Balenciaga (S.A.)v.Balega International, LLC

Trademark Trial and Appeal Board

Apr 29, 2009

No. 91161256 (T.T.A.B. Apr. 29, 2009)

Mailed: April 29, 2009

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
______

Balenciaga (S.A.)
v.
Balega International, LLC
substituted for Hickory Throwing Company1
_____

Opposition No. 91161256
_____

Neil F. Greenblum and Todd Hardy of Greenblum & Bernstein, P.L.C.
for Balenciaga (S.A.).

Jonathan P. Spence of Adams Intellectual Property Law, P.A. for
Balega International, LLC.
______

Before Walters, Holtzman and Walsh, Administrative Trademark
Judges.

Opinion by Holtzman, Administrative Trademark Judge:
Balega International, LLC (applicant) has filed an
application to register the mark BALEGA, in standard character
form, for the following goods in Class 25:2

1 The application has been assigned to Balega International, LLC, and
the assignment has been recorded in the Office at reel/frame 2918/0537.
Balega International, LLC is accordingly substituted as defendant in
this case.

2 Application Serial No. 78265492, filed June 21, 2003, based on an
allegation of a bona fide intention to use the mark in commerce.
Although the application does not include a standard character claim,
because the mark is shown in a format that would have been considered
THIS OPINION IS NOT
A PRECEDENT OF
THE TTAB
Opposition No. 91161256
2
Athletic apparel, namely, socks, sports performance
underwear, sports bras, underwear bottoms,
underwear tops, unitary underwear suits, running
shorts, athletic pants, leggings, athletic shirts,
stretch shirts and t-shirts, warmup suits, sweat
suits, sweat shirts, sweat pants, sweat bands, wind
resistant jackets, wind pants, jackets, hats, caps,
and gloves.

The application states that "The foreign wording in the mark
translates into English as 'to move with great speed.'"
Balenciaga (S.A.) (opposer), filed a notice of opposition on
the ground of priority and likelihood of confusion.3 Opposer
alleges that applicant's mark, when applied to applicant's goods,
so resembles opposer's previously registered mark BALENCIAGA for
various items of wearing apparel as shown in Registration No.
1019311 as to be likely to cause confusion.
Applicant, in its answer, admits that opposer is the owner
of the above registration, but denies the remaining salient
allegations.
Evidentiary Matters
Opposer submitted a notice of reliance on materials
including status and title copies of four unpleaded
registrations. Inasmuch as applicant did not object to the
introduction of these registrations, and moreover referenced the

"typed" prior to November 2, 2003 (i.e., the mark is shown in all
capital letters), the drawing of the mark will be treated as a standard
character drawing. See TMEP §807.03(g).

3 To the extent that opposer intended to assert fraud as a ground for
opposition, the claim was not sufficiently pleaded and, furthermore, it
was neither tried by the parties nor argued by opposer in its brief.
Accordingly, the fraud claim will be given no consideration.
Opposition No. 91161256
3
registrations in its brief, we deem opposer's pleading amended to
assert the registrations under Fed. R. Civ. P. 15(b).4
To the extent that opposer's additional materials are not
proper subject matter for submission by notice of reliance under
Trademark Rule 2.122(e), the materials have not been considered.
Thus, we have not considered the article from a third-party
website (item no. 35 from nytimes.com); photographs of clothing
from unidentified sources (item nos. 54-55); or printouts from
applicant's brochures (item no. 56). See Wagner Electric Corp.
v. Raygo Wagner, Inc., 192 USPQ 33, 36 n.10 (TTAB 1976) (catalogs
and other house publications are not publications of general
circulation within the contemplation of the rule). We also point
out that the articles from printed publications are of record
only for what they show on their face, and not for the truth of
any matters stated therein. See TBMP §704.08 (2d ed. rev. 2004).
Applicant, for its part, attached exhibits and affidavit
testimony to its brief on the case. "Exhibits and other
evidentiary materials attached to a party's brief on the case can
be given no consideration unless they were properly made of
record during the time for taking testimony." TBMP §704.05(b)
(2d ed. rev. 2004). Although the parties stipulated to the
introduction of testimony in the form of affidavits, applicant's

