Under Armour, Inc.v.Renee BodeDownload PDFTrademark Trial and Appeal BoardMay 21, 2009No. 91178653 (T.T.A.B. May. 21, 2009) Copy Citation Mailed: May 21, 2009 UNITED STATES PATENT AND TRADEMARK OFFICE _____ Trademark Trial and Appeal Board ______ Under Armour, Inc. v. Renee Bode _____ Opposition No. 91178653 to application Serial No. 77091088 filed on January 25, 2007 _____ Leigh Ann Lindquist of Sughrue Mion, PLLC for Under Armour, Inc. Stuart J. West of West & Associates, APC for Renee Bode ______ Before Grendel, Holtzman and Kuhlke, Administrative Trademark Judges. Opinion by Kuhlke, Administrative Trademark Judge: Applicant, Renee Bode, seeks registration of the mark UNDERARMIES in standard characters for goods identified in the application as “underarm clothing shields,” in International Class 25.1 1 Serial No. 77091088, filed January 25, 2007. The application is based on an allegation of a bona fide intention to use the mark in commerce under Trademark Act Section 1(b), 15 U.S.C. §1051(b). THIS OPINION IS NOT A PRECEDENT OF THE TTAB Opposition No. 91178653 2 Opposer, Under Armour, Inc., opposed registration of applicant’s mark on the grounds that, as applied to applicant’s goods, the mark so resembles opposer’s previously used and registered UNDER ARMOUR marks for a wide variety of clothing as to be likely to cause confusion, to cause mistake, or to deceive under Trademark Act Section 2(d), 15 U.S.C. §1052(d).2 Applicant filed an answer by which she admitted to opposer’s ownership of the pleaded registrations and her filing of the subject application but otherwise denied the salient allegations. The evidence of record consists of the pleadings herein; the file of the opposed application; opposer’s notices of reliance on its pleaded registrations, third- party registrations and applicant’s discovery responses; and opposer’s testimony depositions, with exhibits, of Stephen Joseph Battista, opposer’s Senior Vice President of Brand, and David Eric Bergman, opposer’s Controller. Applicant did not take any testimony, file a notice of reliance or file a brief. PRIORITY/STANDING Because opposer has made its pleaded registrations of record and has shown that the registrations are valid and 2 To the extent opposer pleaded a claim of dilution this claim was not addressed in the brief and we consider it waived. Opposition No. 91178653 3 subsisting and owned by opposer, opposer has established its standing to oppose registration of applicant’s mark and its priority is not in issue. See King Candy Co., Inc. v. Eunice King’s Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108 (CCPA 1974). Accordingly, we turn to the question of likelihood of confusion. LIKELIHOOD OF CONFUSION Opposer’s eleven pleaded registrations are in full force and effect and the most relevant are set forth as follows: Registration No. 2279668 for the mark UNDER ARMOUR in typed form for “clothing, namely, t-shirts, long sleeve shirts, mock turtle necks, hats, shorts, shirts, leggings, jersey’s, pants, headwear for winter and summer, under wear, tank tops (male and female), winter caps, sweat shirts/pullovers, women’s bra” in International Class 25, issued September 21, 1999, renewed; Registration No. 3052160 for the mark UNDER ARMOUR in standard characters for “chin strap pads for use with protective helmets” in International Class 9, “toiletry kits, sold empty” International Class 18; “sports bottles, sold empty” in International Class 21, “lanyards for holding mouthpieces, water bottles, eyeglasses, badges, or keys” in International Class 2, “sports towels” in International Class 24, “gloves” in International Class 25, issued January 31, 2006; and Registration No. 2917039 for the mark UNDER ARMOUR in standard characters for “wristbands, headbands, rain suits, jackets, socks, skirts, athletic sleeves, hoods, skull wraps, skull caps, vests, hats, shorts, shirts, leggings, pants, headwear for winter and summer, underwear, tank tops, bras, girdles” in International Class 25, January 11, 2005. Opposition No. 91178653 4 In addition, opposer has submitted status and title copies of its registrations for its mark for sport bags, travel bags, duffel bags, backpacks, sack pacs, and reservoir backpacks, chin strap pads, toiletry kits, sports bottles, sports towels, gloves, shirts, hats, pants, t- shirts, underwear, shorts, wristbands, headbands, rain suits, jackets, socks, skirts, athletic sleeves, hoods, skull wraps, skull caps, vests, leggings, headwear for winter and summer, tank tops, bras, and girdles, and its mark UNDER ARMOUR for athletic footwear, sport bags, travel bags, duffel bags, backpacks, and sack pacs. For our determination of likelihood of confusion in this opposition, we focus our decision on Reg. No. 2279668 for the mark UNDER ARMOUR for the above-noted clothing items. 