FALKE KGaAv.Akif M. Tahir

Trademark Trial and Appeal Board

Feb 27, 2020

91248453 (T.T.A.B. Feb. 27, 2020)

Mailed: February 27, 2020

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

FALKE KGaA

v.

Akif M. Tahir
_____

Opposition No. 91248453
_____

Jennifer Fraser and Marsha G. Gentner of Dykema Gossett, PLLC for FALKE
KGaA.
Akif M. Tahir, pro se.

Before Thurmon, Deputy Chief Administrative Trademark Judge, Bergsman and
Heasley, Administrative Trademark Judges.

Opinion by Thurmon, Deputy Chief Administrative Trademark Judge:

Akif M. Tahir (“Applicant”) seeks registration on the Principal Register of the
mark MI FALCON (in standard characters) for “Athletic apparel, namely, shirts,
pants, jackets, footwear, hats and caps, athletic uniforms” in International Class 25.1

1 Application Serial Number 88191888 was filed on November 13, 2018, based on Applicant’s
alleged bona fide intent to use the mark in commerce under Section 1(b) of the Trademark
Act, 15 U.S.C. § 1051(b).
This Opinion Is Not a
Precedent of the TTAB
Opposition No. 91248453

2

FALKE KGaA (“Opposer”), opposes registration based on 13 registrations of marks
that consist of or include the term FALKE for a variety of clothing goods in
International Class 25,2 alleging priority and a likelihood of confusion under Section
2(d) of the Trademark Act. 15 U.S.C. § 1052(d). The parties agreed to Accelerated
Case Resolution (“ACR”)3 and the proceeding is now ready for final decision. We find
confusion is likely and therefore sustain the Opposition.
I. The ACR Stipulations and the Record
The Board’s ACR Order includes the following stipulations:4
• Opposer’s priority based on its pleaded registrations is not at issue.
• The parties would submit no evidence other than Opposer’s pleaded
registrations and any evidence for which the Board could take judicial
notice.
• The Board may resolve any genuine disputes of material fact that may be
presented by the record or which may be discovered by the panel
considering the case at final decision.
On October 1, 2019, Opposer filed a consented-to extension of the briefing schedule
that also contained the following statement, “In addition to the ACR procedures set
forth in the September 16, 2019 Order, the parties agree to allow the use of

Page references to the application record are to the downloadable .pdf version of the USPTO’s
Trademark Status & Document Retrieval (TSDR) system. References to the pleadings,
evidence, and briefs are to the Board’s TTABVUE docket system.
2 Registration numbers 1201185, 2560835, 2766806, 3602663, 4409146, 4420302, 5153280,
5253066, 5366769, 5372081, 5398503 and 5706251 all include clothing goods in International
Class 25. Some of these registrations cover goods in other classes. Registration number
4204219 identifies retail store services in International Class 35, but no clothing goods. As
noted below, priority was stipulated to by the parties, so we dispense with a detailed listing
of the priority dates of these pleaded registrations.
3 8 TTABVUE.
4 Id. at 2.
Opposition No. 91248453

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Declarations to introduce evidence during briefing.”5 On October 9, 2019, the Board
issued an Order granting the motion “to extend the ACR briefing schedule” but made
no mention of the revised evidentiary stipulation.6 The original stipulations,
therefore, remained in place when the briefs were filed and Opposer’s additional
evidence, submitted with declarations, was technically improper. Opposer
acknowledges this fact in its Brief and asserts that it attempted to resolve this issue
with the Board prior to filing its Brief.7
Our ACR process is meant to be flexible and to encourage the parties to reach
agreements on issues and procedures. The October 1 filing by Opposer reflects an
agreement by the parties to allow evidence to be submitted with declarations, and
that is what Opposer did when its primary brief was filed less than two weeks after
the Board’s October 9 Order. Opposer should have requested reconsideration of its
October 1 motion, rather than assuming that the Board would agree to expand the
scope of allowable evidence after briefs were filed. But because the parties agreed to
allow evidence by declaration, we order that the original evidentiary stipulation is
modified as requested in Opposer’s October 1 motion.
The record, therefore, includes the Application and its file by operation of
Trademark Rule 2.122(b), 37 C.F.R. § 2.122(b), the 13 registrations pleaded by
Opposer and the additional evidence submitted with the Fraser and Maniura

