Garan Incorporated, Garan Services Corp.v.Manimal, LLC

Trademark Trial and Appeal Board

Feb 13, 2020

91232774 (T.T.A.B. Feb. 13, 2020)

Mailed: February 13, 2020

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

Garan Incorporated and
Garan Services Corp.
v.
Manimal, LLC
_____

Opposition No. 91232774
_____

Robert L. Epstein and William C. Wright of Epstein Drangel LLP
for Garan Incorporated and Garan Services Corp.

James D. Weinberger and Sydney Kipen of Fross Zelnick Lehrman & Zissu, P.C.
for Manimal, LLC.
_____

Before Taylor, Bergsman and Heasley, Administrative Trademark Judges.

Opinion by Bergsman, Administrative Trademark Judge:

Manimal, LLC (Applicant) seeks registration on the Principal Register for the
mark MANIMAL, in standard character form, for the clothing listed below:
Men’s, Women’s and Children’s clothing, namely, Tops,
bottoms, pants, underwear, socks, T-shirts, hats,
sweatpants, sweatshirts, long sleeve shirts, thermal tops,
shorts, bathing suits, athletic uniforms, tank tops, wrist
wraps, footwear, jackets, warm-up suits, belts, beanies,
bandanas, wrist bands, sweaters, jeans, Compression
garments for athletic or other non-medical use, namely,
This Opinion Is Not a
Precedent of the TTAB
Opposition No. 91232774

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compression socks, stockings, leggings, jerseys, vests,
trousers, sleeves, shirts, in Class 25.1
Garan Incorporated and Garan Services Corp. (Opposers) opposed the registration
of Applicant’s mark on the following grounds:2
• Likelihood of confusion under Section 2(d) of the Trademark Act, 15 U.S.C. §
1052(d);
• Dilution under Section 45(c) of the Trademark Act, 15, U.S.C. § 1125(c);
• Applicant’s mark is generic;
• Applicant’s mark is merely descriptive under Section 2(e)(1) of the Trademark
Act, 15 U.S.C. § 1052(e)(1); and
• Abandonment.
With respect to its likelihood of confusion claim, Opposers allege that Applicant’s
mark so resembles Opposers’ registered marks, including GARANIMNAL, in typed
drawing form, for “children’s shirts and pants,” in Class 25, as to be likely to cause
confusion.3
Applicant, in its Answer, denied the salient allegations in the Notice of Opposition.

1 Application Serial No. 85511299 filed January 8, 2012, under Section 1(a) of the Trademark
Act, 15 U.S.C. § 1051(a), based on Applicant’s claim of first use of its mark anywhere and in
commerce as of July 1, 2010.
Applicant, in its April 29, 2013 Response to Suspension Inquiry, amended its filing basis to
Section 1(b) of the Trademark Act, 15 U.S.C. § 1051(b).
2 Amended Notice of Opposition, 15 TTABVUE. Garan Services Corporation is a wholly
owned subsidiary of Garan Incorporated. Jerald Kamiel Testimony Dep., p. 9 (28 TTABVUE
14).
3 Registration No. 0954125 registered February 27, 1973; third renewal.
Opposition No. 91232774

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Opposers, in their brief on the case, did not refer to the genericness or
descriptiveness claims and, therefore, we deem them waived. See Alcatraz Media, Inc.
v. Chesapeake Marine Tours, Inc., 107 USPQ2d 1750, 1753 (TTAB 2013) (petitioner’s
pleaded descriptiveness and geographical descriptiveness claims not argued in brief
deemed waived), aff’d, 565 F. App’x 900 (Fed. Cir. 2014) (mem.); Joel Gott Wines LLC
v. Rehoboth Von Gott Inc., 107 USPQ2d 1424, 1426 n.3 (TTAB 2013) (opposer’s
pleaded descriptiveness claim not argued in brief deemed waived); Swatch AG
(Swatch SA) (Swatch Ltd.) v. M.Z. Berger & Co., 108 USPQ2d 1463, 1465 n.3 (TTAB
2013) (opposer’s pleaded claims not argued in its brief deemed waived), aff’d, 787 F.3d
1368, 114 USPQ2d 1892 (Fed. Cir. 2015).
I. The record
The record includes the pleadings and, by operation of Trademark Rule 2.122(b),
37 C.F.R. § 2.122(b), Applicant’s application file.4 The parties introduced the
testimony and evidence listed below:
A. Opposer’s testimony and evidence.
1. Notice of reliance on Opposers’ pleaded registrations printed from
the USPTO Trademark Status & Document Retrieval (TSDR)
database showing the current status of and title to the registrations;5
and

4 Because Applicant’s application file is automatically of record, Opposers did not have to
submit excerpts from it via a notice of reliance. 24 TTABVUE 47-52.
5 24 TTABVUE 6-45. Because Opposers attached to their Notice of Opposition copies of their
pleaded registrations printed from the USPTO’s Trademark Electronic Search System
(TESS) and Trademark Status and Document Retrieval (TSDR) databases showing the
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2. Testimony deposition of Jerald Kamiel, Opposers’ President and
Chief Operating Officer.6
B. Applicant’s testimony and evidence.
1. Testimony declaration of George Corbo, Applicant’s co-founder and
Chief Executive Officer;7
2. Copies of eight third-party registrations for marks incorporating
“animal(s)” or “imals” as a suffix for clothing;8 and
3. Notice of reliance on Opposers’ responses to Applicant’s interrogatory
Nos. 4, 15, 17, and 20.9
II. Standing
Standing is a threshold issue in every inter partes case. See 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). To
establish standing in an opposition or cancellation proceeding, a plaintiff must prove
that it has a “real interest” in the proceeding and a “reasonable” basis for its belief of
damage. See Empresa Cubana, 111 USPQ2d at 1062; Ritchie v. Simpson, 170 F.3d

current status of and title to the registrations, it did not have to introduce them as second
time through a notice of reliance. See Trademark Rule 2.122(d)(1), 37 C.F.R. § 2.122(d)(1).
6 28 TTABVUE. Opposers posted the portions of the Kamiel deposition designated as
confidential at 27 TTABVUE.
7 35-40 TTABVUE. Applicant posted the portions of the Corbo declaration designated as
confidential at 29-34 and 43 TTABVUE.
8 41 TTABVUE.
9 42 TTABVUE.
Opposition No. 91232774

