for playing games; downloadable sound, image, and music files containing motion pictures; compact discs featuring movie soundtracks; downloadable movie soundtracks; downloadable e-books in the field of action, adventure, comedy and fantasy motion pictures, in International Class 9;6 posters; stickers; pen and pencil holders; trading cards, 2 Registration No. 2041007, issued February 25, 1997 (the “’007 Registration”); renewed. 3 Registration No. 2154633, issued May 5, 1998 (the “’633 Registration”); renewed. 4 Registration No. 2457533, issued June 5, 2001 (the “’533 Registration”); renewed. 5 Registration No. 5634194, issued December 18, 2018 (the “’194 Registration”). 6 Registration No. 5657119, issued January 15, 2019 (the “’119 Registration”). Opposition No. 91239967 3 other than for games; hardbound and paperback books in the field of action, adventure, comedy and fantasy; children's activity books; children's story books; notepads; greeting cards; diaries, in International Class 16;7 and entertainment services in the nature of the production and distribution of motion pictures and television series; entertainment services, namely, providing on-line computer games; providing entertainment content in the nature of audiovisual works, motion pictures, television programs, trailers, music and video games via an interactive global computer network, in International Class 41.8 As grounds for opposition, Opposer alleges that: use of Applicant’s mark would be likely to cause confusion with, and dilute, Opposer’s mark, and falsely suggest a connection with Opposer; Applicant did not use his mark in interstate commerce prior to filing his amendment to allege use; and Applicant committed fraud by falsely claiming bona fide use of his mark with the intent to deceive the USPTO.9 In his answer, Applicant admits that he is not associated with Opposer and that Opposer “is listed as the owner” of its pleaded registrations, but otherwise denies the salient allegations in the amended notice of opposition. Applicant asserts as an affirmative defense that Opposer is guilty of “unclean hands,” but he did not pursue or prove the defense at trial and it is accordingly waived. Miller v. Miller, 105 7 Registration No. 5752227, issued during this proceeding on May 14, 2019 (the “’227 Registration”). This registration issued from Applicant’s pleaded application Serial No. 87642798. 8 Registration No. 5795158, issued during this proceeding on July 2, 2019 (the “’158 Registration”). This registration issued from Applicant’s pleaded application Serial No. 87642026. 9 Opposer also pleaded ownership of application Serial No. 87642032 to register the same mark for clothing, including “shirts.” Opposition No. 91239967 4 USPQ2d 1615, 1616 n.3 (TTAB 2013); Baroness Small Estates Inc. v. Am. Wine Trade Inc., 104 USPQ2d 1224, 1225 n.2 (TTAB 2012). In addition, Applicant filed counterclaims to cancel Opposer’s pleaded ’533 and ’007 Registrations on the ground of fraud, alleging that Opposer submitted knowingly false Statements of Use to maintain those registrations with the intent to deceive the USPTO. In its answer, Opposer denies the salient allegations in Applicant’s counterclaims. 6 TTABVUE.10 We deny Applicant’s counterclaims and sustain the opposition on Opposer’s Section 2(d) claim, and decline to reach Opposer’s other claims. Multisorb Tech., Inc. v. Pactiv Corp., 109 USPQ2d 1170, 1171 (TTAB 2013). I. The Record and Evidentiary Objections Some of Applicant’s trial evidence was stricken, 62 TTABVUE, pursuant to Opposer’s motion to strike, 55 TTABVUE, but thereafter the parties nevertheless continued to battle over the stricken evidence and other evidence, through trial. Our description of the record in subsection I(B) below reflects the interlocutory ruling on Opposer’s motion to strike, as well as Opposer’s closely related objection to Applicant’s testimony affidavits, discussed in subsection I(A) below. 10 In accepting Applicant’s answer to the amended notice of opposition, the Board ordered that “[t]he counterclaim that Applicant incorporated into its original answer, 4 TTABVUE 5- 9, and Opposer’s answer thereto, 6 TTABVUE, also remain operative.” 18 TTABVUE. Citations to the record reference TTABVUE, the Board’s online docketing system. The number preceding “TTABVUE” corresponds to the docket entry number(s), and any number(s) following “TTABVUE” refer to the electronic page number(s) of the docket entry where the cited materials appear. Opposition No. 91239967 5 A. Objections and Motion to Strike During his trial period, Applicant filed affidavits from some of his alleged customers, 42 TTABVUE, but the affidavits were stricken because they were executed prior to Applicant’s testimony period. 62 TTABVUE. Applicant was given until July 8, 2020 “to submit newly executed customer testimony affidavits” id. at 4, but Applicant did not meet the extended deadline, filing them late on August 6, 2020. 66 TTABVUE. Therefore, Opposer’s objection to these affidavits, 69 TTABVUE 55- 59, including Ms. Blackwood’s affidavit, is sustained. Applicant argues that the premature customer affidavits he originally filed, 42 TTABVUE, should nevertheless be considered because Opposer questioned Rachel Garcia about them during her testimony deposition, which was taken before the affidavits were stricken. 53 TTABVUE 33-39, 53-70. Applicant is mistaken. Applicant could not submit the affidavits through the “front door” because they were executed prematurely, and cannot submit the affidavits through the “back door” via the Garcia deposition for the same reason (among others) − they still bear the same signature dates, which are still prior to the opening of Applicant’s testimony period. This is why they were stricken in the first place. Robinson v. Hot Grabba Leaf, LLC, 2019 USPQ2d 149089 at * 3-4 (TTAB 2019). B. The Record With the exclusion of the customer affidavits, the record consists of the pleadings and, by operation of Trademark Rule 2.122(b), 37 C.F.R. § 2.122(b), the files of Applicant’s involved application, as well as Opposer’s pleaded registrations that are subject to Applicant’s counterclaims. In addition, Opposer introduced: Opposition No. 91239967 6 First Notice of Reliance (“Opp. NOR 1”) on its pleaded registrations and applications. 19 TTABVUE. Second NOR (“Opp. NOR 2”) on portions of its discovery depositions of Applicant, Andre Rice, Rochelle Blackwood, Arnold Celeste Jr. and Muriel Grant. 20 TTABVUE.11 Third NOR (“Opp. NOR 3”) on Applicant’s discovery responses. 21 TTABVUE. Fourth NOR (“Opp. NOR 4”) on Internet printouts. 22-23 TTABVUE. Fifth NOR (“Opp. NOR 5”) on printed publications. 24 TTABVUE. Sixth NOR (“Opp. NOR 6”) on third-party registrations. 25 TTABVUE. Seventh NOR (“Opp. NOR 7”) on portions of the file history of one of its pleaded applications. 26 TTABVUE. Eighth NOR (“Opp. NOR 8”) on Internet printouts. 29 TTABVUE. Testimony Declaration of Kevin C. Olsen, a paralegal with its counsel’s law firm, and the exhibits thereto (“Olsen Dec.”). 27-28 TTABVUE. Testimony Declaration of Jamie Stevens, Vice President, Worldwide Consumer Products for its “indirect parent” Sony Pictures Entertainment, Inc., and the exhibits thereto (“Stevens Dec.”). 30-32 TTABVUE. Rebuttal NOR (“Opp. Reb. NOR”) on one of its cancelled registrations. 67 TTABVUE. Applicant introduced: 11 The parties stipulated that Opposer may submit the Rice, Blackwood, Celeste and Grant discovery depositions “during the testimony period of this case.” 14 TTABVUE 2-3. The Board approved the stipulation. 15 TTABVUE. Opposition No. 91239967 7 First NOR (“App. NOR 1”) on additional portions of Opposer’s discovery deposition of Ms. Blackwood pursuant to Trademark Rule 2.120(k)(4). 43 TTABVUE. Second NOR (“App. NOR 2”) on additional portions of Opposer’s discovery deposition of Applicant pursuant to Trademark Rule 2.120(k)(4). 45 and 65 TTABVUE. Third NOR (“App. NOR 3”) on Opposer’s interrogatory responses. 46 TTABVUE. Fourth NOR (“App. NOR 4”) on Opposer’s responses to requests for admission. 47 TTABVUE. Fifth NOR (“App. NOR 5”) on an Internet printout. 48 TTABVUE. Sixth NOR (“App. NOR 6”) on an Internet printout. 49 TTABVUE. Seventh NOR (“App. NOR 7”) on third-party registrations. 50 TTABVUE. Eighth NOR (“App. NOR 8”) on third-party registrations. 51 TTABVUE. Testimony Deposition of Rachel Garcia and the exhibits thereto (“Garcia Tr.”). 53 TTABVUE.12 Testimony Deposition of Jordan Williams (“Williams Tr.”). 