Franklin County Historical Societyv.Joseph Palermo

Trademark Trial and Appeal Board

Jun 17, 2020

91247074 (T.T.A.B. Jun. 17, 2020)

RSC
June 17, 2020

Opposition No. 91247074

Franklin County Historical Society

v.
Joseph Palermo

Before Bergsman, Lynch, and Coggins,
Administrative Trademark Judges.

By the Board:

This case comes before the Board for consideration of Opposer’s motion for
summary judgment on the ground of likelihood of confusion with Opposer’s pleaded
registration. The motion is fully briefed.1
I. Background
Joseph Palermo (“Applicant”) seeks registration of the standard character mark
COSI for “women’s designer shoes” in International Class 25.2 Franklin County
Historical Society (“Opposer”) has opposed registration of Applicant’s mark on the

1 In reaching our decision, all of the parties’ arguments and supporting evidence properly of
record were carefully considered, although we do not find it necessary to discuss all of them
in our opinion. See, e.g., Guess? IP Holder L.P. v. Knowluxe LLC, 116 USPQ2d 2018, 2018
(TTAB 2015).
2 Application Serial No. 87692941 was filed on November 21, 2017, based on Applicant’s
asserted bona fide intention to use the mark in commerce under Trademark Act Section 1(b),
15 U.S.C. § 1051(b).
UNITED STATES PATENT AND TRADEMARK OFFICE
Trademark Trial and Appeal Board
P.O. Box 1451
Alexandria, VA 22313-1451
General Contact Number: 571-272-8500
General Email: TTABInfo@uspto.gov
THIS ORDER IS NOT A
PRECEDENT OF THE
TTAB
Opposition No. 91247074

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ground of likelihood of confusion under Trademark Act Section 2(d), based on
Opposer’s prior use and registration of the mark COSI for clothing.3 In support of its
claim Opposer pleaded ownership of Principal Register Registration No. 2518159 for
the mark COSI (stylized), in the form shown below, for “clothing, namely t-shirts,
pants, hats, jumpsuits and aprons” in International Class 25 and “education and
entertainment services namely operating a museum and conducting workshops and
demonstrations in the field of science” in International Class 41.4

In his amended answer, Applicant denies the salient allegations in the notice of
opposition and asserts various purported “affirmative defenses.”5
II. Opposer’s Motion for Summary Judgment
A. Standard for Summary Judgment
Summary judgment is an appropriate method of disposing of cases in which there
is no genuine dispute as to any material fact, thus allowing the case to be resolved as
a matter of law. See Fed. R. Civ. P. 56(a). The party moving for summary judgment
has the initial burden of demonstrating that there is no genuine dispute of material
fact remaining for trial and that it is entitled to judgment as a matter of law. See Fed.
R. Civ. P. 56(c); Celotex Corp. v. Catrett, 477 U.S. 317, 322 (1987). All evidence must
be viewed in a light favorable to the non-movant, in this case Applicant, and all

