Addict, Ltd.v.GS & G, Inc. USA

Trademark Trial and Appeal Board

Jan 2, 2009

No. 92046699 (T.T.A.B. Jan. 2, 2009)

Mailed:
January 2, 2009

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
______

Addict, Ltd.

v.

GS & G, Inc. USA
_____

Cancellation No. 92046699
_____

John R. Sommer, Esq. for Addict, Ltd.

Richard S. Ross, Esq. for GS & G, Inc. USA.
______

Before Zervas, Bergsman and Ritchie, Administrative
Trademark Judges.

Opinion by Zervas, Administrative Trademark Judge:

On January 10, 2006, Registration No. 3039758 (“the
‘758 registration”) for the mark ADDICT (in standard
character form) issued on the Principal Register to GS & G,
Inc. USA (“respondent” or “Defendant”) for “retail store
services featuring clothing” in International Class 35,
based on an application filed on January 4, 2005. The ‘758
registration recites dates of first use anywhere and first
use in commerce on August 12, 2004.
THIS OPINION IS NOT A
PRECEDENT OF
THE TTAB
Cancellation No. 92046699
2
Addict, Ltd. (“petitioner” or “Addict”) has filed a
petition to cancel the ‘758 registration, alleging that
petitioner owns a trademark application (Serial No.
78852067) for ADDICT for various clothing items in
International Class 25, which the Office refused
registration in view of respondent’s registration.
Petitioner further alleges that prior to respondent’s
claimed first use date, petitioner has been and is now
(i) engaged in the business of manufacturing, promoting,
distributing, and selling clothing worldwide and in the
United States under the ADDICT and ADDICTWEAR marks; and
(ii) providing retail store services featuring clothing
under the ADDICT mark. Additionally, petitioner claims
that it owns Registration No. 2310612 (the ‘612
registration) for the mark ADDICTWEAR (in standard character
form) for “sportwear clothing, namely, shirts, shorts, hats,
pants, jackets and socks” in International Class 25.
According to petitioner, “[i]n the event there is any
conflict between the Addict’s rights and marks and
Defendant’s right and marks, Addict clearly has priority
over Defendant as to clothing under the ADDICT and
ADDICTWEAR marks and as to retail store services under the
ADDICT mark.”
Respondent has filed an answer to the petition to
cancel in which it denied petitioner's salient allegations.
Cancellation No. 92046699
3
The record consists of (i) the pleadings; (ii) the file
of the involved registration; (iii) petitioner's notice of
reliance in which it made of record, among other items, a
certified copy of the ‘612 registration showing the status
and title of this registration,1 a copy of “part or all” of
the file history of petitioner's pending application Serial
No. 78852067 (including an Office action in which the
assigned examining attorney has refused registration of
petitioner's mark in view of the ‘758 registration), and
respondent’s responses to various discovery requests
propounded by petitioner; and (iv) the trial testimony of
(a) Merwin Andrade, the owner of a clothing store named
Memes in New York City, and exhibits, (b) David Jefferies,
petitioner’s Director of Sales, and exhibits, and (c) Piers
Kannangara, petitioner’s Managing Director, and exhibits.
In addition, the parties filed a stipulation on May 19, 2008
providing that petitioner “stipulates that Respondent
GS & G, Inc. USA, has made continuous United States
interstate commerce use of its ADDICT mark for the services
set forth in U.S. Reg. No. 3,039,758 since at least as early
as August 12, 2004.”

1 The ‘612 registration was filed on April 15, 1998, claims first
use anywhere and first use in commerce in March 1996 and issued
on January 25, 2000. Section 8 accepted and Section 15
acknowledged. Also, Mr. Kannangara has testified that petitioner
uses the ADDICTWEAR mark on clothing in the United States.
Kannangara dep. p. 47.

