Girl Scouts of the United States of Americav.Girlsports Brand, Inc.

Trademark Trial and Appeal Board

Feb 27, 2004

No. 91120051 (T.T.A.B. Feb. 27, 2004)

Mailed: Paper No. 29
February 27, 2004 GFR
UNITED STATES PATENT AND TRADEMARK OFFICE
_____
Trademark Trial and Appeal Board
______
Girl Scouts of the United States of America
v.
Girlsports Brand, Inc.1
_____
Opposition No. 91120051
to application Serial No. 75517912
filed on July 13, 1998
_____
William R. Golden, Jr., Margaret Ferguson and Paul W.
Garrity of Kelley Drye & Warren LLP for Girl Scouts of the
United States of America.
Kathleen E. Finnerty of Livingston & Mattesich for
Girlsports Brand, Inc.
______
Before Seeherman, Hairston and Rogers,
Administrative Trademark Judges.
Opinion by Rogers, Administrative Trademark Judge:
Girlsports Brand, Inc. [applicant], by assignment from
Girlsports Brand, seeks to register the mark shown below for
goods identified as "clothing, namely T-shirts, shorts,
sweatshirts, sweatpants and caps," in International Class
1 USPTO assignment records, at Reel 2171, Frame 0248, indicate
the involved application has been assigned from Girlsports Brands
(a limited partnership) to Girlsports Brands, Inc.
This Opinion is Not
Citable as Precedent of
the TTAB
Opposition No. 91120051
2
25. The application was filed July 13, 1998 and is based on
applicant's allegation of its intention to use the mark in
commerce.2
Girl Scouts of the United States of America [opposer]
has filed a notice of opposition. In its notice of
opposition, opposer asserts that it "is now using and for
many years past has used the mark GIRLSPORTS," "for and in
connection with" programs that promote "social, physical and
intellectual growth and development" of girls, as well as
their "lifelong participation in health and fitness
activities"; that it has prior use of the GIRLSPORTS mark in
interstate commerce "for and in connection" with its
programs and "related goods and services" "including but not
limited to clothing"; that its use of the GIRLSPORTS mark
has been continuous; that it has also adopted and used
"GIRLSPORTS formative marks" such as GIRLSPORTS 1999,
GIRLSPORTS 2000, GIRLSPORTS BASICS, GIRLSPORTS LEADERSHIP
2 The application includes a disclaimer of the word BRAND.
Though the application was never amended to assert that applicant
had begun use of its mark in commerce, in its brief applicant
asserts that it began use of the mark in commerce in November
1998 and has used it continuously since then. Brief, p. 30. The
record confirms that applicant did, in fact, receive its first
order in November 1998 and has continuously expanded its business
since then.
Opposition No. 91120051
3
INSTITUTE and GIRLSPORTS WIDER OPPORTUNITY; that because of
"long and extensive use in commerce, the GIRLSPORTS mark …
is well and favorably known and of great value" to opposer;
that applicant's mark so closely resembles opposer's mark
that there exists a likelihood of confusion, mistake or
deception; and opposer asserts that it will be damaged by
issuance of a registration to applicant.
In addition to this claim which, although opposer does
not refer to the statute, is clearly based on Section 2(d)
of the Trademark Act, opposer also asserts a claim under
Section 36 of Title 36 of the United States Code [this
section now appears to be 36 U.S.C. §80305]. Specifically,
opposer asserts that 36 U.S.C. §36 grants it the "sole and
exclusive right to have and to use" certain "emblems and
badges, descriptive or designating marks, and words and
phrases" both "for carrying out" its programs and furthering
its purposes and also "in connection with the manufacturing,
advertising, and selling of equipment and merchandise."
While opposer does not state, in its pleading, that any
particular "emblems and badges, descriptive or designating
marks, and words and phrases" are reserved for opposer by
this statute, it does assert that applicant's use of
GIRLSPORTS BRAND is "in direct contravention and derogation"
of the rights it has been granted by Congress.
Opposition No. 91120051
4
Applicant, by its answer, admits that opposer is a
federally chartered corporation and admits opposer's
allegation that applicant seeks to register the GIRLSPORTS
BRAND mark for goods identified in the involved application.
Otherwise, applicant expressly or effectively denies the
allegations of the notice of opposition. Applicant has not
asserted any affirmative defenses.