5 9 TTABVUE 2.
6 10 TTABVUE.
7 14 TTABVUE 8 n.1.
Opposition No. 91248453

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declarations.8 We mention specific evidence below within the context of our analysis
of Opposer’s claim.
II. The Section 2(d) Claim
To prevail, Opposer must prove three things: 1) that it has standing to bring this
Opposition; 2) that it has priority; and, 3) that there is a likelihood of confusion.
A. Standing
Standing is a requirement that must be established in every inter partes
proceeding. Empresa Cubana Del Tabaco v. Gen. Cigar Co., 753 F.3d 1270, 111
USPQ2d 1058, 1062 (Fed. Cir. 2014); John W. Carson Found. v. Toilets.com Inc., 94
USPQ2d 1942, 1945 (TTAB 2010). Opposer’s standing is established by its pleaded
registrations, which the record shows to be valid and subsisting, and owned by
Opposer.9 See, e.g., Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842,
1844 (Fed. Cir. 2000); Otter Prods. LLC v. BaseOneLabs LLC, 105 USPQ2d 1252,
1254 (TTAB 2012).
B. Priority
The parties stipulated to Opposer’s priority based on its pleaded registrations.10
Opposer also alleges use of “the FALKE trademark in commerce in the United States
for various clothing items for many years and long before Applicant filed the ‘888
Application or had any rights in Applicant’s Mark.”11 We treat this allegation as an

8 11 TTABVUE, 12 TTABVUE and 15 TTABVUE, respectively.
9 1 TTABVUE 10-14 (listing the pleaded registrations), Exhibit A (Trademark Electronic
Search System (“TESS”) records showing status and ownership of the pleaded registrations).
10 8 TTABVUE 2.
11 1 TTABVUE 15.
Opposition No. 91248453

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assertion of common law rights in the FALKE mark, but for reasons given below, we
will limit our decision to Opposer’s registered FALKE marks.
C. Likelihood of Confusion
Our determination under Section 2(d) is based on an analysis of all of the
probative evidence of record bearing on the likelihood of confusion. In re E.I. du Pont
de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973) (setting forth
factors to be considered); see also In re Majestic Distilling Co., 315 F.3d 1311, 65
USPQ2d 1201, 1203 (Fed. Cir. 2003). In any likelihood of confusion analysis, two key
considerations are the similarities between the marks and the similarities between
the goods and services. See Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d
1098, 192 USPQ 24, 29 (CCPA 1976) (“The fundamental inquiry mandated by § 2(d)
goes to the cumulative effect of differences in the essential characteristics of the goods
and differences in the marks.”).
Opposer bears the burden of establishing that there is a likelihood of confusion by
a preponderance of the evidence. Cunningham, 55 USPQ2d at 1844. We consider the
likelihood of confusion factors about which there is evidence. du Pont, 177 USPQ at
567 (consider factors “when of record”); Cai v. Diamond Hong, Inc., 901 F.3d 1367,
127 USPQ2d 1797, 1800 (Fed. Cir. 2018) (“Not all of the du Pont factors are relevant
to every case, and only factors of significance to the particular mark need be
considered.”)(quoting In re Mighty Leaf Tea, 601 F.3d 1342, 94 USPQ2d 1257, 1259
(Fed. Cir. 2010)).
Opposer has asserted both registration rights and common law rights in the
FALKE mark. We find there is a likelihood of confusion based on one of the pleaded
Opposition No. 91248453

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registrations, so we do not separately consider whether a likelihood of confusion
exists based on any common law rights Opposer may have in the FALKE mark. In
this case, we limit our analysis to Opposer’s Registration Number 2766806 (“the ‘806
registration”) for the mark FALKE for “hosiery; wearing apparel for ladies and men,
namely, pullovers, shirts, jackets, trousers, shorts, sports clothing including warm-
ups, t-shirts, pants, shorts, leggings, tights” in International Class 25. Fiserv, Inc. v.
Elec. Transaction Sys. Corp., 113 USPQ2d 1913, 1917 (TTAB 2015) (“if we find a
likelihood of confusion as to this pleaded registration, we need not find it as to the
others.”). We base our decision on the ‘806 Registration because it is the closest to
Applicant’s mark, so that if confusion is not likely as to the mark identified in the
‘806 Registration, it would not be likely as to the other pleaded Registrations.
1. Strength of the FALKE Mark
We begin our analysis with the fifth du Pont factor, which asks whether Opposer’s
mark is strong.12 “A mark’s strength is measured both by its conceptual strength
(distinctiveness) and its marketplace strength (secondary meaning).” In re
Chippendales USA, Inc., 622 F.3d 1346, 96 USPQ2d 1681, 1686 (Fed. Cir. 2010)); see
also Top Tobacco, L.P. v. N. Atl. Operating Co., Inc., 101 USPQ2d 1163, 1171-72
(TTAB 2011); Tea Bd. of India v. Republic of Tea Inc., 80 USPQ2d 1881, 1899 (TTAB
2006); 2 J. THOMAS MCCARTHY, MCCARTHY ON TRADEMARKS AND UNFAIR COMPETITION
§ 11:83 (5th ed. 2019).

