Aktiesels-kabet af 21. November 2001v.Fame Jeans

Trademark Trial and Appeal Board

Jan 30, 2006

No. 91163436 (T.T.A.B. Jan. 30, 2006)

Cataldo Mailed: January 30, 2006

Opposition No. 91163436

Aktieselskabet af 21. November
2001

v.

Fame Jeans, Inc.

Before Hohein, Hairston and Drost,
Administrative Trademark Judges.

By the Board:

Aktieselskabet af 21. November 2001, a Danish
corporation, has opposed the application filed on January 9,
2004 by Fame Jeans, Inc., a Canadian corporation, to
register the mark JACK & JONES for the following goods:
Clothing, namely jeans, pants, slacks with strap
under foot, shorts, skirts, boxer shorts,
culottes, blouses, waistcoats, jackets, coats,
tunics, blazers, dresses; corsages, namely,
bodices to be incorporated into clothing;
bustiers, overalls, pullovers; t-shirts,
underpants, vests, short sleeved vests, sweat
shirt tops, and dungarees; scarves; shawls, ties;
leg warmers; gloves; stockings and socks; tights;
swim wear, namely bathing costumes, bathing trunks
and bikinis; hats, caps; denim jackets; ski wear,
namely ski trousers, ski dungarees, ski overalls,
ski jackets, ski vests and ski jackets with
detachable sleeves; head scarves, neck scarves;
heavy wollen clothing, namely, knitted pants,
knitted shorts, and knitted tops; double breasted
jackets, overcoat, polo shirts, jogging suits,
hats; caps and toques; fleece wear, namely jogging
UNITED STATES PATENT AND TRADEMARK OFFICE
Trademark Trial and Appeal Board
P.O. Box 1451
Alexandria, VA 22313-1451
THIS OPINION IS CITABLE
AS PRECEDENT OF
THE T.T.A.B.
Opposition No. 91163436
2
suits, hooded pullover tops with pouch pockets,
muscle tops, shorts, trousers, sweatshirts,
sweatpants, vests and tank tops; dresses; shoes;
hosiery; lingerie, namely underskirts, panties,
bras, and underwear; men’s ladies and children’s
dress pants, dresses, suits and dress shirts.1
As grounds for opposition, opposer asserts, in pertinent
part of its notice of opposition, that it has sold clothing
under the mark JACK & JONES in “international commerce” well
prior to the filing date of applicant’s challenged
application; that opposer owns numerous registrations
throughout Europe, South America and the Middle East for the
mark JACK & JONES; that as a result of extensive use,
promotion and advertising, opposer has built significant
goodwill in its JACK & JONES mark; that on December 6, 2004,
opposer filed an application for the mark JACK & JONES for
the following goods:

Men's, women's and children's suits, jackets,
trousers, skirts, blouses, dresses, sweaters,
vests, underpants, shorts; articles of sports
clothing, namely shorts, tops, t-shirts,
sweatshirts, sweatpants, tights, body stockings
and socks; hats and headwear; neckties; scarves;
jeans; caps; gloves; belts; footwear; aprons;
swimwear; sleeping garments; knitted articles of
clothing and articles of clothing made from
knitted material, namely sweatshirts, cardigans,
tops, pullovers, slipovers, shawls, scarves, hats,
jackets, socks, and stockings;2

1 Application Serial No. 78350085 was filed based upon
applicant’s assertion of its bona fide intent to use the mark in
commerce.