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1092, 50 USPQ2d 1023, 1025 (Fed. Cir. 1999); Lipton Indus., Inc. v. Ralston Purina
Co., 670 F.2d 1024, 213 USPQ 185, 189 (TTAB 1982).
Opposers established their standing by properly introducing into evidence their
pleaded registrations showing the current status of the registrations and title to the
registrations in Garan Services Corp. See, e.g., Cunningham v. Laser Golf Corp., 222
F.3d 943, 55 USPQ2d 1842, 1844 (Fed. Cir. 2000) (plaintiff’s two prior registrations
suffice to establish plaintiff’s direct commercial interest and its standing); N.Y.
Yankees P’ship v. IET Prods. & Servs., Inc., 114 USPQ2d 1497, 1501 (TTAB 2015).
Applicant, in its brief, did not challenge Opposers’ standing.
Once a plaintiff has shown standing on one ground, it has the right to assert any
other ground in an opposition. See Poly-America, L.P. v. Illinois Tool Works Inc., 124
USPQ2d 1508, 1512 (TTAB 2017) (if petitioner can show standing on the ground of
functionality, it can assert any other grounds, including abandonment); Azeka Bldg.
Corp. v. Azeka, 122 USPQ2d 1477, 1479 (TTAB 2017) (standing established based on
surname claim sufficient to establish standing for any other ground); Luxco, Inc. v.
Consejo Regulador del Tequila, A.C., 121 USPQ2d 1477, 1481 (TTAB 2017) (opposer
established its standing as to genericness ground of certification mark and was
entitled to assert any other ground).
III. Priority
Because Opposers’ pleaded registrations are of record, priority in the opposition
proceeding is not at issue with respect to the marks and goods identified therein. Mini
Melts, Inc. v. Reckitt Benckiser LLC, 118 USPQ2d 1464, 1469 (TTAB 2016) (citing
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King Candy Co. v. Eunice King’s Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108, 110
(CCPA 1974)). Applicant, in its brief, did not challenge Opposers’ priority.
IV. Likelihood of Confusion
We base our determination under Section 2(d) on an analysis of all of the probative
facts in evidence that are relevant to the factors 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)
(“DuPont”) cited in B&B Hardware, Inc. v. Hargis Indus., Inc., 575 U.S. 138, 113
USPQ2d 2045, 2049 (2015). See also In re Majestic Distilling Co., 315 F.3d 1311,
65 USPQ2d 1201, 1203 (Fed. Cir. 2003). “Not all of the DuPont factors are relevant
to every case, and only factors of significance to the particular mark need be
considered.” Cai v. Diamond Hong, Inc., 901 F.3d 1367, 127 USPQ2d 1797, 1800 (Fed.
Cir. 2018) (quoting In re Mighty Leaf Tea, 601 F.3d 1342, 94 USPQ2d 1257, 1259
(Fed. Cir. 2010)). See also 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) (“While we have considered each factor for which
we have evidence, we focus our analysis on those factors we find to be relevant.”).
“[E]ach case must be decided on its own facts and the differences are often subtle
ones.” Indus. Nucleonics Corp. v. Hinde, 475 F.2d 1197, 177 USPQ 386, 387 (CCPA
1973). In any likelihood of confusion analysis, two key considerations are the
similarities between the marks and the similarities between the goods or services.
See In re Chatam Int’l Inc., 380 F.3d 1340, 71 USPQ2d 1944, 1945-46 (Fed. Cir. 2004);
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
Opposition No. 91232774

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effect of differences in the essential characteristics of the goods and differences in the
marks.”); see also In re i.am.symbolic, LLC, 866 F.3d 1315, 123 USPQ2d 1744, 1747
(Fed. Cir. 2017) (“The likelihood of confusion analysis considers all DuPont factors for
which there is record evidence but ‘may focus … on dispositive factors, such as
similarity of the marks and relatedness of the goods’”) (quoting Herbko Int’l, Inc. v.
Kappa Books, Inc., 308 F.3d 1156, 64 USPQ2d 1375, 1380 (Fed. Cir. 2002)).
While Opposers made of record copies of their eight pleaded registrations, we focus
our likelihood of confusion analysis on Registration No. 0954125 for the mark
GARANIMAL, in typed drawing form, for “children’s shirts and pants.” This is
Opposers’ mark most similar to Applicant’s mark for in part identical goods. See the
discussion below. If we cannot sustain the opposition based on this registered mark,
we could not sustain it based on the marks in the other pleaded registrations. See
North Face Apparel Corp. v. Sanyang Indus. Co., 116 USPQ2d 1217, 1225 (TTAB
2015); In re Max Capital Grp. Ltd., 93 USPQ2d 1243, 1245 (TTAB 2010).
A. The similarity or dissimilarity and nature of the goods.
As noted above, the description of goods in Opposers’ Registration No. 0954125 for
the mark GARANIMAL is “children’s shirts and pants.” Applicant is seeking to
register its mark for, inter alia, children’s pants, t-shirts, long sleeve shirts, and tank
tops.10 Opposers’ broadly worded identification of “shirts” encompasses Applicant’s

10 Merriam-Webster.com defines “tank top” as “a sleeveless collarless shirt with usually wide
shoulder straps and no front opening.” The Board may take judicial notice of dictionary
definitions, including online dictionaries that exist in printed format. In re Cordua Rests. LP,
110 USPQ2d 1227, 1229 n.4 (TTAB 2014), aff’d, 823 F.3d 594, 118 USPQ2d 1632 (Fed. Cir.
Opposition No. 91232774