The Record
The record in this case is substantial. Each party,
for its case in chief, has taken and submitted the testimony
of five witnesses. In addition, opposer took and submitted
the testimony of a rebuttal witness. There are more than
100 exhibits introduced by the testimony of opposer's six
witnesses. There are nearly 100 exhibits introduced by the
testimony of four of applicant's five witnesses.3
3 Kathleen Abbott was one of applicant's witnesses. When the
transcript of her testimony was filed under cover of the notice
of filing required by 37 C.F.R. §2.125(c), the words "with
exhibits" in such notice were crossed out and initialed. The
initials appear to be those of the individual who signed the
certificates of mailing and service. The Board contacted
applicant's counsel by phone to confirm the accuracy of the
notice of filing and that no exhibits had been filed, leaving a
message on a voice messaging system. Many weeks later,
applicant's counsel submitted a "[c]opy of certified transcript
of the testimony deposition of Kathleen Abbott, with exhibits."
The exhibits, however, are not copies of items discussed in the
Abbott testimony and appear to be copies of the exhibits to the
testimony of opposer's rebuttal witness. While the question of
whether applicant intended to submit exhibits for the Abbott
deposition remains unresolved, despite the Board's invitation to
applicant to settle it, it is clear from our review of the Abbott
deposition that the identified exhibits, even if they had been
submitted, would not affect our decision. This case essentially
Opposition No. 91120051
5
Objections to Evidence
Throughout the taking of testimony, opposer was
prolific with its objections. One or more "ongoing" or
"continuing" objections were interposed at the beginning of
the deposition of each of applicant's witnesses. Typically,
these were based on inadequate or improper notice, although
one asserted lack of relevance.4
Opposer then renewed many of its objections in its
brief, so many, in fact, that the brief includes
approximately 20 pages of objections prefacing six pages of
asserted facts and six pages of argument. Fortunately, we
do not need to compare each of the objections in the brief
with the many pages of testimony from applicant's witnesses,
to determine which objections opposer properly raised and
maintained, for few, if any of them, require resolution.
As we will discuss, infra, opposer's claim under
Section 2(d) of the Lanham Act, 15 U.S.C. §1052(d), largely
turns on the question of priority. Thus, a major part of
our analysis will focus on opposer's activities prior to the
filing date of applicant's application, and any testimony or
evidence from applicant that is probative of applicant's
turns on the issue of priority and the Abbott testimony is
largely irrelevant to disposition of that issue.
4 Testimony deposition of Rosalinda Vizina. Despite its view of
the testimony of this witness as irrelevant, it appears that
opposer's rebuttal witness, Pamela G. Saltenberger, was called
primarily to rebut the testimony of Ms. Vizina.
Opposition No. 91120051
6
pre-filing activities. Accordingly, we have no need to
undertake what would be a largely academic exercise, i.e.,
ruling on each of opposer's many objections to testimony
from applicant's witnesses that deals with applicant's
activities subsequent to the filing of its application.
There are two broader objections opposer interposed,
not in its main brief, but in its reply brief. First,
opposer complains that applicant violated applicable rules
by taking two testimony depositions on the same day, but in
different locations, specifically, in different states.
Second, opposer asserts that the transcript of the
deposition of one of these two witnesses [Dorothee
Hutchinson] was never filed with the Board or served on
opposer.
For applicant's failure to file a testimony deposition,
opposer requests that we should "not further hear or
consider the Applicant herein." We decline this request.
Trademark Rule 2.125(a), 37 C.F.R. §2.125(a), provides that
a party's remedy when its adversary fails to file a
deposition is to request a continuance and, by clear
implication, a ruling from the Board that the deposition be
filed. If the deposing party then fails to file and serve
the transcript after having been ordered to do so, the rule
provides that the deposition may be stricken, or judgment
may be entered against the refusing party, or other
Opposition No. 91120051
7
appropriate action may be taken. Accord, 37 C.F.R.
§2.123(h), which provides that the Board may exercise its
discretion to not further hear or consider the contestant
who refuses to file. Opposer has not established that
applicant refused to file the deposition transcript. It did
not move for a continuance when the transcript was not
filed, nor in any other way bring the matter to the Board's
attention. Moreover, by failing to raise the matter in its
main brief, and bringing it up only in its reply brief when
applicant could no longer respond to the argument, opposer
has essentially waived its right to seek redress for
applicant's failure.5 To be sure, a party may not merely
disregard the rule that requires filing of testimony
deposition transcripts, whenever it decides the testimony
would not aid the party in any way. Nonetheless, in this
case, the Board was not made aware of the violation at an
earlier point in the proceeding, when something might have
been done, and because we are sustaining the opposition,
there is nothing more to be done.6
As to applicant's taking of two depositions on the same
day, opposer asserts that we should give no consideration to
5 We also note that, to the extent opposer considered the
testimony, although taken by applicant, crucial to the
presentation of opposer's case, opposer was free to seek a copy
from the court reporter and file a transcript with the Board,
with an appropriate request that it be considered. 37 C.F.R.
