ETW Corp.v.Sunburst Products, Inc.

Trademark Trial and Appeal Board

Jan 5, 2001

No. 91111490 (T.T.A.B. Jan. 5, 2001)

1/5/01
Hearing: Paper No. 22
August 2, 2000 ewh/emc
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
_____
Trademark Trial and Appeal Board
______
ETW Corp.
v.
Sunburst Products, Inc.
_____
Opposition No. 111,490
to application Serial No. 75/335,058
filed on August 4, 1997
_____
Siegrun D. Kane of Morgan & Finnegan, L.L.P. for ETW Corp.
Surjit P. Soni of The Soni Law Firm for Sunburst Products,
Inc.
______
Before Hanak, Hairston and Walters, Administrative Trademark
Judges.
Opinion by Hanak, Administrative Trademark Judge:
Sunburst Products, Inc. seeks to register TIGER SHARK
in typed drawing form for “watches, watchbands.” The
intent-to-use application was filed on August 4, 1997. At
the request of the Examining Attorney, applicant stated that
it was the owner of Registration No. 1,640,415 for the mark
SHARK, registered in typed drawing form for “watches.”
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Opposition No. 111,490
2
ETW Corp. (opposer) filed a notice of opposition
stating that prior to August 4, 1997 it filed applications
seeking to register TIGER and TIGER WOODS for watches.
Opposer alleged that applicant’s TIGER SHARK mark “is
confusingly similar to opposer’s TIGER and/or TIGER WOODS
marks.” (Notice of opposition paragraph 12). While opposer
did not make specific reference to Section 2(d) of the
Trademark Act, it is clear that this is the basis for
opposer’s opposition.
Applicant filed an answer which denied the pertinent
allegations of the notice of opposition including in
particular those contained in paragraph 12. Applicant set
forth three “affirmative defenses.” The second “affirmative
defense” is a mere statement that there exists no likelihood
of confusion resulting from the concurrent use of
applicant’s TIGER SHARK mark and opposer’s marks TIGER
and/or TIGER WOODS. The first “affirmative defense”
essentially alleges that applicant has used its existing
mark SHARK in connection with watches since at least as
early as May 1986, and that hence applicant “would be
severely prejudiced if it were prevented from obtaining a
federal registration for its TIGER SHARK mark.” Finally, as
a third “affirmative defense,” applicant alleges that
opposer’s use of TIGER and TIGER WOODS is merely decorative
and/or promotional and does not constitute trademark use.
Opposition No. 111,490
3
The evidentiary record in this case consists of three
notices of reliance properly made of record by opposer. The
first notice of reliance makes of record a certified status
and title copy of opposer’s Registration No. 2,220,957
issued January 26, 1999 for the mark TIGER depicted in typed
drawing form for “watches and parts thereof.” The second
and third notices of reliance make of record portions of
publications consisting of advertisements (exhibit numbers
2-18) or articles (exhibit numbers 19-23) for or regarding
opposer’s TIGER watches. Applicant did not properly make of
record any evidence.
Both parties filed briefs and were present at a hearing
held on August 2, 2000.
Before turning to the merits of this case, some
procedural matters must be resolved. Opposer has filed a
motion requesting that the Board strike the following: (1)
exhibits attached to applicant’s brief which consist of
materials which were not previously introduced into
evidence; (2) portions of applicant’s brief which
purportedly deal with said materials; and (3) all references
in applicant’s brief wherein applicant depicts its mark as
TIGERSHARK (one word) when the mark published for opposition
is TIGER SHARK (two words). Opposer’s motion to strike
materials attached to applicant’s brief which were not
previously properly made of record is granted. It is clear
Opposition No. 111,490
4
that “evidentiary material attached to a brief on the case
can be given no consideration unless it was properly made of
record during the testimony period of the offering party.”
Section 540, Trademark Trial and Appeal Board Manual of
Procedure (1995). Opposer’s motion to strike portions of
applicant’s brief is essentially moot. This Board has read
all of applicant’s brief as well as all of opposer’s brief
and all of opposer’s reply brief. This Board cannot
“strike” from its minds what it has read. However, this
Board will give no consideration to factual statements in
applicant’s brief which are premised on evidentiary
materials which were improperly attached to applicant’s
brief unless said statements serve to assist opposer’s
position and not applicant’s position. Finally, opposer is
correct when it states that applicant throughout its brief
has referred to its mark as TIGERSHARK (one word) when
applicant in reality seeks to register TIGER SHARK (two
words). In reading applicant’s brief, we have treated all
references to TIGERSHARK (one word) as in reality references
to TIGER SHARK (two words).
Applicant has moved to strike opposer’s exhibits 2-23
on the basis that they consist primarily of “print
advertisements” and hence are “irrelevant to the core issue
of likelihood of confusion.” (Applicant’s motion page 2).