54 TTABVUE. Cross-Examination of Ms. Stevens on written questions (“Stevens Cross”). 58-60 TTABVUE.13 12 While the affidavits attached to Ms. Garcia’s deposition have been stricken, we have considered Ms. Garcia’s testimony about them. 13 Applicant also filed Opposer’s discovery deposition of Britney Gonzalez, 44 TTABVUE, but it was stricken because its introduction into evidence is neither permissible under Trademark Rule 2.120(k), nor covered by the parties’ stipulation regarding the introduction of certain other discovery depositions. 62 TTABVUE. Opposition No. 91239967 8 II. The Parties Opposer is a prominent movie studio, and part of Sony Pictures Entertainment, Inc. (“SPE”), the Motion Picture Group of which includes not just Opposer, but also Columbia Pictures and Sony Pictures Classics, among others. 30 TTABVUE 3-4 (Stevens Dec. ¶ 2). SPE’s film “franchises” include Ghostbusters and Men in Black. Applicant is a substitute teacher. 20 TTABVUE 14, 17. He also designs and sells t-shirts. Id. at 50-52. III. Relevant Facts Opposer’s mark identifies the JUMANJI films first and foremost, but is also licensed for use in connection with collateral products typically associated with movies. Applicant’s mark has only been used for t-shirts. A. Opposer’s Use of JUMANJI Opposer produced and distributed the movie JUMANJI in 1995. The film, based on a children’s book by Chris Van Allsburg, is about a man (played by Robin Williams) who has been trapped in a supernatural board game called “Jumanji” for 25 years. 30 TTABVUE 4 (Stevens Dec. ¶ 4). The movie “opened as number one at the box office and grossed in excess of $100 million in the United States.” Id. (Stevens Dec. ¶ 5). It was 1995’s 7th highest grossing movie. Id. Since its theatrical release, the movie “has remained in continuous distribution through the present via broadcast television, cable television, video on demand, download and/or streaming services, as well as DVDs and/or Blu-ray discs.” Id. at 5 and 32 TTABVUE 20-22 (Stevens Dec. ¶ 6 and Ex. B). The movie has been distributed on Netflix, Amazon, DirecTV and Comcast, among others. Id. While the dollar figures Opposition No. 91239967 9 are confidential, Opposer has earned significant revenue from selling the movie in “home entertainment formats,” and has spent a significant sum on advertising the movie for home viewing “over the past twenty years.” 30 TTABVUE 5 and 32 TTABVUE 24-26, 42 (Stevens Dec. ¶ 7 and Exs. D and O). An animated JUMANJI television series ran from 1996-1999. It was distributed and remains available on DVD, and is still available on streaming services. Id. at 6 (Stevens Dec. ¶ 9). “As is typical with successful motion pictures, Opposer also licensed the use of the JUMANJI mark at the time of the original movie’s release for use in connection with a wide variety of merchandise,” with a JUMANJI board game “of course a natural tie- in to the movie.” Id. at 7 (Stevens Dec. ¶ 10). This game “and other products in the toys and games category” have “generated millions of dollars in revenues.” Id. “Opposer also licensed the JUMANJI mark for use on such products as T-shirts, sweatshirts, golf shirts and tank tops,” other types of clothing, mugs, magnets, jars, cups, plates, bowls, bottles, lunch boxes, key chains, children’s books, trading cards, plush figures, posters and treasure boxes. Id. (Stevens Dec. ¶ 11). For example, in the mid-1990s Opposer licensed the JUMANJI mark to several different companies for a variety of clothing and clothing accessory products. 59 TTABVUE 4-18, 19-35, 70-86, 129-144. Opposer also granted licenses to use the JUMANJI mark for t-shirts and other clothing items in 2017 and 2018. Id. at 197-218, 240-316; 60 TTABVUE 26- 36, 147-161. Opposition No. 91239967 10 While some of these licenses have expired, “[n]umerous of Opposer’s licensed products associated with the original movie remained publicly available for sale” for “many years following the movie’s release, continuing for decades and into the present in some instances,” on websites including Amazon and eBay. 30 TTABVUE 7, 94-165 (Stevens Dec. ¶ 12 and Ex. G). However, it appears that at least the licensed clothing items which were offered for sale prior to 2014 and remain for sale today are being resold after their original sale years ago. Id. at 144-149. In 2002, Chris Van Allsburg published a follow-up to his JUMANJI children’s book, called ZATHURA, and Opposer adapted the book into a movie in 2005. “Although the ZATHURA movie was not technically a sequel to JUMANJI in that the characters and events in the two movies were completely distinct, press reports often referred to it as such in view of the movies’ common heritage with Van Allsburg’s books and their shared plot line of a board game that comes to life.” Id. at 8, 167-215 (Stevens Dec. ¶ 14 and Ex. H) (articles referring to “the ‘JUMANJI’ sequel ‘ZATHURA’,” or to the “sort-of” or “unofficial” sequel to JUMANJI). Opposer took advantage of this association, using the tagline “From The World of JUMANJI” in promoting ZATHURA: Opposition No. 91239967 11 Id. at 9 (Stevens Dec. ¶ 14). Because JUMANJI was so successful, “Opposer believed that JUMANJI had strong potential to become a successful film franchise,” and for several years after its release took steps to create an “official” sequel, but “those plans did not come to fruition at the time.” Id. at 10, 297-325 (Stevens Dec. ¶ 17 and Ex. J). Eventually, however, the project was completed and Opposer released the JUMANJI sequel JUMANJI: WELCOME TO THE JUNGLE in 2017. Id. at 11 (Stevens Dec. ¶ 19). Unlike the original, which involved a character trapped in a board game, in JUMANJI: WELCOME TO THE JUNGLE, characters were trapped in a video game. Id. at 12 (Stevens Dec. ¶ 21). The sequel’s development and release generated a publicity campaign and significant press coverage. Id. at 11-12 (Stevens Dec. ¶¶ 20, 22); 31 TTABVUE 4-93 Opposition No. 91239967 12 (Stevens Dec. Exs. L and M). In fact, Opposer spent “many millions of dollars advertising JUMANJI: WELCOME TO THE JUNGLE beginning in 2017,” including this billboard displayed in Times Square: Id. at 12-13 (Stevens Dec. ¶ 22). The movie, which stars Dwayne “The Rock” Johnson, Jack Black and Kevin Hart, grossed over $400 million in the United States, placing it “in the top fifty grossing domestic films of all time.” Id. at 13 (Stevens Dec. ¶ 23). The movie generated extensive press coverage. Id.; 31 TTABVUE 95-163 (Stevens Dec. Ex. N) (articles about or reviews of JUMANJI: WELCOME TO THE JUNGLE in the Washington Post, Forbes, Fox News, Variety, Vanity Fair, Hollywood Reporter, USA Today and The New York Times, among others). The movie was released on DVD and Blu-ray in March 2018, “and these home entertainment products have already generated tens of millions of dollars in sales.” 30 TTABVUE 13 (Stevens Dec. ¶ 24). At the time of trial, Opposer had completed filming a third movie in the franchise, JUMANJI: THE Opposition No. 91239967 13 NEXT LEVEL, featuring the same stars as the sequel, as well as Awkwafina, Danny Glover and Danny DeVito. Id. at 13-14 (Stevens Dec. ¶ 24). “As it did with the original JUMANJI movie and consistent with typical industry practices for successful movie franchises, Opposer also embarked on a broad-based merchandising campaign in connection with the JUMANJI: WELCOME TO THE JUNGLE sequel.” Id. at 14 (Stevens Dec. ¶ 25). Specifically, Opposer licensed the JUMANJI mark in connection with “a wide variety of goods and services, including t-shirts and other clothing.” Id. at 14; 31 TTABVUE 167-205 (Stevens Dec. ¶ 26 and Ex. P). “Such apparel items are generally part of any significant licensing program given the enormous popularity among consumers of clothing branded with the marks of well-known entertainment properties.” 30 TTABVUE 14 (Stevens Dec. ¶ 26). In contrast to the licensed JUMANJI clothing associated with the original JUMANJI movie that remains on sale, the licensed JUMANJI clothing associated with the sequel JUMANJI: WELCOME TO THE JUNGLE is apparently new and being sold for the first time. In fact, as shown below, it was offered for sale in late 2018, a year after the sequel’s release, and the licensee is identified as Isaac Morris, one of Opposer’s licensees: Opposition No. 91239967 14 Id. at 14 and 31 TTABVUE 178 (Stevens Dec. ¶ 26 and Ex. P). A January 28, 2018 article entitled “Retail Demand for Jumanji: Welcome to the Jungle Merch Grows as Sony Awaits DVD Release” in “licensing.biz,” a licensing publication, states “Apparel and the collectable categories continue to add placement with robust sales at specialty, mid and mass … Isaac Morris created apparel lines based on the classic and new film for men, women and kids.” 31 TTABVUE 198 (emphasis Opposition No. 91239967 15 added). Furthermore, Opposer has directly sold licensed JUMANJI clothing at The Studio Store at Sony Pictures Studio, but Opposer did not provide the dates of any of these direct sales. 