§2.123(h).
6 Traditionally, the Board has not made awards of costs.
Opposition No. 91120051
8
the testimony of either of the two witnesses, or to the
exhibits introduced by their testimony. The request is
moot, of course, in regard to the witness [Dorothee
Hutchinson] whose testimony transcript and exhibits have not
been filed. We decline opposer's request that we refuse to
consider the testimony and exhibits of the other witness
[Kathryn Glaeser] whose testimony was taken on the same day.
Under Trademark Rule 2.123(e)(3), 37 C.F.R.
§2.123(e)(3), when objection is made to the taking of a
deposition on "improper or inadequate" notice, the objecting
party must move to strike the testimony promptly after the
testimony is completed. We are not aware of opposer having
made such a motion and opposer does not claim that it did.
Moreover, even if it would have been proper practice to
state the objection at the commencement of the deposition,
which opposer did, and to then reiterate the objection
during briefing, opposer failed to raise the issue in its
main brief. Raising the objection for the first time in its
reply brief was inadequate. Finally, we note that an
associate of opposer's lead counsel, it appears, did attend
the Hutchinson deposition (deposition of Kathleen Abbott, p.
86), so the taking of two depositions on one day in
different locations did not prejudice opposer. We deny
opposer's request that we not consider the Glaeser testimony
and exhibits.
Opposition No. 91120051
9
While applicant did assert numerous objections during
the taking of testimony from opposer's witnesses, applicant
did not maintain these objections in its brief.
Accordingly, they have been waived. See authorities
collected in TBMP Section 707.03(c) note 289 (2d ed. June
2003). Applicant does, however, make two general objections
in its brief.
First, applicant essentially objects to evidence
regarding opposer's GIRLSPORTS activities and merchandise
that occurred or was produced after the filing date of
applicant's involved application, as irrelevant or
immaterial. Broadly speaking, applicant is correct insofar
as our consideration of the question of priority is
concerned, but post-filing date evidence is relevant to
likelihood of confusion issues, such as relatedness of the
goods and/or services, channels of trade, and classes of
consumers. We have considered opposer's evidence, as
appropriate, in regard to the issues before us. Second,
applicant asserts that "self-serving" evidence from opposer
that is contradicted by "documentary" evidence should be
disregarded as unreliable. We take this as an exhortation
that testimony contradicted by documents should be given
little weight. This is not a true objection and is simply a
request that we analyze the record in the way we normally
Opposition No. 91120051
10
would, and give evidence only the probative value to which
circumstances indicate it is entitled.
Findings of Fact
We make the following findings of fact based on the
record, primarily focusing on facts that are relevant to the
question of priority, which is the critical issue in this
case:
Opposer has a staff of executives and employees in New
York that provide direction and support to more than 300
Girl Scout councils throughout the United States. Each
council represents numerous troops and typically covers a
large multi-county area or, in some cases, an entire state.
Each troop is composed of numerous individual scouts of
varying ages and adult volunteers. Depositions of Kathleen
Duncan, pp. 7-8; Dianne Campbell, pp. 7-8; Kathleen Houston,
pp. 7-8; Denise Scribner, pp. 5-7; and Pamela Saltenberger,
pp. 6-8.
Though precise dates and times have not been
established for particular activities, opposer was actively
engaged in creating a new initiative for Girl Scouts during
the mid-1990s, focusing on sports and fitness. Deposition
of Sharon Hussey, pp. 6-13 and exh. 3.
In 1995 and 1996, the initiative was generally known as
"Sports + Girls = A Winning Team." Hussey, pp. 12-14, 16,
exhs. 3 and 4.
Opposition No. 91120051
11
From 1995 through 1997, opposer sought to collaborate
with various sports and fitness organizations that could
support the goals of the initiative and serve as resources
to Girl Scout Councils. Hussey, p. 10, exhs. 3 and 5.
In early 1997, the name of the initiative was changed
to GIRLSPORTS and a logo including the term was created.
Duncan, pp. 12-15; Hussey, pp. 12-13 and exh. 3.
In the spring of 1997, opposer began disseminating
information on the GIRLSPORTS initiative to Girl Scout
Councils throughout the United States, soliciting both
applications from older Girl Scouts to participate in a
national event (referred to by opposer and its councils as a
"wider opportunity" event) and applications from councils
wanting to hold a Sports Day event in August, September or
October 1997. Hussey, pp. 15-18, 20 and exh. 4.
Employees of opposer met with Executive Directors of
Girl Scout Councils from across the United States in late
June 1997 and presented information on all the components of
the GIRLSPORTS initiative. Hussey, pp. 18-19 and exh. 5;
Duncan, pp. 14-15.
