Lacoste Alligator S.A.v.Maxoly, Inc.

Trademark Trial and Appeal Board

Jul 31, 2009

No. 91177866 (T.T.A.B. Jul. 31, 2009)

Mailed: July 31, 2009

Lacoste Alligator S.A.

v.

Maxoly, Inc.

Opposition No. 91177866

The attached decision, which originally issued on April
27, 2009 as “NOT CITABLE AS A PRECEDENT OF THE TTAB,” has
been redesignated as “A PRECEDENT OF THE TTAB.”

By the Trademark Trial
and Appeal Board
UNITED STATES PATENT AND TRADEMARK OFFICE
Trademark Trial and Appeal Board
2900 Crystal Drive
Arlington, Virginia 22202-3513

Issued: April 27, 2009
Re-Designated as Precedent: July 31, 2009

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
______

Lacoste Alligator S.A.
v.
Maxoly, Inc.
_____

Opposition No. 91177866
to application Serial No. 78933465
filed on July 20, 2006
_____

Richard Z. Lehv of Fross Zelnick Lehrman & Zissu, P.C. for
Lacoste Alligator S.A.

Maxoly, Inc. pro se.
______

Before Kuhlke, Bergsman and Ritchie, Administrative
Trademark Judges.

Opinion by Bergsman, Administrative Trademark Judge:

Maxoly, Inc. (“applicant”) filed a use-based
application on the Principal Register for the mark COLBA
ISLAND and design, shown below, for “belts, caps, pants,
shirts, shoes, shorts and t-shirts,” in Class 25.

THIS OPINION IS A
PRECEDENT OF THE TTAB
Opposition No. 91177866

Applicant claimed June 8, 2006 as its date of first use
anywhere and first use in commerce. Applicant described its
mark as “a drawing of an alligator in the general shape of
the island of Cuba and the words colba island (sic)
positioned underneath the alligator.”
Lacoste Alligator S.A. (“opposer”) filed a notice of
opposition against the registration of applicant’s mark on
the grounds of priority of use and likelihood of confusion
pursuant to Section 2(d) of the Trademark Act of 1946, 15
U.S.C. §1052(d), and dilution pursuant to Section 43(c) of
the Trademark Act of 1946, 15 U.S.C. §1125(c). Opposer
alleged that it has been continuously using marks consisting
of alligator designs in connection with clothing and other
products prior to any date on which applicant may rely, that
opposer’s alligator design marks have become famous prior to
applicant’s first use of its mark, and that applicant’s mark
is likely to cause confusion with opposer’s marks and is
likely to dilute the distinctive quality of opposer’s marks.
Opposer also alleged ownership of the following registered
marks:
1. Registration No. 1108987 for the design of an
alligator shown below for “men’s, women’s and children’s
Opposition No. 91177866

sport shirts and sweaters, men’s socks, outer shorts, hats
and caps, women’s and children’s dresses.”1

2. Registration No. 2004314 for the design of an
alligator shown below for “polo shirts, sweatshirts,
blousons,2 shirts, pants, shorts, skirts, dresses, jogging
suits, sweaters, jackets, parkas, headwear, robes, swimwear,
footwear, socks, belts, gloves.”3

Applicant, in its answer, admitted that opposer had
prior use of its mark and that opposer’s marks had become
famous prior to applicant’s first use of its mark.

1 Issued December 12, 1978; Sections 8 and 15 affidavits accepted
and acknowledged; renewed.
2 A “blouson” is a dress or shirt with a fitted waistband over
which material blouses.
3 Issued October 1, 1996; Sections 8 and 15 affidavits accepted
and acknowledged; renewed. Opposer also pleaded ownership of
Registration No. 2506262 for the mark ALLIGATOR, in typed drawing
form, for shirts, and Registration No. 2643738 for the mark
CROCODILE, in typed drawing form, for polo shirts. Because the
design marks are closer to applicant’s mark than the word marks,
we limit our discussion to opposer’s design marks.

