DC Comicsv.Pan American Grain Mfg. Co. Inc.

Trademark Trial and Appeal Board

Aug 24, 2005

No. 91125404 (T.T.A.B. Aug. 24, 2005)

Mailed: August 24, 2005

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

DC Comics

v.

Pan American Grain Mfg. Co. Inc.
________

Opposition No. 91125404
to application Serial No. 76304037
filed on August 23, 2001
_______

Patrick T. Perkins of Fross Zelnick Lehrman & Zissu, P.C.
for DC Comics.

Jay A. Bondell of Schweitzer Cornman Gross & Bondell LLP for
Pan American Grain Mfg. Co. Inc.
_______

Before Seeherman, Hairston and Chapman, Administrative
Trademark Judges.

Opinion by Chapman, Administrative Trademark Judge:
Pan American Grain Mfg. Co. Inc. (a corporation of
Puerto Rico) has filed an application to register on the
Principal Register the mark KRIPTONITA for “prepared
alcoholic fruit cocktail” in International Class 33. The
application is based on applicant’s assertion of a bona fide
THIS DISPOSITION IS
NOT CITABLE AS PRECEDENT
OF THE TTAB
Opposition No. 91125404
2
intention to use the mark in commerce on the identified
goods.1
DC Comics (a New York partnership) filed a notice of
opposition, alleging as grounds therefor that it (and its
predecessors-in-interest) is the publisher of comic books
and magazines featuring comic characters, “including the
world-famous character Superman” (as well as, inter alia,
Batman, Wonder Woman, and The Flash); that the Superman
character was first introduced in a comic book in 1938; that
opposer focuses enormous attention and effort “to develop
the Superman mythos, including the character, his
associates, his world, and other indicia associated with
him”; that opposer’s efforts include a vast array of
literary works, television series, and feature films all of
which result in the Superman mythos, the character and his
universe having “captured the popular imagination”; that
Superman was featured in a radio show from 1940 through
1951, and was the subject of an animated motion picture in
1941, a live action movie in 1948, a live action television
series in 1953, an animated television series in 1966, and
that at least some of these formats continue today (e.g.,

1 This application does not include a translation of the term
“KRIPTONITA.” However, the record here is clear that the term
“kriptonita” is Spanish for “kryptonite.” See Carlin dep., p.
51, Ex. 54; Rubin dep., p. 26; and opposer’s notice of reliance
on applicant’s answer to opposer’s interrogatory No. 3, wherein
applicant stated “…the word ‘KRIPTONITA’ has in fact been used as
the Spanish equivalent of the word ‘KRYPTONITE’, the substance
which weakens the comic book character Superman.”
Opposition No. 91125404
3
the television series “Smallville” which began in 2001);
that opposer has “licensed the Superman character and
related indicia with a broad array of consumer products,
including food products”; that because of opposer’s careful
development of not only the Superman character, but also of
his universe, “Superman has become associated with certain
symbols and indicia which in the public mind are
inextricably linked with the Superman character and which
function as trademarks, both for literary and entertainment
works featuring Superman and for various goods and services
for which [opposer] has licensed others to use these marks”
and that one of these indicia is Kryptonite (a rock from
Superman’s home planet, Krypton, which has a debilitating
effect on his powers); that Kryptonite was first introduced
in a 1943 radio episode, and was first introduced in the
Superman comic book in 1949; that “since its introduction
into the Superman mythos, Kryptonite has come to be
recognized as a powerful symbol standing alone, and is
immediately recognized as associated with and identifying
the character Superman, as well as goods and services
manufactured, distributed and/or licensed by or on behalf of
[opposer]”; that “Kryptonite has become famous and instantly
represents to the public Superman and such goods and
products to consumers”; that since at least 1979, KRYPTONITE
has been affixed to a wide array of products coming from or
Opposition No. 91125404
4
licensed by opposer; that KRYPTONITE is an arbitrary and
famous mark and is thus strong and entitled to a broad scope
of protection; that opposer owned [now expired]
registrations for the mark KRYPTONITE for “t-shirts”2 and
for “novelty item, namely glowing rock”;3 that opposer owns
application Serial No. 75489954 [now registered] for the
mark KRYPTONITE for “toys and sporting goods, including
games and playthings, namely action figures and accessories
therefor”;4 that applicant adopted and applied to register
the mark KRIPTONITA with full knowledge of opposer’s rights
in the Superman character and related indicia and in the
KRYPTONITE mark and with an intent to trade off the good
will of opposer’s marks; that applicant’s identified goods
are related to goods with which opposer has licensed some of
its Superman related indicia; that applicant’s mark, when
used on its identified goods, so resembles opposer’s
previously used and registered mark KRYPTONITE, as to be
likely to cause confusion, mistake, or deception under
Section 2(d) of the Trademark Act; and that applicant’s use
of its mark will violate Section 43(c) of the Trademark Act
because it will “dilute Opposer’s famous mark both by

