HI Limited Partnershipv.Richard E. Wiles

Trademark Trial and Appeal Board

Mar 26, 2008

No. 91167155 (T.T.A.B. Mar. 26, 2008)

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Mailed: March 26, 2008

UNITED STATES PATENT AND TRADEMARK OFFICE
_______

Trademark Trial and Appeal Board
_______

HI Limited Partnership

v.

Richard E. Wiles
_______

Opposition No. 91167155
to Application No. 78501319
filed on October 18, 2004
_______

Peter F. Schoenthaler of Hill, Kertscher & Wharton, LLP,
for opposer.

Richard E. Wiles, pro se.
_______

Before Quinn, Drost, and Mermelstein, Administrative
Trademark Judges.

Opinion by Mermelstein, Administrative Trademark Judge:

Applicant seeks registration of the mark HOOTERS
VOLLEYBALL (both in standard characters) for “sports
volleyball competition and league” in International Class
41.1 HI Limited Partnership opposed registration, arguing
that use of the opposed mark in connection with the
identified services would be likely to cause confusion in
view of its prior use and registration of similar marks for

1 Alleging a bona fide intent to use the mark in commerce.
Applicant has disclaimed the exclusive right to use “volleyball”
apart from the mark as shown.
Opposition No. 91167155

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related goods. Trademark Act § 2(d); 15 U.S.C. § 1052(d).
We sustain the opposition.
I. Record Evidence
Pursuant to Trademark Rule 2.122, the record in this
case includes the pleadings and the file of the involved
application. In addition, during its assigned testimony
period submitted the following:
• Hooters Magazine – Official Magazine of Hooters
Restaurants, Issue 36 (Fall 1999). Filed under notice
of reliance, August 14, 2006.

• February 13, 2006, deposition testimony of applicant
Richard Wiles. Filed under notice of reliance, August
14, 2006.

• August 4, 2006, testimonial deposition of Michael A.
McNeil, Vice President of Marketing for Hooters of
America, Inc., filed August 14, 2006. Several exhibits
were attached to the deposition:

o A copy of applicant’s trademark application from
the USPTO database;

o Hooters Magazine (July/August 2006);

o Letter to Steve Deberg from applicant, dated March
7, 2006;

o Letter to applicant from Peter Schoenthaler, dated
February 20, 2006;

o Notice of deposition.

In addition to the above evidence, opposer attached to
its trial brief a copy of its first set of interrogatories
to applicant, and applicant’s responses thereto. The brief
was filed October 26, 2007.
Pursuant to the applicable rule,
Opposition No. 91167155

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an answer to an interrogatory ... may be made of
record in the case by filing ... a copy of the
interrogatory and answer ... with any exhibit made
part of the answer, ... together with a notice of
reliance. The notice of reliance and the material
submitted thereunder should be filed during the
testimony period of the party that files the
notice of reliance.

Trademark Rule 2.120(j)(3)(i)(emphasis added).
Opposer’s thirty-day testimony period in this case
concluded August 13, 2006, more than a year before the
filing of opposer’s brief and the attached interrogatories.
Because the interrogatory responses were not offered under a
notice of reliance during opposer’s testimony period, they
are untimely and will not be considered.2
Finally, we note that applicant offered no testimony or
other evidence, and it did not file a trial brief.
II. Pleadings
Opposer, by its notice of opposition, makes the
following significant allegations:
• Opposer, “by and through its authorized licensees ...
has since 1980 operated ... a number of sports bar and
grill establishments, now numbering more than three
hundred ... stores in numerous states....”

• Opposer “has since at least as early as 1980 and 1983,
respectively, continuously used, and is today using,
the word mark HOOTERS and HOOTERS & OWL DESIGN ... in
connection with various goods and services.