Opposer's national office distributed to its councils a
Girl Scouts Sports Project Manual (copyright 1997) bearing
the GIRLSPORTS logo on its cover and including an
introductory section entitled "What is the GirlSports
Project?" Hussey, pp. 61-62 and exh. 26.
Opposition No. 91120051
12
The GIRLSPORTS wider opportunity event was held over
approximately a week in late July and early August 1997 at
Converse College in Spartanburg, South Carolina.
Approximately 200 girls representing over 100 councils from
throughout the United States attended the event. Hussey,
pp. 21-24 and exhs. 6-7; Duncan, pp. 15-17.
Attendees at the 1997 wider opportunity event paid
registration fees and received, inter alia, GIRLSPORTS
emblazoned shirts, patches, water bottles and bags. Duncan,
p. 16; Campbell, pp. 24-25.
More than 100 councils throughout the United States
held "Sports Day" programs from August 1997 through October
1997. These were planned by the individual councils and had
varying sports or fitness subjects as their focus. Councils
received a $500 grant from GSUSA and a $500 credit for
purchasing items from NES. Hussey, pp. 16-18 and exhs. 3-4,
9, 14-15.
Typically, grants and credits were used, inter alia, to
purchase GIRLSPORTS t-shirts, water bottles and patches for
event participants. Saltenberger, pp. 26-27.
Opposer produced a GIRLSPORTS banner that it expected
councils to use at their events, but councils were free to,
and did, call their events by a wide variety of specific
names. Hussey, pp. 17-18, 138 and exh. 15; Scribner p. 13.
Opposition No. 91120051
13
Opposer sold and/or distributed over 40,000 GIRLSPORTS
shirts, water bottles and patches in 1997. Duncan exh. 7.7
A Sacramento, California area Girl Scout council held a
Sports Day program October 25, 1997, at which each
participant paid a registration fee and received a
GIRLSPORTS t-shirt, water bottle, bag and patch.
Saltenberger pp. 11, 16 and exhs. 1 and 4.
Two Girl Scout councils covering counties in Washington
state and Oregon sponsored a Passport to Health and Fitness
event in the Tacoma Dome on May 30, 1998, as a GIRLSPORTS
Sports Day program. More than 2100 girls and adults
registered for the event, and nearly 1400 girls actually
participated. Participants and volunteers staffing the
event received a t-shirt bearing the GIRLSPORTS logo and the
words "Passport to Health and Fitness Saturday, May 30, 1998
Tacoma Dome." Houston, pp. 7, 9-18 and exhs. 2, 4-8.
A Bakersfield, California area Girl Scout council had
three of its girls attend the first GIRLSPORTS wider
opportunity event and subsequently held numerous sports
clinics, each identified as a GIRLSPORTS clinic and
utilizing GIRLSPORTS signage, during its September 1997 to
September 1998 membership year. One of these was a
7 The spreadsheet produced during discovery as opposer's document
number GS 0002923 was marked as confidential. However, when it
was submitted as an exhibit to the Duncan deposition it was not
sealed and opposer has quoted figures from the exhibit in its
brief.
Opposition No. 91120051
14
volleyball clinic at Taft College in April 1998, with
participants receiving t-shirts bearing the words GirlSports
Volleyball and displaying a stick figure playing volleyball.
Campbell, pp. 11-24 and exhs. 21-22 and 27-29.
A Wichita, Kansas area Girl Scout council had two girls
attend the first GIRLSPORTS wider opportunity event in 1997
and began promoting its summer 1998 sports programs in its
early 1998 "Passport" newsletter. Scribner, pp. 10-12, 16-
18 and exh. 44.
Wichita area council events were held at least as early
as June 9, 11 and 13, 1998. The council produced t-shirts
and hats with the GIRLSPORTS logo, for their 1998 events.
These also bear the words "Wichita Area Girl Scouts." These
were offered for sale between March and August of 1998.
Scribner, pp. 13-14, 22-24 and exhs. 44, 46, 47-49, 51.
The initial phase of the GSUSA GIRLSPORTS sports
initiative ran through later 1997 and 1998. A second phase
involved the GIRLSPORTS 2000 program, which involved a sort
of run-up to January 1, 2000. Hussey dep. generally.
GIRLSPORTS 2000 events were held by Girl Scout troops
throughout the country virtually every day in 1999, as the
goal of the second phase was to try and have a sports event
somewhere in the country every day of the year. Hussey dep.
generally and exhs. 25 and 35.
Opposition No. 91120051
15
GSUSA held wider opportunity events each year from 1997
until at least the year 2000. Hussey, pp. 28-32 and exhs.