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more narrowly identified “t-shirts,” “long sleeve shirts,” and “tank tops.” Where an
application or registration broadly identifies the products in the description of goods,
we must presume that the goods encompass all goods of the type identified. Sw.
Mgmt., Inc. v. Ocinomled, Ltd., 115 USPQ2d 1007, 1025 (TTAB 2015); 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.’”); Venture Out Props. LLC v. Wynn
Resorts Holdings, LLC, 81 USPQ2d 1887, 1893 (TTAB 2007). Accordingly, Opposers’
goods and Applicant’s goods are in part or legally identical.
Under this DuPont factor, Opposers need not prove, and we need not find,
similarity as to each product listed in the descriptions of goods. It is sufficient for
finding a likelihood of confusion that Opposers establish that any item encompassed
by the identification of goods within a particular class in the application and
registration are related. Tuxedo Monopoly, Inc. v. Gen. Mills Fun Grp., 648 F.2d 1335,
209 USPQ 986, 988 (CCPA 1981); 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).
Applicant argues that the goods are not related because it uses its mark to identify
exercise clothing “only for and directed at adults, whereas Opposers make children’s

2016); Threshold.TV Inc. v. Metronome Enters. Inc., 96 USPQ2d 1031, 1038 n.14 (TTAB
2010); In re Red Bull GmbH, 78 USPQ2d 1375, 1378 (TTAB 2006).
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clothing sets … only for and directed at children and adults shopping for them.”11
However, we must consider the goods as the parties describe them in the application
and registrations at issue. Stone Lion Capital Partners, LP v. Lion Capital LLP, 746
F.3d 1317, 1321, 110 USPQ2d 1157, 1161 (Fed. Cir. 2014); Octocom Sys, Inc. v.
Houston Comput. Servs. Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990)
(“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.”); Paula Payne Prods. v. Johnson Publ’g Co., 473 F.2d 901, 177
USPQ 76, 77 (CCPA 1973) (“Trademark cases involving the issue of likelihood of
confusion must be decided on the basis of the respective descriptions of goods”).
In addition, we do not read limitations into the identification of goods. In re
i.am.symbolic, 123 USPQ2d at 1748; Squirtco v. Tomy Corp., 697 F.2d 1038, 216
USPQ 937, 940 (Fed. Cir. 1983) (“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
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 may not restrict Applicant’s description of goods

11 Applicant’s Brief, pp. 19-29 (48 TTABVUE 20-21).
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encompassing men’s, women’s, and children’s pants and shirts to exercise clothing for
adults.
This DuPont factor weighs in favor of finding a likelihood of confusion.

B. Established, likely-to-continue channels of trade and classes of
consumers.

Because the goods described in the application and Opposers’ registration are in
part or legally identical, we presume that the channels of trade and classes of
purchasers are the same. See In re Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905,
1908 (Fed. Cir. 2012) (legally identical goods are presumed to travel in same channels
of trade to same class of purchasers); In re Yawata Iron & Steel Co., 403 F.2d 752,
159 USPQ 721, 723 (CCPA 1968) (where there are legally identical goods, the
channels of trade and classes of purchasers are considered to be the same); United
Glob. Media Grp., Inc. v. Tseng, 112 USPQ2d 1039, 1049 (TTAB 2014); Am. Lebanese
Syrian Associated Charities Inc. v. Child Health Research Inst., 101 USPQ2d 1022,
1028 (TTAB 2011).
Applicant contends that the classes of consumers are different because Opposers’
customers are parents or grandparents of children they are trying to dress whereas
Applicant’s customers are adults committed to exercise.12 As noted, we may not limit,
by resort to extrinsic evidence, the scope of goods as identified in Opposers’
registration or in the subject application. E.g., See Stone Lion Capital Partners, 110

12 Applicant’s Brief, p. 21 (48 TTABVUE 22).
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USPQ2d at 1162 (“It was proper, however, for the Board to focus on the application
and registrations rather than on real-world conditions, because ‘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 applicant’s goods, the particular channels of trade or the class
of purchasers to which sales of the goods are directed.”) (quoting Octocom Sys., Inc.
v. Houston Comp. Servs. Inc., 16 USPQ2d at 1787); In re Dixie Rests. Inc., 105
USPQ2d, 41 USPQ2d 1531, 1534 (Fed. Cir. 1997) (citing Canadian Imperial Bank v.
Wells Fargo Bank, N.A., 811 F.2d 1490, 1 USPQ2d 1813, 1815 (Fed.Cir.1987)).
Because Applicant’s description of goods does not restrict its clothing to adults
committed to exercise and, in fact, includes children’s clothing, we must presume that
Applicant’s clothing is offered in all channels of trade normal for such clothing and
that the clothing would be purchased by all potential customers, including the
Opposers’ channels of trade and potential customers. Citigroup Inc. v. Capital City
Bank Grp. Inc., 637 F.3d 1344, 98 USPQ2d 1253, 1261 (Fed. Cir. 2011); Hewlett-
Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 62 USPQ2d 1001, 1005 (Fed. Cir.
2002); CBS Inc. v. Morrow, 708 F.2d 1579, 218 USPQ 198, 199 (Fed. Cir. 1983).
The channels of trade and classes of consumers favor finding a likelihood of
confusion.
C. The length of time during and conditions under which there has been
concurrent use without evidence of actual confusion.

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Neither Opposers, nor Applicant, is aware of any reported instances of actual
confusion.13 However, the absence of any reported instances of confusion is
meaningful only if the record indicates appreciable and continuous use by Applicant
of its mark for a significant period in the same markets as those served by Opposers
under their mark. Citigroup Inc. v. Capital City Bank Grp., Inc., 94 USPQ2d 1645,
1660 (TTAB 2010), aff’d, 637 F.3d 1344, 98 USPQ2d 1253 (Fed. Cir. 2011); Gillette
Canada Inc. v. Ranir Corp., 23 USPQ2d 1768, 1774 (TTAB 1992). In other words, for
the absence of actual confusion to be probative, there must have been a reasonable
opportunity for confusion to occur. Barbara’s Bakery Inc. v. Landesman, 82 USPQ2d
1283, 1287 (TTAB 2007) (the probative value of the absence of actual confusion
depends upon there being a significant opportunity for actual confusion to have
occurred); Red Carpet Corp. v. Johnstown American Enterprises Inc., 7 USPQ2d 1404,
1406-1407 (TTAB 1988); Central Soya Co., Inc. v. North American Plant Breeders,
212 USPQ 37, 48 (TTAB 1981) (“the absence of actual confusion over a reasonable
period of time might well suggest that the likelihood of confusion is only a remote
possibility with little probability of occurring”).
As noted above, our analysis as to the similarity or dissimilarity of the goods,
channels of trade and classes of consumers is based, as dictated by precedent from
the Federal Circuit, on the identifications set forth in the application and Opposers’
registration. See Stone Lion, 110 USPQ2d at 1162. As such, we may not consider, in

