GTFM, Inc.v.Stephanie Seems

Trademark Trial and Appeal Board

Sep 11, 2009

No. 91179611 (T.T.A.B. Sep. 11, 2009)

Mailed:
September 11, 2009
Bucher
UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

GTFM, Inc.
v.
Stephanie Seems
________

Opposition No. 91179611
against Serial No. 77078026
_______

Peter J. Vranum, William H. Cox and William B. Randolph of
Janvey Gordon Herlands Randolph & Cox LLP for GTFM, Inc.

Yano Rubinstein of Hinshaw & Culbertson LLP for Stephanie
Seems.
_______

Before Bucher, Grendel and Mermelstein, Administrative
Trademark Judges.
Opinion by Bucher, Administrative Trademark Judge:
Stephanie Seems seeks registration on the Principal
Register of the mark JUBU (in standard character format) for
the following goods:
“athletic shoes; beanies; belts; caps; hoods;
jackets; jerseys; pajamas; pants; shirts;
socks; sweat bands; sweat pants; sweat
shirts; sweat shorts; sweat suits; ties;
tops; undergarments” in International Class
25. 1

1 Application Serial No. 77078026 was filed on January 8, 2007
based upon applicant’s allegation of a bona fide intention to use
the mark in commerce.
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Opposition No. 91179611
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Registration has been opposed by GTFM, Inc. As its
grounds for opposition, opposer asserts that applicant’s
mark when used in connection with her goods in International
Class 25 so resembles opposer’s previously used and
registered mark FUBU for --
“clothing, namely shirts, vests, sweaters,
shoes, caps, bandannas, shorts, sweat shirts,
pants, belts for clothing, socks, swimwear,
jackets, rainwear, blouses, dresses,
footwear, hosiery, scarves, hats, head bands,
pajamas and sleepwear” in International Class
25,2

as to be likely to cause confusion, to cause mistake or to
deceive under Section 2(d) of the Lanham Act, 15 U.S.C.
§ 1052(d). Furthermore, opposer contends that the use and
registration of applicant’s JUBU mark will dilute the
distinctive character of opposer’s well-known FUBU
trademark.
Applicant, in her answer, has denied the essential
allegations in the opposition.
The Record
By operation of the rules, the record includes the
pleadings and the file of the opposed application. Opposer

2 Registration No. 2403324 issued on November 14, 2000; Section
8 affidavit (six-year) accepted and Section 15 affidavit
acknowledged.

Opposition No. 91179611
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has also made of record its pleaded registration by
submitting a certified status and title copy of the above
claimed registration during the Testimony Deposition of
opposer’s General Counsel, Lawrence P. Blenden, taken on
December 3, 2008. Applicant submitted no evidence, but both
parties have fully briefed the case.
Factual Background
Opposer has been using the trademark FUBU continuously
since 1992 in conjunction with the design, manufacture, sale
and distribution of clothing and other consumer merchandise,
such as backpacks and handbags, generating hundreds of
millions of dollars in sales. Opposer has expended
substantial sums in promotion and advertisement of its
FUBU mark; clothing and accessories bearing prominently
the FUBU mark has been worn by celebrity entertainers; but
worldwide sales of FUBU products have dropped significantly
over the past decade. There is no information about the
annual sales volume of FUBU products since 2006.
Our Analysis

