L.A. Gear, Inc.v.Calcados Ferracini Ltda.

Trademark Trial and Appeal Board

Sep 23, 2009

No. 91168866 (T.T.A.B. Sep. 23, 2009)

Mailed: 9/23/09

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
______

L.A. Gear, Inc.
v.
Calcados Ferracini Ltda.
_____

Opposition No. 91168866
to application Serial No. 78476776
filed on August 31, 2004
_____

Anthony R. Masiello and Paul F. Kilmer of Holland & Knight
for L.A. Gear, Inc.

Dana E. Stewart of Global Trademarks, Inc. for Calcados
Ferracini Ltda.
______

Before Quinn, Drost and Taylor, Administrative Trademark
Judges.

Opinion by Quinn, Administrative Trademark Judge:

Calcados Ferracini Ltda. filed an intent-to-use
application to register the mark shown below

for “footwear, shoes, sandals, belts, clothing, namely,
shirts, t-shirts, pants, socks, Bermuda shorts” in
International Class 25.
THIS OPINION
IS NOT A PRECEDENT OF
THE T.T.A.B.
Opposition No. 91168866
2
L.A. Gear, Inc. opposed registration under Section 2(d)
of the Trademark Act, 15 U.S.C. §1052(d), on the ground that
applicant’s mark, when used in connection with applicant’s
goods, so resembles opposer’s previously used and registered
marks shown below as to be likely to cause confusion.

for “apparel, namely, pants, dresses, shorts, skirts,
shirts, blouses, jackets, socks, hats, leotards and tights”
in International Class 25;1 and “footwear” in International
Class 25;2 and

for “footwear, namely, shoes” in International Class 25.3
Opposer also claims that applicant’s mark is likely to
dilute the distinctive quality of opposer’s marks under
Section 43(c) of the Trademark Act, 15 U.S.C. §1125(c).
Applicant, in its answer, denied the salient
allegations in the notice of opposition.
The record consists of the pleadings; the file of the

1 Registration No. 1768103, issued April 27, 1993; renewed.
2 Registration No. 1792665, issued September 14, 1993; renewed.
3 Registration No. 2160298 (Section 2(f) as to “LA”), issued May
26, 1998; renewed.
Opposition No. 91168866
3
involved application; status and title copies of three of
opposer’s pleaded registrations, excerpts from printed
publications, and applicant’s answers to certain discovery
requests, all introduced by way of opposer’s notices of
reliance; and status and title copies of four of applicant’s
registrations, and copies of fifteen third-party
registrations, all made of record by applicant’s notices of
reliance.4 Both parties filed briefs on the case.
Opposer has established its standing to oppose
registration of the involved application. In particular,
opposer has properly made its pleaded registrations of
record and, further, has shown that it is not a mere
intermeddler. Opposer’s use and registration of its mark
establish that opposer has standing. See Cunningham v.
Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842 (Fed. Cir.
2000); Ritchie v. Simpson, 170 F.3d 1092, 50 USPQ2d 1023
(Fed. Cir. 1999); and Lipton Industries, Inc. v. Ralston
Purina Co., 670 F.2d 1024, 213 USPQ 185 (CCPA 1982).