2 Registration No. 1231983, issued March 22, 1983, expired for
failure to renew in December 2003.
3 Registration No. 1107333, issued November 28, 1978, expired for
failure to renew in September 1999.
4 Application Serial No. 75489954 issued as Registration No.
2656768 On December 3, 2002.
Opposition No. 91125404
5
blurring as well as by tarnishment” as the association of
Superman-related indicia with an alcoholic beverage is
inconsistent with the wholesome image of Superman which
opposer has “carefully cultivated over the last 60 years.”
During its trial period, opposer made of record two
registrations for its mark KRYPTONITE, one for “clothing
namely, T-shirts,”5 and one for “toys and sporting goods,
including games and playthings, namely, action figures and
accessories therefor.”6 Applicant has clearly treated
opposer’s two registrations as of record. (See e.g.,
applicant’s brief, pp. 9 (footnote 2), 15, 19, 25, 28.) To
whatever extent it is necessary, the Board holds that
opposer’s pleading is amended to conform to the evidence
pursuant to Fed. R. Civ. P. 15(b) to include an allegation
of ownership of these registrations.
In its answer applicant admits that opposer owns (the
now expired) Registration Nos. 1231983 and 1107333, as well
as (the now registered) application Serial No. 75489943, but
otherwise denies the salient allegations of the notice of
opposition. Applicant asserts as an “affirmative defense”
that the word “kryptonite” is widely used as a mark by

5 Registration No. 1239506, issued May 24, 1983, Section 8
affidavit accepted, Section 15 affidavit acknowledged, renewed
(not pleaded).
6 Registration No. 2656768, issued December 3, 2002 (pleaded as
an application in the notice of opposition).
Opposition No. 91125404
6
others and any rights of opposer in its KRYPTONITE mark are
of narrow breadth.
Both parties filed briefs on the case;7 neither party
requested an oral hearing.
The record consists of the pleadings; the file of the
opposed application; opposer’s notice of reliance filed
March 1, 2004 (Items A-D); opposer’s testimony, with
exhibits, of (i) Cheryl Rubin, opposer’s vice president
brand management, and (ii) Michael Carlin, opposer’s senior
group editor; applicant’s testimony, with exhibits, of
Geraldine Czachowski, a secretary at applicant’s attorney’s
law firm; applicant’s notice of reliance filed June 1, 2004
(Exhibits A-D); and opposer’s rebuttal testimony, with
exhibits, of Jay Kogan, opposer’s deputy general counsel.
Parties
Opposer, DC Comics, is primarily a publisher of print
media containing stories about various superhero characters-
-the first superhero character being Superman in 1938,
followed by Batman, Wonder Woman, Green Lantern, The Flash,