3 Notice of Opposition ¶¶ 3, 4, 11-17 (1 TTABVUE 3-5).
4 Issued December 11, 2001 in another form, amended May 22, 2012 to current form; renewed.
5 14 TTABVUE.
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justifiable inferences are to be drawn in the non-movant’s favor. Lloyd’s Food Prods.,
Inc. v. Eli’s, Inc., 987 F.2d 766, 25 USPQ2d 2027, 2029 (Fed. Cir. 1993); Opryland
USA Inc. v. Great Am. Music Show, Inc., 970 F.2d 847, 23 USPQ2d 1471, 1472 (Fed.
Cir. 1992). In deciding a summary judgment motion, the Board may not resolve
disputes of material fact; it may only ascertain whether such disputes exist. Lloyd’s
Food Prods., 25 USPQ2d at 2029; Opryland USA, 23 USPQ2d at 1472; Olde Tyme
Foods, Inc. v. Roundy’s, Inc., 961 F.2d 200, 22 USPQ2d 1542, 1544 (Fed. Cir. 1992).
When a movant sufficiently demonstrates that there is no genuine dispute of
material fact, and that it is entitled to judgment as a matter of law, the burden shifts
to the non-movant to demonstrate the existence of specific genuinely disputed facts
that must be resolved at trial. Freki Corp. N.V. v. Pinnacle Entm’t, Inc., 126 USPQ2d
1697, 1700 (TTAB 2018); Enbridge, Inc. v. Excelerate Energy L.P., 92 USPQ2d 1537,
1540 (TTAB 2009). The non-movant may not rest on the mere allegations in its
pleadings and assertions of its counsel, but must designate specific portions of the
record or produce additional evidence showing the existence of a genuine dispute as
to a material fact for trial. See Fed. R. Civ. P. 56(c); Celotex, 477 U.S. at 324; Freki
Corp., 126 USPQ2d at 1700. A dispute as to a material fact is genuine only if a
reasonable fact finder viewing the entire record could resolve the disputed matter in
favor of the non-movant. Opryland USA, 23 USPQ2d at 1472; Olde Tyme Foods, 22
USPQ2d at 1544; Venture Out Props. LLC v Wynn Resorts Holdings, LLC, 81 USPQ2d
1887, 1890–91 (TTAB 2007).
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B. Evidence of Record
In support of its motion Opposer submitted the following evidence through the
declaration of its attorney, Vincent Lombardozzi:6
• Status and title copy, along with the full file history, for Opposer’s pleaded
Registration No. 2518159,7

• Screenshot of a website for Opposer’s museum,8

• TESS search results for live marks in International Class 25 containing
“COSI”,9

• File history for the involved application,10

• More than 250 third-party registrations for some type of shoes or footwear,
and various clothing items, including t-shirts, pants, hats, jumpsuits or
aprons,11

• Screenshots of websites from five third parties offering both shoes and
various clothing items, including t-shirts and pants under the same mark,12
and

• Screenshots of websites from 16 third parties that show shoes and various
clothing items, including t-shirts and pants, are sold in the same online
retail stores.13

Applicant did not submit any evidence with his brief in opposition to the motion.

6 15 TTABVUE 17-19.
7 Id. at 22-125.
8 Id. at 126-131.
9 Id. at 133-137.
10 Id. at 139-225. Opposer’s submission of the application file was unnecessary because it
forms part of the record without any action by the parties. Trademark Rule 2.122(b)(1), 37
C.F.R. § 2.122(b)(1).
11 15 TTABVUE 227-1204. The majority of the third-party registrations are use-based or have
been renewed.
12 Id. at 1206-1207, 1211-1213, 1221, 1241-1243, 1255-1256.
13 Id. at 1208-1201, 1214-1220, 1222-1240, 1244-1254, 1257-1265.
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Applicant objects to paragraph 3 of the declaration of Mr. Lombardozzi on the
grounds of hearsay to the extent Mr. Lombardozzi is providing testimony regarding
the services provided by Opposer or the length of time Opposer has offered those
services, as reflected in Opposer’s website. Opposer does not contend that Mr.
Lombardozzi has personal knowledge of this information, but rather maintains that
the website is self-authenticating. Internet evidence of use of a mark is hearsay, and
is insufficient to prove a party’s ownership or use of a mark without testimony from
a competent witness. WeaponX Performance Prods. Ltd. v. Weapon X Motorsports,
Inc., 126 USPQ2d 1034, 1040 (TTAB 2018). Accordingly, to the extent paragraph 3 of
Mr. Lombardozzi’s declaration is attesting to the truth of the information set forth in
Opposer’s website, Applicant’s objection is sustained. However, Opposer’s website
may be considered for whatever probative value it offers on its face. WeaponX
Performance Prods. Ltd., 126 USPQ2d at 1040.
C. Section 2(d): Likelihood of Confusion
As the movant for summary judgment on its Section 2(d) claim, Opposer must
establish that there is no genuine dispute that (1) it has standing to maintain this
proceeding; (2) it owns a registration for, or is the prior user of, its pleaded mark; and
(3) the contemporaneous use of the parties’ respective marks on their respective goods
would be likely to cause confusion, or cause mistake, or deceive consumers.
As an initial matter, while the notice of opposition is based on Opposer’s pleaded
registration and allegedly prior rights at common law, Opposer’s motion for summary
judgment is based solely on Class 25 of Opposer’s pleaded registration. Accordingly,
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Applicant’s arguments that Opposer has failed to establish rights at common law, or
the scope of any such rights, are irrelevant to determination of the motion and will
receive no further consideration.
1. Standing and Priority
Standing is a threshold issue that must be proven by the plaintiff in every inter
partes case. See Empresa Cubana Del Tabaco v. Gen. Cigar Co. Inc., 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); see also Trademark Rule 2.104(a), 37 C.F.R.
§ 2.104(a). Opposer may establish its standing by properly making of record its
pleaded registration, if it is the basis for a likelihood of confusion claim that is not
wholly without merit. Lipton Indus., Inc. v. Ralston Purina Co., 670 F.2d 1024, 213
USPQ 185, 189 (CCPA 1982); see also Coach Servs., Inc. v. Triumph Learning LLC,
668 F.3d 1356, 101 USPQ2d 1713, 1727–28 (Fed. Cir. 2012). Pursuant to Trademark
Rule 2.122(d)(1), 37 C.F.R. § 2.122(d)(1), Opposer properly made of record its
registration for the stylized COSI mark by submitting an electronic copy from the
Office database showing both the current status and title of the registration as an
exhibit to its notice of opposition.14 Opposer also submitted an electronic copy of the
registration with its summary judgment motion, as an exhibit to Mr. Lombardozzi’s
declaration.15 Accordingly, there is no genuine dispute of material fact regarding
Opposer’s standing.