2 Opposer also attached to its brief copies of applicant’s
deposition and the Fall 1999 issue of Hooters Magazine. These
submissions are also untimely, although it is of no consequence,
because they had been previously submitted under a timely notice
of reliance. The Board strongly prefers that parties not file
copies of papers already in the record. ITC Entm’t Group Ltd. v.
Nintendo of Am. Inc., 45 USPQ2d 2021, 2022-23 (TTAB 1998).
Opposition No. 91167155

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• Opposer owns the following U.S. Registrations:

o Reg. No. 1653233. HOOTERS for “entertainment
services in the nature of a television program”;

o Reg. No. 1659704. HOOTERS for “posters,
photographs, and calendars”;

o Reg. No. 1557380. HOOTERS for “restaurant and
cocktail lounge services”;

o Reg. No. 1590973. HOOTERS for “clothing, namely
sweatbands, shirts, pants and jackets”;

o Reg. No. 1652377. HOOTERS and design for
“calendars, posters, photographs, magazines of
general interest”;

o Reg. No. 1320029. HOOTERS and design for
“restaurant and cocktail lounge services”;

o Reg. No. 1602377. HOOTERS and design for
“clothing, namely socks, shirts, pants, jackets,
shorts, baby bibs, and sun visors”;

o Reg. No. 1534320. Hooters and design for “disk
toss toys”;

• Opposer and its licensees

sponsor[] various sports competitions making use
of the HOOTERS Marks, including but not limited to
automobile racing, boat racing, golf tournaments,
fishing tournaments, and bike racing, among
others, hosting sports related television programs
and broadcasts making use of the HOOTERS Marks,
and operating HOOTERS sports bars and grills which
focus on sports activities and competition.

• The HOOTERS marks are famous and well recognized.

• Opposer’s “actual, continuous and continuing use of the
HOOTERS Marks by and through [opposer] and its
licensees, began long prior to any use by Applicant of
the mark shown in the ‘319 Application.”

• Use of applicant’s mark is “likely ... to cause
confusion, to cause mistake, and/or to deceive.”
Opposition No. 91167155

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By its answer, applicant denied the salient allegations
of the notice of opposition.
IV. Discussion
A. Opposer’s Trademarks
In a likelihood of confusion case, the sine qua non of
the plaintiff’s case is proof of its ownership of either a
registration or a previously-used trademark.3 Without such
ownership, opposer can establish neither standing nor a
likelihood of confusion.
As noted above, opposer alleged ownership of several
Federal registrations in its notice of opposition, and
discussed them in its brief. Although the pleadings are
part of the record, because applicant denied opposer’s
allegations – including opposer’s allegation that it owned a
number of registrations – it was left for opposer to prove
the allegations by competent evidence. As plaintiff,
opposer bears the burden of proving such facts as may be
necessary to establish both its standing and a valid ground
for opposition to registration, including its ownership of
any trademark rights superior to those of applicant.

3 “No trademark ... shall be refused registration ... unless it
... [c]onsists of or comprises a mark which so resembles [1] a
mark registered in the Patent and Trademark Office, or [2] a mark
... previously used in the United States by another and not
abandoned, as to be likely ... to cause confusion....” Trademark
Act § 2(d).
Opposition No. 91167155

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In the case at bar, although opposer alleged ownership
of eight registrations in its notice of opposition, it
neglected to introduce documents evidencing ownership of
them. See Trademark Rule 2.122(d)(ways of introducing
registration). And while the registrations were the subject
of questions during Mr. McNeil’s testimony, the answers to
those questions were somewhat unresponsive, and far from
clear. The following exchange is typical:
Q Are you also aware that Hooters has a
registered trademark for the use of the
Hooters mark for sun visors as well as a
registration for sports toys?

A Yes, I am. We sell hats, visors in the
restaurants and those are very popular items.
We sell golf bags, golf umbrellas. We’ve
sold baseball bats, a wide variety of sports
equipment that has the Hooters logo on it.

McNeil Depo. at 21. Although counsel asked the witness
about several trademark registrations (none of them
identified by registration number), the witness’s response
in each case discussed use, not registration, and Mr. McNeil
was never asked to identify a certificate of registration to
be offered into evidence.4 We cannot conclude on the basis
of this testimony that opposer has proven the ownership and
validity of its pleaded trademark registrations.