7 Applicant objected to opposer’s references in its brief on the
case to the court cases of DC Comics v. Kryptonite Corporation
and DC Comics v. Powers as evidence of the purported fame and use
of opposer’s Kryptonite mark because the renown and use of
opposer’s mark or lack thereof, must be determined by the Board
based on the evidence properly before it. Applicant’s objection
is well taken to the extent that it is true the Board must make
its findings based on the evidence before the Board and
independent of the findings of other tribunals. However, there
is nothing improper in a party citing published decisions in its
brief, and therefore the cases have been considered for whatever
value they may have.
Opposition No. 91125404
7
and many others. Opposer’s Superman character appears in
such media as comics (continuously since 1938); comic strips
(from 1939 to the late 1950s and then the 1960s and 1970s);
radio (in the 1940s and again in the 1990s); movies, both
animated and live action, (in the 1940s and then in the
1970s, the 1980s and the 1990s); television (continuously
since the 1950s); video games (since the 1980s); and
Internet “Web-isodes” (since about 2002). Opposer licenses
young adult novels featuring Superman. Opposer’s published
comic books are available in about 45 countries and are
translated into 20 languages, including Spanish.
Opposer has made subtle changes over time to keep the
Superman character and stories current (e.g., body type,
changing Lex Luthor from a mad scientist to a “Trump-like
businessman”). “Kryptonite” was first introduced in the
radio show in 1943 and it first appeared in the comic book
in 1949. It has appeared continuously since that time in
various forms--a rock, a crystal or a gas, generally in a
glowing green color, but it has also appeared in the color
red. According to opposer, “Kryptonite” plays a key role in
the Superman stories as it is the only thing that can bring
Superman down, and it is used at least ten times a year in
the Superman stories (Carlin dep., pp. 33-34). “Kryptonite”
appears in opposer’s “Who’s Who of the DC Universe”
published in 1986. (Carlin dep., p. 34, Exhibit 42.) It
Opposition No. 91125404
8
has appeared in all the media wherein Superman appears,
including the original radio show through to the current
television show “Smallville” and to video games.
When a company obtains a license for the Superman
property it is allowed to use any of the elements of the
Superman mythos or universe including “Kryptonite.” (Rubin
dep., pp. 13-14.)
Opposer receives between 25 and 50 percent of its
revenues from licensing. In the last ten years, DC Comics
received about $1 billion dollars in licensing revenue, the
primary licenses being for the Superman, Batman and Wonder
Woman characters. The Superman character and mark is in
demand by manufacturers, retailers and consumers and it is
licensed in almost every consumer product category,
including clothing, home furnishings (e.g., bedding,
curtains, mirrors, cookie jars, dishes, glassware, lamps,
clocks, picture frames), video games, novelties and gifts
(e.g., magnets, stickers, tattoos), books, toys,
collectibles, foods (e.g., pretzels, peanut butter, nut mix,
cake decorations, cakes, cookies, breakfast cereals, milk),
and publishing. The Superman character and mark is also
licensed for promotions, including branded foods and
beverages, fast food restaurants, and tie-ins with other
consumer goods. There are currently about 1500 licenses for
opposer’s Superman property. Opposer does not license its
Opposition No. 91125404
9
superhero characters or the marks associated with them for
tobacco products, alcoholic beverages, or for political,
religious or controversial subjects. (Rubin dep., pp. 10-
12, 21 and 27-28.) The categories of licensing that are of
“particular importance” to opposer’s licensing program are
toys, apparel, collectibles, theme parks, branded foods and
fast food restaurants. (Rubin dep., pp. 60-61.)
In the 1980s opposer licensed use of the mark
KRYPTONITE for a jewelry pin (Rubin Exhibit 10); in 1997,
opposer licensed use of the mark KRYPTONITE for gum (Rubin
Exhibit 34); and in 2000, opposer licensed a novelty item,
an “authentic replica” of a KRYPTONITE crystal, which sold
for $250 (Rubin Exhibit 14). Opposer has used its mark
KRYPTONITE in promotions and tie-ins with Kraft macaroni and
cheese -- an advertisement features the phrase “It Sure
Beats A Bowl Of Kryptonite” (Rubin Exhibit 37); and Diet
Coke -- an advertisement is headed “Caffeine Free.
Kryptonite Free.” (Rubin Exhibit 30).
Opposer maintains quality control over all licensed
uses, and opposer vigilantly polices the non-authorized uses
of Superman and the indicia related to him, including
“Kryptonite.”
The information of record regarding applicant comes
from applicant’s application file; from applicant’s response
to a 1997 Office action in a related application; and from
Opposition No. 91125404
10
applicant’s answers to certain of opposer’s first set of
interrogatories (the latter items having been made of record
by opposer). Applicant, Pan American Grain Mfg. Co. Inc.,
is a Puerto Rico corporation located in Guaynabo, Puerto
Rico. Applicant intends to sells its prepared alcoholic
fruit cocktail through “supermarkets and warehouses”
(applicant’s answer to opposer’s interrogatory No. 9).
Applicant cannot recall any particular reason for the
selection of the mark KRIPTONITA (applicant’s answer to
opposer’s interrogatory No. 11); but prior to the time of
adopting the mark KRIPTONITA, applicant’s principals “were
aware of Opposer’s mark in association with the comic book
character Superman” (applicant’s answer to opposer’s
interrogatory No. 14).
A proposed label for applicant’s identified goods is
reproduced below:8

