Chivas Brothers Ltd.v.Ganador Sports, Inc.

Trademark Trial and Appeal Board

Apr 23, 2004

No. 91150525 (T.T.A.B. Apr. 23, 2004)

Mailed:
April 23, 2004
Paper No. 15
Bottorff
UNITED STATES PATENT AND TRADEMARK OFFICE
_____
Trademark Trial and Appeal Board
______
Chivas Brothers Limited
v.
Ganador Sports, Inc.
_____
Opposition No. 91150525
to application Serial No. 78024069
filed on September 1, 2000
_____
Patrick T. Perkins of Fross Zelnick Lehrman & Zissu, P.C.
for Chivas Brothers Limited.
David A. Einhorn of Anderson Kill & Olick, P.C. for Ganador
Sports, Inc.
______
Before Simms, Bottorff and Holtzman, Administrative
Trademark Judges.
Opinion by Bottorff, Administrative Trademark Judge:
Applicant seeks registration on the Principal Register
of the mark CHIVAS (in typed form) for goods identified in
the application as “hats, tee shirts, jerseys, shorts,
socks, polo shirts, sweatshirts, sweatpants, shoes,
underwear, jackets.”1
1 Serial No. 78024069, filed September 1, 2000. The application
is based on applicant’s asserted bona fide intent to use the mark
in commerce. The application includes the following translation
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT
OF THE TTAB
Opposition No. 91150525
2
Opposer has opposed registration of applicant’s mark,
alleging as grounds therefor that opposer is the prior user
of the marks CHIVAS and CHIVAS REGAL on Scotch whisky and on
collateral products including clothing, that opposer is the
owner of registrations of the marks CHIVAS for “whiskey” and
CHIVAS REGAL for “whisky,”2 and that applicant’s mark, as
applied to the goods identified in the application, so
resembles opposer’s previously-used and registered marks as
to be likely to cause confusion. Trademark Act Section
2(d), 15 U.S.C. §1052(d). Opposer also has alleged that
applicant’s mark is likely to dilute the distinctive quality
of opposer’s pleaded marks. Trademark Act Sections 43(c),
13 and 2(f), 15 U.S.C. §§1125(c), 1063 and 1052(f).3
statement, entered pursuant to the Office’s requirement during
prosecution of the application: “The English translation of
‘CHIVAS’ is ‘goats.’”
2 Registration Nos. 309,456 and 325,152. The disparate spellings
of “whiskey” and “whisky” are as per the registrations. This
opinion will refer to opposer’s goods as “Scotch whisky.” As
discussed more fully infra, opposer failed to properly make
either of these registrations (or the two additional unpleaded
registrations opposer relies on in its brief) of record.
3 On November 1, 2002, opposer filed a motion under Fed. R. Civ.
P. 15(a) for leave to amend its notice of opposition to include
an additional ground of opposition, i.e., that applicant may not
lawfully use in commerce or register the applied-for mark because
such use or registration would be in violation of a Settlement
Agreement and Order which was entered in prior litigation in the
United States District Court for the Eastern District of New York
between opposer and a third party (with whom applicant is in
privity, opposer alleges)(Chivas Brothers Limited and Joseph E.
Seagram & Sons, Inc. v. Club Deportivo Guadalajara, A.C., et al.,
CV 98-7853 (RR)). Review of the opposition proceeding file shows
that opposer’s Rule 15(a) motion, which was not contested by
applicant, was never ruled on by the Board. However, in view of
our decision herein sustaining opposer’s Section 2(d) ground of
Opposition No. 91150525
3
Applicant filed an answer by which it denied the
salient allegations of the notice of opposition and asserted
certain “affirmative defenses” which essentially are further
denials of opposer’s likelihood of confusion and dilution
claims.
At trial, opposer presented evidence, but applicant did
not. Opposer filed a brief on the case, but applicant did
not. No oral hearing was requested. For the reasons
discussed below, we sustain opposer’s Section 2(d) ground of
opposition. In view thereof, we deem opposer’s dilution
ground of opposition to be moot, and we make no findings or
decision thereon.