4 As opposer points out in its brief, one of the four unpleaded
registrations, namely Registration No. 2424518 for the typed mark
BALENCIAGA for goods in Classes 21 and 24, was cancelled on November 3,
2007 for failure to file a Section 8 affidavit. This registration,
although properly of record, is of no evidentiary value.
Opposition No. 91161256
4
affidavit testimony is untimely, as it was not taken during
applicant's assigned testimony period either as originally set or
reset. Therefore, this testimony has not been considered. The
exhibits will be considered only to the extent that they are
otherwise properly of record.5
The Record
The record includes the pleadings and the file of the
involved application. The record also includes opposer's notice
of reliance on status and title copies of its five registrations
and excerpts from various magazines and newspapers. In addition,
applicant submitted a notice of reliance on opposer's responses
to applicant's first set of interrogatories, and a status and
title copy of its Registration No. 3058183 for the mark shown
below for "athletic apparel, namely, socks, sports performance
underwear, sports bras, underwear bottoms, underwear tops,
running shorts, athletic shirts, stretch shirts and t-shirts,
hats, caps" in Class 25:6

5 This group of affidavits and exhibits was originally submitted by
applicant with an earlier motion for summary judgment, which was denied
by the Board as untimely. Evidence submitted in connection with a
motion for summary judgment is of record only for purposes of that
motion. If the case goes to trial, the summary judgment evidence may
not form part of the evidentiary record to be considered at final
hearing unless it is properly introduced in evidence during the
appropriate testimony period. See TBMP §528.05(a) (2d ed. rev. 2004).
Moreover, applicant's affidavits, both dated January 29, 2008, were not
taken either within the 30-day testimony period which had been reset to
close on February 29, 2008, or within any other reset testimony period.

6 Issued February 7, 2006. The registration states "The mark consists
of the word BALEGA where the 'B' is comprised of the graphic
representation of a man running."
Opposition No. 91161256
5

Applicant also submitted, by stipulation of the parties, the
affidavits of Russell Clark, applicant's president; and Rehanna
Khan, an employee of Adams Intellectual Property Law, P.A.
Both parties have filed briefs.
Standing and Priority
Opposer has established that it is the owner of the
following valid and subsisting registrations:
Registration No. 1019311 for the mark shown below
for the following goods in Class 25:7

wearing apparel for women, as follows; suits,
dresses, overcoats, raincoats, sport-suits and
sport-jackets, hostess gowns, evening wraps,
evening gowns, skirts, blouses, capes,
scarves, handkerchieves, lingerie, hosiery,
stockings, neckties, gloves, apparel belts,
brassieres, dressing-gowns, bathing suits,
hats and berets, shoes and slippers; men's
garments-namely, suits, jackets, overcoats,
raincoats, mufflers, gloves, scarves, ties,
handkerchieves, hosiery, knitted jerseys and
jumpers; and underwear-namely, briefs, slips,
pants, tights, vests, singlets, and t-shirts;

Registration No. 1058309 for the typed mark BALENCIAGA
for "sunglasses and spectacle frames" in Class 9;8

Registration No. 3044207 for the typed mark BALENCIAGA
for "handbags, wallets, purses, and briefcases" in Class
16;9 and

7 Issued August 12, 1975; second renewal.

8 Issued February 8, 1977; second renewal.

9 Issued January 17, 2006.
Opposition No. 91161256
6
Registration No. 3122532 for the mark shown below for
"clothing, namely, dresses, coats, jackets and skirts"
in Class 25.10

Thus, opposer's standing has been established, and its
priority with respect to the registered marks for the goods
identified in those registrations is not in issue. King Candy
Co., Inc. v. Eunice King's Kitchen, Inc., 496 F.2d 1400, 182 USPQ
108 (CCPA 1974).
Likelihood of Confusion
Our determination under Section 2(d) is based on an analysis
of all of the probative facts in evidence that are relevant to
the factors bearing on the likelihood of confusion issue. In re
E.I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA
1973). In any likelihood of confusion analysis, however, two key
considerations are the similarities or dissimilarities between
the marks and the similarities or dissimilarities between the
goods. See Federated Foods, Inc. v. Fort Howard Paper Co., 544
F.2d 1098, 192 USPQ 24, 29 (CCPA 1976) ["The fundamental inquiry
mandated by Section 2(d) goes to the cumulative effect of
differences in the essential characteristics of the goods and the
differences in the marks."].
In our analysis we will focus on opposer's registered mark
and goods which can be considered closest to the mark and goods