Opposition No. 91177866

Applicant denied the remaining allegations in the notice of
opposition.
The Record
By rule, the record includes applicant’s application
file and the pleadings. Trademark Rule 2.122(b), 37 CFR
§2.122(b). In addition, the parties introduced the
following testimony and evidence:
A. Opposer’s evidence.
1. A notice of reliance on certified copies of
opposer’s pleaded registrations showing the current status
and title to the registrations;
2. A notice of reliance on the following articles
from online magazines:
a. A September 18, 2005 article entitled
“Lacoste’s Riposte” from the Time Magazine
website; and,
b. A March 24, 2006 article entitled “Lacoste’s
new look” from the Business 2.0 Magazine at
“CNNMoney.com.”
3. The testimony deposition of Christian Vicquery,
opposer’s Vice President, with attached exhibits.
B. Applicant’s evidence.
1. The testimony deposition of Jackie Sarracino, an
employee of applicant and the wife of applicant’s principal
shareholder, with attached exhibits; and,
Opposition No. 91177866

2. A notice of reliance with numerous exhibits.
Opposer lodged numerous objections to applicant’s
exhibits during the testimony deposition of Ms. Sarracino
and reasserted the objections in its brief, as well as
lodging objections to the exhibits attached to applicant’s
notice of reliance. There is no need to discuss any of the
objections because none of applicant’s evidence is relevant
or material to the likelihood of confusion factors or
elements of dilution that we must use in our analysis.
Standing
Because opposer has properly made its pleaded
registrations of record, opposer has established its
standing. Cunningham v. Laser Golf Corp., 222 F.3d 943, 55
USPQ2d 1842, 1844 (Fed. Cir. 2000); Lipton Industries, Inc.
v. Ralston Purina Co., 670 F.2d 1024, 213 USPQ 185, 189
(CCPA 1982).
Priority

Because applicant admitted that opposer had priority
and because opposer has properly made its pleaded
registrations of record, Section 2(d) priority is not an
issue in this case as to the marks and the goods covered by
the registrations. King Candy Co. v. Eunice King’s Kitchen,
Inc., 496 F.2d 1400, 182 USPQ 108 (CCPA 1974).

Opposition No. 91177866

Likelihood of Confusion
Our determination under Section 2(d) is based on an
analysis of all of the probative facts in evidence that are
relevant to the factors bearing on the issue of likelihood
of confusion. In re E. I. du Pont de Nemours & Co., 476
F.2d 1357, 177 USPQ 563, 567 (CCPA 1973). See also, In re
Majestic Distilling Company, Inc., 315 F.3d 1311, 65 USPQ2d
1201, 1203 (Fed. Cir. 2003).
A. The fame of opposer’s alligator design marks.

This du Pont factor requires us to consider the fame of
opposer’s of marks. Fame, if it exists, plays a dominant
role in the likelihood of confusion analysis because famous
marks enjoy a broad scope of protection or exclusivity of
use. A famous mark has extensive public recognition and
renown. Bose Corp. v. QSC Audio Products 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 Industries,
Inc., 963 F.2d 350, 22 USPQ2d 1453, 1456 (Fed. Cir. 1992).
Fame may be measured indirectly by the volume of sales
and advertising expenditures of the goods and services
identified by the marks at issue, “by the length of time
those indicia of commercial awareness have been evident,”
widespread critical assessments and notice by independent
sources of the products identified by the marks, as well as
Opposition No. 91177866

the general reputation of the products and services. Bose
Corp. v. QSC Audio Products Inc., 63 USPQ2d at 1305-1306 and
1309. Although raw numbers of product sales and advertising
expenses may have sufficed in the past to prove fame of a
mark, raw numbers alone may be misleading. Some context in
which to place raw statistics may be necessary (e.g., the
substantiality of the sales or advertising figures for
comparable types of products or services). Bose Corp. v.
QSC Audio Products Inc., 63 USPQ2d at 1309.
Finally, 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.
Leading Jewelers Guild Inc. v. LJOW Holdings LLC, 82 USPQ2d
1901, 1904 (TTAB 2007).
In addition to applicant’s admission in the answer that
opposer’s alligator design is a famous trademark, opposer
proffered the following evidence to demonstrate the fame of
its marks:
1. Opposer first began selling clothing bearing the
alligator design marks at least as early as 1950.4