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 factors set forth in In re E. I. du Pont de Nemours and Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). See also, In re Majestic Distilling Co., Inc., 315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir. 2003). Opposer presented evidence and argument on the factors of the similarity of the marks, the relatedness of the Opposition No. 91178653 5 goods, channels of trade, classes of purchasers and the fame of its marks. We begin with the factor of fame because fame “plays a ‘dominant’ role in the process of balancing the du Pont factors.” Recot Inc. v. Becton, 214 F.3d 1322, 54 USPQ2d 1894, 1897 (Fed. Cir. 2000). “[T]he fame of a mark may be 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.” Bose Corp. v. QSC Audio Products, Inc., 293 F.3d 1367, 63 USPQ2d 1303, 1305 (Fed. Cir. 2002). As noted above, the record shows that opposer owns eleven registrations that include the wording UNDER ARMOUR for a variety of clothing and sporting goods, and has been using the mark UNDER ARMOUR in connection with clothing items since the mid-1990s. Battista Test. pp. 6, 32. Throughout the year opposer advertises in a variety of magazines (People, Glamour, Shape, Maxim, Sports Illustrated, Runners World) and newspapers (Battista Test. pp. 55-56), at sporting events such as the Boston Marathon (id. p. 58), on television, including during the Super Bowl (id. p. 72), on billboards, including a block long billboard in Times Square in New York (id. pp. 65-66), on the Internt via banner and search engine advertisements (id. p. 79), and Opposition No. 91178653 6 in stadiums (id. p. 84). In 2008, the Nielsen Rating Company rated Under Armour as the number one viewed brand in product placement for the first quarter. Id. p. 72. Several athletes endorse UNDER ARMOUR clothing (e.g., Alfonso Soriano from the Chicago Cubs and Heather Mitts on the Olympic soccer team). Id. p. 63. In addition, opposer outfits several teams, including U.S. Olympic teams. They also have product placement displaying the mark UNDER ARMOUR in movies and in video games. Opposer is the creator and sponsor of the “All-American Games” and the “Under Armour Senior Bowl” which are games that feature top high school athletes. Id. p. 89. Since 2004, opposer’s revenues and advertising expenditures have more than doubled. Bergman Test. p. 38. In 2007, opposer’s net revenues were $606.6 million, and its advertising and marketing expenses were $218.8 million. Id. pp. 25-26. On this record, we find that opposer has shown that its mark UNDER ARMOUR is famous in the field of sporting goods and clothing and applicant has not submitted evidence or argument to rebut this showing. In view thereof, opposer’s mark is entitled to broad protection. Recot, 54 USPQ at 1897. This brings us then to our consideration of the similarities between opposer’s and applicant’s goods, channels of trade and classes of purchasers. We must make Opposition No. 91178653 7 our determinations under these factors based on the goods as they are recited in the application and registration, respectively. See Octocom Systems Inc. v. Houston Computers Services, Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990) (“The authority is legion that the question of registrability of an applicant’s mark must be decided on the basis of the identification of goods set forth in the application regardless of what the record may reveal as to the particular nature of an applicant’s goods, the particular channels of trade or the class of purchasers to which sales of the goods are directed.”); In re Elbaum, 211 USPQ 636 (TTAB 1981). The record establishes that opposer’s various clothing items and applicant’s underarm clothing shields are related. Both parties’ goods are specifically designed to wick moisture away to keep the wearer dry. Applicant’s goods have the