8 Opposer introduced one of applicant’s labels at the deposition
of Michael Carlin, opposer’s Exhibit 55. Opposer’s attorney
stated to the witness that the label was produced by applicant in
response to discovery requests. Mr. Carlin testified that the
green color is similar to that used by opposer to denote
KRYPTONITE, that it is glowing and it is crystal-like, that it
appears to be on a snowy background, which is like Superman’s
arctic fortress where he would hide from Kryptonite. (Carlin
dep., pp. 53-54.) Although opposer’s identification of the
exhibit would not be sufficient to authenticate it, applicant has
essentially stipulated to its authenticity and its admission into
the record by acknowledging in its brief on the case that the
label was provided to opposer by applicant. (See applicant’s
brief, p. 27, footnote 10.)
Opposition No. 91125404
11

The only testimony taken by applicant was that of
applicant’s attorney’s secretary who testified with regard
to her assigned project of searching the word “kryptonite”
on a computer search engine; her purchase of several third-
party products with the mark KRYPTONITE; and her finding
several additional websites showing “KRYPTONITE” thereon but
from which she did not purchase products.
Standing
As explained previously, opposer made of record two
current registrations for the mark KRYPTONITE, one for
“clothing namely, T-shirts,” and one for “toys and sporting
goods, including games and playthings, namely, action
figures and accessories therefor.” Without doubt, opposer’s
two registrations and the testimony about its activities
establish that opposer has standing to bring this
opposition. See Cunningham v. Laser Golf Corp., 222 F.3d
Opposition No. 91125404
12
943, 55 USPQ2d 1842 (Fed. Cir. 2000). Moreover, applicant
has not contested opposer’s standing.
Priority
With regard to the issue of priority, because opposer
owns valid and subsisting registrations of its pleaded mark,
the issue of priority does not arise with respect to the
goods listed in the registrations. See King Candy Company
v. Eunice King’s Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108
(CCPA 1974); and Carl Karcher Enterprises Inc. v. Stars
Restaurants Corp., 35 USPQ2d 1125 (TTAB 1995).
Moreover, the evidence of record shows that opposer
used KRYPTONITE as a mark on gum, jewelry pins, a necklace
sold as part of “Smallville action figures, and “authentic
replica” Kryptonite crystals (Rubin dep., Exhibits 34, 10,
6, and 14 and 22, respectively), all prior to August 23,
2001, the constructive use date of applicant’s intent-to-use
application, and the earliest date on which applicant is
entitled to rely. Opposer has also shown that, prior to
applicant’s constructive use date, opposer used KRYPTONITE
in conjunction with promotions for food products and
beverages, specifically, Kraft Macaroni and Cheese Dinners
(Rubin dep., Exhibit 37 -- “IT SURE BEATS A BOWL OF
KRYPTONITE”); and Coca-Cola’s Diet Coke (Rubin dep., Exhibit
30 -- “KRYPTONITE FREE”).