14 Notice of Opposition, Ex. A (1 TTABVUE 9-13).
15 Declaration of Vincent Lombardozzi ¶ 2, Ex. 1 (15 TTABVUE 17, 22-25).
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Additionally, because Opposer’s pleaded, valid and subsisting registration is of
record, and Applicant has not brought a counterclaim, priority is not at issue as to
the mark and goods and services covered by the registration. King Candy Co. v.
Eunice King’s Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108, 110 (CCPA 1974); L’Oreal
S.A. v. Marcon, 102 USPQ2d 1434, 1436 n.7 (TTAB 2012).
2. Likelihood of Confusion
In determining the issue of likelihood of confusion and whether there are any
genuine disputes of material fact, we consider all of the evidence of record bearing on
the factors delineated in In re E.I. DuPont de Nemours & Co., 476 F.2d 1357, 177
USPQ 563, 567 (CCPA 1973) (the “DuPont factors”); see also Palm Bay Imps., Inc. v.
Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689,
1691 (Fed. Cir. 2005). We have considered each DuPont factor that is relevant and
for which there is evidence of record and argument. See M2 Software, Inc. v. M2
Commc’ns, Inc., 450 F.3d 1378, 78 USPQ2d 1944, 1947 (Fed. Cir. 2006); ProMark
Brands Inc. v. GFA Brands, Inc., 114 USPQ2d 1232, 1242 (TTAB 2015). We treat as
neutral any DuPont factors for which there is no record evidence or argument.
In any likelihood of confusion analysis, two key considerations are the similarities
between the marks and the similarities between the goods or services. See Federated
Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24 (CCPA 1976); see
also In re i.am.symbolic, LLC, 866 F.3d 1315, 123 USPQ2d 1744, 1747 (Fed. Cir.
2017).
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3. Strength of Opposer’s Mark
Opposer argues that its mark in International Class 25 is strong, and submitted
a listing of active registrations and pending applications obtained from the
Trademark Electronic Search System (“TESS”) for all live marks including the term
“COSI” in International Class 25.16 However, the search does not provide information
about third-party use of either “COSI” or any similar terms. Nevertheless, Applicant
has not provided any information regarding the weakness of the term. Thus, there is
no genuine dispute of material fact with respect to the strength of Opposer’s mark for
goods in International Class 25. Thus, the registered mark is inherently distinctive
and entitled to the normal scope of protection.
4. Similarity or Dissimilarity of the Marks
With respect to the marks, we must compare them “in their entireties as to
appearance, sound, connotation and commercial impression.” Palm Bay, 73 USPQ2d
at 1691 (quoting DuPont, 177 USPQ at 567). Similarity in any one of these elements
suffices to support a determination of likelihood of confusion. See Krim-Ko Corp. v.
Coca-Cola Co., 390 F.2d 728, 156 USPQ 523, 526 (CCPA 1968); In re Davia, 110
USPQ2d 1810, 1812 (TTAB 2014).