4 Vicquery Dep., p. 10.
Opposition No. 91177866

2. Opposer believes that it is the first clothing
manufacturer to embroider its logo on the outside of the
clothing.5
3. Opposer made of record the revenues generated and
units of product sold from 2003 through half of 2008, as
well as its associated advertising expenditures. The
revenue figures and advertising figures were designated
confidential so we may only refer to them in general terms.
We can say that on their face the numbers are relatively
large.
4. The September 18, 2005 article entitled “Lacoste’s
Riposte” from the Time Magazine website in which the author
wrote that “[l]ike many Americans, Siegel [opposer’s CEO]
remembered a time when the ubiquitous French amphibian
adorned the chests of the country-club set.”6
5. The March 24, 2006 article entitled “Lacoste’s new
look” from the Business 2.0 Magazine at “CNNMoney.com” in
which the author reported on opposer’s new line of fall and
winter fashions. The author made the following statements:
Lacoste’s famous logo – actually a
crocodile but more commonly referred to
as an alligator – was stitched onto
cherry-red moon boots, shearling
jackets, and leather porkpie hats. The

5 Vicquery Dep., pp. 9-10.
6 This article also reports on opposer’s resurgence over the last
three years that corrected bad management decisions that caused
the brand to have been pulled from the U.S. market “even though
it had ruled fashion for a while.” Mr. Siegel revived a brand
“that was considered to be dead.”
Opposition No. 91177866

models strutting down the runway looked
more suited to 1970’s Brooklyn than the
80’s country clubs where the croc once
famously roamed.7

In view of applicant’s admission that opposer’s
alligator mark is famous, we find that opposer’s mark is
famous for purposes of likelihood of confusion. While
opposer’s evidentiary showing is far from impressive, it
would be unduly prejudicial to require more evidence from
opposer in light of applicant’s admission.8
B. The similarity or dissimilarity and nature of the goods
described in the application and registrations.

The goods in the application and opposer’s registration
are so similar as to be legally identical.

7 This article also reports on how Mr. Siegel rescued opposer.
“[T]he crocodile polo had its U.S. heyday in the late 70’s and
early 80’s. But during the 1980’s, American shoppers moved on.”
The brand languished until 2002, when opposer hired Mr. Siegel to
revive its fortunes.
8 Although we have found that the alligator design is famous for
purposes of opposer’s likelihood of confusion claim, we have not
addressed the question of whether it is famous in the context of
a dilution claim. Fame for likelihood of confusion and dilution
is not the same. Fame for dilution requires a more stringent
showing. Palm Bay Imports Inc. v. Veuve Clicquot Ponsardin
Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1694 (Fed.
Cir. 2005); Toro Co. v. ToroHead Inc., 61 USPQ2d 1164, 1170 (TTAB
2001). Likelihood of confusion fame “varies along a spectrum
from very strong to very weak” while dilution fame is an
either/or proposition – it either exists or it does not exist.
Id. See also Carefirst of Maryland Inc. v. FirstHealth of the
Carolinas Inc., 77 USPQ2d 1492, 1507 (TTAB 2005) (likelihood of
confusion “[f]ame is relative . . . not absolute”). A mark,
therefore, may have acquired sufficient public recognition and
renown to be famous for purposes of likelihood of confusion
without meeting the more stringent requirement for dilution fame.
Toro Co. v. ToroHead Inc., 61 USPQ2d at 1170, citing I.P. Lund
Trading ApS v. Kohler Co., 163 F.3d 27, 47 USPQ2d 1225, 1239 (1st
Cir. 1998) (“[T]he standard for fame and distinctiveness required
to obtain anti-dilution protection is more rigorous than that
required to seek infringement protection”).
Opposition No. 91177866