2 Application Serial No. 78527823 was filed based upon Section
44(e) of the Trademark Act.

Opposition No. 91163436
3
that applicant's involved mark so resembles opposer's
previously used and applied-for mark, JACK & JONES, as to be
likely to cause confusion, or to cause mistake or to
deceive. Applicant denied the salient allegations of the
notice of opposition. In addition, applicant asserted
certain affirmative defenses.
This case now comes before the Board for consideration
of applicant’s motion for summary judgment on the ground of
priority and likelihood of confusion under Trademark Act
Section 2(d). Opposer filed a combined brief in opposition
thereto and a cross-motion for summary judgment on the
ground of priority and likelihood of confusion. Applicant
filed a brief in opposition to opposer’s cross-motion for
summary judgment.
In support of its motion for summary judgment,
applicant essentially argues there is no genuine issue of
material fact as to the following: that its challenged JACK
& JONES mark is identical to opposer’s asserted mark; that
applicant’s clothing goods are identical in part and
otherwise closely related to those of opposer; that
applicant’s intent to use application has priority over
opposer’s subsequently-filed Section 44(e) application; that
opposer has not made any use of its mark in the United
States; that opposer has not made use of its mark in
interstate commerce or commerce with the United States;
that opposer thus cannot claim a date of use that is prior
to the filing date of applicant’s challenged application;
Opposition No. 91163436
4
and that, as a result of the foregoing, opposer cannot
prevail on its claim of priority.
Applicant submitted, as exhibits to its summary
judgment motion, a printed copy of the file history of
opposer’s asserted application Serial No. 78527823 from the
United States Patent and Trademark Office’s Trademark
Information Capture and Retrieval System (TICRS); copies of
applicant’s first set of interrogatories, requests for
production, and requests for admission; and opposer’s
responses to those written discovery requests.
In its combined response and cross-motion for summary
judgment, opposer argues that both parties seek to register
the mark JACK & JONES for clothing; that applicant’s
challenged application is based upon its assertion of a bona
fide intent to use its mark in commerce under Section 1(b)
of the Trademark Act; that applicant has not yet made use of
its mark, either in the United States or elsewhere; that
applicant’s mark thus is not eligible to register until
applicant makes use thereof; that opposer, on the other
hand, bases its application upon ownership of numerous
foreign registrations under Section 44(e) of the Trademark
Act; that opposer thus is not required to make use of its
mark in the United States as a condition of registration;
that, because opposer’s mark is currently eligible for
registration and applicant’s is not, opposer has superior
rights in the JACK & JONES mark; that, in addition,
opposer’s use of its JACK & JONES mark in foreign commerce
Opposition No. 91163436
5
should be recognized in the interest of justice; that
opposer first registered its JACK & JONES mark in Denmark in
1990; that it owns numerous subsequent registrations
therefor; that it has made extensive sales of clothing under
the JACK & JONES mark; that it intends to use the mark in
the United States and is ready to begin doing so; and that,
as a result of opposer’s establishment of its mark
throughout the world, it would be unfair to allow applicant
to register the mark in the United States.
Opposer submitted, as exhibits to its response and
cross-motion, printouts from the Office’s Trademark
Electronic Search System (TESS) and Trademark Applications
and Registrations Retrieval (TARR) records of applicant’s
challenged application as well as opposer’s asserted
application; copies of applicant’s responses to opposer’s
first set of interrogatories and requests for production; a
copy of opposer’s notice of opposition; printed copies of
opposer’s foreign registrations; a July 14, 2005 printout
from opposer’s Internet website; and copies of catalogues,
brochures and other advertisements displaying opposer’s JACK
& JONES mark in association with its goods in foreign
commerce not involving the United States.
As has often been stated, summary judgment is an
appropriate method of disposing of cases in which there are
no genuine issues of material fact in dispute, thus leaving
the case to be resolved as a matter of law. See Fed. R.
Civ. P. 56(c). The party moving for summary judgment has
Opposition No. 91163436
6
the initial burden of demonstrating the absence of any
genuine issue of material fact. See Celotex Corp. v.
Catrett, 477 U.S. 317 (1986); and Sweats Fashions Inc. v.
Pannill Knitting Co., 833 F.2d 1560, 4 USPQ2d 1793 (Fed.
Cir. 1987). A factual dispute is genuine, if, on the
evidence of record, a reasonable finder of fact could
resolve the matter in favor of the non-moving party. See
Opryland USA Inc. v. Great American Music Show Inc., 970
F.2d 847, 23 USPQ2d 1471 (Fed. Cir. 1992); and Olde Tyme
Foods Inc. v. Roundy's Inc., 961 F.2d 200, 22 USPQ2d 1542
(Fed. Cir. 1992). The evidence must be viewed in a light
most favorable to the non-movant, and all justifiable
inferences are to be drawn in the non-movant’s favor. See
Lloyd's Food Products Inc. v. Eli's Inc., 987 F.2d 766, 25
USPQ2d 2027 (Fed. Cir. 1993); and Opryland USA, supra.
After a careful review of the record in this case, we
find that there is no genuine issue of material fact and
that applicant is entitled to judgment as a matter of law.
Turning to the question of priority, we find there is
no genuine issue that applicant is entitled to rely upon the
January 9, 2004 filing date of its intent-to-use application
as its constructive use date for purposes of priority in
this opposition proceeding, subject to applicant’s
establishment of constructive use (by filing an acceptable
allegation of use, resulting in issuance of a registration).
See Section 7(c) of the Trademark Act. See also, for
example, Larami Corp. v. Talk To Me Programs, Inc., 36
Opposition No. 91163436
7
USPQ2d 1840 (TTAB 1995); and Zirco Corp. v. American
Telephone and Telegraph Co., 21 USPQ2d 1542 (TTAB 1991).
Similarly, we find no genuine issue that the earliest date
upon which opposer is entitled to rely for purposes of
priority in this opposition proceeding is the December 6,
2004 filing date of its asserted Section 44(e) application.3
See Section 7(c) of the Trademark Act, supra. See also 1 J.
Thomas McCarthy, McCarthy on Trademarks and Unfair
Competition §16.16 (4th ed. 2005). In its responses to
applicant’s discovery requests, opposer indicates that it
has not made use of the JACK & JONES mark in interstate
commerce or commerce with the United States. Opposer
further states in its response and cross-motion for summary
judgment that while it is prepared to commence use of the
JACK & JONES mark in the United States, it has not done so.
As such, the record in this case reflects that any prior use
of the JACK & JONES mark by opposer is in foreign commerce
not involving the United States. It is well settled that
“[p]riority of trademark rights in the United States depends
solely upon priority of use in the United States, not on
priority of use anywhere in the world.” See 2 J. Thomas
McCarthy, McCarthy on Trademarks and Unfair Competition
§29.02 (4th ed. 2005). Thus, while opposer argues that it
has made extensive foreign use of its mark that is prior to