4 Ironically, Mr. McNeil was asked to identify a copy of the
opposed application, and a copy was submitted as Exhibit 1 to his
deposition. This was unnecessary because – unlike opposer’s
registration – an opposed application is automatically part of
the record. Trademark Rule 2.122(b)(1).
Opposition No. 91167155

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We consider next whether the testimony and evidence of
record prove (1) opposer’s ownership of “common-law”
trademarks and (2) whether opposer established any such
rights prior to the filing date of the subject application.5
Had opposer introduced its Federal registrations, they
would be prima facie evidence of opposer’s ownership of the
marks, the validity of the registrations, and opposer’s
exclusive right to use of the registered marks in commerce
in connection with the identified goods or services.
Trademark Act § 7, 15 U.S.C. § 1057. Further, in an
opposition proceeding, proof of ownership of a registration
automatically confers priority upon the opposer, which
cannot be challenged absent a counterclaim for cancellation.
King Candy Co. v. Eunice King’s Kitchen, Inc., 496 F.2d
1400, 182 USPQ 108 (CCPA 1974). To the extent opposer
relies upon unregistered trademarks, however, it must prove
these elements by a preponderance of the evidence.
We find that the evidence establishes opposer’s prior
ownership and use of the mark HOOTERS in connection with at
least some services.
Restaurant Services. According to Mr. McNeil’s
testimony, opposer operates restaurants under the HOOTERS
mark in 46 states and 21 countries and that opposer “spent

5 While applicant has apparently not yet used its mark, it is
entitled to claim the filing date of its application as a
Opposition No. 91167155

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over a hundred million dollars since 1991 in media
advertising and sponsorships of various properties that [it
is] affiliated with to promote the HOOTERS brand.” McNeil
Dep. at 13-14. Mr. McNeil’s statements are supported by
applicant’s deposition testimony:
Q Are you familiar with the Hooters Girls?

A [Mr. Wiles] I don’t know what – when you say
– what do you mean?

Q Do you know what they are, Hooters Girls?

A All I know is – I’ve lived here 35 years,
since 1970, and I’ve been to Hooters – I
might average once every year and a half,
something like that, and that’s it. I mean,
I know that most of them are shapely, pretty,
and they’re nice, and they wear orange.

. . .

Q But when you applied for the trademark, you
were aware of Hooters Restaurants, right?
A Oh, sure.

. . .

Q Do you consider Hooters Restaurants famous?

A I would say in most of the United States, I
think so, yeah.

Q Do you think the Hooters trademark is famous?

A Yes.

It is clear from this testimony that opposer’s use of
the mark HOOTERS as a trademark in connection with its chain
of restaurants was established prior to the filing date of

constructive use date, contingent upon the issuance of a
registration. Trademark Act § 7(c).
Opposition No. 91167155

9
the subject application. Applicant admits that it had been
to opposer’s restaurant at least several times before the
filing date of applicant’s trademark application, and that
opposer’s HOOTERS trademark is famous with respect to
restaurant services.
Printed Publications. Mr. McNeil testified that for
“about at least 15 years, opposer has published HOOTERS
Magazine. The magazine is published six times per year, has
a circulation of “about 325,000,” and is “available in
retailers like Seven/Eleven [sic]; Barnes and Noble, Hudson
News Stands in airports. It’s available on all of the Base
Exchange stores at military bases around the world.” McNeil
Dep. At 14-15. The July/August issue of HOOTERS Magazine
was identified and offered in evidence as Exhibit 2 to the
McNeil testimony and the Fall 1999 issue was submitted
separately under a notice of reliance. The issues of record
are similar in content, featuring pictures of “HOOTERS
Girls,” a variety of sports stories and information, as well
as advertisements for sports equipment, alcoholic beverages,
and opposer’s restaurant services.
The testimony and evidence of record establish
opposer’s trademark rights in the publication of HOOTERS
Magazine, and opposer’s priority of such use since well
prior to the filing date of the subject application.
Opposition No. 91167155