Opposition No. 91125404
13
Likelihood of Confusion
We turn now to a consideration of the issue of
likelihood of confusion. Our determination of likelihood of
confusion 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).
We consider first the du Pont factor of the similarity
or dissimilarity of the marks. Opposer’s mark is KRYPTONITE
and applicant’s mark is KRIPTONITA. The record establishes
that both “kryptonita” and “kriptonita” are used as the
Spanish term for “kryptonite.” Under the doctrine of
foreign equivalents, we must therefore regard the marks,
KRIPTONITA and KRYPTONITE, as being identical. Further,
aside from the fact that they are identical in connotation,
the marks are very similar in appearance and pronunciation,
such that Spanish-speaking people would clearly view the
marks as the same.
We turn to a consideration of the du Pont factor
regarding the similarity or dissimilarity and nature of the
goods. Applicant’s goods are identified as “prepared
alcoholic fruit cocktail.” Opposer owns registrations of
the mark KRYPTONITE for “clothing namely, T-shirts” and for
Opposition No. 91125404
14
“toys and sporting goods, including games and playthings,
namely, action figures and accessories therefor.” These
goods of opposer’s are obviously different from applicant’s
goods. However, it is clear from this record that opposer
uses the mark for more than just these goods. In fact,
KRYPTONITE is a merchandising mark, and it has been used, as
an indicia of the Superman mythos, in promoting food
products and beverages and has been the subject of licenses
for certain collateral products.
It is common knowledge, and a fact of which we can take
judicial notice, that the licensing of commercial trademarks
on “collateral” products has become a part of everyday life.
See Turner Entertainment Co. v. Nelson, 38 USPQ2d 1942,
1945-1946 (TTAB 1996) and cases cited therein. Moreover,
the record shows through testimony and evidence that opposer
uses its Superman superhero as a merchandising mark (there
are currently about 1500 licenses for opposer’s Superman
property), licensing the Superman mark and character for
“just about every consumer products category” and for
promotions including “branded foods and beverages, fast food
promotions, tie-ins with other consumer products” (Rubin
dep., pp. 10-11). Opposer also licenses the Superman
character for “all forms of media” (e.g., movies,
television) and for publishing (Rubin dep., p. 11). Some of
opposer’s licenses for its Superman character include
Opposition No. 91125404
15
clothing (e.g., dresses, slips, socks, pajamas, robes,
shirts, jackets, boots, sandals); watches; greeting cards;
video games; trading cards; toothbrushes; hot chocolate;
breakfast cereal; cakes; chocolate bars; bath sheets;
towels; shower curtains; costumes; dolls; clocks; stickers;
food wrap; cosmetics; pencil cases; playing cards; lunch
boxes; tents; calendars; pedal cars; buttons; figurines; key
chains; sunglasses; chess/checker sets; books; audio
cassettes; kites; purses; wallets; various items of jewelry
(e.g., earrings, necklaces, bracelets); check holders;
bicycle bells; bicycles; combs. Opposer has licensed the
Superman character and mark for food and beverage promotions
and tie-ins with, among other entities, Burger King and
Kellogg’s.
The mark KRYPTONITE is one of the marks that opposer
licenses as a part of the Superman licenses. Although
KRYPTONITE has not been used on the wide variety of goods
that the Superman mark itself has been used, it has been
used on various items. Specifically, and as stated
previously, the record shows that opposer has used the mark
KRYPTONITE through licensees prior to the filing date of
applicant’s application (August 23, 2001), on gum, jewelry
pins, a necklace sold as part of “Smallville” action
figures, and “authentic replica” Kryptonite crystals.
Further, while not technical trademark use, opposer has used
Opposition No. 91125404
16
KRYPTONITE in conjunction with promotions for food products
and beverages, specifically, Kraft Macaroni and Cheese
Dinners (advertisement headed “IT SURE BEATS A BOWL OF
KRYPTONITE”); and Coca-Cola’s Diet Coke (advertisement
headed “KRYPTONITE FREE”).
Consumers are likely to view KRYPTONITE as a
merchandising mark in the same manner that Superman is a
merchandising mark: the “element” to which opposer gave the
name “kryptonite” has been used in the various Superman
stories for so many decades, and is an integral part of the
stories, to the point that it is akin to a character in the
stories. In addition, because opposer coined the word
“KRYPTONITE” for the fictional substance (and therefore it
has no other meaning), when consumers see the term they will
view it as an indicia of the Superman mythos.
While applicant’s prepared alcoholic fruit cocktails
are not the same goods as those on which opposer’s
KRYPTONITE mark has been used or associated,9 the question
is whether the parties’ respective goods are sufficiently
related such that consumers will believe that they come from
or are associated with the same source. That is, in this

