Under Armour, Inc.v.Renee Bode

Trademark Trial and Appeal Board

May 21, 2009

No. 91178653 (T.T.A.B. May. 21, 2009)

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
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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
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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.