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Sports Activities: Mr. McNeil testified that the
HOOTERS mark has long been used in connection with various
sporting events. With particular relevance for this
proceeding, his testimony indicates that opposer has
sponsored volleyball events through the years at
the local and the national level. A number of
years ago, there was a national beach volleyball
series that was sponsored by Anheiser Busch that
we were associated with as a presenting sponsor.
It was televised on ESPN. We did receive some
national publicity in conjunction with that. We
have had through the years some individual
restaurants that have had actual sand beach
volleyball courts on the restaurant property in
the parking lot.

We’ve had beach style volleyball tournaments
that have happened in our parking lots as
promotions before. We’ve had local sponsorships
of ADP volleyball events that have taken place a
the individual market level around the country.
We’ve had a lot of association with the sport of
volleyball.

McNeil Dep. At 16-17.

As noted previously, opposer bears the burden of
proving the existence of (and its ownership in) a common-law
trademark. We find that Mr. McNeil’s testimony does not
meet this burden. While the company has clearly been
involved in volleyball games and tournaments, the testimony
is ambiguous as to opposer’s role in those activities,
specifically, whether opposer organized and ran the
activities, or whether its role was limited to its use of
sponsorships as advertising. While such advertising is not
irrelevant to this decision, the mere purchase of
Opposition No. 91167155

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advertising does not establish that opposer has a trademark
for a sports team or tournament.
Moreover, even if we could find that opposer used its
mark in the provision of entertainment services in the
nature of volleyball competitions, opposer’s priority with
respect to those services is questionable. Mr. McNeil
offered no specifics as to when such services were offered,
or how regularly. While it appears that some of these
activities have been ongoing for some time, the testimony
offered no specifics on when they began and whether they
have continued without interruption since that time.
Accordingly, we do not consider these volleyball-related
activities as establishing opposer’s ownership of trademark
rights for them.6
B. Standing
Opposer's evidence of its prior use of the HOOTERS mark
for goods and services shows that opposer is not a mere
intermeddler, and has a reasonable belief that it would be
damaged by registration of applicant’s mark. Therefore,
opposer has established its standing. Cunningham v. Laser
Golf Corp., 222 F.3d 943, 55 USPQ2d 1842 (Fed. Cir. 2000);

6 Mr. McNeil also testified to opposer’s use of the HOOTERS mark
with other sports and related activities, including golf (NGA
Hooters Tour and Hooters Match Play Championship), car racing
(Hooters Pro Cup), the college football Allstar game (Hooters
Hula Bowl), soccer tournaments, boat racing, and softball
(Hooters Championship Series), calendars, clothing, and swimsuit
Opposition No. 91167155

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Lipton Indus., Inc. v. Ralston Purina Co., 670 F.2d 1024,
213 USPQ 185 (CCPA 1982).
C. Likelihood of Confusion
Our determination under Trademark Act § 2(d) is based
on an analysis of all of the probative facts in evidence
that are relevant to the factors bearing on the likelihood
of confusion. See In re E.I. du Pont de Nemours and Co.,
476 F.2d 1357, 177 USPQ 563 (CCPA 1973). See also Palm Bay
Imports, Inc. v. Veuve Clicquot Ponsardin Maison Fondee En
1772, 396 F.3d 1369, 73 USPQ2d 1689 (Fed. Cir. 2005); In re
Majestic Distilling Co., Inc., 315 F.3d 1311, 65 USPQ2d 1201
(Fed. Cir. 2003); In re Dixie Restaurants Inc., 105 F.3d
1405, 41 USPQ2d 1531 (Fed. Cir. 1997).
In considering the evidence of record on these factors,
we keep in mind that “[t]he fundamental inquiry mandated by
Section 2(d) goes to the cumulative effect of differences in
the essential characteristics of the goods and differences
in the marks.” Federated Foods, Inc. v. Fort Howard Paper
Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976); In re
Azteca Rest. Enter., Inc., 50 USPQ2d 1209 (TTAB 1999).
1. Fame of Opposer’s Marks
If proved, the fame of the prior mark plays a dominant
role in the likelihood of confusion analysis. Bose Corp. v.