10-13.
GSUSA received grants from foundations or campaigns to
support GIRLSPORTS programs in 1997, 1999, 2001 and 2002;
has had an operating budget for GIRLSPORTS programs each
year from 1997 through 2002; and has made grants to councils
from those budgets each year from 1997 through 2002.
Hussey, p. 32 and exh. 14.
Kathryn Glaeser developed the concept for applicant's
products in October 1997, and subsequently formed a
partnership with Tamara Spears. Glaeser deposition, pp. 10
and 131; involved application filed by partnership.
Applicant placed its first orders for t-shirts bearing
the GIRLSPORTS BRAND mark on March 24, 1998. Ten shirts
were ordered. Applicant sold some shirts to friends of Ms.
Glaeser and/or Ms. Spears in the spring of 1998. The
quantity and precise time frame are not clear. Glaeser, p.
32 and exh. 3, p. 213-17.
Applicant sponsored and/or outfitted a softball team in
1998. The particular clothing that may have been provided
and time frame for providing it are unclear. Glaeser, p.
217-18.
Applicant obtained a Business Operations Tax
Certificate from the city of Sacramento June 23, 1998, and
Opposition No. 91120051
16
registered the domain name girlsports.net six days later.
Glaeser pp. 33-34 and exhs. 4-5.
Throughout 1998, Kathryn Glaeser continued to develop
graphic elements for applicant's apparel items, for
catalogues, and for a website. Glaeser, pp. 132-33.
Applicant's first order was generated from its website
and was received November 17, 1998. Glaeser, pp. 48-49 and
exh. 13.
Applicant's first ad in a local publication was placed
November 25, 1998, and its first ad in a national
publication was placed for a February 1999 publication date.
Glaeser, pp. 41-44 an exhs. 9 and 10.
Applicant mailed out 7500 postcard advertisements to
individuals selected from two mailing lists applicant had
purchased (one local and one national), "the end of '98."
Glaeser, p. 45 and exh. 11.
Applicant's sales for 1998 were $800. Kathleen Abbott
deposition, pp. 109-10.
Decision
Opposer does not have a registration for either the
term GIRLSPORTS or its GIRLSPORTS logo. A party opposing
registration of another's mark on the basis of likelihood of
confusion with its own unregistered mark must establish that
the unregistered mark is distinctive of its goods or
services either inherently or through the acquisition of
Opposition No. 91120051
17
secondary meaning. See Towers v. Advent Software, Inc., 913
F.2d 942, 945, 16 USPQ2d 1039, 1041 (Fed. Cir. 1990).
Applicant, in its brief, does not specifically argue
that the term GIRLSPORTS, per se, is descriptive.8 However,
applicant acknowledges the possibility in a footnote [Brief
p. 33, n. 2] in which it suggests that this case involves
marks that are not inherently distinctive and opposer, to
prevail, must prove that its mark has acquired
distinctiveness prior to the filing date of applicant's
application.
Applicant also argues, in essence, that its GIRLSPORTS
BRAND is a mark because those words are used in a consistent
style on all of applicant's apparel, advertising and
marketing materials; and the "TM" symbol is always used "to
denote the trademark intention and status of the mark."
Brief, p. 33. In contrast, applicant contends, opposer's
method of display of GIRLSPORTS has been inconsistent,
insofar as it is sometimes used alone, sometimes as part of
a logo, sometimes used by Girl Scout councils or troops in
conjunction with other words, and in various fonts or forms
8 We note that applicant's involved application seeks
registration of GIRLSPORTS BRAND on the principal register,
without a claim of acquired distinctiveness. The mark published
for opposition with a disclaimer only of the term "BRAND" and
applicant does not seek registration on the theory that it is
only the stylized form of lettering of its mark that renders it
registrable, notwithstanding applicant's arguments that the
stylization of its mark is an important element thereof.
Opposition No. 91120051
18
of stylization. Applicant concludes, therefore, that
opposer's use is "merely of words and not as a mark." Id.
Although applicant correctly notes that opposer has
used GIRLSPORTS in various type styles and with or without a
logo, we find that all such uses are as a mark. There is no
requirement that a term be used in only a single type font
for it to be a mark. Similarly, a mark owner may obtain
rights in a word mark even if the word is also used as part
of a logo. We need not reach the question of whether
opposer's GIRLSPORTS mark is inherently distinctive, or
whether applicant is estopped from attacking opposer's mark
on this basis because applicant has sought registration of
GIRLSPORTS BRAND as an inherently distinctive mark, for the
record clearly establishes that opposer's GIRLSPORTS mark
had, at the very least, acquired distinctiveness prior to
any use made by applicant of its mark.