4 Opposer objected to applicant’s notice of reliance on exhibit
nos. 1-13 comprising applicant’s own answers to certain
interrogatories and requests for admission. Applicant did not
respond to opposer’s objection. Trademark Rule 2.120(j)(5)
provides that an answer to an interrogatory or a response to a
request for admission may be submitted and made part of the
record by only the inquiring party, except in limited
circumstances. Inasmuch as applicant did not respond to the
objection and, thus, did not justify reliance on its own
discovery responses, we decline to consider the additional
responses. See TBMP §704.10 (2d ed. rev. 2004). We hasten to
add that, even if considered, this evidence would not mandate a
different result in this proceeding.
Opposition No. 91168866
4
Further, in view of opposer’s ownership of valid and
subsisting registrations, there is no issue regarding
opposer’s priority. King Candy, Inc. v. Eunice King’s
Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108 (CCPA 1974).
Thus, the only issue to decide herein is likelihood of
confusion.
We accordingly turn to the issue of likelihood of
confusion. Our determination under Section 2(d) is based on
an analysis of all of the facts in evidence that are
relevant to the factors bearing on the likelihood of
confusion issue. In re E. I. du Pont de Nemours & Co., 476
F.2d 1357, 177 USPQ 563 (CCPA 1973). Opposer must establish
that there is a likelihood of confusion by a preponderance
of the evidence. The relevant du Pont factors in the
proceeding now before us are discussed below.
The goods involved in this case are, in significant
part, identical, and applicant does not contend otherwise.
Both parties list “footwear; shoes; shirts; pants; socks;
and shorts” in their respective identifications of goods.
Neither opposer’s nor applicant’s identification of goods is
restricted as to trade channels or classes of purchasers.
Accordingly, we must presume that the parties’ goods are
marketed in all of the normal trade channels for such goods
Opposition No. 91168866
5
(department stores, mass merchandisers, shoe stores,
clothing stores, and the like),5 and that the goods are
bought by the usual classes of purchasers. Thus, it is
presumed that the footwear and clothing move in the same
trade channels to the same classes of purchasers. In view
of the nature of the goods, these purchasers would include
ordinary consumers, who would be expected to exercise
nothing more than ordinary care in their purchasing
decisions. Further, the goods are relatively inexpensive,
and are capable of being purchased on impulse.
The du Pont factors of the identity of the goods and
trade channels, as well as the identity of the impulse
conditions under which and buyers to whom sales are made,
weigh heavily in favor of a finding of likelihood of
confusion.
We now turn to compare the marks. In comparing the
marks, opposer focused its attention on its design mark per
se, not the stylized “LA” mark. Likewise, we will focus on
opposer’s design mark inasmuch as this mark is the closest
to applicant’s mark and, thus, presents opposer’s strongest
case for likelihood of confusion. Accordingly, the two

5 In point of fact, both parties’ goods are sold at J.C. Penney.
Opposition No. 91168866
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marks being compared are reproduced below.
Opposer’s Mark: Applicant’s Mark:

In considering the marks, we initially note that when
marks are used in connection with identical goods, as is the
case herein (at least with respect to footwear, shoes and
specific clothing items), “the degree of similarity [between
the marks] necessary to support a conclusion of likely
confusion declines.” Century 21 Real Estate Corp. v.
Century Life of America, 970 F.2d 874, 23 USPQ2d 1698, 1700
(Fed. Cir. 1992).
Because the marks at issue are both design marks, the
issue of the similarity between the marks must be decided
primarily on the basis of visual similarity. The test,
under the first du Pont factor, is not whether the marks can
be distinguished when subjected to a side-by-side
comparison, but rather whether the marks are sufficiently
similar in terms of their overall commercial impression that
confusion as to the source of the goods offered under the
respective marks is likely to result. In this situation,
consideration must be given to the fact that a purchaser’s
recollection of design marks is often of a general and hazy
Opposition No. 91168866
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nature. See, e.g., In re United Service Distributors, Inc.,
229 USPQ 237 (TTAB 1986); and Matsushita Electric Industrial
Co., Ltd. v. Sanders Associates, Inc., 177 USPQ 720 (TTAB
1973). In the view of Professor McCarthy, “[s]imilarity in
appearance between marks is really nothing more than a
subjective ‘eyeball’ test.” J. Thomas McCarthy, McCarthy on
Trademarks and Unfair Competition, §23:25 (4th ed. 2009).
Applicant points out, in painstaking detail,
distinctions between, as applicant describes the marks, its
“triangle device” and opposer’s “stylized exclamation
point.” Arguing that there is a “vast difference” in the
overall commercial impressions of the two marks, applicant
essentially contends that opposer minimizes the importance
of the “five-sided base” when comparing the marks. (Brief,
pp. 8-10).
To be sure, there are specific differences between the
marks. But, contrary to applicant’s contentions, we find
that the marks, when considered as a whole, are very similar
in appearance, and that they engender very similar overall
commercial impressions. We agree with opposer’s “eyeball”
comparison of the marks (Brief, p. 20):
Both marks consist of a line that
inclines upward from left to right and
tapers in thickness as it inclines
upward. In each case the slope of the
line is at an angle approximately 40º
from the horizontal. In both marks, the
line is not entirely straight, but
incorporates a slight curve. Each mark
Opposition No. 91168866
8
has the overall appearance of an
elongated triangle.