13 Corbo Testimony Decl. ¶26 (35 TTABVUE 9); Opposers’ response to Applicant’s
interrogatory No. 15 (42 TTABVUE 11); Kamiel Testimony Dep. p. 39 (28 TTABVUE 44).
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assessing DuPont factors three and four, evidence of how Applicant and Registrant
are actually selling their products in the marketplace. Id. Analyzing the lack of any
reported instances of actual confusion under DuPont factors seven and eight, by
contrast, requires us to look at actual market conditions, to the extent there is
evidence of such conditions of record. Any lengthy absence of actual confusion during
a period of known, rather than legally presumed, use of the same channels of trade
could be telling. However, a defendant’s unilateral contention of no actual confusion
when channels of trade are only presumptively the same, rather than shown to be
actually the same, may not be particularly probative.
Applicant has used the MANIMAL mark continuously since 2010 when it
launched its apparel line14 Applicant sells its apparel through its website, blog posts
and social media accounts, including Instagram, Facebook and Twitter.15
In connection with the MANIMAL mark, which has figured
prominently across all of the product categories we offer,
Manimal offers nine different types of wrist wraps ranging
from $40 - $55, nine different t-shirts ranging from $25 -
$30, three different types of knee wraps ranging from $35
- $40, two types of stickers ranging from $4 - $8, and thirty-
five prints with inspirational MANIMAL philosophical
quotes ranging from $45 - $90.16
Between March 2015 and March 2019, Applicant’s paid advertising on Facebook and
Google Advertising has reached 10 million viewers who are predominantly male, in

14 Corbo Testimony Decl. ¶14 (35 TTABVUE 6).
15 Id. at ¶ 15 (35 TTABVUE 7).
16 Id. at ¶15 (35 TTABVUE 7).
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the fitness industry, and between the ages of 21-40.17 Applicant has 58,100 Facebook
followers, 39,400 Instagram followers, and 640 Twitter followers.18 Despite
Applicant’s social media following, its sales have been modest.19
“Garanimals was created in 1972.”20 It is a children’s clothing line.
[T]he product line is newborn through preschool, size ten,
boy/girl, and it’s primarily knitted tops and bottoms, but
there are also jackets. There are woven bottoms. There is
skirts. There is all kinds of clothing that kids wear every
day.21
“The consumers that buy Garanimals are either parents or grandparents of the
children that they are trying to dress.”22 Since 2008, Opposers have sold their
GARANIMAL clothing exclusively at Walmart and Walmart’s online service.23
Opposers sell GARANIMAL clothing at all of the approximately 4,000 Walmart stores
in the United States.24 Opposers’ revenues generated through the sale of
GARANIMAL clothing are substantial.25 Opposers’ advertising expenditures are also
substantial.26

17 Id. at ¶17 (35 TTABVUE 7).
18 Id. at ¶18 (35 TTABVUE 7).
19 Id. at ¶16 (43 TTABVUE 8) (Confidential). Because Applicant has designated its sales
revenues confidential, we may refer to them only in general terms.
20 Kamiel Testimony Dep., p. 10 (28 TTABVUE 15).
21 Id. at p. 11 (28 TTABVUE 16).
22 Id. at p. 12 (28 TTABVUE 17).
23 Opposers’ response to Applicant’s interrogatory No. 4 (42 TTABVUE 10); Kamiel
Testimony Dep., p. 13 (28 TTABVUE 18).
24 Kamiel Testimony Dep., p. 13 (28 TTABVUE 18).
25 Id. at p. 22 (27 TTABVUE 27) (Confidential). Because Opposers designated their sales
revenues confidential, we may refer to them only in general terms.
26 Id. at pp. 24 and 35 (27 TTABVUE 29 and 40) (Confidential).
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Opposers advertise twice a year on television for 12-14 weeks during the fall
holiday season (September through November) and the spring/summer season
(March through May).27 Opposers started advertising on Facebook in 2015 or 2016
and have over 1,200,000 “likes.”28 Opposers also have an Instagram account and a
website.29 Finally, Walmart advertises GARANIMAL clothing through the Walmart
website.30
Because the parties’ clothing are distinct product lines within the larger apparel
industry, sold through different channels of trade, and sold to different classes of
consumers, it is unlikely that the same consumers will encounter the parties’ clothing
in same marketing milieu. Accordingly, there has not been an opportunity for actual
confusion to occur.
We find that the length of length of time during and conditions under which there
has been concurrent use without evidence of actual confusion is a neutral factor.
D. The strength of Opposers’ GARANIMAL mark.
The fifth DuPont factor enables Opposers to expand the scope of protection
afforded its pleaded mark by adducing evidence of “[t]he fame of the prior mark (sales,
advertising, length of use);” the sixth DuPont factor allows Applicant to contract that
scope of protection by adducing evidence of “[t]he number and nature of similar marks
in use on similar goods.” DuPont, 177 USPQ at 567.