47 TTABVUE 6. B. Applicant’s Use of JU’MAÑJI Applicant selected his mark JU’MAÑJI on November 21, 2013. He testified that he remembered that date because it was a “special day” for him, the day his choice of trademark came to him a dream, or, as he put it during his deposition, “I guess you could say a nightmare.” 20 TTABVUE 24-25. Applicant described the dream/nightmare in his response to Opposer’s Interrogatory No. 2 as follows: Applicant had dream wherein poachers were killing elephants, lions, greater kudus, white rhino, elands, impala, cheetah, duiker, Hippopotamus, reedbuck, giraffe, bushback, zebra, bushpig, common warthog, chacma baboon. During the dream, Applicant screamed out (phonetic spelling; see, https://www.phon.ucl.ac.uk/home/wells/phoneticsymbolsfo renglish.htm) in an effort to inform the poachers their actions were wrong and instruct the poachers to stop. Applicant wanted to use the wording “wrong” and later performed a search of wording that mirrored the wording and identified the JU’MAÑJI mark for “wrong” taken from translations found at MyMemory (https://mymemory.translated.net/en). 21 TTABVUE 14. During his deposition, Applicant testified that after his dream, he speculated that the word JU’MAÑJI might mean “wrong” in another language, because what the poachers in his dream/nightmare were doing was wrong. Id. at 31-32. He therefore went to the MyMemory website, which “translates words from different languages to English or English to different languages” and entered the term JU’MAÑJI. Id. at Opposition No. 91239967 16 33-36. Applicant testified that MyMemory translated his mark into “wrong” in three languages: Uzbek; Kazakh; and Azerbaijani. 20 TTABVUE 34, 40-45, 160-163 (St. Fort Tr. at 29, 35-40 and Ex. 2). Applicant pronounces the word JU’MAÑJI as “na-man-ji.” Id. 18. Indeed, when asked whether “the J-U, to your understanding, should be pronounced as ‘na,’” Applicant responded “yes.” He also indicated that the apostrophe following the “U” in the mark signals a pause: “When you say ‘na,’ you take a – you just pause and say ‘man-ji.’” 20 TTABVUE 38. As for the punctuation above the “N” in the mark (elsewhere referred to as a tilde), it has “no effect” on how Applicant’s mark is intended to be pronounced. Id. at 39. In 2013, with help from a family friend, Applicant, who had never sold clothing before, created t-shirts bearing his JU’MAÑJI mark. Id. at 50-52, 110-117. Applicant did not “make any [t-shirt] sales from Florida to another state before October 12, 2017.” Id. at 89. However, he sold t-shirts within Florida in 2014, including to Ms. Blackwood, although Ms. Blackwood did not recall seeing the involved mark JU’MAÑJI on the shirts she purchased. Id. at 90, 107, 109, 117-119, 150-157; Id. at 717-721, 725-729 (Blackwood Tr. 16-23, 27-31) (Ms. Blackwood’s testimony about her purchase of a t-shirt from Applicant in 2014). He also sold shirts to Ms. Garcia and Mr. Williams in 2014. 53 TTABVUE 6-15; 54 TTABVUE 6-11. In any event, Applicant admits that: Opposer used its mark for entertainment services prior to Applicant using his mark; and Applicant does not have any receipts or other documentation Opposition No. 91239967 17 “reflecting” his t-shirt sales or the dates of any sales. 21 TTABVUE 25, 41-42 (Applicant’s Responses to Requests for Admission Nos. 16-21). IV. Applicant’s Fraud Counterclaims We address Applicant’s counterclaims first, because if successful they would impact our analysis of Opposer’s claims. A. Applicant’s Entitlement to a Statutory Cause of Action Applicant’s entitlement to assert its counterclaims is inherent, as he is the defendant in the opposition. Finanz St. Honore, B.V. v. Johnson & Johnson, 85 USPQ2d 1478, 1479 (TTAB 2007); Carefirst of Maryland, Inc. v. FirstHealth of the Carolinas Inc., 77 USPQ2d 1492, 1502 (TTAB 2005) (“Applicant, by virtue of its position as defendant in the opposition, has standing to seek cancellation of the pleaded registration.”). B. Fraud “Fraud in procuring a trademark registration occurs when an applicant knowingly makes false, material representations of fact in connection with its application with intent to deceive the USPTO.” Nationstar Mortgage LLC v. Ahmad, 112 USPQ2d 1361, 1365 (TTAB 2014) (citing In re Bose Corp., 580 F.3d 1240, 91 USPQ2d 1938 (Fed. Cir. 2009)) (emphasis added). Here, Applicant has not presented any evidence, direct, indirect or circumstantial, let alone the requisite “clear and convincing” evidence, In re Bose, 91 USPQ2d at 1939, that Opposer made false statements with the requisite intent to deceive the USPTO. First, Applicant’s counterclaims to cancel Opposer’s ’533 and ’007 Registrations, both for games, are based on pure speculation. Specifically, Applicant points out that Opposition No. 91239967 18 certain of Opposer’s licenses to use the JUMANJI mark for games expired several years prior to Opposer renewing its involved registrations, and Applicant alleges that the specimens submitted in support of the renewals were packaging for games “no longer under license.” 71 TTABVUE 30, 34. Yet, Applicant does not provide a single evidentiary cite to the record which supports his implicit assumption that at the time of the renewals: (1) there were no valid licenses to use JUMANJI for the identified games; (2) Opposer was not still offering the identified games itself or through any licensees; or (3) use of the mark on the licensed games which remained available for sale did not still insure to Opposer’s benefit.14 Applicant does not attempt to address the evidence that many JUMANJI products, including games, remained available for sale “for decades and into the present in some instances.” 30 TTABVUE 7, 106-117 (Stevens Dec. ¶ 12 and Ex. G). In any event, even if Applicant’s speculation was supported by evidence of record rather than mere attorney argument, there is no evidence whatsoever that Opposer intended to deceive the USPTO when it filed its renewals. DaimlerChrysler Corp. v. American Motors Corp., 94 USPQ2d 1086, 1090 (“It is clear that under the holding of Bose that intent must be separately proved ….”). That is, even if Applicant’s speculation that the only licenses to use JUMANJI for the identified games had 14 Cai v. Diamond Hong, Inc., 901 F.3d 1367, 127 USPQ2d 1797, 1799 (Fed. Cir. 2018) ("Attorney argument is no substitute for evidence.") (quoting Enzo Biochem, Inc. v. Gen-Probe Inc., 424 F.3d 1276, 1284, 76 USPQ2d 1616, 1622 (Fed. Cir. 2005)); see also In re U.S. Tsubaki, Inc., 109 USPQ2d 2002, 2006 (TTAB 2014) (finding that there was no proof to support the statements in the record by counsel). Opposition No. 91239967 19 expired prior to the renewals is correct, and Applicant had also established that neither Opposer nor any licensee or related company was offering the identified games at the time, Opposer could have believed in good faith that because formerly- licensed parties were still selling the identified games, it was entitled to claim current/continuous use and renew the involved registrations. Applicant’s fraud counterclaims are denied, because there is no evidence that Opposer intended to deceive the USPTO. V. Opposer’s Likelihood of Confusion Claim Having disposed of Applicant’s counterclaims, we now consider Opposer’s likelihood of confusion claim, including Opposer’s pleaded registrations which survived Applicant’s challenge. A. Opposer’s Entitlement to Statutory Cause of Action15 Entitlement to a statutory cause of action is a requirement in every inter partes case. Australian Therapeutic Supplies Pty. Ltd. v. Naked TM, LLC, 965 F.3d 1370, 2020 USPQ2d 10837 at *3 (Fed. Cir. 2020) (citing Lexmark Int’l, Inc. v. Static Control Components, Inc., 572 U.S. 118, 125-26 (2014)). A party in the position of plaintiff may oppose registration of a mark when doing so is within its zone of interests and it has a reasonable belief in damage that is proximately caused by registration of the mark. Corcamore, LLC v. SFM, LLC, 978 F.3d 1298, 2020 USPQ2d 11277, at * 6-7 15 Our decisions have previously analyzed the requirements of Sections 13 and 14 of the Trademark Act, 15 U.S.C. §§ 1063-64, under the rubric of “standing.” We now refer to this inquiry as entitlement to a statutory cause of action. Despite the change in nomenclature, our prior decisions and those of the Federal Circuit interpreting Sections 13 and 14 remain equally applicable. Opposition No. 91239967 20 (Fed. Cir. 2020) (holding that the test in Lexmark is met by demonstrating a real interest in opposing or cancelling a registration of a mark, which satisfies the zone- of-interests requirement, and a reasonable belief in damage by the registration of a mark, which demonstrates damage proximately caused by registration of the mark). Here, Opposer’s pleaded registrations, 19 TTABVUE 5-24, establish its entitlement to a statutory cause of action. Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1844 (Fed. Cir. 2000). In addition, Opposer’s application to register its mark in Class 25 is suspended based on the USPTO finding a potential likelihood of confusion with the mark in Applicant’s involved application. 19 TTABVUE 25-27; 26 TTABVUE 5-6; Lipton Indus., Inc. v. Ralston Purina Co., 670 F.2d 1024, 1028, 213 USPQ 185, 189 (CCPA 1982) (“Thus, to have standing in this case, it would be sufficient that [plaintiff] prove that it filed an application and that a rejection was made because of [defendant’s] registration.”); Tri-Star Mktg., LLC v. Nino Franco Spumanti S.R.L., 84 USPQ2d 1912, 1914 (TTAB 2007) (“petitioner has standing to bring the petition for cancellation based on the fact that its application to register [its mark] was refused registration by the office under Section 2(d) based on a likelihood of confusion with respondent’s previously registered mark”). B. Priority Because Opposer’s pleaded registrations are of record, 19 TTABVUE 5-24, and Applicant’s counterclaims to cancel two of them were unsuccessful, priority is not at issue with respect to the goods and services identified therein. King Candy Co. v. Eunice King’s Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108, 110 (CCPA 1974). Opposition No. 91239967 21 As for clothing, and more specifically the “t-shirts” identified in the involved application, Opposer has established common law use of JUMANJI by its licensees for, inter alia, t-shirts, starting 20 years prior to Applicant’s alleged first use in 2014.16 30 TTABVUE 7 (Stevens Dec. ¶ 11); 59 TTABVUE 4-18, 19-35, 70-86, 129- 144 (confidential licensing information). Applicant argues, however, based on its cross-examination of Ms. Stevens and other evidence, that “Opposer has not licensed its mark on clothing since May 31, 1997, when the last license expired, and did not resume licensing the mark on clothing until years after Applicant began selling shirts.” 71 TTABVUE 21 (citing 58 TTABVUE 9-10 (Stevens Cross ¶ 29)). In other words, while Applicant did not plead abandonment as an affirmative defense, it now argues that while Opposer was the first user of JUMANJI for clothing, it abandoned the mark prior to Applicant’s first sale of JU’MAÑJI t-shirts in 2014. See Kemi Organics, LLC v. Rakesh Gupta, 126 USPQ2d 1601, 1605 (TTAB 2018) (“Section 2(d) 16 Where, as here, “an applicant seeks to prove a date [of first use] earlier than the date alleged in its application,” the applicant must prove the “earlier date by clear and convincing evidence.” Hydro-Dynamics Inc. v. George Putnam & Co. Inc., 811 F.2d 1470, 1 USPQ2d 1772, 1773-74 (Fed. Cir. 1987). However, as explained below, we need not resolve Applicant’s precise date of first use. If we were to do so, the intrastate nature of Applicant’s 2014 sales is not determinative in and of itself. Christian Faith Fellowship Church v. adidas AG, 841 F.3d 986, 120 USPQ2d 1640 (Fed. Cir. 2016). See also Gonzales v. Raich, 545 U.S. 1 (2005); Wickard v. Filburn, 317 U.S. 111 (1942); Larry Harmon Pictures Corp. v. Williams Rest. Corp., 929 F.2d 662, 18 USPQ2d 1292 (Fed. Cir. 1991). Indeed, as used in the Lanham Act, “[t]he word ‘commerce’ means all commerce which may lawfully be regulated by Congress,” 15 U.S.C. § 1127, and Congress may regulate even local, intrastate activities which have a “substantial economic effect on interstate commerce.” Raich, 545 U.S. at 17; Wickard, 317 U.S. at 127-128; In re Silenus Wines, Inc., 557 F.2d 806, 194 USPQ 261, 264 (CCPA 1977) (“Thus, we hold that intrastate sale of goods, by the party who caused those goods to move in regulatable commerce, directly affects that commerce and is itself regulatable.”). In short, “[b]ecause one need not direct goods across state lines for Congress to regulate the activity under the Commerce Clause, there is likewise no such per se condition for satisfying the Lanham Act’s ‘use in commerce’ requirement.” Christian Faith Fellowship, 120 USPQ2d at 1647. Opposition No. 91239967 22 provides a ground … based upon a likelihood of confusion with ‘a mark … previously used in the United States … and not abandoned ….’ [Opposer] bears the burden of proving that its mark was ‘previously used in the United States’ before [Applicant’s priority date]. In this case, [Applicant’s] ‘abandonment allegation is, in effect, in the stance of a defense to a prior use assertion.’”) (cleaned up). Applicant takes some liberties with the evidence upon which his abandonment defense is based. In fact, during her cross-examination, Ms. Stevens testified that the mid-1990s licenses to use JUMANJI for clothing which it provided to Applicant during discovery were not necessarily all of Opposer’s licenses to use JUMANJI for clothing. Rather, the licenses Opposer produced were “everything we were able to locate up to the time we provided them. It’s obviously been a long time so there may be others that were no longer available decades later.” 58 TTABVUE 9-10 (Stevens Cross ¶ 29). Thus, Opposer has not conceded that use of JUMANJI for clothing was discontinued in the 1990s. At the same time, however, Opposer does not specifically deny that there was a gap in its use of JUMANJI for clothing, through licensees or otherwise, nor does it specifically deny that the gap continued or may have continued from the late 1990s through around the time JUMANJI: WELCOME TO THE JUNGLE was promoted and finally released in 2017 (other than pointing out that some JUMANJI clothing remains available for apparent resale on eBay). There are two problems with Applicant’s abandonment defense. First, it was not pleaded. In fact, while Applicant alleged in its answer to the amended notice of opposition that Opposer “was not continuously providing the recited goods, either Opposition No. 91239967 23 directly or through a licensee, from September 30, 1995,” in reference to Opposer’s pleaded ’194 and ’119 Registrations and one of its pleaded applications for goods in Classes 9, 16 and 28, Applicant never asserted the same defense with respect to JUMANJI clothing until doing so in its Trial Brief. Compare 17 TTABVUE 13, 14 (Answer to Amended Notice of Opposition ¶¶ 76, 79, 85, 87) with 71 TTABVUE 21. In West Fla. Seafood Inc. v. Jet Rests. Inc., 31 F.3d 1122, 31 USPQ2d 1660, 1666 (Fed. Cir. 1994), the Federal Circuit found that the Board erred in considering an unpleaded defense of abandonment, pointing out that the plaintiff in that case “was never put on notice that it was faced with an abandonment allegation, and thus [plaintiff] was not provided an adequate opportunity to address this issue.” Second, to prevail on his abandonment defense, Applicant “bears at a minimum a burden of coming forth with some evidence of abandonment.” Kemi Organics, 126 USPQ2d at 1605 (quoting West Fla. Seafood, 31 USPQ2d at 1666). Here, Applicant has not come forth with specific evidence establishing that Opposer has abandoned its mark for clothing. At the same time, we recognize that Opposer’s licenses to use JUMANJI for clothing expired over 20 years ago, and Opposer failed to come forth with specific evidence of its own establishing sales of new JUMANJI clothing from 2000-2014. This may tend to support a claim of abandonment, though it appears that new JUMANJI clothing may have remained on sale for an unknown number of years after the 1990s licenses expired. In any event, as explained in more detail below, we need not resolve which party has priority with respect to clothing. Rather, in considering whether the parties’ Opposition No. 91239967 24 marks are likely to be confused, we focus on Opposer’s goods and services unrelated to clothing, which are sufficient to resolve this proceeding. C. Likelihood of Confusion Our determination under Section 2(d) is based on an analysis of all of the probative evidence of record bearing on the likelihood of confusion. In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973) (setting forth factors to be considered); see also In re Majestic Distilling Co., 315 F.3d 1311, 65 USPQ2d 1201, 1203 (Fed. Cir. 2003). In any likelihood of confusion analysis, two key considerations are the similarities between the marks and the similarities between the goods and services. See Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976) (“The fundamental inquiry mandated by § 2(d) goes to the cumulative effect of differences in the essential characteristics of the goods and differences in the marks.”). Opposer bears the burden of establishing that there is a likelihood of confusion by a preponderance of the evidence. Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1848 (Fed. Cir. 2000). We consider the likelihood of confusion factors about which there is evidence and argument. See In re Guild Mortg. Co., 912 F.3d 1376, 129 USPQ2d 1160, 1162-63 (Fed. Cir. 2019). 1. Strength/Fame of Opposer’s Mark Before addressing the marks and goods and services, we consider the strength of Opposer’s mark, to ascertain the scope of protection to which it is entitled. There are two types of strength: conceptual and commercial. In re Chippendales USA, Inc., 622 F.3d 1346, 96 USPQ2d 1681, 1686 (Fed. Cir. 2010) (“A mark’s strength is measured both by its conceptual strength … and its marketplace strength ….”). Opposition No. 91239967 25 Turning first to conceptual strength, there is no evidence, and Applicant does not argue, that Opposer’s mark is conceptually weak. The evidence is to the contrary. Opposer introduced “negative” dictionary evidence from, inter alia, Dictionary.com, Lexico.com (“Powered by Oxford”) and Merriam-Webster showing that JUMANJI is not an English word. 29 TTABVUE 1-18, 21. According to Definitions.com and Abbreviations.com (which appear to be connected), the term is instead the name of Opposer’s movies JUMANJI and JUMANJI: WELCOME TO THE JUNGLE. Id. at 19, 24. We therefore find that JUMANJI is arbitrary, and thus conceptually strong. As for commercial strength, we must determine where to place Opposer’s mark on the “spectrum” of marks, which ranges from “very strong to very weak.” Palm Bay Imps. Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1694 (Fed. Cir. 2005) (quoting In re Coors Brewing Co., 343 F.3d 1340, 68 USPQ2d 1059, 1063 (Fed. Cir. 2003)). See also, Joseph Phelps Vineyards, LLC v. Fairmont Holdings, LLC, 857 F.3d 1323, 122 USPQ2d 1733, 1734-35 (Fed. Cir. 2017). The record in this case fully supports Opposer’s claim that its mark is not only very strong, but famous, at least for likelihood of confusion purposes.17 While Opposer has not introduced any consumer surveys showing fame, they are not necessary; indeed, they “rarely appear.” Bose Corp. v. QSC Audio Prods. Inc., 293 F.3d 1367, 63 USPQ2d 1303, 1305 (Fed. Cir. 2002). Rather, “fame of a mark may be 17 Applicant appears to concede that Opposer’s mark was famous at one point for audiovisual works. 71 TTABVUE 25 (“Opposer has not propounded evidence to show its mark had retained its fame in 2014, or even 2017.”) (emphasis added). Opposition No. 91239967 26 measured indirectly, among other things, by the volume of sales and advertising expenditures of the goods traveling under the mark, and by the length of time those indicia of commercial awareness have been evident.” Id. Other relevant factors include “length of use of the mark, market share, brand awareness, licensing activities, and variety of goods bearing the mark.” Coach Services Inc. v. Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1720 (Fed. Cir. 2012). By each of these measures, Opposer’s JUMANJI mark is famous. Indeed, the mark has been in the public consciousness for a quarter century, since the original JUMANJI film opened as number one at the box office in 1995 and eventually became that year’s 7th highest grossing film. While Applicant argues that the mark’s fame went downhill from there, the evidence reveals that JUMANJI in fact became a classic, at least in its genre, is now in Opposer’s words a “franchise,”18 and was famous both before Applicant’s claimed date of first use in 2014, and in the ensuing years, during which two more JUMANJI films were released. For example: The original JUMANJI has “remained in continuous distribution” for the last 25 years, via television (broadcast, cable, video on demand and streaming) and home video such as DVDs and Blu-ray discs. 30 TTABVUE 5 and 32 TTABVUE 20-22 (Stevens Dec. ¶ 6 and Ex. B). Opposer has spent a confidential but significant sum promoting home viewing of the film, and its efforts have apparently been quite successful because Opposer has earned a confidential but substantial sum from home 18 Opposer never explains exactly what it means by “franchise” in this context, but from the record as a whole it appears that the term refers to a film which becomes a series, spawning not only related films, but also, film or concept-related merchandise and perhaps even services. Opposition No. 91239967 27 viewing. 32 TTABVUE 5-6, 24-26, 37-67. (Stevens Dec. ¶ 7 and Exs. D and E). The animated JUMANJI television series ran for several years (1996-1999) after the original JUMANJI movie was released. 30 TTABVUE 6 (Stevens Dec. ¶ 9). The show’s first season was released on DVD in 2012, re-released in 2015 and, in 2017, the entire series was released on DVD, and it remains available on video, by download and via streaming. Id. at 6, 69-93 (Stevens Dec. ¶ 6 and Ex. F). Opposer released ZATHURA − often referred to as an “unofficial” or “sort of” sequel to JUMANJI and billed as “from the world of JUMANJI” − in 2005, generating significant press coverage. Id. at 8-9, 167-215 (Stevens Dec. ¶ 14 and Ex. H). Opposer has licensed the JUMANJI mark for use in connection with a wide variety of products collateral to the film, including t-shirts and other clothing, toys and games, trading cards, key chains, magnets, mugs, lunch boxes, posters, etc., etc. Id. at 7, 95-165 (Stevens Dec. ¶¶ 10-12 and Ex. G). The JUMANJI film franchise, including its associated actors, television series, home video products and licensed collateral products, has been in the public eye continuously over the past quarter century, as illustrated by extensive, widespread and sustained press coverage mentioning or focusing on the JUMANJI mark and movie from 1995 through 2019. Id. at 8 (Stevens Dec. ¶ 13); 24 TTABVUE 1- 539; 27 TTABVUE 1-430; 28 TTABVUE 1-240. After Applicant’s claimed first use date, but prior to trial, JUMANJI became more famous as a result of the series’ second and third films, JUMANJI: WELCOME TO THE JUNGLE and JUMANJI: THE NEXT LEVEL. Press reports speculated on the sequel for years, some perceiving it as a “reboot,” and press attention only increased at the time it was officially announced and when it was being heavily promoted in advance of its release. 30 TTABVUE 10-14, 31 TTABVUE 4-205 and 32 TTABVUE 28-51 (Stevens Dec. ¶¶ 17-26 and Exs. L-P). Opposition No. 91239967 28 Opposer “spent many millions of dollars advertising JUMANJI: WELCOME TO THE JUNGLE beginning in 2017,” including via the large Times Square billboard. 30 TTABVUE 12-13 (Stevens Dec. ¶ 22). JUMANJI: WELCOME TO THE JUNGLE grossed “more than $400 million in the United States alone. That figure places the movie in the top fifty grossing domestic films of all time.” Id. at 13 (Stevens Dec. ¶ 23) (emphasis added). Sales of the movie on DVD, Blu-ray and 4K Ultra HD Blu- ray have generated tens of millions in sales. Id. (Stevens Dec. ¶ 24). Where fame exists, as here, it “plays a ‘dominant role in the process of balancing the DuPont factors,’ … and ‘[f]amous marks thus enjoy a wide latitude of legal protection.’” Bose, 63 USPQ2d at 1305 (quoting Recot, Inc. v. Benton, 214 F.3d 1322, 54 USPQ2d 1894, 1897 (Fed. Cir. 2000)). A strong mark such as Opposer’s “casts a long shadow which competitors must avoid.” Kenner Parker Toys, Inc. v. Rose Art Industries, Inc., 963 F.2d 350, 22 USPQ2d 1453, 1456 (Fed. Cir. 1992). This factor weighs heavily in favor of finding a likelihood of confusion. 