competitions. Again, Mr. McNeil’s testimony is not sufficient to
establish opposer’s prior ownership of a trademark for such uses.
Opposition No. 91167155

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QSC Audio Prod. Inc., 293 F.3d 1367, 63 USPQ2d 1303, 1305
(Fed. Cir. 2002); Recot Inc. v. M.C. Becton, 214 F.3d 1322,
54 USPQ2d 1894, 1897 (Fed. Cir. 2000); Kenner Parker Toys,
Inc. v. Rose Art Indus., Inc., 963 F.2d 350, 22 USPQ2d 1453,
1456 (Fed. Cir. 1992). Fame for likelihood of confusion
purposes arises “as long as a significant portion of the
relevant consuming public … recognizes the mark as a source
indicator.” Palm Bay Imports, Inc. v. Vueve Clicquot
Ponsardin Maison Fondee En 1722, 396 F.3d 1369, 73 USPQ2d
1689, 1694 (Fed. Cir. 2005).
We usually require a rather substantial showing to
prove that a mark is famous for purposes of a likelihood of
confusion analysis. Blue Man Prod. Inc. v. Tarmann, 75
USPQ2d 1811, 1819 (TTAB 2005)(“In view of the extreme
deference that is accorded to a famous mark in terms of the
wide latitude of legal protection it receives, and the
dominant role fame plays in the likelihood of confusion
analysis, it is the duty of a plaintiff asserting that its
mark is famous to clearly prove it.”). But we need not
determine whether the evidence of record supports opposer’s
claim that its mark is famous, because that fact was
admitted by applicant, at least to the extent that opposer
uses its HOOTERS mark in connection with restaurant
services. Wiles Dep. p. 32. Because opposer was entitled
to rely on applicant’s admission, we consider the fame of
Opposition No. 91167155

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opposer’s mark to be established. HOOTERS is therefore
considered a famous mark, entitled to a wide scope of
protection.
This factor strongly favors a finding of likelihood of
confusion.
2. Similarity of the Marks
Applicant seeks registration of the mark HOOTERS
VOLLEYBALL. Opposer has demonstrated use of its HOOTERS
mark in connection with restaurant services and printed
publications. We find these marks highly similar in
appearance, sound, meaning, and commercial impression.
While we must consider the marks in their entireties,
it is entirely appropriate to accord greater importance to
the more distinctive elements in the marks. As the Court of
Appeals for the Federal Circuit observed,
in articulating reasons for reaching a conclusion
on the issue of confusion, 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. Indeed, this type of analysis
appears to be unavoidable.

In re National Data Corp., 753 F.2d 1056, 224 USPQ 749, 751
(Fed. Cir. 1985).
We find that the dominant portion of applicant’s mark
is HOOTERS. Applicant has disclaimed any exclusive right to
the term “volleyball” – no doubt because it is descriptive,
if not generic, for applicant’s “sports volleyball
Opposition No. 91167155

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competition and league.” While a disclaimer does not remove
the disclaimed element from the mark, it has long been held
that descriptive or generic matter has very little trademark
significance, and is unlikely to make a strong impression on
the potential customer. See In re N.A.D. Inc., 57 USPQ2d
1872, 1873 (TTAB 2000)(“These descriptive, if not generic,
words have little or no source-indicating significance.”)
On the other hand, the term HOOTERS appears on this
record to be fanciful or arbitrary.7 In his deposition,
applicant testified that “the name ‘hooters,’ as we know, is
in the dictionary, and its [sic] long before Hooters ever
existed. It’s you know, someone – a woman’s breasts or
somebody that yells out.” Wiles Dep. p. 19. However,
applicant’s statement of what is in an unspecified
dictionary is hearsay, and neither party introduced any
other evidence bearing on the meaning of this term.
But even if we consider HOOTERS to be an anatomical
reference, it is at most very weakly suggestive of opposer’s
restaurant services, to the extent that it might be a crude
reference to the women employed at opposer’s establishments.
We thus find HOOTERS to be a generally strong and