12 The fifth du Pont factor addressed “the fame of the prior mark,” but this factor has been
used to evaluate strength of the mark in a broader sense, as explained in the text above. We
address this factor first because it is relevant to our evaluation of other factors.
Opposition No. 91248453

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To evaluate the conceptual strength of a word mark, we place the mark in one of
the following classes: “(1) generic, (2) descriptive, (3) suggestive, and (4) arbitrary or
fanciful. The lines of demarcation, however, are not always bright.” Abercrombie &
Fitch Co. v. Hunting World, Inc., 537 F.2d 4, 189 USPQ2d 759, 764 (2d Cir. 1976).
FALKE is the German word for Falcon, a point conceded by Applicant.13 The FALKE
mark is either suggestive or arbitrary for clothing goods. Some of the goods are “sports
clothing,” and perhaps the image of a falcon suggests performance of such goods. We
find the FALKE mark has moderate conceptual strength when used with clothing,
including “sports clothing.”
Market strength also “varies along a spectrum from very strong to very weak.”
Joseph Phelps Vineyards, LLC v. Fairmont Holdings, LLC, 857 F.3d 1323, 122
USPQ2d 1733, 1734 (Fed. Cir. 2017). Opposer submitted evidence that the FALKE
mark has been in use for over 100 years and has been promoted in my high-profile
magazines.14 Clothing bearing the FALKE mark has been worn by celebrities and the
mark has been used in collaborations with well-known designers.15 Opposer
sponsored a world champion Formula 1 racing team in 1997, but there is no evidence
of ongoing promotion of that type.16 The sales evidence in the record is confidential,
but it does show significant, though not overwhelming, sales in the United States
under the FALKE mark. There are no consumer awareness studies or other direct

13 16 TTABVUE 5.
14 15 TTABVUE ¶¶ 3-4; 12 TTABVUE ¶¶ 1-4.
15 12 TTABVUE ¶¶2, 4; 15 TTABVUE ¶¶ 2, 5.
16 15 TTABVUE ¶¶ 2; 12 TTABVUE ¶¶5, 6, 19.
Opposition No. 91248453

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evidence in the record of consumer perception of the FALKE mark. Nor is there
evidence of the valuation of the FALKE mark or where it stands in relation to other
marks used on clothing.
We find the FALKE mark commercially strong, but not famous. A long period of
use alone does not prove fame. Wet Seal Inc. v. FD Mgmt. Inc., 82 USPQ2d 1629,
1635-36 (TTAB 2007) (“Long use and/or registration of a mark, without evidence of
the extent of consumer exposure to or recognition of the mark over the years, is not
sufficient to prove fame.”). Famous marks are rare, and we do not have sufficient
evidence in the record here to find the FALKE mark has reached that level. The
commercial strength and conceptual strength of the FALKE mark, however, make
confusion more likely.
2. Similarity of the Goods, Trade Channels and Purchasing
Conditions
“The authority is legion that the question of registrability of an applicant’s mark
must be decided on the basis of the identification of goods set forth in the application
regardless of what the record may reveal as to the particular nature of an applicant’s
goods, the particular channels of trade or the class of purchasers to which the sales
of goods are directed.” Octocom Sys., Inc. v. Houston Comput. Servs. Inc., 918 F.2d
937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990). See also Stone Lion Capital Partners,
LP v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1161 (Fed. Cir. 2014);
Paula Payne Prods. v. Johnson Publ’g Co., 473 F.2d 901, 177 USPQ 76, 77 (CCPA
Opposition No. 91248453

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1973). We group these three du Pont factors because of the shared focus on the
identification of the goods.17
The goods are identical in part, as the following table shows.
Applicant’s goods ‘806 Registration goods18
Athletic apparel, namely, shirts, pants,
jackets, footwear, hats and caps,
athletic uniforms
wearing apparel for ladies and men,
namely, pullovers, shirts, jackets,
trousers, shorts, sports clothing
including warm-ups, t-shirts, pants,
shorts

We find “athletic apparel” and “sports clothing” to be identical general categories of
clothing. The Application and ‘806 Registration both include pants as specific types
of athletic apparel or sports clothing. The Application includes shirts in its “athletic
apparel,” and the Registration includes t-shirts within its “sports clothing” which is
a type of shirt. We further find the jackets, shirts, pants/trousers listed as “athletic
apparel” in the Application and as “wearing apparel” in the ‘806 Registration are
either identical or extremely similar.19
Our analysis of the trade channels and purchasing conditions also focuses on the
identification of goods found in the Application and the ‘806 Registration. “We must