2. The Marks The marks are virtually identical “in their entireties as to appearance, sound, connotation and commercial impression.” Palm Bay Imps., 73 USPQ2d at 1691 (quoting du Pont, 177 USPQ at 567). Indeed, they are comprised of the exact same letters in the exact same order, the only difference between them being what Applicant claims to be two nonstandard punctuation marks (typically referred to as an apostrophe and a tilde). These minor distinctions make no meaningful difference. As for appearance, Opposer’s and Applicant’s marks are dominated by their identical letters which appear in the identical order. The letters dwarf the Opposition No. 91239967 29 punctuation marks, which by their nature are usually less important than the letters they may impact. In fact, we have previously found an apostrophe to be “insignificant” for likelihood of confusion purposes, as it is here because the marks are otherwise virtually identical. Pinocchio’s Pizza Inc. v. Sandra Inc., 11 USPQ2d 1227, 1228 (TTAB 1989). The punctuation over the “N” in Applicant’s mark calls to mind a tilde and thus the Spanish letter eñe (ñ), but Applicant claims that this punctuation mark has “no effect.” Even if this punctuation mark served its typical purpose, or another purpose, its effect on the term’s appearance is quite minimal and insufficient to distinguish the marks. While Applicant argues that the marks sound somewhat different because his mark is pronounced “na-man-ji” with a pause between “na” and “man,” while Opposer’s is pronounced as it is spelled, there is no evidence that a meaningful number of consumers would pronounce Applicant’s mark as he intends. Rather, in the absence of evidence to the contrary, we find that American consumers would most likely pronounce Applicant’s mark as it is spelled, i.e. the same or substantially the same as they would pronounce Opposer’s mark.19 This finding is supported by a printout from “howtopronounce.com,” to the extent that it indicates that Opposer’s mark JUMANJI is pronounced “joo-MON-jee.” 29 TTABVUE 28-29. Because the parties’ marks are spelled essentially identically, the general proposition that “there 19 Even if consumers pronounced Applicant’s mark as he intends, it would still sound similar to and rhyme with Opposer’s mark. Opposition No. 91239967 30 is correct pronunciation of a trademark” is not particularly relevant here, because whether the marks are pronounced “correctly” or not, they would be pronounced similarly, as they consist of the same letters in the same order. With respect to meaning, most of the dictionary entries and other evidence of record indicate that Opposer’s mark has no meaning in English. Id. at 6-18 and 21. There is no evidence that Applicant’s mark JU’MAÑJI has any meaning in English. However, there is some evidence indicating that Opposer’s mark JUMANJI has a meaning, specifically the title of Opposer’s film. Id. at 19, 24. In short, the marks are so close, given that they consist of the same letters in the same order, that they would both likely convey the same meaning, either no meaning as coined terms (as most of the evidence of record suggests), or the title of Opposer’s film franchise (as indicated by two reference works Opposer made of record). To the extent Applicant continues to maintain that his mark JU’MAÑJI means “wrong” in Uzbek, Kazakh or Azerbaijani, Opposer has introduced evidence calling that claim into serious question. Specifically, Opposer relies on “negative” dictionary evidence in all three languages, showing that the term has no meaning in any of them. Id. at 34-36; 20 TTABVUE 164. Furthermore, Applicant’s MyMemory evidence indicates that there are no “human” translations of the term JU’MAÑJI “from professional translators, enterprises, web pages and freely available translation repositories.” 20 TTABVUE 160-162. While the MyMemory entry states that “computer translations” indicate that the term means “wrong” in each of the three languages, there is no indication what a “computer translation” is, or what it is based Opposition No. 91239967 31 on, other than the unilluminating statement that the computer translations are “trying to learn how to translate from the human translation examples.” Id. This unclear explanation is less persuasive than Opposer’s “negative” dictionary evidence, and insufficient to support a finding that JU’MAÑJI means “wrong” in another language. Because the parties’ marks are so similar in appearance, sound, and meaning (or lack thereof), we find that they create highly similar commercial impressions, either as coined terms with no meaning or references to Opposer’s film franchise. See e.g., Inter Ikea Sys. B.V. v. Akea, LLC, 110 USPQ2d 1734, 1741 (TTAB 2014) (finding IKEA and AKEA confusingly similar, stating “[w]here, as here, both marks are coined terms that look alike and sound alike and there are no known differences in the meaning to distinguish them, the marks engender a similar commercial impression”) (citing cases); Atlas Supply Co. v. The Dayton Rubber Co., 125 USPQ 529, 530 (TTAB 1960) (“The marks ‘PLYCRON’ and ‘NYCRON’ are similar in composition, they bear a marked resemblance in sound, and they are both coined terms having no apparent meaning other than as trademarks. In view thereof, it is believed that purchasers of tires might reasonably attribute a common origin to ‘PLYCRON’ tires and ‘NYCRON’ cord for making tires ….”). We have not ignored the punctuation marks in Applicant’s mark, but have kept in mind: (1) “the fallibility of memory over a period of time;” (2) that the “average” purchaser “normally retains a general rather than a specific impression of trademarks;” and (3) that Applicant’s and Opposer’s marks are comprised of the same Opposition No. 91239967 32 letters in the same order. Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106, 108 (TTAB 1975). See also In re St. Helena Hosp., 774 F.3d 747, 113 USPQ2d 1082, 1085 (Fed. Cir. 2014) (“marks must be considered in light of the fallibility of memory”) (citation, internal quotation marks, and ellipsis omitted). In short, typical consumers are unlikely to remember the minor distinctions between the parties’ marks. We are also mindful that “the Lanham Act’s tolerance for similarity between competing marks varies inversely with the fame of the prior mark. As a mark’s fame increases, the Act’s tolerance for similarities in competing marks falls.” Kenner Parker Toys, 22 USPQ2d at 1456. This factor also weighs heavily in support of finding a likelihood of confusion. 3. The Goods, Services, Channels of Trade and Classes of Consumers, and Variety of Goods and Services for Which Opposer Uses its Mark As we consider the goods and services, we keep in mind that they need not be identical or even competitive in order to find a likelihood of confusion. Rather, the question is whether the goods are marketed in a manner that “could give rise to the mistaken belief that [the] goods emanate from the same source.” Coach Services, 101 USPQ2d at 1722 (quoting 7-Eleven Inc. v. Wechsler, 83 USPQ2d 1715, 1724 (TTAB 2007)). See also Hewlett-Packard Co. v. Packard Press Inc., 227 F.3d 1261, 62 USPQ2d 1001, 1004 (Fed. Cir. 2002) (“Even if the goods and services in question are not identical, the consuming public may perceive them as related enough to cause confusion about the source or origin of the goods and services.”); Recot, 54 USPQ2d at 1898 (“even if the goods in question are different from, and thus not related to, one another in kind, the same goods can be related in the mind of the consuming public Opposition No. 91239967 33 as to the origin of the goods”); Kohler Co. v. Baldwin Hardware Corp., 82 USPQ2d 1100, 1109 (2007). We must also keep in mind that fame remains “a dominant factor in the likelihood of confusion analysis … independent of the consideration of the relatedness of the goods.” Recot, 54 USPQ2d at 1898. That is, “when a product reaches the marketplace under a famous mark, special care is necessary to appreciate that products not closely related may nonetheless be confused as to source by the consumer because of the fame of the mark.” Bose Corp., 63 USPQ2d at 1310. Here, while Applicant and Opposer both offer t-shirts under their competing marks, Opposer’s priority with respect to t-shirts is less than crystal clear. As indicated in our discussion of priority, however, we need not resolve which party has priority for clothing, because Opposer has established a clear relationship between Applicant’s t-shirts and Opposer’s goods and services identified in its pleaded registrations (for which priority is not at issue), as well those goods and services for which Opposer has established common law priority through evidence of prior use. More specifically, priority is not at issue with respect to Opposer’s DVDs featuring motion pictures, downloadable motion pictures, video and board games, toys, posters, books, animated television production services and other goods and services for which its JUMANJI mark is registered. 