7 See Abercrombie & Fitch Co. v. Hunting World, Inc., 537 F.2d 4,
189 USPQ 759, 764-66 (2d Cir. 1976)(“The cases, and in some
instances the Lanham Act, identify four different categories of
terms with respect to trademark protection. Arrayed in an
ascending order which roughly reflects their eligibility to
trademark status and the degree of protection accorded, these
Opposition No. 91167155

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distinctive mark, while we consider “volleyball” to be a
very weak element of applicant’s mark.
Considered in this context, the marks are highly
similar. Applicant has simply appropriated the whole of
opposer’s trademark and appended the descriptive or generic
word “volleyball” to it. The visual impact of both marks is
dominated by HOOTERS, and any meaning or connotation carried
by the term is likely to apply to both marks in the same
way. Likewise, the marks sound very similar because they
both begin with the term HOOTERS. As has often been held,
the first word of a compound mark is often more likely to
make a stronger impact on consumers and the way they
remember the mark. E.g. Wet Seal Inc. v. FD Mgmt. Inc., 82
USPQ2d 1629, 1639 (TTAB 2007).
Finally, we note that applicant’s own testimony
regarding the similarity of the marks:
Q You’d agree with me that Hooters Volleyball
and Hooters are somewhat similar in
appearance?

A In appearance?

Q Yeah.

A Yeah.

Q and they’re similar in sound when you speak
them, correct?

A Yes.

classes are (1) generic, (2) descriptive, (3) suggestive, and (4)
arbitrary or fanciful.).
Opposition No. 91167155

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Q Would you agree with me that they’re also
similar in connotation?

A From the start, yes, but if you took the
concept and you went into the volleyball, and
it was only the Hooters name, immediately you
would know that Hooters was not really
represented, the Hooters Restaurant chain.

Q Why do you say that?

A Well, because it wouldn’t – it wouldn’t have
any of the things they’re known for, which
are, to me – the orange, for example, is the
big thing. I mean, that right there, to
begin with, would say this is not part of a
Hooters chain. It wouldn’t be the same
swimsuit wear or attire that they wear.

While applicant admits that the marks are similar, he
nonetheless asserts that any confusion would eventually be
dispelled, apparently because applicant would be using only
opposer’s main trademark, but not the uniforms worn in
opposer’s restaurants or any of the other trademarks or
trade dress used by opposer in rendering its services.
Applicant’s defense is unavailing because – even accepting
arguendo that customers could determine with further
investigation that HOOTERS VOLLEYBALL is not related to
HOOTERS restaurant and magazine – such a realization would
only come after the initial confusion caused by applicant’s
use of opposer’s HOOTERS trademark.
The parties’ respective goods and services are both
rendered to the general public, are unlikely to be very
expensive, and are not of the type typically investigated
thoroughly before purchase. Confusion under these
Opposition No. 91167155

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circumstances is not likely to be dispelled (if at all)
until after the decision to purchase.
The similarity of the marks is a factor which strongly
favors a finding of likely of confusion.
3. Similarity of Services
“[T]he greater the degree of similarity in the marks,
the lesser the degree of similarity that is required of the
products or services on which they are being used in order
to support a holding of likelihood of confusion.” In re
Concordia Int’l Forwarding Corp., 222 USPQ 352, 356 (TTAB
1983); see also, In re Shell Oil Co., 992 F.2d 1204, 26
USPQ2d 1687, 1689 (Fed. Cir. 1993)(contemporaneous use of
identical or nearly identical marks can lead to the
assumption that there is a common source “even when [the]
good[s] or services are not competitive or intrinsically
related”). Moreover, “[e]ven if the goods in question are
different from, and thus not related to, one another in
kind, the same goods can be related in the mind of the
consuming public as to the origin of the goods. It is this
sense of relatedness that matters in the likelihood of
confusion analysis.” Recot, 54 USPQ2d at 1898; see also
Hewlett-Packard v. Packard Press, Inc., 281 F.3d 1261, 62
USPQ2d 1001, 1004 (Fed. Cir. 2002).
Opposer has established use of its HOOTERS trademark in
connection with restaurant services and magazines.
Opposition No. 91167155