Opposition No. 111,490
5
We disagree. These exhibits consist of advertisements and
articles depicting opposer’s TIGER mark. Accordingly, they
are relevant to the issue of likelihood of confusion, and
will be accorded their appropriate weight.
Applicant has also objected to opposer’s exhibits 5, 11
and 22 on the basis that these exhibits come from trade
journals and hence may not be available to the general
public. Again, we disagree. Public libraries routinely
carry trade journals. Thus, they are available to the
general public, although the general public may have little
or no interest in them. Section 708, Trademark Trial and
Appeal Board Manual of Procedure (1995). Finally, applicant
has requested that we strike portions of opposer’s reply
brief. Our response to this request is the same as our
response to opposer’s request that we strike portions of
applicant’s brief.
Turning to the merits of this case, we note at the
outset that priority rests with opposer because opposer has
properly made of record the previously mentioned certified
status and title copy of its registration of TIGER for
“watches and parts thereof.” King Candy Co. v. Eunice
King’s Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108, 110 (CCPA
1974). At this point, it should also be noted that
opposer’s TIGER registration serves to negate applicant’s
third affirmative defense to the effect that opposer has not
Opposition No. 111,490
6
used TIGER as a trademark. Applicant has in no way attacked
opposer’s TIGER registration. Thus, opposer is permitted to
rely upon its TIGER registration as a basis for this
opposition proceeding absent any showing by opposer that it
has actually used TIGER as a trademark. Moreover, in point
of fact, numerous of opposer’s exhibits show that opposer
has used TIGER as a trademark at least for watches in that
this mark appears on the face of the watch.
As for applicant’s first “affirmative defense” that it
would be prejudiced if it did not obtain a registration for
TIGER SHARK in view of its long use of its SHARK mark, we
simply note that not only is said affirmative defense
legally insufficient, but in addition, applicant has not
argued this affirmative defense in its brief. Finally,
applicant’s second “affirmative defense” to the effect that
the contemporaneous use of its mark and opposer’s mark is
not likely to result in confusion is, of course, not a true
affirmative defense but rather is simply an argument that
goes to the merits of the central issue in this proceeding,
which we turn to now.
At the outset, we note that in its briefs, opposer has
made no reference to its purported TIGER WOODS trademark
mentioned in its notice of opposition. Moreover, opposer
has made of record no registration for the mark TIGER WOODS
nor has opposer shown any use of the mark TIGER WOODS in
Opposition No. 111,490
7
connection with watches or any other types of goods. As
opposer notes at page 1 of its brief, “the marks at issue in
this proceeding are TIGER and TIGER SHARK.”
We begin our likelihood of confusion analysis by
acknowledging that opposer’s TIGER registration and
applicant’s TIGER SHARK application both encompass watches
without any limits or restrictions whatsoever as to types of
watches. Thus, the goods of the parties are, in part,
legally identical. Because the goods are identical, many of
the DuPont factors favor opposer’s contention that there is
a likelihood of confusion. When the goods are legally
identical, the channels of trade and purchasers will be
identical. Moreover, because both the registration and the
application list simply “watches,” this encompasses watches
of all types including very inexpensive watches which will
be purchased by ordinary consumers who are not terribly
sophisticated. With regard to the inexpensive nature of the
goods, applicant’s acknowledges at page 11 of its brief that
its watches sell for as little as $24. With regard to the
lack of sophistication of purchasers of inexpensive watches,
we simply note that included in the “evidence” improperly
attached to applicant’s brief is the declaration of Nancy
Anderson who states that applicant sells its products to,
among other groups, “the youth market.” As noted earlier in
this opinion, we will not consider the “evidence” improperly
Opposition No. 111,490
8
attached to applicant’s brief to the extent that it may
assist applicant in making its arguments. However, we will
consider this “evidence” when it assists opposer’s position
in as much as such “evidence” can be considered as an
admission against the interests of applicant.
However, while for the purposes of this opposition
proceeding we must assume that both opposer’s and
applicant’s watches are inexpensive and are purchased by
unsophisticated individuals, we also find that the purchase
of any watch involves at least a modest amount of care by
the purchaser. Purchasers would review watches to select
those that they find appealing. Moreover, most purchasers
of watches would try a watch on to see how it looks and
fits.
Finally, we note that applicant argues that there are
other TIGER marks registered for jewelry and that “there has
been ample opportunity for [actual] confusion” to arise but
none has. (Applicant’s brief pages 14-15). Suffice it to
say, applicant has simply not submitted any evidence to
support either of these factual allegations. In particular,
applicant has not properly submitted any evidence showing
that it has sold even one watch under its TIGER SHARK mark.
Thus, the absence of actual confusion in this case is not a
relevant factor to be considered because applicant has
Opposition No. 111,490
9
simply failed to prove that there has been any chance of
actual confusion to have occurred.
However, having said all of the above, there is one
DuPont factor which clearly favors applicant and which
causes us to find that there is no likelihood of confusion.