Applicant’s products Opposer’s products

belts, caps, pants, shirts,
shoes, shorts and t-shirts
sport shirts and sweaters,
men’s socks, outer shorts,
hats and caps, dresses (Reg.
No. 1108987)

polo shirts, sweatshirts,
blousons, shirts, pants,
shorts, skirts, dresses,
jogging suits, sweaters,
jackets, parkas, headwear,
robes, swimwear, footwear,
socks, belts, gloves (Reg.
No. 2004314)

Applicant argues that “[t]he logo design represents,
identifies and symbolizes ‘Cuban Heritage’ and ‘Cuban
Culture’ in clothing that is directed to the Cuban Community
in the United States or the entire world.”9 However, with
respect to the goods, the question of likelihood of
confusion must be determined on the basis of the goods set
forth in the application and opposer’s registrations, rather
than on what any evidence may show those goods to be.
Canadian Imperial Bank of Commerce v. Well Fargo Bank, 811
F.2d 1490, 1 USPQ2d 1813, 1815 (Fed. Cir. 1987). Both
applicant’s and opposer’s clothing products are broadly
identified without any restrictions or limitations as to the
type of clothing, channels of trade or classes of consumers.
Therefore, we must assume that both applicant’s and
opposer’s clothing encompass all types of clothing, and, as

9 Applicant’s Brief, p. 7.
Opposition No. 91177866

discussed more fully below, that they are sold in the same
channels of trade and to the same classes of consumers.
C. The similarity or dissimilarity of likely-to-continue
trade channels and classes of consumers.

Because the goods described in the application and the
cited registration are identical, we must presume that the
channels of trade and classes of purchasers are the same.
See Genesco Inc. v. Martz, 66 USPQ2d 1260, 1268 (TTAB 2003)
(“Given the in-part identical and in-part related nature of
the parties’ goods, and the lack of any restrictions in the
identifications thereof as to trade channels and purchasers,
these clothing items could be offered and sold to the same
classes of purchasers through the same channels of trade”);
In re Smith and Mehaffey, 31 USPQ2d 1531, 1532 (TTAB 1994)
(“Because the goods are legally identical, they must be
presumed to travel in the same channels of trade, and be
sold to the same class of purchasers”).
D. The similarity or dissimilarity of the marks in their
entireties as to appearance, sound, connotation and
commercial impression.

We now turn to the du Pont likelihood of confusion
factor focusing on the similarity or dissimilarity of the
marks in their entireties as to appearance, sound,
connotation and commercial impression. In re E. I. du Pont
De Nemours & Co., supra. In a particular case, any one of
these means of comparison may be critical in finding the
marks to be similar. In re White Swan Ltd., 9 USPQ2d 1534,
Opposition No. 91177866

1535 (TTAB 1988); In re Lamson Oil Co., 6 USPQ2d 1041, 1042
(TTAB 1988). In comparing the marks, we are mindful that
where, as here, the goods are in part identical, the degree
of similarity necessary to find likelihood of confusion need
not be as great as where there is a recognizable disparity
between the services. Century 21 Real Estate Corp. v.
Century Life of America, 970 F.2d 874, 23 USPQ2d 1698, 1700
(Fed. Cir. 1992); Schering-Plough HealthCare Products Inc.
v. Ing-Jing Huang, 84 USPQ2d 1323, 1325 (TTAB 2007); Jansen
Enterprises Inc. v. Rind, 85 USPQ2d 1104, 1108 (TTAB 2007).
Furthermore, we are mindful that the test 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 so that confusion as to the source of the goods
and services offered under the respective marks is likely to
result. San Fernando Electric Mfg. Co. v. JFD Electronics
Components Corp., 565 F.2d 683, 196 USPQ 1, 3 (CCPA 1977);
Spoons Restaurants Inc. v. Morrison Inc., 23 USPQ2d 1735,
1741 (TTAB 1991), aff’d unpublished, No. 92-1086 (Fed. Cir.
June 5, 1992). The proper focus is on the recollection of
the average customer, who retains a general rather than a
specific impression of the marks. Winnebago Industries,
Inc. v. Oliver & Winston, Inc., 207 USPQ 335, 344 (TTAB
Opposition No. 91177866