27 Id. at 24 (28 TTABVUE 29).
28 Id. at 26 (28 TTABVUE 31).
29 Id. at 27 (28 TTABVUE 32).
30 Id. at 28 (28 TTABVUE 33).
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Under the fifth factor, likelihood of confusion fame is not “an all-or-nothing
measure.” Joseph Phelps Vineyards, LLC v. Fairmont Holdings, LLC, 857 F.3d 1323,
122 USPQ2d 1733, 1734 (Fed. Cir. 2017) (Fed. Cir. 2017). It “varies along a spectrum
from very strong to very weak.” Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin
Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1694 (Fed. Cir. 2005)
(quoting In re Coors Brewing Co., 343 F.3d 1340, 68 USPQ2d 1059, 1063 (Fed. Cir.
2003)). To determine a mark’s place on that spectrum, we consider its inherent
strength, based on the nature of the mark itself, and its commercial strength, based
on its marketplace recognition. See In re Chippendales USA, Inc., 622 F.3d 1346, 96
USPQ2d 1681, 1686 (Fed. Cir. 2010) (“A mark’s strength is measured both by its
conceptual strength (distinctiveness) and its marketplace strength.”); Bell’s Brewery,
Inc. v. Innovation Brewing, 125 USPQ2d 1340, 1345 (TTAB 2017); Top Tobacco, L.P.
v. North Atlantic Operating Co., Inc., 101 USPQ2d 1163, 1171-72 (TTAB 2011) (the
strength of a mark is determined by assessing its inherent strength and its
commercial strength); Tea Board of India v. Republic of Tea Inc., 80 USPQ2d 1881,
1899 (TTAB 2006) (market strength is the extent to which the relevant public
recognizes a mark as denoting a single source); MCCARTHY ON TRADEMARKS AND
UNFAIR COMPETITION § 11:83 (5th ed. Nov. 2019 update) (“The first enquiry is for
conceptual strength and focuses on the inherent potential of the term at the time of
its first use. The second evaluates the actual customer recognition value of the mark
at the time registration is sought or at the time the mark is asserted in litigation to
prevent another’s use.”). We may measure commercial strength indirectly, by volume
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of sales and advertising expenditures and factors such as length of use of the mark,
widespread critical assessments, notice by independent sources of the goods or
services identified by the mark, and general reputation of the goods or services.
Weider Publ’ns, LLC v. D&D Beauty Care Co., 109 USPQ2d 1347, 1354 (TTAB 2014).
Turning first to the inherent strength, GARANIMAL is a fanciful term coined by
Opposers and, therefore, it is an inherently strong mark. Nautilus Grp., Inc. v. Icon
Health & Fitness, Inc., 372 F.3d 1330, 71 USPQ2d 1173, 1181 (Fed. Cir. 2004)
(defining a fanciful mark as “a non-dictionary word concocted by the trademark
holder for its product” and observing that such marks are typically strong);
Mishawaka Rubber & Woolen Mfg. Co. v. Bata Narodni Podnik, 222 F.2d 279, 105
USPQ 432, 437 (CCPA 1955) (“A strong and fanciful mark is entitled to broad
protection.”); In re Ginc UK Ltd., 90 USPQ2d 1472, 1479 (TTAB 2007) (completely
unique and arbitrary, if not coined, nature of mark in relation to goods entitles the
registered mark to a broad scope of protection, and significantly increases the
likelihood that the marks, when used in connection with the identical goods would
cause confusion). See also Lois Sportswear, U.S.A., Inc. v. Levi Strauss & Co., 799
F.2d 867, 230 USPQ 831, 834 (2d Cir. 1986) (a fanciful mark “is entitled to the most
protection the Lanham Act can provide”).
Applicant argues to the contrary, contending that GARANIMAL is a weak mark,
entitled to a narrow scope of protections as shown by the eight third-party
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registrations that have an “animal(s)” or “imals” suffix for clothing. We list the third-
party registrations below:31
Mark Reg. No. Goods
SKELANIMALS 5519099 Clothing, including, inter alia shirts
and pants

5433458 Hats, tops, and shirts
LANTANIMALS 5424832 Shirts, t-shirts, hats

4952892 Apparel for dancers, business wear,
including shirts, infants’ trousers,
trousers, t-shirts
EARTHUMANIMAL 4475199 Shirts

4406262

Shirts
HALFANIMAL 3424615 Hats, pants, shorts, sweat pants,
sweat shirts, sweat suits, t-shirts,
wind resistant jackets
MANIMALS 4918335 Clothing, namely, t-shirts featuring
animals with humanoid
characteristics, all not sized and
targeted to infants, toddlers or
preschoolers.

“This is a far cry from the large quantum of evidence of third-party use and third-
party registrations that was held to be significant in both Jack Wolfskin v. New
Millennium Sports, [797 F.3d 1363, 116 USPQ2d 1129, 1136 (Fed. Cir. 2015), cert.
denied, 136 S.Ct. 982 (2016)], and Juice Generation v. GS Enters., [794 F.3d 1334,
115 USPQ2d 1671, 1674 (Fed. Cir. 2015)].” In re Inn at St. John’s, LLC, 126 USPQ2d
1742, 1746 (TTAB 2018) aff’d 777 Fed. Appx. 516 (Fed. Cir. 2019). Nevertheless, the

31 41 TTABVUE.
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third-party marks suggest a connection with animals (e.g., in the nature of a design
or marketing theme associated with animals) as do Opposers’ mark GARANIMAL
and Applicant’s mark MANIMAL. Such a connection does not weaken the inherent
strength of Opposers’ GARANIMAL mark; it merely indicates that Opposers are not
the only entity that has registered an “animal” suffix as part of its mark. Thus, when
we analyze the similarity or dissimilarity of the marks, we must consider whether
the resemblance of the marks is close enough to cause one seeing one or both of the
marks to assume that there is some connection, association, or sponsorship between
the marks.
We now turn to the commercial strength of Opposers’ GARANIMAL marks.
Opposers introduced the following evidence to prove their commercial strength:
•“Garanimals was created in 1972.”32
•Since 2008, Opposers have sold their GARANIMAL clothing exclusively at
Walmart and Walmart’s online service.33
•Opposers sell GARANAIMAL clothing at all of the approximately 4,000 Walmart
stores in the United States.34
•Opposers’ revenues generated through the sale of GARANIMAL clothing are
substantial.35