Put quite simply, we believe that opposer’s mark TIGER is so
dissimilar from applicant’s mark TIGER SHARK that there is
no likelihood of confusion. Our primary reviewing Court has
made it clear that in appropriate cases, one DuPont factor
can outweigh all of the other factors. Kellogg Co. v.
Pack’em Enterprises, 951 F.2d 330, 21 USPQ2d 1142, 1144
(Fed. Cir. 1991). This is “especially [true] when that
single factor is the dissimilarity of the marks.” Champagne
Louis Roederer v. Delicato Vineyards, 148 F.3d 1373, 47
USPQ2d 1459, 1460 (Fed. Cir. 1998). In Champagne Louis, the
Court affirmed a decision of this Board in which it was
found that the contemporaneous use by applicant of CRYSTAL
CREEK for wine and by opposer of CRISTAL for wine would not
result in a likelihood of confusion.
We find that the dissimilarities in visual appearance,
pronunciation and especially meaning between applicant’s
mark TIGER SHARK and opposer’s mark TIGER are, if anything,
greater than the differences in the marks CRYSTAL CREEK and
CRISTAL. In the present case as in Champagne Louis,
applicant’s mark consists of two words, with the first word
Opposition No. 111,490
10
being identical or nearly identical to the one word mark of
opposer. Put quite simply, we find that the presence of
SHARK in applicant’s mark, like the presence of CREEK in the
prior applicant’s mark, causes the mark to be dissimilar
from opposer’s mark TIGER in terms of visual appearance and
pronunciation.
More importantly, in terms of meaning, the differences
between TIGER SHARK and TIGER are vast. The term “tiger
shark” is a common term which is defined as “a large very
voracious gray or brown stocky-bodied shark that is often a
man-eater.” Webster’s Third New International Dictionary
(1993). A tiger shark is totally different from a tiger.
Moreover, tigers and sharks are well known animals, even to
young children. Even if a youth purchasing a watch did not
know exactly what a tiger shark was, we believe that her or
she would, at a minimum, know that it is a type of shark,
and not a tiger.
The dictionary lists numerous animals whose names
consist of two words with the first word being “tiger.”
These include the following: tiger bass; tiger beetle;
tiger butterfly; tiger finch; tiger fish; tiger frog; tiger
mosquito; tiger moth; tiger python; tiger rattlesnake; tiger
salamander; tiger shark; tiger snake; tiger swallowtail;
tiger weasel; and tiger wolf. Id. We believe that even an
unsophisticated purchaser would distinguish between a tiger
Opposition No. 111,490
11
and any of the forgoing animals. More importantly, we
believe that a youth or other unsophisticated purchaser
would not assume that a watch bearing the mark TIGER and a
watch bearing the mark TIGER SHARK would emanate from a
common source.
In making our finding of no likelihood of confusion, we
have not ignored opposer’s argument that “TIGER SHARK is
likely to be viewed as part of the TIGER line intended for
water sports wear.” (Opposer’s brief page 5). Two comments
are in order. First, opposer has offered no proof that
consumers would perceive TIGER SHARK watches as a line
extension of TIGER watches. Second, in any event, opposer’s
own advertisements repeatedly tout the fact that opposer’s
TIGER watches are “water-resistant and pressure-proof to 200
meters.” (Opposer’s exhibits 5, 11 and 23). Opposer has
already promoted its existing TIGER line of watches as being
fit for water sports wear, and thus there would be no need
for opposer to come out with a TIGER SHARK line of watches
for water sports wear.
We hasten to add that neither in its briefs nor at the
oral hearing did opposer contend that its TIGER mark was
famous. To be clear, at pages 7 and 8 of its brief and at
page 3 of its reply brief opposer has argued that its “TIGER
mark is strong.” Opposer makes this argument on the basis
that TIGER as applied to watches is arbitrary; that there is
Opposition No. 111,490
12
no evidence of third-party use of other TIGER marks for
watches; and that opposer has submitted copies of its
various advertisements for its TIGER watches.
To begin with, we note that the fact that a mark is
arbitrary and not used by others does not make the mark
famous. Moreover, the advertisements which opposer has made
of record (exhibits 2-18) actually undercut any possible
claim of fame for the TIGER mark, a claim which opposer has
not even made. In virtually all of these ads, the mark
TIGER is barely visible and generally appears in very small
lettering on the face of a watch which is depicted within
the ad. The primary focus of these ads is on the famous
golfer Tiger Woods. In addition, even if the mark TIGER had
been more prominently displayed in these ads (which it has
not), opposer has submitted no evidence of the extent of
distribution of these advertisements. Finally, opposer has
provided no sales and advertisement figures with regard to
its TIGER brand of watches.
In short, in finding that there is no likelihood of
confusion, we have done so on the basis that opposer has
never even claimed, much less even remotely proven, that its
TIGER mark is famous.
Decision: The opposition is dismissed.