Cancellation No. 92046699
4
Petitioner has filed a main brief; respondent has not
filed any evidence or a main brief.
Preliminary Issue
Petitioner has not specifically asserted a likelihood
of confusion or referenced Section 2(d) of the Trademark
Act, 15 U.S.C. § 1052(d), in its pleading. However, the
parties have proceeded as though likelihood of confusion is
an issue at trial, with respondent’s attorney participating
in the testimonial depositions of Messrs. Jeffries,
Kannangara and Andrade, during which petitioner elicited
testimony regarding matters pertaining to likelihood of
confusion, without objection from respondent. Indeed, at
one point in Mr. Jeffries testimonial deposition
respondent’s attorney stated, “[I]f it would help, I think
the client is willing to stipulate to the issue of
confusion.” Jeffries dep. at 71. We therefore consider
respondent to have been fairly apprised that petitioner was
offering evidence in support of the likelihood of confusion
issue and find that the likelihood of confusion issue was
tried by the consent of the parties. See TBMP § 507.03(b)
(2d ed. rev. 2004) and cases cited therein.
Standing
Petitioner has submitted proof that it is the owner of
the ‘612 registration, and that the registration is valid
and subsisting. Cunningham v. Laser Golf Corp., 222 F.3d
Cancellation No. 92046699
5
943, 55 USPQ2d 1842 (Fed. Cir. 2000); and Lipton Industries,
Inc. v. Ralston Purina Co., 670 F.2d 1024, 213 USPQ 185
(CCPA 1982). Additionally, petitioner has submitted proof,
that it is the owner of application Serial No. 78852067 for
ADDICT which has been refused registration in view of
respondent's ‘758 registration. In view of such evidence,
petitioner has established its standing. See Great Seats,
Ltd. v. Great Seats, Inc., 84 USPQ2d 1235 (TTAB 2007).
Priority
Because this is a cancellation proceeding, petitioner
does not necessarily have priority simply because it owns a
registration. Brewski Beer Co. v. Brewski Brothers, Inc.,
47 USPQ2d 1281, 1284 (TTAB 1998) (the “Board has taken the
position, in essence, that the registrations of each party
offset each other; that petitioner as a plaintiff must, in
the first instance, establish prior rights in the same or
similar mark ….”). In this case, the parties have
stipulated that respondent “has made continuous United
States interstate commerce use of its mark ADDICT for the
services set forth in U.S. Reg. No. 3,039,758 since at least
as early as August 12, 2004.” This date is earlier than the
January 4, 2005 filing date of the underlying application
for respondent’s ‘758 registration, on which respondent may
also rely. See Intersat Corp. v. International
Telecommunications Satellite Organization, 226 USPQ 154, 156
Cancellation No. 92046699
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n. 5 (TTAB 1985) (“The earliest date of first use upon which
Intelsat can rely in the absence of testimony or evidence is
the filing date of its application.”). Inasmuch as
petitioner's use-based application that matured into
petitioner's pleaded ‘612 registration was filed on April
15, 1998, a date earlier than the stipulated date of August
12, 2004 for “retail store services featuring clothing,”
petitioner has priority in connection with the goods set
forth in the ‘612 registration, “sportwear clothing, namely,
shirts, shorts, hats, pants, jackets and socks.”2 We hence
award priority to petitioner.
Likelihood of Confusion
Our determination under Section 2(d) is based on an
analysis of all of the facts in evidence that are relevant
to the factors bearing on the issue of likelihood of
confusion. In re E. I. du Pont de Nemours & Co., 476 F.2d
1357, 177 USPQ 563 (CCPA 1973). See also, In re Majestic
Distilling Company, Inc., 315 F.3d 1311, 65 USPQ2d 1201
(Fed. Cir. 2003). In considering the evidence of record on
these factors, we keep in mind that “[t]he fundamental
inquiry mandated by §2(d) goes to the cumulative effect of
differences in the essential characteristics of the goods
and differences in the marks.” Federated Foods, Inc. v.

2 We need not consider petitioner's allegation of priority based
on common law use of ADDICT in light of our disposition of this
case based on petitioner's pleaded registration.
Cancellation No. 92046699
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Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA
1976).
We consider first the similarity or dissimilarity of
petitioner's and respondent’s marks. We determine whether
the marks are similar in sound, appearance, meaning, and
commercial impression. Palm Bay Imports Inc. v. Veuve
Clicquot Ponsardin, 396 F.3d 1369, 73 USPQ2d 1689 (Fed. Cir.
2005).
Petitioner's ADDICTWEAR mark consists of two
components, ADDICT and WEAR. “Wear” is defined in Merriam-
Webster’s Online Dictionary, located at merriam-webster.com,
as: “2 a: clothing or an article of clothing usually of a
particular kind; especially : clothing worn for a special
occasion or popular during a specific period b: FASHION,
VOGUE.”3 Because WEAR merely describes a feature of the
goods, i.e., clothing, ADDICT is the dominant term in
petitioner's mark. The Federal Circuit has recognized that
there is nothing improper in giving more weight, for
rational reasons, to a particular portion or feature of a
mark. See In re National Data Corp., 753 F.2d 1056, 224
USPQ 749 (Fed. Cir. 1985). According to the court, “the