32 Kamiel Testimony Dep., p. 10 (28 TTABVUE 15).
33 Opposers’ response to Applicant’s interrogatory No. 4 (42 TTABVUE 10); Kamiel
Testimony Dep., p. 13 (28 TTABVUE 18).
34 Kamiel Testimony Dep., p. 13 (28 TTABVUE 18).
35 Id. at p. 22 (27 TTABVUE 27) (Confidential). Because Opposers designated their sales
revenues confidential, we may refer to them only in general terms.
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•Opposers’ advertising expenditures are also substantial.36
•Opposers advertise twice a year on television for 12-14 weeks during the fall
holiday season (September through November) and the spring/summer season
(March through May).37
•Opposers started advertising on Facebook in 2015 or 2016 and have over
1,200,000 “likes.”38
•Psychologist Dr. Joyce Brothers referred to GARANIMAL clothing in her
“booklet” “Clothing And A Child’s Self-Image.”39 The theme of the work is that
children build confidence in their ability to do things themselves when parents
provide an unhurried atmosphere in which children may observe how parents dress
them, as well as providing children with an opportunity to dress themselves.40 Dr.
Brothers refers to GARANIMAL clothing twice in her publication.41
Garanimals system of matching sewn-in animal labels
helps the pre-schooler to handle his own wardrobe. With
three pairs of slacks and five tops, a child can mix and
match fifteen different outfits. The sense of “I can” fosters
the child’s growing sense of independence.42

36 Id. at pp. 24 and 35 (27 TTABVUE 29 and 40) (Confidential).
37 Id. at p. 24 (28 TTABVUE 29).
38 Id. at p. 26 (28 TTABVUE 31).
39 Id. at pp. 20-21, 40 and Exhibit A (28 TTABVUE 25-26, 45 and 68-78).
40Id. at Exhibit A (28 TTABVUE 71). See also Id. (28 TTABVUE 72) (“Parents can enhance a
child’s new sense of selfhood by allowing the child small choices.”).
41 We find that Opposers’ assertions, in their brief, that “a book has been written about
GARANIMALS by the famous psychologist Dr. Joyce Brothers,” and “”What other trademark
has had a book written about it by a famous psychologist, Dr. Joyce Brothers, detailing the
positive psychological effect that GARANIMALS Products have had on the self-Image of
children?” are overstatements. Opposers’ Brief, pp. 11 and 12 (44 TTABVUE 17 and 18).
42 Id. at Exhibit A (28 TTABVUE 72).
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* * *
Parents will want to select practical clothing that can
withstand the rough and tumble play of their child as he
grows. In my traveling and talking with parents, the easy
care and durability of Garanimals have been features
many parents mentioned again and again.43
Opposers contend that the GARANIMAL marks are famous.
The GARANIMALS mark is a famous trademark due to its
longevity of use, extensive advertising, huge distribution,
and high sales volume of the GARANIMAL Products sold
thereunder.44
For the reasons explained below, we find that Opposers’ GARANIMAL marks are
commercially strong but not famous marks. First, although long use of a mark is
indicative of commercial success, it is not conclusive evidence of fame. See 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.”). Cf. La. Fish
Fry Prods., Ltd., 797 F.3d 1332, 116 USPQ2d 1262 (Fed. Cir. 2015) (finding evidence
of long use insufficient to establish acquired distinctiveness of FISH FRY
PRODUCTS where evidence involved uses of LOUISIANA FISH FRY PRODUCTS);
In re Ennco Display Sys. Inc., 56 USPQ2d 1279, 1286 (TTAB 2000) (applicant’s use
of the product designs ranging from seven to seventeen years is insufficient to bestow
acquired distinctiveness); In re Packaging Specialists, Inc., 221 USPQ 917, 920
(TTAB 1984) (finding evidence submitted by applicant insufficient to establish

43 Id. at Exhibit A (28 TTABVUE 73).
44 Opposers’ Brief, p. 9 (45 TTABVUE 15).
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acquired distinctiveness of PACKAGING SPECIALISTS, INC., for contract
packaging services, notwithstanding, inter alia, continuous and substantially
exclusive use for sixteen years, deemed “a substantial period but not necessarily
conclusive or persuasive”). Compare Nina Ricci, S.A.R.L. v. ETF Enters., Inc., 203
USPQ 947, 951 (TTAB 1979) (“Not only has opposer enjoyed long use of its ‘RICCI’
marks, but the record shows the fame, prestige and reputation which the name ‘NINA
RICCI’ has brought to opposer as evidenced by the numerous newspaper articles and
reports of opposer’s activities in the ladies' apparel fields, previously referred to.”).
Second, the only evidence of unsolicited media attention is the aforementioned
reference in the Dr. Joyce Brothers publication. Jerald Kamiel, who introduced the
booklet, speculated that the booklet was published “somewhere around ’75, ’76,
something like that.”45 He was unaware of its circulation.46 Opposers’ proffered no
testimony or other evidence as to whether it is still in circulation.
Finally, Opposers’ substantial advertising and revenues relating to the
GARANIMAL marks shows that it is a successful product line. Inasmuch as since
2008, Opposers have sold GARANIMAL products sold exclusively through Walmart,
it was incumbent upon Opposers to provide some context for its advertising
expenditures and revenues (e.g., market share, how Opposers revenues and
advertising expenditures compare with comparable goods). After all, because of the
extreme deference that we accord a famous mark in terms of the wide latitude of legal

45 Kamiel Testimony Dep., p. 40 (28 TTABVUE 45).
46 Id.
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protection it receives, and the dominant role fame plays in the likelihood of confusion
analysis, it is the duty of the party asserting that its mark is famous to prove it
clearly. Coach Services, Inc. v. Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d
1713, 1720 (Fed. Cir. 2012), citing Leading Jewelers Guild Inc. v. LJOW Holdings
LLC, 82 USPQ2d 1901, 1904 (TTAB 2007).
We find that Opposers’ GARANIMAL marks are commercially strong, but not
famous.47 This means that Opposers’ GARANIMAL marks fall on strong side of the
spectrum of from very strong to very weak.
E. The similarity or dissimilarity of the marks.
We now turn to the DuPont likelihood of confusion factor focusing on the similarity
or dissimilarity of the marks in their entireties as to appearance, sound, connotation
and commercial impression. DuPont, 177 USPQ at 567. “Similarity in any one of these
elements may be sufficient to find the marks confusingly similar.” In re Inn at St.
John’s, LLC, 126 USPQ2d 1742, 1746 (TTAB 2018) (quoting In re Davia, 110 USPQ2d
1810, 1812 (TTAB 2014)); accord Krim-Ko Corp. v. Coca-Cola Bottling Co., 390 F.2d