Opposer's program was launched with great fanfare among
the nation's more than 300 Girl Scout councils, with
numerous weekly council mailings from GSUSA to its councils
discussing the program throughout the fall of 1997 and
spring of 1998. See exhibits 7, 8, 9, 19, 20, 21 and 22 to
the Hussey testimony deposition. See also, deposition of
Michelle McCormick, executive director of the Girl Scouts
council for Santa Clara (California) County, who testified
on direct examination by applicant that she first became
Opposition No. 91120051
19
aware of the GSUSA initiative in 1997 and who testified on
cross-examination "that GirlSports is a very strong national
initiative and that you have to be kind of asleep at the
wheel to not know that GirlSports was from GSUSA and has
lots of great program elements." McCormick dep. pp. 13, 23.
See also, the deposition of Lynn Cameron, who testified on
direct examination by applicant about how she became aware
of the first (1997) GIRLSPORTS wider opportunity event: "Q:
And how did you come to know about that? A: Well, because
it was the first one. And it was – well, what should I say
– made into a big deal."
In turn, councils promoted the program to Girl Scout
members, of all ages, and participation therein through
their own newsletters and flyers. See, e.g., Campbell
deposition exhibits 27 and 28, Houston deposition exhibits
2, 3, 4 and 7, and Saltenberger deposition exhibits 1-5.
Councils promoted their GIRLSPORTS events to the media. See
deposition of Kathleen Houston, pp. 15-16 and exhibit 5; and
deposition of Denise Scribner, pp. 13-14.
On the record in this case, we have no doubt that at
least among GSUSA's councils, Girl Scout leaders, and even
large numbers of Girl Scouts, the term GIRLSPORTS and the
GIRLSPORTS logo quickly became identified with opposer and
its programs. Accordingly, even if we were to agree with
applicant's theory that varying methods of use or display of
Opposition No. 91120051
20
the term GIRLSPORTS by opposer and its councils constituted
use of a descriptive term, we would find that opposer's
national roll-out of the program in late 1997 and early 1998
imbued the term with distinctiveness as a trademark for
sports and fitness events prior to the filing date of
applicant's application.
We now turn our attention to opposer's use of
GIRLSPORTS and the GIRLSPORTS logo on collateral items that
were given away at its 1997 national wider opportunity
event, and sold to councils (albeit with the councils
typically paying for the merchandise with grant money
received from opposer) for distribution or resale at
council-level events.9 Applicant makes much of the fact
that GIRLSPORTS is an initiative or program of opposer and
that the GIRLSPORTS-branded shirts, bags, water bottles and
the like appear intended to simply serve as collateral items
for the program, and do not represent an attempt to
establish a brand identity for a continuing line of products
by opposer that have vitality apart from the GIRLSPORTS
program. Nonetheless, the Board has held
that the mere fact that a collateral product
serves the purpose of promoting a party's primary
goods or services does not necessarily mean that
the collateral product is not a good in trade,
9 The record is clear that opposer has at least on occasion
offered GIRLSPORTS-branded merchandise for sale to councils,
council shops, scouts and even outside retailers who sell Girl
Scouts authorized products. However, there is no evidence that
outside retailers actually purchased such items for resale.
Opposition No. 91120051
21
where it is readily recognizable as a product of
its type (as would be the case with T-shirts, for
example), and is sold or transported in commerce.
See, for example: In re Snap-On Tools Corp., 159
USPQ 254 (TTAB 1968) [ball point pens which are
used to promote applicant's tools, but which
possess utilitarian function and purpose, and have
been sold to applicant's franchised dealers and
transported in commerce under mark, constitute
goods in trade], and In re United Merchants &
Manufacturers, Inc., 154 USPQ 625 (TTAB 1967)
[calendar which is used as advertising device to
promote applicant's plastic film, but which
possesses, in and of itself, a utilitarian
function and purpose, and has been regularly
distributed in commerce for several years,
constitutes goods in trade].
Paramount Pictures Corp. v. White, 31 USPQ2d 1768, 1773
(TTAB 1994).
Further, we note that use of trademarks on collateral
products has become quite common. See Turner Entertainment
Co. v. Nelson, 38 USPQ2d 1943 (TTAB 1996) and authorities
discussed therein. Accordingly, we have no doubt that
GIRLSPORTS and the GIRLSPORTS logo are distinctive
indicators of opposer as the source of t-shirts, hats, water
bottles and the other items that have been sold or
distributed in conjunction with opposer's GIRLSPORTS events.