As a preliminary matter, we find that opposer has
established its standing in view of its pleaded
registration. Because opposer has made of record a copy of
Opposition No. 91179611
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its valid and subsisting registration, the issue of priority
does not arise. See King Candy Company v. Eunice King’s
Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108 (CCPA 1974).
Moreover, applicant has not contested opposer’s claim of
priority.
Likelihood of Confusion
We turn then to the issue of likelihood of confusion.
Our determination of likelihood of confusion must be based
upon our analysis of all of the probative facts in evidence
that are relevant to the factors bearing on the issue of
likelihood of confusion. See In re E. I. du Pont de Nemours
& Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). In any
likelihood of confusion analysis, two key considerations are
the similarities between the marks and the relatedness of
the goods. See Federated Foods, Inc. v. Fort Howard Paper
Co., 544 F.2d 1098, 192 USPQ 24 (CCPA 1976).
As we turn to the du Pont factor focusing on the
similarities of the goods, we note that they are, in part,
identical. In fact, applicant has conceded that there is an
overlap in the identified items of clothing. Similarly, we
must presume that these goods would be offered in all the
same channels of trade. The du Pont factor focusing on the
conditions under which and buyers to whom sales are made
Opposition No. 91179611
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clearly favors opposer. The buyers are the public at large,
and cannot be presumed to have a particular sophistication
in the purchase of clothing. Further, the clothing items
identified in the registration and application encompass
relatively inexpensive goods. In view of this, we find that
these purchases would not be made with a great deal of care.
These related factors all support opposer’s position of a
likelihood of confusion herein.
As we turn to the marks, we note that when, as here,
the marks are used on identical goods, the degree of
similarity between the marks necessary to support a finding
of likelihood of confusion declines. Century Real Estate
Corp. v. Century Life of America, 970 F.2d 874, 23 USPQ2d
1698, 1700 (Fed. Cir. 1992).
The points of comparison for these two marks are
appearance, sound, meaning, and commercial impression. Palm
Bay Imports, Inc. v. Veuve Clicquot Ponsardin Maison Fondee
en 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1691 (Fed. Cir.
2005). Using this standard, applicant argues that the
differences in the JUBU mark and the FUBU mark overwhelm
their similarities. In particular, applicant emphasizes
the fact that the respective marks begin with different
letters.
Opposition No. 91179611
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However, our primary reviewing Court has taken the
position that it is difficult to remember a series of
arbitrarily-arranged letters. Weiss Associates Inc. v. HRL
Associates, Inc., 902 F.2d 1546, 14 USPQ2d 1840, 1841 (Fed.
Cir. 1990) [TMM held confusingly similar to TMS, both for
systems software]. Despite the fact that the initial
letters herein are different, hard consonants, they still
have a strong visual similarity.
JUBU and FUBU also sound very much alike. See Krim-Ko
Corp. v. Coca-Cola Bottling Co., 390 F.2d 728, 156 USPQ 523
(CCPA 1968) [BEEP and VEEP phonetically similar]; American
Distilling Co. v. Bellows & Co., 226 P.2d 751, 88 USPQ
254 (Cal. Ct. App. 1951) [BELLOWS and FELLOWS phonetically
similar], American Cyanamid Co. v. United States Rubber
Co., 356 F.2d 1008, 148 USPQ 729 (CCPA 1966) [CYGON and
PHYGON phonetically similar]; Bell Publishing Corp. v.
Bantam Doubleday Dell Publishing Group, 17 USPQ2d 1634,
(E.D.Pa. 1990) [DELL and BELL phonetically similar]; and
Interlego AG v. Abrams/Gentile Entertainment Inc., 63 USPQ2d
1862 (TTAB 2002) [LEGO and MEGO phonetically similar].
Although the record reveals that opposer’s founder
chose the involved initialism to capture the phrase, “For Us
By Us,” it is not clear how many customers or potential
Opposition No. 91179611
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customers know of this origin. Absent clear evidence to the
contrary, we must assume that most consumers will perceive
FUBU as a coined term for these items of clothing. And
while applicant contended in her brief that her mark, JUBU,
is a short-hand expression for “Jewish Buddhist,” this
alleged evidence was not properly submitted during trial.3
Accordingly, on this record, we find that consumers and
potential consumers will likely view both of these marks as
arbitrary letter strings, without any connotations relevant
to our determination herein.
As to commercial impression, we also find that this
slight difference in the marks fails to avoid a likelihood
of consumer confusion. See G.D. Searle & Co., v. Chas.
Pfizer & Co., 265 F.2d 385, 121 USPQ 74 (7th Cir. 1959),
cert. denied, 361 U.S. 819, 123 USPQ 590 (1959) [holding
that DRAMAMINE and BONAMINE are confusingly similar].
Opposer contends that the Blenden testimony and the
exhibits thereto, support a finding that opposer’s FUBU
mark is a famous mark entitled to a wide latitude of legal
protection. The FUBU mark has been in use for over sixteen

3 Evidence submitted in opposition to the motion for summary
judgment is of record only for consideration of such motion. Any
evidence to be considered at final hearing must be properly
introduced in evidence during the appropriate trial period. See,
e.g., Levi Strauss & Co. v. R. Joseph Sportswear Inc., 28 USPQ2d
1464 (TTAB 1993).
Opposition No. 91179611
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years generating hundreds of millions of dollars in annual
sales. Blenden Testimony, at 15 - 16. Opposer has
expended substantial sums in promotion and advertisement
of its FUBU mark, and the FUBU mark has been prominently
worn by celebrities, including singer Deborah Cox,
heavyweight champion boxer Lennox Lewis and rap artist and
actor, LL Cool J. Blenden Testimony, at 11 - 13.
On the other hand, applicant argues that the record
does not support a conclusion that opposer’s FUBU mark is
famous for purposes of likelihood or confusion. In fact,
applicant points to opposer’s own evidence in support of a
conclusion that the FUBU mark is actually losing public
awareness and recognition in the marketplace. Worldwide
sales of FUBU products have dropped from their highest point
of $315 million (2000) to $131 million (2004) while
promotional expenditures have dropped from $8 million (2002)
to $1.6 million (2005-2006). This objective evidence
provided by opposer demonstrates a large but declining
volume of sales of FUBU branded items of clothing.
Opposer argues that despite a decline from three-
hundred to one-hundred million dollars, this latter figure
for annual sales in the U.S. compares favorably with the
reported annual retail sales of goods in past trademark
decisions where marks such as ARTHUR THE AARDVARK, INTERMATIC,
Opposition No. 91179611
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JEWS FOR JESUS, LEXINGTON, NAILTIQUES and PANAVISION were found to
be well-known. We agree with opposer on this point.
Despite a recent trajectory in promotional expenditures and
gross retail sales that reveals significant decline over the
past decade, we find that opposer’s FUBU mark remains a
strong mark with a substantial degree of renown in the
United States, thereby entitling it to a broad scope of
protection.
Dilution
Finally, we note that opposer also charges that given
the demonstrated prior fame of opposer’s FUBU mark,
applicant’s use of her JUBU mark is likely to cause dilution
of opposer’s mark under the Federal Trademark Dilution Act
of 1995. However, given our determination that opposer has
priority of use and that there is a likelihood of confusion
herein, we find it unnecessary to reach a determination on
the question of dilution in this proceeding.
Decision: The opposition is sustained based upon the
ground of likelihood of confusion under Section 2(d) of the
Lanham Act, and registration to applicant is hereby refused.