We likewise view the below “jot” in opposer’s mark just as
opposer describes it, merely as “a continuation of the
tapering, curved line that defines the tail of the
mark...Despite the slight break between the jot and the
tail, there is smooth continuity between the curves of the
tail and the curved side edges of the jot.” (Reply Brief,
p. 6). Both design marks essentially present diagonal
strokes; the slight break present in opposer’s mark may not
even be noticed by consumers. In any event, the break is
insufficient to distinguish the marks.
The similarity between the design marks weighs in favor
of likelihood of confusion.
Inasmuch as opposer introduced evidence bearing on the
fame of its marks, we now turn to consider this du Pont
factor. At one point in its brief, opposer claims that its
mark is “strong” (Brief, p. 29), while subsequently opposer
characterizes its mark as “famous” (Brief, p. 32). Fame of
the prior mark plays a dominant role in likelihood of
confusion cases featuring a famous mark. Bose Corp. v. QSC
Audio Products Inc., 293 F.3d 1367, 63 USPQ2d 1303 (Fed.
Cir. 2002); Recot Inc. v. M.C. Becton, 214 F.3d 1322, 54
USPQ2d 1894 (Fed. Cir. 2000); and Kenner Parker Toys, Inc.
v. Rose Art Industries, Inc., 963 F.2d 350, 22 USPQ2d 1453
(Fed. Cir. 1992). Fame for likelihood of confusion purposes
Opposition No. 91168866
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arises “as long as a significant portion of the relevant
consuming public...recognizes the mark as a source
indicator.” Palm Bay Imports, Inc. v. Veuve Clicquot
Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d
1689, 1694 (Fed. Cir. 2005). The relevant consuming public
herein comprises the general public.
In support of its position opposer points to widespread
print advertisements since 1999; promotional activities with
and endorsement by professional basketball players; and
reference to opposer’s “brand” in fashion magazines.
The evidence falls short of establishing that opposer’s
design mark is either “strong” or “famous.” As applicant
correctly points out, much of the evidence relates to the
fame of the word mark “LA GEAR,” a mark not involved herein.
Further, there are no sales or advertising figures relative
to opposer’s design mark, or any other evidence in the
record sufficient to establish fame of the design mark.
Lacoste Alligator S.A. v. Maxoly Inc., 91 USPQ2d 1594, 1597
(TTAB 2009)(“Because of the extreme deference that we accord
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 the
party asserting that its mark is famous to clearly prove
it.”); and Leading Jewelers Guild Inc. v. LJOW Holdings LLC,
82 USPQ2d 1901 (TTAB 2007).
Opposition No. 91168866
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Accordingly, the fame factor is neutral.
The sixth du Pont factor focuses on the number and
nature of similar marks in use on similar goods. Applicant
relied on the existence of fifteen third-party registrations
of marks comprising “line or triangle devices” covering
footwear and apparel, and copies thereof were introduced.
Applicant argues that opposer’s mark is weak, and the scope
of protection given to opposer’s mark “should be limited to
the exact illustration presented in the registration upon
which its opposition is based.” (Brief, p. 12).
As often stated, third-party registrations are not
evidence of use of the marks shown therein, or that
consumers have been exposed to them. AMF Inc. v. American
Leisure Products, Inc., 474 F.2d 1403, 177 USPQ 268 (CCPA
1973). “In the absence of evidence of the extent of actual
continuing use of registered marks, mere registrations are
entitled to little weight in establishing whether there is
likely to be confusion because registrations by themselves
do not indicate how the public mind may have been
conditioned.” Stanadyne, Inc. v. Lins, 490 F.2d 1396, 180
USPQ 649, 649 (CCPA 1974). We recognize that others in the
trade have registered arguably similar marks to the marks
involved herein, but applicant has failed to provide any
evidence bearing on use of the registered marks. See Palm
Bay Imports Inc. v. Veuve Clicquot Ponsardin Maison Fondee
Opposition No. 91168866
11
En 1772, 73 USPQ2d at 1693. We also would point out that
each of the registered marks is less similar to opposer’s
mark than is applicant’s mark. Palisades Pageants, Inc. v.
Miss America Pageant, 442 F.2d 1385, 169 USPQ 790, 792 (CCPA
1971), cert. denied, 404 U.S. 938 (1971). This factor is
neutral.
Applicant makes much of the absence of actual
confusion. Applicant asserts that there is no evidence of
any instances of actual confusion despite thirteen years of
“coexistence.” This is particularly notable, according to
applicant, because the parties’ goods have been offered at
J.C. Penney and the WSA footwear trade show.
Applicant’s argument is entitled to little value. The
record is devoid of probative evidence relating to the
extent of use of applicant’s mark and, thus, the existence
of meaningful opportunities for instances of actual
confusion to have occurred in the marketplace.6 See
Cunningham v. Laser Golf Corp., 55 USPQ2d at 1847; and
Gillette Canada Inc. v. Ranir Corp., 23 USPQ2d 1768, 1774
(TTAB 1992). In any event, as often stated, proof of actual
confusion is not necessary to establish likelihood of
confusion. Giant Food, Inc. v. Nation’s Foodservice, Inc.,
710 F.2d 1565, 218 USPQ 390, 396 (Fed. Cir. 1983).