10 Issued August 1, 2006.
Opposition No. 91161256
7
in the subject application, namely Registration No. 1018311 for
the mark in stylized form for the various items
of wearing apparel listed therein.
Goods, Channels of Trade, Conditions of Purchase
In evaluating these factors we keep in mind that the
question of likelihood of confusion is determined on the basis of
the identification of goods set forth in the application and
registration, regardless of what the record may show as to the
actual nature of the goods, or the actual channels of trade or
purchasers for the goods. See J & J Snack Foods Corp. v.
McDonalds Corp., 932 F.2d 1460, 1464, 18 USPQ2d 1889, 1892 (Fed.
Cir. 1991); Octocom Systems Inc. v. Houston Computers Services
Inc., 918 F.2d 937, 942, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990);
and CBS Inc. v. Morrow, 708 F.2d 1579, 218 USPQ 198 (Fed. Cir.
1983).
Applicant's athletic apparel, as identified in the
application, includes t-shirts, jackets, hats and gloves. These
goods are identical or legally identical to opposer's apparel
which lists women's hats, and men's t-shirts, jackets and gloves.
Applicant argues that opposer's apparel consists of haute couture
fashion or high-end luxury items. However, opposer's
identification is not limited to such goods. Moreover, the fact
that applicant's goods are described as "athletic apparel" does
not change the nature the basic nature of, for example, a t-
shirt. Both applicant's and opposer's t-shirts, jackets and hats
Opposition No. 91161256
8
could be purchased and worn as either casual clothing or for
everyday sports or workout activities such as running.
Because there are no restrictions in either the application
or registration that would effectively limit the channels of
trade for the goods or their classes of purchasers, these
identical or legally identical goods must be deemed to be sold in
the same channels of trade, including the usual retail outlets
for clothing, and directed to the same purchasers, including
ordinary consumers. See In re Smith and Mehaffey, 31 USPQ2d
1531, 1532 (TTAB 1994) ("Because the goods are legally identical,
they must be presumed to travel in the same channels of trade,
and be sold to the same class of purchasers"). Applicant's
arguments regarding the comparative cost of the parties' items of
clothing and the sophistication of those who purchase them are
unpersuasive. Items of clothing such as t-shirts, hats and
gloves are, or can be, relatively inexpensive, and therefore
likely to be purchased by consumers on impulse, and without a
great deal of care.
Fame or Relative Strength of Opposer's Mark
Because of the deference given to famous marks and dominant
role fame plays in the likelihood of confusion analysis, "it is
the duty of a plaintiff asserting that its mark is famous to
clearly prove it." Blue Man Productions Inc. v. Tarmann, 75
USPQ2d 1811, 1819 (TTAB 2005). We find that the evidence is not
Opposition No. 91161256
9
sufficient on this record to prove that BALENCIAGA is a famous
mark.
Opposer's registration establishes use of the mark
BALENCIAGA as of 1973, the filing date of the underlying
application. See J. C. Hall Company v. Hallmark Cards,
Incorporated, 340 F.2d 960, 144 USPQ 435, 437 (CCPA 1965) ("The
presumption of use emanating from the fact of registration
relates back to the filing date of the application on which the
registration is predicated."). Opposer has provided no evidence
of the amount of its sales or of its advertising expenditures,
and, indeed, limited evidence regarding the nature and extent of
its use of the mark since that date.
In its responses to interrogatories, opposer states in
general terms that its clothing is displayed in fashion shows
with runway presentations; that its clothing is sold in opposer's
retail store in New York City as well as third-party retail
stores and through its website at balenciaga.com. Opposer also
states that its clothing appears on permanent display in the
Costume Institute of the Metropolitan Museum of Art in New York.
The record also shows that opposer has received publicity in
national publications such as WWD (Women's Wear Daily newspaper),
W magazine, Vogue, Harper's Bazaar, and The New York Times.
Opposer has submitted about 50 printouts from these various
publications covering the period from March 1999 to February
2008. However, the vast majority of these printouts consist
Opposition No. 91161256
10
simply of photographs of models, and in a few instances,
celebrities, wearing BALENCIAGA clothing. There are very few
articles that contain more than a brief or passing reference to
BALENCIAGA, and even those that do focus more on the designer for
the Balenciaga fashion house, Nicholas Ghesquiere, rather than
the BALENCIAGA brand.
The evidence submitted by opposer falls short of
establishing fame.11 See, e.g., Packard Press Inc. v. Hewlett-
Packard Co., 227 F.3d 1352, 56 USPQ2d 1351, 1356 (Fed. Cir. 2000)
(noting the importance of evidence such as sales figures and
promotional expenditures in terms of proving the fame of a mark);
and Hard Rock Cafe Licensing Corp. v. Elsea 48 USPQ2d 1400, 1409
(TTAB 1998) (stating, where opposer relied only on printed
publications to prove fame, "Opposer failed to properly introduce
any specific evidence regarding the nature and extent of its
promotion of its mark in connection with its products and
services, U.S. sales figures, advertising and other promotional
expenditures or evidence regarding the reputation of opposer's
mark to the relevant purchasing group.").
Nevertheless, we find that the evidence is sufficient to
show that opposer's mark BALENCIAGA has achieved at least some
degree of recognition and strength in the market and that the