3 It is noted that opposer does not claim a priority filing date
for its application under Trademark Act Section 44(d).

Opposition No. 91163436
8
applicant’s filing date, such use does not establish
priority of use for purposes of this opposition proceeding.
See Person’s Co. v. Christman, 900 F.2d 1565, 14 USPQ2d 1477
(Fed. Cir. 1990). It is noted that opposer does not claim
in its notice of opposition or in response to applicant’s
motion that its JACK & JONES mark is famous under Paris
Convention Art. 6bis(1). Furthermore, opposer does not
assert, nor does the record reflect, that opposer has made
any common law use of the JACK & JONES mark that would
entitle opposer to assert an earlier priority use date.
See, for example, Lucent Information Management, Inc. v.
Lucent Technologies, Inc., 986 F.Supp 253, 45 USPQ2d 1019
(D.Del. 1997).
In view of the foregoing, we find no genuine issue that
the earliest date upon which opposer may rely for purposes
of priority - that is, the filing date of its asserted
application - is subsequent to the filing date of
applicant’s challenged application. We find therefor as a
matter of law that opposer cannot establish priority of use
of the JACK & JONES mark.
Opposer correctly asserts that applicant must
demonstrate use of the JACK & JONES mark in its Section 1(b)
application prior to registration. However, opposer cites
to no authority for its assertion that because applicant has
not yet demonstrated use of the mark, opposer’s Section
44(e) application provides opposer with superior rights in
the JACK & JONES mark. Furthermore, opposer cites to no
Opposition No. 91163436
9
authority for its assertion that its use of the JACK & JONES
mark in foreign commerce “should be recognized in the
interests of justice.” As noted above, opposer’s use of its
mark in foreign commerce does not confer priority of use
upon opposer for purposes of establishing its claim of
priority in this proceeding.
In sum, opposer has failed to disclose any evidence
that points to the existence of a genuine issue of material
fact on the issue of priority, and applicant has established
that there is no genuine issue of material fact on the issue
of priority and that applicant is entitled to judgment as a
matter of law.
Accordingly, because opposer cannot as a matter of law
establish its claim of priority, applicant's motion for
summary judgment on the ground of priority of use and
likelihood of confusion is granted; opposer's cross-motion
for summary judgment on such ground is denied; and the
opposition is hereby dismissed with prejudice.