16 Opposer refers to the eleventh DuPont factor in its discussion of this evidence. However,
this factor concerns “the extent to which applicant has a right to exclude others from using
its mark on its goods”. McDonalds Corp. v. McSweet LLC, 112 USPQ2d 1268, 1284-85 (TTAB
2014) (emphasis added).

Pending applications are evidence only that the applications were filed on a certain date; they
are not evidence of use of the marks. Nike Inc. v. WNBA Enters LLC, 85 USPQ2d 1187, 1193
n.8 (TTAB 2007); Interpayment Servs Ltd. v. Docters & Thiede, 66 USPQ2d 1463, 1468 n.6
(TTAB 2003); In re Juleigh Jeans Sportswear, Inc., 24 USPQ2d 1694, 1699 (TTAB 1992).
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The wording in Opposer’s mark (COSI) is identical to the wording in Applicant’s
mark (COSI) in appearance, sound, connotation and commercial impression. The
stylization of Opposer’s mark makes little difference because each mark is comprised
of the same word, and Applicant’s standard character mark could be depicted in any
font size, style, or color, including Opposer’s style. In re i.am.symbolic, LLC, 123
USPQ2d at 1748 (quoting SquirtCo v. Tomy Corp., 697 F.2d 1038, 216 USPQ 937,
939 (Fed. Cir. 1983) (stating that “the argument concerning a difference in type style
is not viable where one party asserts rights in no particular display.”)).
Applicant argues “[t]here is a genuine dispute of whether the opposer is perceived
as the source of any goods apart from the direct association with the souvenirs sold
that are descriptive and ornamental of Center of Science and Industry.”17 Specifically,
Applicant asserts that Opposer’s mark on “clothing is a promotion item inextricably
linked to [Opposer’s] highly descriptive museum name [Center of Science and
Industry] and is not viable apart from the museum . . . .”18 In support of this argument
Applicant relies solely on an argument related to trade channels made by Opposer
during the prosecution of the application underlying Opposer’s pleaded registration.
Opposer’s argument during prosecution of the application underlying registration,
that consumers would “immediately recognize the [COSI] mark as being an acronym
for its museum,”19 is insufficient, by itself, to raise a material question of fact as to
the commercial impression of Opposer’s pleaded registration. While statements made

17 17 TTABVUE 6.
18 Id. at 5.
19 15 TTABVUE 87.
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in an application for registration may “have significance as facts illuminative of shade
and tone in the total picture confronting the decision maker,” Juice Generation, Inc.
v. GS Enters. LLC, 794 F.3d 1334, 115 USPQ2d 1671, 1675 (Fed. Cir. 2015) (internal
quotation marks omitted), such statements do not give rise to an estoppel in
subsequent proceedings. Interstate Brands Corp. v. Celestial Seasonings, Inc., 576
F.2d 926, 198 USPQ 151, 153 (CCPA 1978) (“a party’s earlier contrary opinion may
be considered relevant and competent. Under no circumstances, may a party’s
opinion, earlier or current, relieve the decision maker of the burden of reaching his
own ultimate conclusion on the entire record.”). Opposer’s argument during
prosecution was made twenty years ago, and Applicant failed to submit any evidence
to show that consumers would recognize Opposer’s COSI mark as an acronym for its
museum.20
Accordingly, and upon consideration of Opposer’s stylized COSI mark and
Applicant’s standard character COSI mark, there is no genuine dispute that the
parties’ marks are highly similar.
5. The Parties’ Goods and Trade Channels
The great similarity between the marks reduces the degree of similarity between
the goods required to support a finding of likelihood of confusion. In re Shell Oil Co.,