The evidence of record in this case consists of the
pleadings; the file of the opposed application; certain
third-party registrations made of record by opposer via
notice of reliance; and the testimony deposition of
Christopher John Willis, opposer’s vice-president of
marketing (and exhibits thereto).4
opposition to registration of applicant’s mark (see infra), we
deem this additional ground of opposition, and the Rule 15(a)
motion by which opposer seeks to assert it, to be moot, and we
make no findings or decision thereon.
4 In its brief, opposer refers to a November 27, 2002 testimony
deposition, noticed by opposer, of applicant’s employee
Christopher Olson. The Board’s proceeding file does not include
any transcript for such deposition, nor any record of its having
been filed. However, the only citation in opposer’s brief to
this purported deposition is to a portion thereof which,
according to opposer, shows that neither the witness nor
applicant’s counsel appeared for the deposition. Because the
only argument opposer makes in its brief regarding applicant’s
Opposition No. 91150525
4
Initially, we find that opposer failed to properly make
its pleaded registrations of record. Opposer did not submit
status and title copies of the registrations. See Trademark
Rule 2.122(d). Opposer’s witness, Mr. Willis, identified
the registrations in his testimony deposition, but he did
not testify as to their current status and title.5 Because
the registrations are not of record, opposer is not entitled
to rely on them (or on the statutory presumptions arising
from them) to establish its standing to oppose or its
grounds of opposition in this case. Instead, opposer is
limited to whatever common law rights in its marks it has
proven with competent evidence.
Opposer has proven that it uses the mark CHIVAS REGAL
in commerce on Scotch whisky, as well as on clothing items.
In view thereof, and because opposer’s likelihood of
confusion claim is colorable, we find that opposer has
established its standing to oppose registration of
applicant’s mark. See, e.g., Lipton Industries, Inc. v.
alleged failure to appear at this deposition is that such failure
to appear is itself evidence which supports the additional ground
of opposition which opposer sought to assert by its Rule 15(a)
motion, and because we already have deemed that additional ground
of opposition to be moot (see supra at footnote 3), we shall
overlook opposer’s apparent failure to file the transcript of the
deposition as required by Trademark Rule 2.125.
5 Exhibit No. 18 to Mr. Willis’ deposition is opposer’s amended
complaint (filed February 19, 1999) in the Eastern District of
New York civil litigation (see supra at footnote 3). Copies of
the registrations were attached as exhibits to the amended
complaint, and Mr. Willis identified them as such, but he did not
testify as to their current status and title.
Opposition No. 91150525
5
Ralston Purina Company, 670 F.2d 1024, 213 USPQ 185 (CCPA
1982).
On the issue of Section 2(d) priority, we find that the
earliest date on which applicant may rely is the September
1, 2000 filing date of its intent-to-use application.
Opposer has proven use of its mark CHIVAS REGAL on Scotch
whisky in the United States since prior to that date.
Indeed, in 1999, opposer’s retail sales of CHIVAS REGAL
Scotch whisky totaled $166 million. (Willis Depo. at 11-
13.) We therefore find that opposer has established its
Section 2(d) priority as to the mark CHIVAS REGAL for Scotch
whisky.
However, the evidence of record does not establish that
opposer made use of the mark on any collateral goods,
including clothing, prior to applicant’s September 1, 2000
application filing date. In his December 5, 2002 testimony
deposition, Mr. Willis testified that opposer currently
produces and distributes various clothing items bearing the
mark, and that opposer plans to introduce additional
clothing items in the future. However, he did not testify
as to the date of opposer’s first use of the mark on
clothing items bearing the mark, and we simply cannot
conclude from his testimony (or from any other evidence in
the record) that such use began prior to September 1, 2000.
Opposition No. 91150525
6
Additionally, although opposer has proven prior common
law rights in the mark CHIVAS REGAL for Scotch whisky, the
evidence of record fails to establish that opposer has made
prior (or any) trademark use of the term CHIVAS, per se.
The product labels and consumer-directed advertisements for
opposer’s Scotch whisky which are of record all depict
opposer’s mark as CHIVAS REGAL, not CHIVAS alone.