19 TTABVUE 5-24; King Candy, 182 USPQ at 110. In addition, Opposer has established priority through use, well prior to Applicant’s claimed first use date in 2014, for, inter alia, mugs, magnets, jars, cups, plates, bowls, bottles, lunch boxes, key chains and plush figures. 30 TTABVUE 5-7 and 32 Opposition No. 91239967 34 TTABVUE 20-22. (Stevens Dec. ¶¶ 6-11 and Exs. B-F, O). There is a clear relationship between the goods and services for which Opposer has established priority or for which priority is not at issue and the “t-shirts” identified in the involved application. In fact, “collateral merchandise” associated with entertainment, sports and other properties is popular and common, as we have long recognized. See e.g., L.C. Licensing Inc. v. Berman, 86 USPQ2d 1883, 1889 (TTAB 2008) (“it is common knowledge, and a fact of which we can take judicial notice, that the licensing of commercial trademarks on ‘collateral products’ has become a part of everyday life”); Turner Ent. Co. v. Nelson, 38 USPQ2d 1942, 1945 (TTAB 1996) (“It is common knowledge, and, in the present case, undisputed that video games, t-shirts, beach towels, caps and other logo-imprinted products are used as promotional items for a diverse range of goods and services, not to mention for specific television shows and movies.”) (emphasis added); In re Phillips-Van Heusen Corp., 228 USPQ 949, 951 (TTAB 1986) (“The licensing of commercial trademarks for use on ‘collateral’ products (such as clothing, glassware, linens, etc.), which are unrelated in nature to these goods or services on which the marks are normally used, has become a common practice in recent years.”). As the Federal Circuit’s predecessor court put it, “‘collateral product’ use is a matter of textbook discussion.” Tuxedo Monopoly, Inc. v. Gen. Mills Fun Grp., 648 F.2d 1335, 209 USPQ 986, 988 n.3 (CCPA 1981). More to the point, where, as here, a mark is the type typically used for collateral products, a junior user’s use of a similar mark for seemingly unrelated products is Opposition No. 91239967 35 often found to cause confusion, precisely because consumers may assume that the junior user’s seemingly unrelated products are among the collateral products licensed by the senior user. For example: in L.C. Licensing we found confusion likely between ENYCE for automobile accessories and the same mark for clothing, and in Turner Ent. we found confusion likely between GILLIGAN’S ISLAND for a television show and the same mark for suntan lotion. L.C. Licensing, 86 USPQ2d at 1883; Turner Ent., 38 TTABVUE2d at 1942. In Phillips-Van Heusen we found confusion likely between THE “21” CLUB in stylized form for restaurants and towels and 21 CLUB for clothing, specifically pointing out that clothing, and “especially shirts … appear to represent a particularly natural area for the ‘collateral product’ use of commercial trademarks.” Phillips-Van Heusen, 228 USPQ2d at 951 (emphasis added). As Board and court cases have regularly found and commentators recognize, t- shirts often bear marks used for goods or services unrelated to clothing, perhaps especially marks for entertainment or sports products, such as movies or team names, though the phenomenon goes well beyond that. See Black and Decker Mfg. Co. v. Big Yank Corp., 231 USPQ 484, 486 (TTAB 1986) (“This record also supports the fact that a number of companies have licensed relatively well-known marks (for example COCA-COLA, CHAMPION, FIRESTONE, DUNLOP, GOODYEAR, etc.) in connection with clothing.”) and MCCARTHY ON TRADEMARKS AND UNFAIR COMPETITION § 3:8 (5th ed. June 2021) (“Trademarks can serve to identify and distinguish a ‘secondary source’ in the sense of indicating sponsorship or authorization. The Opposition No. 91239967 36 ‘secondary source’ is the trademark owner and licensor who has permitted the use of its mark on certain goods or services.”). Cf. In re Lululemon Athletica Canada Inc., 105 USPQ2d 1684, 1689 n.4 (TTAB 2013) (“the consumer would understand the mark on clothing to refer to the [mark owner’s] previously established mark for other goods or services”) and In re Paramount Pictures Corp., 213 USPQ 1111, 1112 (TTAB 1982) (“The ‘ornamentation of a T-shirt can be of a special nature which inherently tells the purchasing public the source of the T-shirt, not the source of manufacture but the secondary source.”). As we stated in similar circumstances: … consumers familiar with opposer’s television series and licensed collateral products such as video games, clothing items, beach towels, mugs and other diverse consumer goods, all of which are marketed under opposer’s GILLIGAN'S ISLAND mark, would be likely to believe, upon encountering applicant’s mark GILLIGAN'S ISLAND for suntan oil and lotion, sunblock, sunless tanning lotion, after sun moisturizing lotion, lip balm, hand and body lotion, hair shampoo and body bar soap, that the goods originated with or were somehow associated with or sponsored or licensed by the same entity. Turner Ent., 38 USPQ2d at 1945-46 (citing cases). In this case, Opposer has established a specific relationship between movies and t-shirts bearing movie titles. Specifically, the following movie titles are registered (some in stylized form or with designs) for motion pictures (or DVDs featuring motion pictures) on the one hand and shirts or t-shirts on the other: THE GODFATHER, BACK TO THE FUTURE, TOY STORY, HARRY POTTER, INDIANA JONES, ALIEN, THE LION KING, MEN IN BLACK, STAR WARS, PLANET OF THE APES, NAPOLEON DYNAMITE and PIRATES OF THE CARIBBEAN. 25 TTABVUE 1- Opposition No. 91239967 37 129. “Third-party registrations which cover a number of differing goods and/or services, and which are based on use in commerce, although not evidence that the marks shown therein are in use on a commercial scale or that the public is familiar with them, may nevertheless have some probative value to the extent that they may serve to suggest that such goods or services are of a type which may emanate from a single source.” See In re Mucky Duck Mustard Co., 6 USPQ2d 1467, 1470 n.6 (TTAB 1998). This evidence bears out what we said a quarter century ago: it is “common knowledge” that t-shirts “and other logo-imprinted products are used as promotional items for a diverse range of goods and services,” including movies and TV shows. Turner Ent. 38 USPQ2d at 1945. It also establishes a relationship between the many and various collateral goods identified in Opposer’s pleaded registrations, and those for which Opposer has established prior use, and t-shirts. This factor also weighs in favor of finding a likelihood of confusion. As for channels of trade and classes of consumers, Applicant identifies his goods as “clothing, namely t-shirts,” without any limitations on channels of trade. Opposer’s pleaded registrations also contain no trade channel limitations. Given the lack of any trade channel limitations in the parties’ identifications, we must presume that Applicant’s identified goods and Opposer’s registered goods travel in all channels of trade normal therefor. See Stone Lion Capital Partners, L.P. v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1162 (Fed. Cir. 2014) (“An application with ‘no restriction on trade channels’ cannot be ‘narrowed by testimony that the applicant’s Opposition No. 91239967 38 use is, in fact, restricted to a particular class of purchasers.’”); Citigroup Inc. v. Capital City Bank Grp., Inc., 637 F.3d 1344, 98 USPQ2d 1253, 1261 (Fed. Cir. 2011); In re Jump Designs, LLC, 80 USPQ2d 1370, 1374 (TTAB 2006); In re Elbaum, 211 USPQ 639, 640 (TTAB 1981). Here, the evidence reveals that t-shirts may be sold in the same channels of trade as some of the goods identified in Opposer’s pleaded registrations. For example, a “target.com” listing for JUMANJI The Game includes a sponsored link by Ever Apparel to a JUMANJI t-shirt. 30 TTABVUE 14 and 31 TTABVUE 167, 171 (Stevens Dec. ¶ 26 and Ex. P). An “amazon.com” listing for a JUMANJI WELCOME TO THE JUNGLE t-shirt includes a link to a JUMANJI game, the JUMANJI book and additional JUMANJI t-shirts. 