47 “Fame for likelihood of confusion and fame for dilution are distinct concepts, and dilution
fame requires a more stringent showing. … Accordingly, a mark can acquired ‘sufficient
public recognition and renown for purposes of likelihood of confusion without meeting the
more stringent requirement for dilution fame.” Coach Servs., 101 USPQ2d at 1724. See also
Palm Bay Imports Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369,
73 USPQ2d 1689, 1694 (Fed. Cir. 2005). If Opposers’ GARANIMAL mark does not meet the
lesser standard of fame for purposes of likelihood of confusion, it cannot be famous for
purposes of dilution. See ProMark Brands Inc. v. GFA Brands, Inc., 114 USPQ2d 1232, 1250
(TTAB 2015) (“Where, as here, a mark is not proven famous for purposes of likelihood of
confusion, it will certainly not meet the higher threshold for fame required to prove
dilution.”). As Opposers cannot demonstrate, on this record, a required element of its dilution
claim, we dismiss Opposers’ claim under Section 43(c) of the Trademark Act.
Opposition No. 91232774

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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).
In comparing the marks, we are mindful that where, as here, the goods are in part
identical, the degree of similarity necessary to find likelihood of confusion need not
be as great as where there is a recognizable disparity between the goods. Coach
Servs., 101 USPQ2d at 1721; 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 proper test is not a side-by-side comparison of the marks, but instead
‘whether the marks are sufficiently similar in terms of their commercial impression’
such that persons who encounter the marks would be likely to assume a connection
between the parties.” Cai v. Diamond Hong, 127 USPQ2d at 1801 (quoting Coach
Servs. Inc. v. Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1721 (Fed.
Cir. 2012)); Midwestern Pet Foods, Inc. v. Societe des Produits Nestle S.A., 685 F.3d
1046, 103 USPQ2d 1435, 1440 (Fed. Cir. 2012). The proper focus is on the recollection
of the average customer, who retains a general rather than specific impression of the
marks. Geigy Chem. Corp. v. Atlas Chem. Indus., Inc., 438 F.2d 1005, 169 USPQ 39,
40 (CCPA 1971); L’Oreal S.A. v. Marcon, 102 USPQ2d 1434, 1438 (TTAB 2012);
Winnebago Indus., Inc. v. Oliver & Winston, Inc., 207 USPQ 335, 344 (TTAB 1980);
Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106, 108 (TTAB 1975). Because the
Opposition No. 91232774

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descriptions of goods in Opposers’ pleaded registrations and the application at issue
include children’s pants and shirts, the average customer is an ordinary consumer.
Applicant is seeking to register the mark MANIMAL and Opposers’ marks are
variations of GARANIMAL. The marks are similar because they share the word
“animal” as a suffix. However, they differ because Applicant’s mark places the letter
“M” before the word “animal” to create “Manimal,” a combination of man and animal.
Opposers, on the other hand, place the letters “Gar” before the word “animal” to create
a fanciful term without any meaning. Jerald Kamiel, Opposers’ President and Chief
Operating Officer concurs:
Q. Can you tell me what a Manimal is?
A. It’s a part human, part animal that is - - has animal
instincts and behavior, ugly, and very, very different
than the animals that we have in Garanimals.
Q. Would you say in your advertising of Garanimals
you are trying to create a particular image of what
Garanimals is in the minds of consumers?
A. Yes.
Q. And what is that image?
A. The image we are trying to create is that Garanimals
is a kids’ wear brand of well made, comfortable, high
quality, durable clothes that kids will want to wear,
want to dress themselves and look correct.48
While we acknowledge that both marks suggest animals, we find that the marks
in their entireties are dissimilar and purchasers will not ascribe a common source or

48 Kamiel Testimony Dep., pp. 32-33 (28 TTABVUE 37-38). Mr. Kamiel testified that
Opposers do market research regarding the impact of their advertising. Id. at pp. 19-20 and
39 (28 TTABVUE 24-25 and 44).
Opposition No. 91232774

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sponsorship to the apparel sold thereunder. The overall differences in the marks
visually, aurally, and in the commercial impressions engendered by the marks
outweigh the similarities. The third-party registrations discussed above indicate that
Opposers are not the only entity to register marks with an “animal” or “imals” suffix.
In fact, all of the third-party registrations were issued after Opposers’ first use and
registration of GARANIMAL. Thus, Opposers must believe that various “animal” or
“imals” suffix marks can be used and registered side by side without causing
confusion provided there are minimal differences between the marks. See In re Hartz
Hotel Servs., Inc. 102 USPQ2d 1150, 1153 (TTAB 2012); Plus Prods. v. Natural
Organics, Inc., 204 USPQ 773, 779 (TTAB 1979). Despite the inherent commercial
strength of the GARANIMAL marks, the marks differ enough in sight, sound,
meaning and commercial impression that confusion is not likely.
We find that the marks are not similar in appearance, sound, connotation or
commercial impression.
F. Balancing the factors.
We find that the dissimilarity of the parties’ marks outweighs the other applicable
DuPont factors. See Kellogg Co. v. Pack’em Enters. Inc., 951 F.2d 330, 21 USPQ2d
1142, 1145 (Fed. Cir. 1991) (“We know of no reason why, in a particular case, a single
duPont factor may not be dispositive”); Oakville Hills Cellar, Inc. v. Georgallis
Holdings, LLC, 826 F.3d 1376, 119 USPQ2d 1286, 1290 (Fed. Cir. 2016) (“a single du
Pont factor may be dispositive in a likelihood of confusion analysis, especially when
that single factor is the dissimilarity of the marks”) (quoting Odom’s Tenn. Pride
Opposition No. 91232774