19
Applicant here seeks registration of a highly similar mark
for a “sports volleyball competition and league.” While it
is quite obvious that these goods and services are
different, that does not end our analysis, particularly when
we are faced, as we are here, with an application for a mark
which is highly similar to a famous mark.
As noted, opposer’s testimony establishes that it
operates an extensive chain of restaurants in the United
States and abroad. Sports of all types appear to be a main
theme for opposer’s restaurant services, magazines, and
collateral goods and services. Opposer has clearly
participated in many sporting events over a number of years.
Although we did not find that the evidence establishes
opposer’s use of HOOTERS as a trademark for such activities,
it is nonetheless relevant, because it establishes opposer’s
very significant involvement in sporting events. As a
result, many sports fans – including those who would attend
or watch applicant’s volleyball games – are likely to have
seen the HOOTERS mark on stock cars, football fields, at
golf tournaments, and even at beach volleyball tournaments,
and draw a connection between sports in general and
opposer’s sports-themed restaurants and magazines.
Mr. McNeil further testified to opposer’s use of its
HOOTERS mark on a wide variety of collateral products
bearing the HOOTERS mark, including calendars, potato chips,
Opposition No. 91167155

20
hot sauce, clothing, posters, television programs, hats, sun
visors, golf bags, golf umbrellas, baseball bats and other
sporting equipment, casino services, credit cards, and even
an airline. McNeil Depo. at 19-21. Again, the testimony
does not establish that opposer owns a trademark for such
goods or services. Nonetheless, such widespread use of the
HOOTERS mark makes it likely that the public would assume
some connection or sponsorship between applicant’s use of
its mark for a volleyball team and opposer’s restaurants on
the one hand and opposer’s restaurants and magazines on the
other. Turner Entm’t Co. v. Nelson, 38 USPQ2d 1942 (TTAB
1996).
This factor supports a finding of likelihood of
confusion.
V. Conclusion
After careful consideration of the evidence of record,
we conclude that opposer has established its claim of
likelihood of confusion under Trademark Act § 2(d).
Applicant has established its ownership of HOOTERS
trademarks for restaurant services and magazines, that such
use began prior to the filing date of the subject
application, and that such use has been continuous.
Applicant’s mark is highly similar to opposer’s, and the
services are somewhat related. Given the fame of opposer’s
mark for its restaurants, its widespread sponsorship of
Opposition No. 91167155

21
various sporting events, and its use of its mark on
collateral goods, consumers would almost inevitably assume
that applicant’s HOOTERS VOLLEYBALL competitions are
sponsored by or otherwise connected with opposer. Turner
Entm’t Co. v. Nelson, 38 USPQ2d 1942 (TTAB 1996).
Moreover, the evidence clearly demonstrates that
applicant was well-aware of opposer and its marks prior to
filing its application, and in fact approached opposer to
seek its participation in his volleyball league. Wiles
Depo. at 19-21 (“If you guys just want to let me use your
name, I’ll organize the thing, I’ll get it going. It’s your
choice.”). As a newcomer, applicant had a duty to select a
mark which would not give rise to a likelihood of confusion.
E.g., Burroughs Wellcome Co. v. Warner-Lambert Co., 203 USPQ
191, 200-01(TTAB 1979). As a newcomer with actual knowledge
of opposer’s famous trademark, applicant had the obligation
to do so.
We conclude that registration of applicant’s HOOTERS
VOLLEYBALL mark would give rise to a likelihood of confusion
in view of opposer’s previously-used HOOTERS marks.
Decision: The opposition is sustained pursuant to
Trademark Act § 2(d).