17 Our analysis here covers the second, third and fourth du Pont factors listed above.
18 This is a partial listing of the goods identified in the ‘806 Registration.
19 Under this du Pont factor, Opposer need not prove, and we need not find, similarity as to
each product listed in the description of goods. It is sufficient for finding likelihood of
confusion that relatedness is established for any item encompassed by the identification of
goods in a particular class in the application. Tuxedo Monopoly, Inc. v. Gen. Mills Fun Grp.,
648 F.2d 1335, 209 USPQ 986, 988 (CCPA 1981); In re i.am.symbolic, llc, 116 USPQ2d 1406,
1409 (TTAB 2015), aff’d 866 F.3d 1315, 123 USPQ2d 1744 (Fed. Cir. 2017); Inter IKEA Sys.
B.V. v. Akea, LLC, 110 USPQ2d 1734, 1745 (TTAB 2014); General Mills Inc. v. Fage Dairy
Processing Indus. SA, 100 USPQ2d 1584, 1588 n.1 (TTAB 2011), judgment set aside on other
grounds, 110 USPQ2d 1679 (TTAB 2014).
Opposition No. 91248453

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presume that Applicant’s and Registrant’s goods will be sold in the same channels of
trade and will be bought by the same classes of purchasers, because the goods are
identical and legally identical in part and there are no limitations as to channels of
trade or classes of purchasers in either the application or cited registration.” In re
i.am.symbolic, llc, 127 USPQ2d 1627, 1629 (TTAB 2018) (citing In re Viterra Inc., 671
F.3d 1358, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012)). Applicant’s argument that it
intends “to sell our products solely through our own website in future,”20 is misplaced,
because there is no such limitation in the Application. Stone Lion Capital Partners,
110 USPQ2d at 1162. There is also evidence that both parties sell goods through
Amazon, which confirms, rather than rebuts, the presumption of overlapping trade
channels.21 Because the identifications do not set price points, we infer that the
parties’ goods include low-priced athletic wear, which would be purchased with little
care and deliberation. “When products are relatively low-priced and subject to
impulse buying, the risk of likelihood of confusion is increased because purchasers of
such products are held to a lesser standard of purchasing care.” Recot Inc. v. M.C.
Becton, 214 F.3d 1322, 54 USPQ2d 1894, 1899 (Fed. Cir. 2000).
We find the parties’ goods, as identified in the Application and the ‘806
Registration, are identical in part and highly similar overall, that such goods do and
are likely to continue to use the same trade channels and be purchased under similar
conditions by the same classes of purchasers. These facts make confusion more likely.

20 16 TTABVUE 6.
21 Id.
Opposition No. 91248453

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3. Similarity of the Marks
We compare the marks in their entireties as to appearance, sound, connotation
and commercial impression. du Pont, 177 USPQ at 567. “Similarity in any one of
these elements may be sufficient to find the marks confusingly similar.” In re Davia,
110 USPQ2d 1810, 1812 (TTAB 2014); accord Krim-Ko Corp. v. Coca-Cola Bottling
Co., 390 F.2d 728, 156 USPQ 523, 526 (CCPA 1968) (“It is sufficient if the similarity
in either form, spelling or sound alone is likely to cause confusion.”) (citation omitted).
This proceeding involves identical goods, so less similarity of the marks is necessary
to find a likelihood of confusion. Coach Servs., Inc. v. Triumph Learning LLC, 668
F.3d 1356, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012); Century 21 Real Estate Corp. v.
Century Life of Am., 970 F.2d 874, 23 USPQ2d 1698, 1700 (Fed. Cir. 1992); Jansen
Enters. Inc. v. Rind, 85 USPQ2d 1104, 1108 (TTAB 2007); Schering-Plough
HealthCare Prod. Inc. v. Ing-Jing Huang, 84 USPQ2d 1323, 1325 (TTAB 2007).
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 so that confusion as to the source of the goods or
services offered under the respective marks is likely to result. Cai v. Diamond Hong,
Inc., 127 USPQ2d at 1801; Midwestern Pet Foods, Inc. v. Societe des Produits Nestle
S.A., 685 F.3d 1046, 103 USPQ2d 1435, 1440 (Fed. Cir. 2012). The focus is on the
recollection of the average purchaser, who normally retains a general rather than a
specific impression of trademarks. See Sealed Air Corp. v. Scott Paper Co., 190 USPQ
106, 108 (TTAB 1975). In this case, because the goods at issue are clothing without
Opposition No. 91248453