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Sausage, Inc. v. FF Acquisition, LLC, 600 F.3d 1343, 93 USPQ2d 2030, 2032 (Fed.
Cir. 2010) (“[E]ven if all other relevant DuPont factors were considered in [opposer’s]
favor, as the board stated, the dissimilarity of the marks was a sufficient basis to
conclude that no confusion was likely.”)); Champagne Louis Roederer S.A. v. Delicato
Vineyards, 148 F.3d 1373, 47 USPQ2d 1459, 1460 (Fed. Cir. 1998) (“[O]ne DuPont
factor may be dispositive in a likelihood of confusion analysis, especially when that
single factor is the dissimilarity of the marks.”).
Therefore, we find that Applicant’s mark MANIMAL for men’s, women’s and
children’s clothing listed in the description of goods is not likely to cause confusion
with Opposers’ GARANIMAL marks for clothing.
V. Abandonment
During the prosecution of Applicant’s application, the Examining Attorney cited
application Serial No. 85115633 for the mark MANIMALS, in standard character
form, for, inter alia, “clothing, namely, t-shirts, dresses, jackets, sweatshirts, hooded
shirts, tank tops, hats, caps, pants, socks, polo shirts, long sleeve shirts, infant and
toddler one piece clothing, cloth bibs, ties, footwear and aprons,” in Class 25, as a
potential Section 2(d) bar to registration.49 In response, Applicant submitted a
consent agreement with The Mountain Corporation, owner of Registration No.
4918335, formerly the cited application. The Mountain Corporation agreed to amend
its description of goods to “shirts featuring animals with humanoid characteristics”

49 April 13, 2012 Office Action in Applicant’s application (TSDR 2 and 4-7).
All references to the application record are to the Trademark Status and Document Retrieval
(TSDR) system in the downloadable .pdf format.
Opposition No. 91232774

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and agreed that Applicant may use and register MANIMAL for the goods listed in
Applicant’s application.50 The Examining Attorney reviewed the consent agreement
and approved Applicant’s application for publication.51
Opposers allege that the consent agreement “constitutes a ‘naked’ consent by
[Applicant] for The Mountain Corporation to sell T-shirts featuring animals with
humanoid characteristics under the MANIMALS mark without [Applicant] having
the right or the ability to control the nature or quality of those goods” and, therefore,
the consent agreement “constitutes an abandonment of [Applicant’s] exclusive right
to use MANIMAL on clothing products.”52 Opposers contend that the “naked” consent
agreement between Applicant and The Mountain Corporation goes against public
policy and “[b]y entering into such an agreement, Applicant has abandoned any right
it may have had to MANIMAL and is not entitled to register the same as a
trademark.”53
Section 45 of the Trademark Act, 15 U.S.C. § 1127, provides, in pertinent part,
that “[a] mark shall be deemed ‘abandoned’ …”
(2) When any course of conduct of the owner, including acts
of omission as well as commission, causes the mark to
become the generic name for the goods or services on or in
connection with which it is used or otherwise to lose its
significance as a mark. Purchaser motivation shall not be
a test for determining abandonment under this paragraph.

50 September 8, 2016 Response to Suspension Inquiry attached to Applicant’s application
(TSDR 1 and 3-4).
51 November 30, 2016 Notation to File attached to Applicant’s application (TSDR 1).
52 Amended Notice of Opposition ¶¶59 and 60 (15 TTABVUE 14).
53 Opposers’ Brief, p. 20 (45 TTABVUE 26).
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Assuming arguendo that the consent agreement is a naked consent, Opposers, as
plaintiffs, must prove that the consent agreement whereby The Mountain
Corporation agreed to the use and registration of Applicant’s mark caused Applicant’s
mark to lose its significance as a trademark.54 See Wallpaper Mfrs., Ltd. v. Crown
Wallcovering Corp., 680 F.2d 755, 214 USPQ 327, 335-36 (CCPA 1982) (“Under part
(b) [of the definition of abandonment in Section 45 of the Trademark Act, now
designated as part 2] a mark becomes abandoned only when the mark loses its
significance as an indication of origin, not the sole indication of source.”); Univ. Book
Store v. Univ. Wisc. Bd. of Regents, 33 USPQ2d 1385, 1393 (TTAB 1994). In other
words, Opposers must prove that the consent agreement caused Applicant’s mark to
lose its significance as a source indicator. See Guiding Eyes for the Blind, Inc. v. Guide
Dog Found. for the Blind, Inc., 384 F.2d 1016, 155 USPQ 462, 464 (CCPA 1967); TBC
Corp. v. Grand Prix Ltd., 12 USPQ2d 1311, 1314 (TTAB 1989) (“[I]n order to state a
claim upon which relief can be granted for the ground of abandonment, applicant
must plead facts which show a course of conduct by opposer which has caused
opposer's mark to lose its trademark significance.”).
Opposers have not introduced any evidence proving that Applicant’s MANIMAL
trademark has lost its significance as a trademark. In fact, because Opposers have
not introduced evidence that The Mountain Corporation is using MANIMALS, there
is no evidence that any entity other than Applicant is using MANIMAL or

54 Applicant did not expressly agree to the use and registration of MANIMALS for t-shirts by
The Mountain Corporation.
Opposition No. 91232774

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MANIMALS as a trademark. On the other hand, Applicant has introduced sufficient
evidence of its continuous use of MANIMAL to make a prima facie showing that
MANIMAL functions as a trademark.55 See Woodstock’s Enters. Inc. (CA) v.
Woodstock’s Enters Inc. (OR), 43 USPQ2d 1440, 1446 (TTAB 1997), aff’d 152 F.2d 942
(Fed. Cir. 1998) (“[S]o long as at least some purchasers identify respondent with the
registered mark, it cannot be said that respondent’s course of conduct has caused the
registered mark to lose its significance as a mark.”).
Opposers have failed to prove that Applicant has abandoned its MANIMAL
trademark and, therefore, we dismiss the abandonment claim.
Decision: The opposition is dismissed.

55 Corbo Testimony Decl. Exhibits 2-3 (35 TTABVUE 29-82) and Exhibit 4 (36-39 TTABVUE).