Further, based on opposer's sale or distribution of more
than 40 thousand shirts and more than 40 thousand water
bottles in 1997 alone, we conclude that opposer had attained
trademark rights in its GIRLSPORTS marks for these goods
prior to the filing date of applicant's application.
Opposition No. 91120051
22
We acknowledge that applicant's evidence at trial
includes testimony that there were some limited sales of
GIRLSPORTS BRAND shirts to friends of one or both of
applicant's founding partners, but we do not find this
testimony very persuasive. It was presented for the first
time in the redirect testimony of Kathryn Glaeser and
appears more an afterthought than a principal element of
applicant's case. Moreover, the testimony is vague as to
when such sales might have occurred, with no documentary
support or even the name of an individual purchaser.
Likewise, we do not find very persuasive the Glaeser
testimony that GIRLSPORTS BRAND shirts may have been
provided to friends who were softball players and/or that
applicant may have outfitted a softball team in a
sponsorship arrangement. Again, the testimony was presented
for the first time on redirect, and it is vague and
unsupported by documentary evidence — indeed, the witness
did not even specify the name of the team. In short, we
find that the earliest date on which applicant can rely for
purposes of priority is the filing date of its application.
We hold for opposer on the issue of priority10 and now
turn our attention to the question of likelihood of
confusion.
10 We note that the record is clear not only that opposer is the
prior user of GIRLSPORTS, but that its use since it first adopted
the mark has been continuing and has not been abandoned.
Opposition No. 91120051
23
We analyze the issue of likelihood of confusion using
the factors that were articulated in the case of In re E. I.
du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563,
567 (CCPA 1973). See also Recot, Inc. v. Becton, 214 F.3d
1322, 54 USPQ2d 1894, 1896 (Fed. Cir. 2000).
“The likelihood of confusion analysis considers all
DuPont factors for which there is evidence of record but
‘may focus ... on dispositive factors.’” Hewlett-Packard
Co. v. Packard Press Inc., 281 F.3d 1261, 62 USPQ2d 1001,
1003 (Fed. Cir. 2002) (citations omitted).
In many cases, two key, although not exclusive,
considerations are the similarities of the marks and the
similarities of the goods and services. See, e.g.,
Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d
1098, 192 USPQ 24, 29 (CCPA 1976)(“The fundamental inquiry
mandated by Section 2(d) goes to the cumulative effect of
differences in the essential characteristics of the goods
[and services] and differences in the marks”). The case at
hand is such a case.
The similarity or dissimilarity of the marks is
assessed by comparing the marks as to appearance, sound,
connotation and commercial impression. Herbko International
Inc. v. Kappa Books Inc., 308 F.3d 1156, 64 USPQ2d 1375,
1380 (Fed. Cir. 2002). Moreover, it is well-settled that
marks, when compared, must be considered in their
Opposition No. 91120051
24
entireties, not simply to determine what points they have in
common or in which they may differ. Giant Food, Inc. v.
Nation’s Foodservice, Inc., 710 F.2d 1565, 218 USPQ 390, 395
(Fed. Cir. 1983). Nonetheless, “there is nothing improper
in stating that, for rational reasons, more or less weight
has been given to a particular feature of a mark, provided
the ultimate conclusion rests on consideration of the marks
in their entireties.” In re National Data Corp., 732 F.2d
1056, 224 USPQ 749, 751 (Fed. Cir. 1985).
Opposer's GIRLSPORTS logo mark and applicant's
GIRLSPORTS BRAND mark look different, insofar as they
utilize different fonts, and opposer's mark includes a
stylized stick figure while applicant's mark includes the
term BRAND. The term GIRLSPORTS, however, dominates each
mark, both visually and in terms of how they would be
articulated. On the latter point, we doubt that many
prospective consumers of applicant's goods will be careful
to articulate the visually tiny word BRAND when calling for
applicant's products, especially since the record clearly
shows that applicant has used the term GIRLSPORTS without
the term BRAND, thereby helping to condition its customers
to focus on the term GIRLSPORTS. In regard to the look of
the marks, we return to the fact that opposer does not use
only its GIRLSPORTS logo but also uses the term GIRLSPORTS
alone and in regular or standard forms of text. Thus, Girl
Opposition No. 91120051
25
Scouts, although they may be readily familiar with the
GIRLSPORTS logo, will also be familiar with use by opposer
of the term GIRLSPORTS alone in varying typefaces. Many
likely would conclude, when seeing applicant's mark, that
this is simply a new or different form of stylization of the
opposer's GIRLSPORTS marks.