20 Moreover, Applicant’s reliance on a prior Board decision pertaining to Opposer’s CENTER
OF SCIENCE AND INDUSTRY mark, as well as its assertion that Opposer’s specimens are
ornamental “under today’s standards” are unavailing. 17 TTABVUE 5-6. The prior Board
decision involved a different mark and Applicant’s argument directed to Opposer’s specimens
is an impermissible collateral attack on the pleaded registration. See In re Dixie Rests., 105
F.3d 1405, 41 USPQ2d 1531 (Fed. Cir. 1997)
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992 F.2d 1204, 26 USPQ2d 1687, 1689 (Fed. Cir. 1993); Time Warner Ent. Co. v.
Jones, 65 USPQ2d 1650, 1661 (TTAB 2002).
Our determination regarding whether the parties’ goods are similar is based on
the identification of goods in Applicant’s application and Opposer’s registration. See
Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d
1157, 1161 (Fed. Cir. 2014) (“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”); Hewlett-Packard Co. v. Packard Press Inc., 281 F.3d 1261, 62 USPQ2d
1001, 1004 (Fed. Cir. 2002) (“This ‘relatedness of the goods’ factor compares the goods
and services in the applicant’s application with the goods and services in the opposer’s
registration.”).
Moreover, the goods need not be identical or even directly competitive for there to
be a likelihood of confusion, but the evidence must establish that the goods are related
in some manner, or the conditions surrounding their marketing are such, that they
could be encountered by the same purchasers under circumstances that could give
rise to the mistaken belief that the goods come from a common source. Hewlett-
Packard Co., 62 USPQ2d at 1003-04.
Opposer has submitted a multitude of third-party registrations showing that
various entities have adopted a single mark for both some type of shoes, or footwear,
and various clothing items, including t-shirts, pants, hats, jumpsuits or aprons.
Although these registrations are not evidence that the marks shown therein are in
use or that the public is familiar with them, they nonetheless have probative value
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to the extent that they serve to suggest that the goods identified therein are of a type
which may emanate from the same source. Joel Gott Wines LLC v. Rehoboth Von Gott
Inc., 107 USPQ2d 1424, 1432 (TTAB 2013); see also In re Albert Trostel & Sons Co.,
29 USPQ2d 1783, 1785-86 (TTAB 1993); In re Mucky Duck Mustard Co. Inc., 6
USPQ2d 1467, 1470 n. 6 (TTAB 1988).
Additionally, Opposer’s printouts from five third-party websites offering both
shoes and various clothing items under the same mark, including t-shirts and pants,
further establishes that clothing and shoes are closely related goods that commonly
emanate from a single source under the same mark. See Hewlett-Packard, 62
USPQ2d at 1004 (“whether a single company sells the goods and services of both
parties, if presented, is relevant to a relatedness analysis”); see also In re Detroit
Athletic Co., 903 F.3d 1297, 128 USPQ2d 1047, 1051 (Fed. Cir. 2018) (evidence of
third parties offering both types of goods under the same mark demonstrates
relatedness of the goods).
Under similar circumstances, the Board has found that shoes and clothing are so
closely related that, if sold under the same or similar marks, a likelihood of confusion
would result. See, e.g., In re Melville Corp., 18 USPQ2d 1386, 1388 (TTAB 1991)
(“ESSENTIALS” for women’s pants, blouses, shorts and jackets versus
“ESSENTIALS” for women’s shoes); In re Apparel Ventures, Inc., 229 USPQ 225
(TTAB 1986) (“SPARKS BY SASSAFRAS” (stylized) for women’s separates namely
blouses, skirts and sweaters which may be worn in combination with a variety of
ensembles versus “SPARKS” (stylized) for shoes, boots and slippers); In re Pix of Am.,
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Inc., 225 USPQ 691, 692 (TTAB 1985) (“NEWPORT” for outer shirts versus
“NEWPORTS” for women’s shoes); B. Rich’s Sons, Inc. v. Frieda Originals, Inc., 176
USPQ 284, 285 (TTAB 1972) (“RICH’S CHEVY CHASERS” for shoes versus
“FRIEDA’S CHEVY CHASE ORIGINALS” for women’s knitwear, namely, dresses,
suits, skirts and blouses); and U.S. Shoe Corp. v. Oxford Indus., Inc., 165 USPQ 86,
87 (TTAB 1970) (“COBBIES” for shoes versus “COBBIES BY COS COB” for women’s