9 In fact, opposer’s witnesses testified that because Superman is
a family-friendly, wholesome character, opposer does not license
Superman or any of the indicia such as KRYPTONITE, for goods such
as alcohol and tobacco, or for political, religious, sexual or
controversial matters. (Rubin dep., pp. 12-13 and 78; Carlin
dep., p. 54.)
Opposition No. 91125404
17
marketing environment, including the licensing of commercial
marks, will the purchasing public believe that applicant’s
prepared alcoholic fruit cocktail comes from or is sponsored
by or associated with opposer? On this record, we find that
the answer is in the affirmative. As our primary reviewing
Court stated in Recot Inc. v. M.C. Becton, 214 F.3d 1332, 54
USPQ2d 1894, 1898 (Fed. Cir. 2000): “Even if the goods in
question are different from, and thus not related to, one
another in kind, the same goods can be related in the mind
of the consuming public as to the origin of the goods. It
is this sense of relatedness that matters in the likelihood
of confusion analysis.” The same Court reiterated in the
case of Hewlett-Packard Company v. Packard Press, Inc., 281
F.3d 1261, 62 USPQ2d 1001, 1004 (Fed. Cir. 2002) as follows:
“Even if the goods and services in question are not
identical, the consuming public may perceive them as related
enough to cause confusion about the source or origin of the
goods and services.”
Because opposer has used KRYPTONITE as a merchandising
mark with respect to a variety of goods; because consumers
recognize that, in the general marketing environment,
merchandising marks are used to identify a variety of goods
and services; and because opposer has used the term
KRYPTONITE in connection with the promotion of certain food
and beverage products, we find that, in the sense discussed
Opposition No. 91125404
18
in the Recot and Hewlett Packard cases, applicant’s goods
and opposer’s goods are related. In short, based on the
above, we find that consumers, seeing KRIPTONITA on prepared
alcoholic fruit cocktails, are likely to believe that the
mark has been licensed by opposer for such goods, and that
the goods are therefore sponsored by opposer. See In re
Martin’s Famous Pastry Shoppe, Inc., 748 F.2d 1565, 223 USPQ
1289 (Fed. Cir. 1984); In re Peebles Inc., 23 USPQ2d 1795,
1796 (TTAB 1992); and In re Melville Corp., 18 USPQ2d 1386
(TTAB 1991).
In reaching this conclusion, we note that the relevant
consuming public are adults, because applicant’s goods are
alcoholic beverages that may only be purchased by adults.
Adults, however, would be very aware of the prevalence and
importance of merchandising marks. Moreover, because
“kryptonite” has been involved in the Superman stories since
1943 and is such a well-known part of the story, adult
purchaser’s of applicant’s goods would be aware of the term
“kryptonite” as part of the Superman mythos from their
childhoods, as well as from their exposure to the word as
adults through general entertainment movies and television
programs.
Applicant relies on the case of Paramount Pictures
Corp. v. Romulan Invasions, 7 USPQ2d 1897 (TTAB 1988)
essentially for the proposition that earlier use of a term
Opposition No. 91125404
19
as an element of a literary work does not establish
trademark use. The Paramount case does not apply to the
facts of the case now before us. The opposer therein did
not own a registration for the mark “ROMULAN(S)” and did not
show trademark use of the term on goods (except for space
ship models). In our case, opposer’s mark KRYPTONITE has
been the subject of trademark licensing agreements, it has
actually been used as a trademark pursuant to such licenses,
and it has been registered as a trademark. Thus, here,
there is no question that KRYPTONITE would be regarded as a
trademark and not merely a “character” name.
Applicant has attempted to show that consumers would
not necessarily associate KRYPTONITE with opposer by
pointing to third-party uses and registrations of
KRYPTONITE. Thus, we turn to the du Pont factor of the
number and nature of similar marks in use on similar goods.
Applicant submitted the testimony of applicant’s attorney’s
secretary, Geraldine Czachowski, regarding third-party
websites which include “kryptonite” thereon, which she found
through a search on the Internet, and a notice of reliance
on seven third-party registrations, all of which consist of
or include the term KRYPTONITE.
With regard to the third-party registrations, all are
owned by Kryptonite Corporation: six are for goods in
International Class 6 (e.g., locks), while the remaining one
Opposition No. 91125404
20
is for bicycle parts in International Class 12 and bags in
International Class 18. In 1983, opposer entered into an
agreement with Kryptonite Corporation regarding use of the
term KRYPTONITE on bicycle and motorcycle locks and