(Opposer’s collateral products, including clothing items,
likewise all bear the mark CHIVAS REGAL.) Moreover, there
is no evidence in the record from which we might conclude
that consumers know or commonly refer to opposer, or to
opposer’s Scotch whisky, merely as CHIVAS.6 Accordingly,
because opposer’s registration of the mark CHIVAS is not of
record, and because opposer has failed to prove common law
rights in the mark CHIVAS alone, we find that opposer’s mark
is CHIVAS REGAL, for purposes of this proceeding.
In summary, we find that opposer has proven its Section
2(d) priority as to the mark CHIVAS REGAL (not CHIVAS alone)
for Scotch whisky (not clothing).
We turn next to the issue of likelihood of confusion,
i.e., whether applicant’s mark CHIVAS, as applied to the
clothing items identified in the application, so resembles
6 Some of the evidence might suggest that opposer refers to
itself and its product as CHIVAS in intra-company communications
or in communications directed to distributors. There is no
evidence that the end consumer ever sees these communications or
this usage.
Opposition No. 91150525
7
opposer’s previously-used CHIVAS REGAL mark for Scotch
whisky as to be likely to cause confusion, to cause mistake,
or to deceive. Trademark Act Section 2(d). 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 likelihood of confusion factors set forth in
In re E. I. du Pont de Nemours and Co., 476 F.2d 1357, 177
USPQ 563 (CCPA 1973).
The fifth du Pont evidentiary factor requires us to
consider evidence of the fame of opposer’s mark, and to give
great weight to such evidence if it exists. See Bose Corp.
v. QSC Audio Products Inc., 293 F.3d 1367, 63 USPQ2d 1303,
1309 (Fed. Cir. 2002); Recot Inc. v. M.C. Becton, 214 F.3d
1322, 54 USPQ2d 1894 (Fed. Cir. 2000); Kenner Parker Toys,
Inc. v. Rose Art Industries, Inc., 963 F.2d 350, 22 USPQ2d
1453 (Fed. Cir. 1992).
Fame of an opposer’s mark or marks, if it
exists, plays a “dominant role in the process of
balancing the DuPont factors,” Recot, 214 F.3d
at 1327, 54 USPQ2d at 1897, and “[f]amous marks
thus enjoy a wide latitude of legal protection.”
Id. This is true as famous marks are more
likely to be remembered and associated in the
public mind than a weaker mark, and are thus
more attractive as targets for would-be
copyists. Id. Indeed, “[a] strong mark … casts
a long shadow which competitors must avoid.”
Kenner Parker Toys, 963 F.2d at 353, 22 USPQ2d
at 1456. A famous mark is one “with extensive
public recognition and renown.” Id.
Opposition No. 91150525
8
Bose Corp. v. QSC Audio Products Inc., supra, 63 USPQ2d at
1305.
The evidence of record establishes that CHIVAS REGAL is
the number three Scotch whisky brand in the United States,
with a 37% share of the deluxe Scotch whisky market.
(Willis Depo. at 11, 13-14.) Opposer’s retail sales of
CHIVAS REGAL Scotch whisky in the United States for the
years 1999-2001 totaled $470 million. Opposer spends $10
million per year in advertising the brand. (Id. at 15.)
We find that this evidence establishes the fame of opposer’s
CHIVAS REGAL mark, under the fifth du Pont evidentiary
factor. That fame weighs heavily in opposer’s favor in this
case; indeed, in light of the authorities cited above, the
fame of opposer’s mark must be deemed to be a dominant
factor in our likelihood of confusion analysis.
We next must determine whether applicant’s mark and
opposer’s mark, when compared in their entireties in terms
of appearance, sound and connotation, are similar or
dissimilar in their overall commercial impressions. The
test 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 impression 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
Opposition No. 91150525
9
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). Furthermore,
although the marks at issue must be considered in their
entireties, it is well-settled that one feature of a mark
may be more significant than another, and it is not improper
to give more weight to this dominant feature in determining
the commercial impression created by the mark. See In re
National Data Corp., 753 F.2d 1056, 224 USPQ 749 (Fed. Cir.
1985).