and girls’ shirt-shifts). We examine Opposer’s evidence to determine if the same
would be true in this case.
In response, Applicant asserts that Opposer has not met its burden to show that
the parties’ goods are similar. Specifically, Applicant argues the third-party
registrations have no probative value because none of them include Applicant’s precise
identification of goods. Applicant’s argument, which is not supported by any evidence
submitted by Applicant, is not well-taken. Applicant fails to explain why the addition
of “women’s designer” to the identification of shoes is sufficient to distinguish its goods
from the shoes in Opposer’s evidence, particularly whereas many of the third-party
registrations include identifications for “women’s” shoes or footwear or specific kinds
of shoes. In this regard, the Board does not read limitations into the description of
goods (e.g., shoes includes women’s designer shoes) and gives full sweep to the broad
identifications in the registrations. See In re i.am.symbolic, LLC, 123 USPQ2d at 1748;
Squirtco v. Tomy Corp., 216 USPQ at 940 (“There is no specific limitation and nothing
in the inherent nature of Squirtco’s mark or goods that restricts the usage of SQUIRT
for balloons to promotion of soft drinks. The Board, thus, improperly read limitations
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into the registration”); In re Thor Tech, 90 USPQ2d 1634, 1638 (TTAB 2009) (“We have
no authority to read any restrictions or limitations into the registrant’s description of
goods.”). Therefore, we must presume that the shoes of the above-noted third-party
registrants could include all types of shoes, including women’s designer shoes. See In
re Hughes Furniture Indus., Inc., 114 USPQ2d 1134, 1137 (TTAB 2015) (“Applicant’s
broadly worded identification of ‘furniture’ necessarily encompasses Registrant’s
narrowly identified ‘residential and commercial furniture.’”); see also Sw. Mgmt., Inc.
v. Ocinomled, Ltd., 115 USPQ2d 1007, 1025 (TTAB 2015) (where the goods in an
application or registration are broadly described, they are deemed to encompass all
the goods of the nature and type described therein).
In view of the evidence and case law, we find there is no genuine dispute that
Opposer’s identified clothing and Applicant’s women’s designer shoes are related.
Thus, the DuPont factor of the relatedness of the parties’ respective goods favors a
finding of likelihood of confusion.
Regarding the trade channels for the parties’ goods, because the identification of
the goods in the registration has no restrictions as to channels of trade or classes of
customers, we must presume that the identified goods travel through all normal and
usual trade channels for such goods, and that they are sold to all classes of prospective
purchasers for those goods. See Hewlett-Packard Co., 62 USPQ2d at 1005 (“absent
restrictions in the application and registration, goods and services are presumed to
travel in the same channels of trade to the same class of purchasers”); Anheuser-
Busch, LLC v. Innvopak Sys. Pty Ltd., 115 USPQ2d 1816, 1825-26 (TTAB 2015).
Opposition No. 91247074

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Opposer has shown that shoes, including designer shoes, and clothing are sold in the
same trade channels, namely online retail stores. Accordingly, to the extent Applicant
asserts that Opposer only sells its clothing items in connection with Opposer’s
museum, such an argument is unpersuasive since the identification of goods in
Opposer’s registration does not limit Opposer’s trade channels. See, e.g., Stone Lion,
110 USPQ2d at 1162; Octomom, 16 USPQ2d at 1787. The third-party website
evidence discussed above shows that women’s designer shoes and clothing are sold
through the same retail sites, reaching the same consumers.
In view of the foregoing, there is no genuine dispute that the parties’ goods will
travel through the same trade channels to the same classes of consumers.
III. Determination
In view of the foregoing, Opposer’s motion for summary judgment on its claim of
likelihood of confusion under Trademark Act Section 2(d) is granted. Judgment is
entered in favor of Opposer, the opposition is sustained, and registration of
Applicant’s mark is refused.