accessories by which Kryptonite Corporation agreed to a
limitation on the goods on which it would use the mark
KRYPTONITE, as well as limitations on the manner of its use
so as to avoid confusion. (Kogan dep., Exhibit 5.)
We do not agree with applicant’s general statement that
essentially a consent agreement with one third party is an
admission that another’s use of the mark is not likely to
cause confusion. No such presumption can be made from that
type of agreement. More importantly, we cannot extrapolate
from opposer’s decision to enter into this specific
agreement with Kryptonite Corporation regarding the specific
marks and goods covered by the agreement, and with specific
safeguards to avoid confusion, that there can be no
likelihood of confusion with applicant’s use of KRIPTONITA
for its prepared alcoholic fruit cocktails, which are very
different from the Kryptonite Corporation’s goods.
In addition to these third-party registrations owned by
Kryptonite Corporation, applicant submitted the testimony of
Ms. Czachowski about her search of the word “kryptonite” on
a search engine. As part of her Internet search, she
purchased several items of goods over the Internet which use
Opposition No. 91125404
21
the word “KRYPTONITE,” including a package of capsules,
(Exhibit 3); two bottles of hot sauce (Exhibits 6 and 7);
one Wella liquid hair gel (Exhibit 15); one eye shadow
(Exhibit 17); a coffee mug, a t-shirt and a bumper sticker,
all from the “Kryptonite Music Club” (Exhibits 21-23 and
40); and a metallic paper cosmetic compact (Exhibit 26).
Ms. Czachowski also went to a bicycle shop in Scarsdale, New
York, and purchased locks made by the Kryptonite Corporation
(Exhibits 43-45). In addition, she testified as to numerous
other websites that she visited but from which she did not
purchase anything because, for example, the site offered
services such as web design or the goods were too large or
too expensive to purchase, such as boats (Exhibits 27-40);
and that she found several websites which include different
recipes for drinks called “Kryptonite” (Exhibit 41).
While at first glance it appears there are numerous
third-party uses of KRYPTONITE for various goods and
services, opposer’s cross-examination of Ms. Czachowski and
the testimony of opposer’s rebuttal witness, Jay Kogan, show
that there are only a few relevant and unchallenged third-
party uses. Specifically, opposer has established that the
capsules come from the Netherlands (e.g., Czachowski dep.,
pp. 45-48); that on one of the cosmetic items “Kryptonite”
is used to identify a color shade and not the product (e.g.,
Czachowski dep., p. 52); and that opposer has stopped the
Opposition No. 91125404
22
third-party use by Wella for a hair gel (through a law suit
and settlement –- Kogan dep., Exhibit 2); the use by Figuero
Brothers for hot sauce (through a cease and desist letter
and agreement thereto -– Kogan dep., Exhibit 8); and the use
by Louis Vuitton Liquid Metal Eyes for eye shadow in the
color “Kryptonite” (through a settlement agreement –- Kogan
dep., Exhibit 10). In addition, opposer has entered into a
license with Kryptonite Kollectibles (Kogan dep., pp. 27-
29). As for “Kryptonite Music Club,” their items are sold
on the CafePress.com website. In the past, this entity has
been cooperative when opposer has informed them of
infringing uses, and opposer expects them to remove the
objectionable items from the “Kryptonite Music Club” as
well. (Kogan dep., pp. 30-31).
Jay Kogan also testified that opposer has sent
information on the “KRYPTONITE Performance Boats,” which
sells very expensive custom made racing boats, to opposer’s
outside counsel, but opposer has taken no action as yet in
view of the nature of the product and the very small niche
market in which those boats are sold.
Thus, this record shows only that there are a very few
third-party uses of the mark KRYPTONITE (generally on the
Internet) which have not been stopped by opposer. We cannot
conclude from applicant’s evidence that KRYPTONITE has lost
its strong significance with regard to opposer’s Superman
Opposition No. 91125404
23
character and comic books. To the contrary, some of the
third-party evidence submitted by applicant shows a
connection with the Superman mythos and it appears that
these third parties were attempting to play on this
connection. For example, the labels on the bottles of hot
sauce include a depiction of kryptonite crystals and the
statement “You’ll run for water faster than a speeding
bullet,” which clearly relates to Superman as acknowledged
by Ms. Czachowski (“It is associated with Superman.”
Czachowski dep., p. 50). Similarly, the KRYPTONITE MUSIC
CLUB coffee mug and t-shirt and website all include the
image of a muscular man wearing a cape who “would appear to
be a super hero” (Czachowski dep., p. 55).