6 We recognize that both parties’ goods have been sold at J.C.
Penney, but we reiterate that we do not know the extent of use so
as to accurately gauge the opportunity for confusion.
Opposition No. 91168866
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Accordingly, the du Pont factor of the length of time during
and conditions under which there has been contemporaneous
use without evidence of actual confusion is considered
neutral.
The record includes evidence bearing on the thirteenth
du Pont factor, namely, any other established fact probative
of the effect of use. There is evidence showing that the
parties’ respective marks have been displayed on shoes in
identical fashion, that is, on the sides and tongues of
shoes. Moreover, although color is not claimed in either
opposer’s registrations or the involved application,
applicant admitted that, like opposer, it regularly displays
the involved mark in the color red. See Specialty Brands,
Inc. v. Coffee Bean Distributors, Inc., 748 F.2d 669, 223
USPQ 1281, 1284 (Fed. Cir. 1984) (trade dress not ordinarily
considered, but it may provide evidence of whether the marks
project a confusingly similar commercial impression); and
Uncle Ben’s Inc. v. Stubenberg International Inc., 47 USPQ2d
1310, 1312 (TTAB 1998).
We have carefully considered all of the evidence
pertaining to the relevant du Pont factors, as well as all
of the arguments with respect thereto (including any
arguments not specifically discussed in this opinion), and
we conclude that opposer has proven its likelihood of
confusion ground of opposition. We conclude that consumers
Opposition No. 91168866
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familiar with opposer’s footwear and clothing sold under
opposer’s design mark would be likely to believe, upon
encountering applicant’s very similar design mark for
footwear and clothing, that the goods originate from or are
associated with or sponsored by the same entity.
Lastly, to the extent that there may be any doubt on
our determination of likelihood of confusion, we resolve
that doubt, as we must, in favor of opposer as the prior
user and registrant. See Giant Food, Inc. v. Nation’s
Foodservice, Inc., 218 USPQ at 395.
In view of the decision to sustain the opposition on
the ground of likelihood of confusion, it is not necessary
to consider opposer’s dilution claim.
Decision: The opposition is sustained on the ground of
likelihood of confusion, and registration to applicant is
refused.