Applying these principles here, we find that
applicant’s mark CHIVAS and opposer’s mark CHIVAS REGAL
obviously are identical to the extent that they both include
(or consist of) the word CHIVAS. CHIVAS is the dominant
feature in the commercial impression of opposer’s mark
because it comes first in the mark, see, e.g., Presto
Products, Inc. v. Nice-Pak Products, Inc., 9 USPQ2d 1895
(TTAB 1988), and because the word REGAL is suggestive and
somewhat laudatory. We find that the similarity between the
marks which arises from the presence in both marks of the
word CHIVAS outweighs any dissimilarity arising from the
presence of the word REGAL in opposer’s mark. Viewing the
marks in their entireties, we find them to be similar rather
than dissimilar.
Opposition No. 91150525
10
We turn next to the issue of the relatedness of the
parties’ respective goods. It is not necessary that the
respective goods or services be identical or even
competitive in order to support a finding of likelihood of
confusion. Rather, it is sufficient that the goods or
services are related in some manner, or that the
circumstances surrounding their marketing are such, that
they would be likely to be encountered by the same persons
in situations that would give rise, because of the marks
used thereon, to a mistaken belief that they originate from
or are in some way associated with the same source or that
there is an association or connection between the sources of
the respective goods or services. See In re Martin’s Famous
Pastry Shoppe, Inc., 748 F.2d 1565, 223 USPQ 1289 (Fed. Cir.
1984); In re Melville Corp., 18 USPQ2d 1386 (TTAB 1991); In
re International Telephone & Telegraph Corp., 197 USPQ2d 910
(TTAB 1978).
Opposer has submitted third-party registrations which
show that the marks ABSOLUT, HEINEKEN, BACARDI and JOHNNIE
WALKER are registered for both alcoholic beverages and for
clothing. Although these registrations are not evidence
that the marks shown therein are in commercial use, or that
the public is familiar with them, they nevertheless are
probative evidence to the extent that they suggest that the
goods identified therein are of a type which may emanate
Opposition No. 91150525
11
from a single source under a single mark. See In re Albert
Trostel & Sons Co., 29 USPQ2d 1783, 1785-86 (TTAB 1993); In
re Mucky Duck Mustard Co., Inc., 6 USPQ2d 1467 (TTAB 1988).
The evidence of record shows that opposer itself markets
clothing bearing the CHIVAS REGAL mark, a fact which further
supports a finding that the respective goods are related.
Finally, it is settled that it is a common practice for
owners of marks, especially famous marks, to use those marks
on collateral products, including clothing items. See,
e.g., General Mills Fun Group, Inc. v. Tuxedo Monopoly,
Inc., 648 F.2d 1335, 209 USPQ 986 (CCPA 1981); Turner
Entertainment Co. v. Nelson, 38 USPQ2d 1942 (TTAB 1996).
We find that applicant’s clothing items are
sufficiently related to opposer’s Scotch whisky that source
confusion is likely to result from the parties’ use of the
similar marks involved herein. That is, purchasers familiar
with opposer’s famous CHIVAS REGAL brand of Scotch whisky
are likely to assume, upon encountering clothing items
bearing the mark CHIVAS, that opposer is the source of such
clothing items, or that opposer has sponsored or approved
use of the mark CHIVAS thereon.
Applicant’s identification of goods includes no
limitation or restriction as to trade channels or classes of
purchasers, and we therefore presume that the goods will be
marketed in all normal trade channels for such goods and to
Opposition No. 91150525
12
all normal classes of purchasers for such goods. See In re
Elbaum, 211 USPQ 639 (TTAB 1981). Both applicant’s goods
and opposer’s goods are relatively inexpensive consumer
items which would be purchased by general consumers with no
more than ordinary care.
Considering all of the evidence of record pertaining to
the relevant du Pont factors, and for the reasons discussed
above, we find that a likelihood of confusion exists.
Opposer also having established its standing to oppose and
its priority of use, we sustain opposer’s Section 2(d)
ground of opposition.7
Decision: The opposition is sustained.
7 We deem opposer’s pleaded dilution ground of opposition, and
its proposed additional ground based on the civil action
settlement agreement (see supra at footnote 3), to be moot.