We find that there is no significant third-party use of
the mark KRYPTONITE, and this factor therefore does not
favor applicant.
In considering the fifth du Pont factor (the fame of
the prior mark), opposer contends that its mark KRYPTONITE
is strong and entitled to the broadest scope of protection
under the Trademark Act. Applicant argues that opposer’s
KRYPTONITE mark is not strong or famous; that opposer has
submitted “virtually no evidence” of its use as a mark but
only as “a well-recognized element of the Superman stories”
(brief, p. 17); that opposer’s extensive licensing and use
of the Superman character and mark does not establish rights
Opposition No. 91125404
24
in KRYPTONITE as a mark; and that the many third-party uses
of KRYPTONITE undercuts opposer’s assertion that its
involved mark is strong.
We agree with applicant that opposer has not
demonstrated that KRYPTONITE is famous as a mark for its
goods. Opposer has not submitted sales and advertising
figures that apply specifically to its KRYPTONITE mark.
Although the term “kryptonite” has appeared throughout
opposer’s various Superman stories in various media for many
years, such that the term and the mythological element may
be well known, such notoriety does not constitute fame for
purposes of the du Pont factor, which deals with the fame of
the mark, not merely the fame of the term. But there is no
doubt on this record that opposer engages in an extensive
licensing program for a broad range of merchandise and
opposer has shown some such licensing with specific regard
to its KRYPTONITE mark. Further, KRYPTONITE is a coined
word and, as such, is entitled to a broader scope of
protection.
Evidence of applicant’s bad faith adoption is pertinent
to our likelihood of confusion analysis under the thirteenth
du Pont factor. Opposer argues that applicant’s intent in
selecting the mark KRIPTONITA was to trade off of opposer’s
goodwill; that applicant applied for the mark KRIPTONITA
knowing that it had no meaning other than as the Spanish
Opposition No. 91125404
25
equivalent of the word for KRYPTONITE, the substance which
weakens the comic book character Superman (opposer’s notice
of reliance, Item B); that one of applicant’s proposed
labels features a glowing green crystal recognizable as a
depiction of KRYPTONITE from opposer’s Superman comics; and
that applicant acknowledged that it was aware of opposer’s
mark in association with the comic book character prior to
adopting the mark KRIPTONITA.
Applicant argues that mere knowledge of another’s mark
is not sufficient to establish wrongful intent; and that
opposer cannot establish applicant’s intent to trade off of
opposer’s goodwill “merely because applicant’s mark might
call to mind the element that overpowers superman.” (Brief,
p. 26.)
From this cumulative evidence, particularly,
applicant’s acknowledgement that it applied for the mark
KRIPTONITA knowing it was Spanish for KRYPTONITE, the name
of the substance in the Superman stories; and that its
proposed label clearly depicts a green “kryptonite” crystal,
we find that applicant’s adoption of the mark KRIPTONITA was
in bad faith, with the intention to trade off of opposer’s
KRYPTONITE mark. Such bad faith intent is strong evidence
that confusion is likely as such an inference is drawn from
the imitator’s own expectation of confusion. See Broadway
Catering Corp. v. Carla Inc., 215 USPQ 462 (TTAB 1982). See
Opposition No. 91125404
26
also, DC Comics, Inc. v. Powers, et al., 465 F.Supp. 843,
201 USPQ 99 (SDNY 1978).
On the basis of the preceding discussion of the factors
favoring opposer, we find that opposer has established its
claim of likelihood of confusion. See Time Warner
Entertainment Co. v. Jones, 65 USPQ2d 1650 (TTAB 2002). See
also, Conan Properties, Inc. v. Conans Pizza, Inc., 752 F.2d
145, 225 USPQ 379 (5th Cir. 1985); Warner Bros., Inc. v. Gay
Toys, Inc., 658 F.2d 76, 211 USPQ 1017 (2nd Cir. 1981); and
American Footwear Corp. v. General Footwear Co., Ltd., 609
F.2d 655, 204 USPQ 609 (2nd Cir. 1979). Cf. Viacom
International Inc. v. Komm, 46 USPQ2d 1233 (TTAB 1998).
Applicant, as the newcomer, had the obligation to
select a mark which would avoid confusion, but it did not do
so. Therefore, to the extent there is any doubt on the
issue of likelihood of confusion, such doubt must be
resolved in favor of opposer. See TBC Corp. v. Holsa Inc.,
126 F.3d 1470, 44 USPQ2d 1315 (Fed. Cir. 1997); and In re
Hyper Shoppes (Ohio) Inc., 837 F.2d 840, 6 USPQ2d 1025 (Fed.
Cir. 1988).
Because we find opposer has established its likelihood
of confusion claim, we do not reach its claim of dilution
under Section 43(c) of the Trademark Act.
Opposition No. 91125404
27
Decision: The opposition is sustained on the ground of
likelihood of confusion under Section 2(d) of the Trademark
Act.