Finally, apart from the look and articulation of the
involved marks, we conclude that they create similar, if not
identical, overall commercial impressions. Applicant has
argued that its products have an edgier feel or attitude,
but much of the support for applicant's argument stems not
from a comparison of the marks but from reference to the
other design elements and trade dress that applicant uses
for its apparel, e.g., a softball player's bat is shown in
one design separating the head of a doll from its body and
the slogan "I never played with dolls… I played with this."
Our comparison of applicant's mark with those of opposer,
however, focuses on the mark as set forth in the
application, for applicant may change its shirt designs and
slogans at any time. In contemplating the font in which
applicant displays the term GIRLSPORTS, we discern nothing
particularly "edgy" or full of "attitude." Rather, the font
is looping and somewhat lyrical.
We conclude that the marks are virtually identical in
the way that they would be articulated, in their
Opposition No. 91120051
26
connotations and in their overall commercial impressions.
The visual differences would not be viewed as significant
and would not provide a means for prospective consumers to
readily differentiate the marks.
Turning now to consider the nature of the involved
goods and services, we note that opposer's sports programs
are precisely the type of activity for which a participant
might want to wear a piece of applicant's athletic apparel.
Thus, opposer's services provided under its GIRLSPORTS marks
and applicant's apparel items are complementary. In
addition, opposer's collateral merchandising items are
identical (t-shirts and caps or hats) or closely related to
applicant's products.
In terms of channels of trade and classes of consumers,
we note that applicant's identification of goods is not
restricted in any way. Accordingly, we must consider that
applicant's goods can be sold in all customary channels of
trade and to all possible consumers for "clothing, namely T-
shirts, shorts, sweatshirts, sweatpants and caps." Octocom
Systems, Inc. v. Houston Computers Services 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
Opposition No. 91120051
27
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”).
Because opposer relies on its common law rights, we
must look at the specific channels through which it sells
its clothing and collateral goods. These have been limited
to Girl Scouts councils, council stores and direct to Girl
Scouts members (e.g., through catalogs). These channels of
trade are different from applicant's actual and potential
channels11, since we cannot assume that these Girl Scouts
outlets are a normal channel of trade for applicant's
identified goods. However, because the record shows that
opposer distributes merchandise through retailers (Duncan,
pp. 8-9), consumers who encounter applicant's goods in
retail stores are likely to assume that these items emanate
from or are sponsored by opposer.
In regard to classes of consumers, we discount
applicant's argument that its products are promoted
primarily to older girls and adult females, while opposer's
collateral products are asserted by applicant to be marketed
only to younger girl scouts. In fact, we note that the ages
of the scouts who attend opposer's national "wider
11 The record shows that 80 percent of applicant's sales are at
trade shows, while 20 percent are through its catalog and website
(Abbott, p. 106). Applicant, however, has attempted to arrange
distribution of its products by retailers (Glaeser, pp. 66-68).
Opposition No. 91120051
28
opportunity" events place the attendees squarely within
applicant's professed market. Moreover, applicant's
testimony is that it has actually sold some of its products
to members of the Girl Scouts, Abbott, p. 52, and its
catalog shows that it sells youth size caps and shirts, the
latter in as small a size as 6-8, Glaeser exh. 5812.
In short, based on the record and because of
applicant's unrestricted identification, we find a clear
overlap in classes of consumers.
Applicant's witnesses Glaeser and Abbott both have
testified that no customer of applicant's has ever made an
inquiry about whether applicant is affiliated with opposer's
GIRLSPORTS program, and they are not aware of any instances
of actual confusion. We do not find this testimony
particularly probative that there is no likelihood of
confusion. Evidence of actual confusion is difficult to
obtain and its absence from the record in a case does not
mean there is no likelihood of confusion. Giant Food, Inc.
v. Nation's Foodservice, Inc., 710 F.2d 1565, 218 USPQ 390,
396 (Fed. Cir. 1983).
In conclusion, we find the evidence of record clearly
supports a finding that there is a likelihood of confusion.
We therefore sustain the opposition based on opposer's
12 We also note that the items on this page of applicant's catalog
are dislayed with the slogan CLUB GIRLSPORTSTM, and the youth caps
and shirts bear the term GIRLSPORTS, not GIRLSPORTS BRAND.
Opposition No. 91120051
29
demonstrated prior use of the unregistered marks GIRLSPORTS
and the GIRLSPORTS logo for its health and fitness
initiative for Girl Scouts and the collateral products
produced, sold and distributed in conjunction therewith.
Having sustained the opposition on this basis, we do not
reach the claim asserted by opposer under 36 U.S.C.
§80305.13
Decision: The opposition is sustained and registration
to applicant is refused.
13 Opposer points to only one case purportedly finding in favor of
opposer based on the provision of Title 36. A careful reading of
that case, however, shows that the court held for opposer on a
traditional trademark analysis.