3 The Board may take judicial notice of dictionary definitions,
including online dictionaries which exist in printed format. See
In re CyberFinancial.Net Inc., 65 USPQ2d 1789, 1791 n.3 (TTAB
2002). See also University of Notre Dame du Lac v. J. C. Gourmet
Food Imports Co., Inc., 213 USPQ 594 (TTAB 1982), aff'd, 703 F.2d
1372, 217 USPQ 505 (Fed. Cir. 1983). We take judicial notice of
this definition of “wear.”
Cancellation No. 92046699
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‘descriptive component of a mark may be given little weight
in reaching a conclusion on the likelihood of confusion.’”
Cunningham, 55 USPQ2d at 1846, quoting, National Data Corp.,
224 USPQ at 752.
The dominant term in petitioner's mark is identical to
respondent’s mark. Because the additional term WEAR does
not significantly change the meaning of petitioner's mark,
we find that the marks are similar in meaning and commercial
impression. They are also similar in sound and appearance
in view of the shared term ADDICT, with ADDICT being the
first term in petitioner's mark. See, e.g., In re Dixie
Restaurants, 105 F.3d 1405, 41 USPQ2d 1531 (Fed. Cir. 1997)
(likelihood of confusion with addition of the words “The”
and “Café” and a diamond-shaped design to registrant's DELTA
mark); and In re Denisi, 225 USPQ 624, 624 (TTAB 1985) (if
“the dominant portion of both marks is the same, then
confusion may be likely notwithstanding peripheral
differences.”) Any differences in the marks due to
petitioner's inclusion of the term WEAR are outweighed by
the similarity due to the shared term ADDICT. The du Pont
factor regarding the similarity of the marks is therefore
resolved in favor of finding a likelihood of confusion.
Next, we consider the du Pont factor regarding the
similarity or dissimilarity and nature of the goods and/or
services. Such goods and services are similar if they are
Cancellation No. 92046699
9
related in some manner. See In re Melville Corp., 18 USPQ2d
1386 (TTAB 1991).
The record reflects that clothing companies use the
same mark on both their clothing and clothing stores. See
Kannangara dep. at 50; Jefferies dep. at 44, 66 and 74; and
third party registrations submitted with petitioner's notice
of reliance, from petitioner's application Serial No.
78852067.4 This evidence suggests that consumers would
consider the source of clothing and retail sales of clothing
to be the same when sold or provided under similar marks.
Additionally, the Board has found in the past that clothing
and retail sales of clothing are related for purposes of the
likelihood of confusion analysis. See In re Peebles, Inc.,
23 USPQ2d 1795 (TTAB 1992) (MOUNTAINHIGH for clothing,
namely coats sold in applicant's store is likely to cause
confusion with MOUNTAIN HIGH for retail outlet store
services for camping and mountain climbing equipment); and
In re Gerhard Horn Investments, Ltd., 217 USPQ 1181 (TTAB
1983) (MARIPOSA for retail women's clothing store services
is likely to cause confusion with MARIPOSA for woven and
knit fabrics of cotton, acrylic and polyester). Because
there is a relationship between clothing and retail clothing

4 The third-party registrations serve to suggest that the goods
and services are of a type which may emanate from a single
source. See In re Albert Trostel & Sons Co., 29 USPQ2d 1783
(TTAB 1993).

Cancellation No. 92046699
10
store services, we resolve the du Pont factor regarding the
goods and services in petitioner's favor.
Petitioner has said little in its brief about the du
Pont factor concerning the similarity or dissimilarity of
trade channels. We point out that our determination of the
likelihood of confusion issue is based on the identification
of goods and services as recited in the registrations. See
Hewlett-Packard Co. v. Packard Press Inc., 281 F.3d 1261, 62
UPSQ2d 1001 (Fed. Cir. 2002); and Octocom Systems Inc. v.
Houston Computer Services Inc., 918 F.2d 937, 16 USPQ2d 1783
(Fed. Cir. 1987). Because there are no restrictions as to
channels of trade or classes of purchasers in either
petitioner's identification of goods or respondent’s
identification of services, we presume that petitioner's
items of clothing travel in all channels of trade normal for
such goods, and that they are available in retail stores,
such as respondent’s retail stores, and sold to the general
public. We find, therefore, that the trade channels for
petitioner's clothing and respondent’s retail store services
featuring clothing are the same and that petitioner's
clothing and respondent’s services are offered to the same
class of purchasers.
We turn next to the du Pont factor regarding actual
confusion. Petitioner maintains that “[v]arious friends of
Mr. Jefferies who have traveled to Miami have asked him
Cancellation No. 92046699
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about the GS&G shop because even though it is called
‘Addict’ it caries no ADDICT products.” Brief at p. 22,
citing to Jefferies dep. at 71 – 72. Because there is no
indication in the record that Mr. Jefferies’ friends are
purchasers or even potential purchasers of petitioner's
goods, we give Mr. Jefferies testimony in this regard
limited weight. The du Pont factor regarding actual
confusion is neutral in our analysis.
Considering and evaluating all of the evidence as it
pertains to the relevant du Pont factors discussed above, we
conclude that a likelihood of confusion exists.5
Respondent's mark is sufficiently similar to petitioner's
registered mark that use of respondent’s mark on
respondent’s services related to petitioner's goods is
likely to lead to confusion as to source, sponsorship or
affiliation.
DECISION: The petition to cancel Registration
No. 3039758 is granted.

5 Petitioner contends that it has used its mark on a wide variety
of goods, but has not submitted proof of which of such uses was
in the United States. Petitioner's contention therefore is not
persuasive.