1980); Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106,
108 (TTAB 1975).
While the alligator design in applicant’s mark and
opposer’s marks exhibit differences, the similarities of the
designs outweigh the differences. The trademark designs of
the parties are readily discernable as alligators or
crocodiles. Because of the fame of opposer’s alligator
designs, the addition of the words “Colba Island” is not
sufficient to distinguish applicant’s mark from opposer’s
marks. With little opportunity for a side-by-side
comparison and the fallibility of human recall, consumers
encountering applicant’s mark may mistakenly believe that
applicant’s clothing products are a new line for opposer.
See Grandpa Pidgeon’s of Missouri, Inc. v. Borgsmiller, 477
F.2d 586, 177 USPQ 573, 574 (CCPA 1973) (two differently
portrayed elderly figures, one in conjunction with the word
“Grandpa,” used in connection with identical services, are
likely to cause confusion); Philip Morris, Inc. v. Rembrandt
Tobacco Corp. (Overseas) Ltd., 185 USPQ 823, 824 (TTAB 1975)
(applicant’s registration of the mark PAUL REVERE in
association with a picture of a cowboy on a horse for
cigarettes is likely to cause confusion with opposer’s use
of Marlboro with numerous representations of cowboys and a
western motif in connection with cigarettes).
Opposition No. 91177866

Applicant contends that Cubans recognize the crocodile
design of applicant’s mark as representing the reptile shape
of Cuba, and that as such the mark “represents, identifies
and symbolizes ‘Cuban Heritage’ and ‘Cuban Culture’ in
clothing.”10 However, applicant has filed for a trademark
registration that is national in scope, and, as indicated
above, the products are not restricted to the Cuban
community but are available to all consumers. Accordingly,
there is nothing to suggest that the vast majority of
consumers will recognize applicant’s entire mark, including
the word COLBA ISLAND, as representing Cuban Heritage.
E. The Cuban crocodile as a national symbol.
Applicant contends that its mark represents a national
symbol of Cuba. Even assuming that applicant’s mark is a
national symbol, that status does not make the mark
registrable if it is likely to cause confusion with a
previously registered mark. Section 2(a) of the Trademark
Act of 1946, 15 U.S.C. §1052(a), does not automatically
confer registrability on a mark because it comprises a
national symbol. Section 2(a) simply prohibits the
registration of marks that disparage or falsely suggest a
connection with national symbols.

10 Applicant’s Brief, pp. 7 and 8.
Opposition No. 91177866

F. Balancing the factors.
In view of the fame of opposer’s alligator design
marks, the similarity of the marks and goods and the
presumption that the channels of trade and classes of
consumers are the same, we find that applicant’s
registration of its mark COLBA ISLAND and design for “belts,
caps, pants, shirts, shoes, shorts and t-shirts” is likely
to cause confusion with opposer’s alligator design marks for
“men’s, women’s and children’s sport shirts and sweaters,
men’s socks, outer shorts, hats and caps, women’s and
children’s dresses” and “polo shirts, sweatshirts,
blousons, shirts, pants, shorts, skirts, dresses, jogging
suits, sweaters, jackets, parkas, headwear, robes, swimwear,
footwear, socks, belts, gloves.”
Because we have found that there is a likelihood of
confusion, we do not decide the issue of dilution.
Decision: The opposition is sustained and registration
to applicant is refused.