31 TTABVUE 178-82.20 An “amazon.com” listing for a JUMANJI Doctor Bravestone Collectible Vinyl Figure includes a link to a JUMANJI WELCOME TO THE JUNGLE t-shirt and JUMANJI board game. Id. at 189, 193. More generally, the record reveals that merchandise bearing movie titles or other “secondary source” identifiers is often in its own category, with its own trade channels. For example, the “redbubble.com” website includes “The Official Jumanji Merchandise Store!,” which includes JUMANJI drawstring bags, acrylic blocks, iPad cases and skins and other products: 20 While JUMANJI: WELCOME TO THE JUNGLE was not released until after Applicant’s claimed date of first use, this evidence is not cited in connection with priority, but instead in order to show the relationship between different types of JUMANJI collateral merchandise. At the same time, Opposer’s current use of JUMANJI for t-shirts may make consumers more likely to confuse the source of Applicant’s goods, even if Opposer does not enjoy priority for clothing. Opposition No. 91239967 39 31 TTABVUE 195. Opposer introduced an “amazon.com” listing for the original JUMANJI movie which not only offers the movie in streaming, DVD and Blu-ray formats, but also links to other products under the heading “Customers who bought this item also bought.” 30 TTABVUE 6, 41-46 (Stevens Dec. ¶ 8 and Ex. E). Among the “also bought” items is JUMANJI The Game Action Game. Id. at 42. Similarly, the listing also links, under the heading “Sponsored products related to this item,” to a JUMANJI Handmade Vinyl Record Wall Clock.” Id. at 43; see also id. at 84. Similarly, an “amazon.com” listing for the JUMANJI The Animated Series DVD includes, under the heading “Related to this item” a link to the hardcover JUMANJI 50th Anniversary Edition book by Mr. Van Allsburg, and links to JUMANJI games. Id. at 87-92. An eBay listing for a vintage JUMANJI board game lists other JUMANJI games and the Opposition No. 91239967 40 JUMANJI book under the heading “Frequently bought together.” Id. at 118-19. Another eBay listing for a JUMANJI poster includes, under the heading “Similar sponsored items,” a JUMANJI video. In other words, as this evidence shows, there are essentially JUMANJI-related channels of trade, which the Internet may enable or make more accessible, such as Redbubble’s “Jumanji Merchandise Store.” This enables the relevant class of consum- ers (JUMANJI fans) to search for a variety of JUMANJI-related products under “one roof.” This factor also weighs in favor of finding a likelihood of confusion.21 In considering whether consumers would be likely to be confused as to source, we find the related ninth du Pont factor, “the variety of goods on which a mark is or is not used,” to be relevant as well. In re E.I. du Pont, 177 USPQ at 567. Specifically, Opposer has established use of its JUMANJI mark in connection a broad range of goods and services, including not just movies in various formats, but also various types of toys and games, kitchen and household products, trading cards, posters, and, for lack of a better description, assorted knick-knacks. Because Opposer has used its mark for such a wide array of goods and services, we find that it would not be a “stretch” for consumers to believe that Opposer also offers or licenses JUMANJI for t-shirts. 21 It is easy to imagine college students or alumni visiting a school’s bookstore to purchase school-affiliated merchandise, without knowing in advance whether they would purchase a t-shirt, bumper sticker, coffee cup or other collateral product intended to show school spirit or support. Similarly, grandparents may shop in a professional sports team’s “team store,” intending to purchase a team poster for one grandchild, and a nerf basketball hoop bearing the team’s name for another. Opposition No. 91239967 41 In fact, in an analogous case, we found toy vehicles related to specifically different collateral products offered by a record company, because “[i]t requires no stretch of the imagination for consumers to believe that these varied collateral goods could reasonably include toy cars … particularly in view of the fame of opposer’s MOTOWN marks in connection with its music and entertainment services.” UMG Recordings Inc. v. Mattel Inc., 100 USPQ2d 1868, 1884 (TTAB 2011). See also DC Comics Pan American Grain Mfg. Co. Inc., 77 USPQ2d 1220, 1226 (TTAB 2005); Genesco Inc. v. Martz, 66 USPQ2d 1260, 1271 (TTAB 2003) (“this factor may favor a finding that confusion is likely even if the goods are not obviously related”); Uncle Ben’s, Inc. v. Stubenberg Int’l, Inc., 47 USPQ2d 1310, 1313 (TTAB 1998) (“Section 2(d) of the Trademark Act also covers situations where the public, because of the similarity of the marks, is likely to believe that a recognizably different product, because of the similarity of the marks, emanates from, or is authorized, sponsored or licensed by the prior user or registrant.”). Finally, this case is closely analogous to The NASDAQ Stock Market, Inc. v. Antartica, S.r.l., 69 USPQ2d 1718 (TTAB 2003) in a number of ways. There, a stock market used its NASDAQ mark for its core stock market services as well as a variety of collateral products, but, like Opposer in this case, failed to establish its “prior use of NASDAQ for goods such as those identified in applicant’s application, or for opposer’s collateral products that are closely related thereto.” Id. at 1727. Nonetheless, the stock market’s use of its mark for less closely related collateral Opposition No. 91239967 42 products “has been a natural outgrowth of its business, has expanded over time,” id., and therefore contributed to a finding of likelihood of confusion. We conclude that countless individuals from market traders to individual investors; those employed by or directing "NASDAQ-listed" companies and those doing business with them; academics, students and sports fans have been exposed to opposer's NASDAQ mark and to its use on or in conjunction with collateral products and as an indicia of opposer’s sponsorship of a wide variety of events. We also conclude that, under these circumstances, individuals familiar with opposer, its services, collateral products and event-sponsorship activities, when confronted with applicant’s mark used on at least some of its identified goods, will consider such goods either to be promotional items of opposer or products branded with opposer’s mark in conjunction with opposer’s sponsorship of an event. Id. at 1732. Similarly, here, movie fans and the many others exposed to Opposer’s JUMANJI mark and its use in conjunction with collateral products will consider Applicant’s t-shirts branded with a virtually identical mark to be Opposer’s promotional items.22 4. Other Factors Opposer argues, and we agree, that t-shirts are relatively inexpensive, and thus unlikely to be purchased with significant care. In fact, Applicant’s t-shirts sell for $25, and Opposer’s sell for less than that. 20 TTABVUE 147 (Applicant’s Response to Interrogatory No. 6(d)); 31 TTABVUE 178. This also weighs in favor of finding a likelihood of confusion. 22 This likelihood of confusion may be increased among fans who recall that Opposer itself offered t-shirts well before Applicant’s claimed first use date, and those who know that Opposer currently offers JUMANJI t-shirts, even if they also know that there was a gap in Opposer’s use of JUMANJI for t-shirts. Opposition No. 91239967 43 While Applicant’s explanation of how he came to choose his mark is quite a tale, we disagree with Opposer’s argument that Applicant acted in bad faith. Even if Applicant was aware of Opposer’s mark before choosing his own, that would not establish bad faith or an intent to deceive. Action Temporary Services, Inc. v. Labor Force, Inc., 870 F.2d 1563, 10 USPQ2d 1307, 1310 (Fed. Cir. 1989) (“mere knowledge of the existence of the prior user should not, by itself, constitute bad faith”). This factor is neutral. VI. Conclusion Applicant failed to prove its counterclaims, leaving Opposer’s pleaded registrations intact. When we consider those registrations and Opposer’s prior common law use of its mark for not just movies but many and varied collateral products, we find that consumers are likely to be confused as to the source of Applicant’s JU’MAÑJI t-shirts. In fact, all of the likelihood of confusion factors weigh in Opposer’s favor or are neutral. Confusion is likely. Decision: The opposition is sustained on Opposer’s Section 2(d) claim. Registration of Applicant’s mark is refused. Copy with citationCopy as parenthetical citation