additional purpose of protecting clothing from moisture while opposer’s clothing dries quickly. Battista Test. pp. 11-13, 28 (“...but all of it based on the fact that every item we make is performance, i.e., it is wicking sweat that is performing for you and again, keeping you cool, dry and light.”) Not only are these goods related by common purpose they are also complementary inasmuch as applicant’s clothing shields may be worn with opposer’s clothing items. In addition, opposer submitted several Opposition No. 91178653 8 third-party used-based registrations which show underarm clothing shields and various clothing items, including t- shirts and underwear, under a single mark. See Venture Out Properties LLC v. Wynn Resorts Holdings LLC, 81 USPQ2d 1887, 1893 (TTAB 2007). With regard to the channels of trade and classes of purchasers, in view of the relatedness of the goods, absent restrictions in the identification as to trade channels and purchasers, we must presume that the parties’ goods would be sold in some of the same channels of trade and to some of the same relevant purchasers. See Hewlett-Packard Co. v. Packard Press Inc., 281 F.3d 1261, 62 USPQ2d 1001 (Fed. Cir. 2002); and Octocom, 16 USPQ2d 1783. Further, opposer testified that it sells its goods in full-line sporting goods stores, department stores, outdoor stores, golf pro shops, college bookstores, and its own retail stores, and on its website. Battista Test. p. 14, 47-48. Opposer sells its goods to men, women and youth of all ages. Battista Test. p. 52. Applicant intends to sell its goods in clothing stores and other retail outlets for clothing. App. Response to Opp. Interrog. No. 11. Applicant’s intended purchasers include teenagers, women and men. Interrog. No. 10. In view thereof, the parties channels of trade and purchasers overlap. Opposition No. 91178653 9 We turn now to a consideration of the first du Pont factor, i.e., whether applicant’s mark UNDERARMIES and opposer’s mark UNDER ARMOUR are similar or dissimilar when compared in their entireties in terms of appearance, sound, connotation and commercial impression. We make this determination in accordance with the following principles. The test, under this du Pont factor, is not whether the marks can be distinguished when subjected to a side-by-side comparison, but rather whether the marks are sufficiently similar in terms of their overall commercial impressions 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). The first part of applicant’s mark is identical to the first part of opposer’s mark. Hercules Inc. v. National Starch & Chemical Corp., 223 USPQ 1244, 1246 (TTAB 1984) (“considering the marks NATROL and NATROSOL in their entireties, the clearly dominant aspect of both marks is that the first four letters and the final two are the same.”). See also Palm Bay Imports, 73 USPQ2d 1689; Presto Products Inc. v. Nice-Pak Products Inc., 9 USPQ2d 1895, 1897 (TTAB 1988) (“there are also similarities between them in Opposition No. 91178653 10 that both start with the term ‘KID’ a matter of some importance since it is often the first part of a mark which is most likely to be impressed upon the mind of a purchaser and remembered”). With regard to connotation, as noted by opposer “both marks convey that their respective products may be worn under clothing.” Br., p. 15. We further find that both marks UNDER ARMOUR and UNDERARMIES evoke the idea of soldiers or warriors and applicant’s mark could be viewed as a variation of opposer’s mark for a new item in the product line designed to fight the elements. We acknowledge that applicant’s mark also might be viewed as derived from the word “underarm,” but given the fame of opposer’s mark the points of similarities in sound, appearance and connotation outweigh the dissimilarities and the marks have similar overall commercial impressions. In view thereof, we find the marks to be similar. Considering the respective marks in their entireties, the fame of opposer’s mark, the relatedness of the goods and the overlap in trade channels and purchasers, we conclude that the evidence of record as it pertains to the relevant du Pont factors supports a likelihood of confusion between opposer’s UNDER ARMOUR mark and applicant’s UNDERARMIES mark. Decision: The opposition is sustained. 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