11 Fame is but one of the du Pont factors considered in determining
whether a likelihood of confusion exists. In this case, even if
opposer had established the fame of its mark, we would find that factor
to be outweighed by the du Pont factor regarding the dissimilarity of
the marks at issue. See discussion, infra.
Opposition No. 91161256
11
mark is therefore entitled to a broader scope of protection than
might be accorded a less distinctive mark.
Similarity/Dissimilarity of the Marks
We turn then to a comparison of applicant's mark BALEGA
with opposer's stylized mark, and a determination of
the similarity or dissimilarity of the marks in their entireties
in terms of sound, appearance, connotation and commercial
impression. See du Pont, supra. See also Palm Bay Imports, Inc.
v. Veuve Clicquot Ponsardin, 396 F.3d 1369, 73 USPQ2d 1689 (Fed.
Cir. 2005).
The marks do not resemble one another, either in sound or in
appearance. It is true, as opposer points out, that both marks
are single words that begin with the letters BAL and end with the
letters GA. However, that is where the similarity ends. We
disagree with opposer that BALENCIAGA and BALEGA are "very
similar phonetically" or that they are both "relatively short
words." Opposer's mark is a ten letter word, nearly twice the
length of applicant's six-letter word, and the four additional
letters, "NCIA," create three additional syllables. As a result,
BALENCIAGA has a sound and cadence distinctly different from
BALEGA. Furthermore, the four additional letters appear in the
middle of opposer's mark, rather than at the beginning or the
end, which might tend to make the marks appear more aurally and
visually alike.
Opposition No. 91161256
12
As to meaning, neither BALENCIAGA nor BALEGA is an ordinary
or familiar word. Based on the magazine and newspaper articles
of record, BALENCIAGA identifies the surname of the fashion
designer Cristobal Balenciaga, but there is no evidence that this
is a common surname or anything but an arbitrary term for
clothing. It is not clear what, if any, meaning would be
ascribed to BALEGA. Applicant contends, and the application
states, that BALEGA is a foreign word meaning "to move with great
speed." Although there is no evidence of record to support
applicant's contention, opposer does not dispute that the word
has this meaning. But regardless of whether BALEGA would be
viewed as a foreign word with a recognized English meaning, or a
coined word with no inherent meaning, the meaning of BALEGA is
neither the same as nor similar to BALENCIAGA. Moreover, in view
of the extreme differences between the marks in sound and
appearance, as well as their differences in meaning, the marks as
a whole convey distinctly different commercial impressions.
We find that whatever similarities exist between the marks
are insignificant, and that these insignificant similarities are
far outweighed by the substantial differences.12

12 We disagree with applicant that its registration for the stylized
BALEGA mark is a factor in applicant's favor. To the extent that
applicant is alleging a Morehouse defense based on this registration,
which bars a challenge to a registration if applicant already has
existing, unchallenged registration of same mark for same goods, this
defense was neither pleaded by applicant nor tried by the parties.
Furthermore, whatever exclusive rights applicant may have in the
registered mark, which in view of its highly stylized nature is barely
recognizable as the term BALEGA, such rights would not necessarily
extend to BALEGA in typed or standard character form.
Opposition No. 91161256
13
Conclusion
In view of the foregoing, we find that, notwithstanding the
identity of the goods and the strength of opposer's mark, when
the marks are viewed in their entireties on the respective goods,
the differences will preclude the likelihood that purchasers will
be confused as to the source of the goods. See, e.g., Kellogg
Co. v. Pack 'Em Enterprises, Inc., 951 F.2d 330, 21 USPQ2d 1142
(Fed. Cir. 1991).
Decision: The opposition is dismissed.