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any restrictions or limitations as to channels of trade, classes of consumers, or price
points, we find that the average purchaser is an ordinary consumer.
The marks MI FALCON and FALKE are visually similar. The first two letters MI
are used by Applicant to identify Michigan, and are, therefore, geographically
descriptive in Applicant’s mark.22 It is well-established that non-distinctive elements
of a mark are typically given less weight when assessing the similarity of two marks.
Anheuser-Busch, LLC v. Innvopak Sys. Pty Ltd., 115 USPQ2d 1816, 1824-25 (TTAB
2015) (citing In re Chatam Int’l Inc., 380 F.3d 1340, 71 USPQ2d 1944, 1946 (Fed. Cir.
2004)).
While we do not ignore the MI portion of Applicant’s mark, we do find the
FALCON element is more dominant. We further find FALCON and FALKE look and
sound similar. Opposer argues the marks have the same meaning because Falke
means falcon in German.23 Applicant argues that most consumers in the United
States do not know what Falke means and questions whether such consumers would
“stop and translate” this word to find out what it means in German.24
Opposer noted that its Registration files show that the English translation of
Falke is falcon.25 That is only half correct, as the ‘806 Registration notes, “The English
translation of the word ‘FALKE’ is ‘hawk’ or ‘falcon’.”26 “The Board has found that

22 Id. at 4 (“The ‘MI’ portion of the mark … highlights where the company is originated from
and Michigan has great outdoors culture with great reservoir of fresh water lakes.”).
23 14 TTABVUE 18.
24 16 TTABVUE 6.
25 14 TTABVUE 18.
26 ‘806 Certificate of Registration.
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consumers would stop and translate a term when it is from a major, modern language,
spelled in the standard way in the foreign language, and is the only translation of the
English word to which it translates …” In re Weiss Watch Co., 123 USPQ2d 1200,
1204 (TTAB 2017). In this case, Falke translates to either falcon or hawk in English,
according to the ‘806 Registration. Applicant, however, conceded that Falke and
falcon are “foreign equivalents.”27
We find the common meaning of these words under the foreign equivalents
doctrine make confusion more likely. “German is a major, modern language …” In re
Weiss Watch Co., 123 USPQ2d at 1204. Applicant conceded that Falke is the German
word for falcon. Though Falke may also translate to hawk in English, we find that
German-speaking consumers in the United States would recognize that Falke and
falcon are essentially the same word, one in German and the other in English. See In
re Accumulatorenfabrik Sonnenschein G.M.B.H., 160 USPQ 341 (TTAB
1968)(German). This increases the likelihood of confusion for those consumers.
Opposer argues that it uses the winged falcon design in its logo. There is evidence
in the record of this logo, but it is not included in the ‘806 Registration or in any of
the other pleaded Registrations. Because we have limited our analysis to the ‘806
Registration, we will not consider this argument. We also note that the evidence in
the record shows little use of the falcon logo with Opposer’s FALKE mark. Perhaps
the logo is widely used, but the record here does not show enough such use to warrant
any conclusions concerning its impact on the perceptions of relevant consumers in the

27 16 TTABVUE 5.
Opposition No. 91248453

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United States. But as noted above, this fact does little, if any, to reduce the likelihood
of confusion. Krim-Ko Corp., 156 USPQ at 526 (“It is sufficient if the similarity in
either form, spelling or sound alone is likely to cause confusion.”).
The commercial impression created by these two word marks is essentially a
combination of the sight, sound and meaning of the marks. Because the marks are
visually and aurally similar, we find they create a similar commercial impression,
too. The use of MI at the beginning of Applicant’s mark does reduce the overall
similarity and the similarity of the commercial impressions, but we find Applicant’s
MI FALCON mark, in its entirety, is sufficiently similar to Opposer’s FALKE mark
to make confusion more likely. Hercules Inc. v. Nat’l Starch & Chem. Corp., 223 USPQ
1244, 1246 (TTAB 1984) (“exact similitude is not required to conclude that two marks
are confusingly similar”).
4. Weighing the Likelihood of Confusion Factors
Every relevant likelihood of confusion factor indicates that confusion is likely. The
FALKE mark is conceptually and commercially strong. The goods are identical in
large part. The trade channels and purchasing conditions are presumed to overlap,
as well. The marks are similar in appearance and sound. When these facts are taken
together, it is clear that confusion is likely.
Decision: The Opposition is sustained under Section 2(d).