Montrail Corporationv.Jennifer Wright-Tubbs

Trademark Trial and Appeal Board

Oct 10, 2008

No. 91175338 (T.T.A.B. Oct. 10, 2008)

Mailed: October 10, 2008

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
______

Montrail Corporation.
v.
Jennifer Wright-Tubbs
_____

Opposition No. 91175338
_____

Paula Jill Krasny, John C. Filosa and M. Tally George of Baker &
McKenzie LLP for Montrail Corporation.

Marvin Feldman of Lackenbach Siegel LLP for Jennifer Wright-
Tubbs.
______

Before Holtzman, Walsh and Bergsman, Administrative Trademark
Judges.

Opinion by Holtzman, Administrative Trademark Judge:

Jennifer Wright-Tubbs (applicant) has filed an application
to register the mark shown below for "sports attire, namely,
shirts, hats, shorts, pants and shoes" in Class 25.1

1 Application Serial No. 78783919 was filed January 3, 2006 based on an
allegation of a bona fide intention to use the mark in commerce.
Applicant subsequently filed an amendment to allege use, accepted by
the examining attorney, wherein applicant asserted dates of first use
and first use in commerce on March 10, 2006. The application includes
the statement: "The mark consists of a heart-shaped design, divided
vertically down the middle, with the left half consisting of the left-
half of a heart and the right half consisting of the side view of a
THIS OPINION IS NOT
A PRECEDENT OF
THE TTAB
Opposition No. 91175338
2

Montrail Corporation (opposer) filed a notice of opposition
on the ground of priority and likelihood of confusion under
Section 2(d) of the Trademark Act. In particular, opposer
alleges that applicant's mark, when applied to applicant's goods,
so resembles opposer's previously used mark RUN LIKE A GIRL for
apparel as to be likely to cause confusion. Opposer asserts, in
paragraphs 2 and 6 of the notice of opposition, that opposer is
the owner of application Serial No. 78873086 for the mark RUN
LIKE A GIRL for hats and t-shirts; and that the subject
application has been cited as a potential Section 2(d) bar to
registration of opposer's mark.
Applicant, in her answer, admits the allegations in
paragraphs 2 and 6 of the opposition. Applicant has denied the
remaining salient allegations.
The record includes the pleadings; the file of the involved
application; and opposer's notice of reliance on evidence
including a certified status and title copy of Registration No.

running shoe with the heel at the top and the toe at the bottom;
together with the word 'RUNLIKEAGIRL.'"
Opposition No. 91175338
3
3310020 for the mark RUN LIKE A GIRL for "organizing sporting
events, namely, running races" in Class 41;2 the file for
opposer's application Serial No. 78873086 for the mark RUN LIKE A
GIRL for "hats; T-shirts" with an Office action advising opposer
that registration will be refused when the subject application
matures into a registration; opposer's unanswered requests for
admissions to applicant.3
Applicant did not introduce any testimony or other evidence
in her own behalf. Only opposer filed a brief.
Because applicant failed to respond to opposer's requests
for admissions, each of opposer's requests is deemed admitted
and, moreover, each fact in the requests deemed admitted is
"conclusively established." 4 Fed. R. Civ. P. 36(a)(3) and (b).

2 This registration was not pleaded by opposer in the notice of
opposition. However, because applicant has not objected to opposer's
reliance on the unpleaded registration, we find that the registration
was tried with applicant's implied consent. Accordingly, we deem the
opposition amended in accordance with Fed. R. Civ. P. 15(b) to conform
to the evidence.

3 Opposer also seeks to introduce, by its notice of reliance, a copy of
a "purchase order" for an advertisement in "Dandelion Magazine" as well
as a copy of an advertisement "placed for events in 2003" that
allegedly appeared in that magazine (Exh. 4). The purchase order is
not admissible by notice of reliance as it is not a printed publication
within the meaning of Trademark Rule 2.122(e). Therefore, this
evidence will not be considered. Furthermore, it is not otherwise
clear that the advertisement was actually published; but even assuming
it was, the advertisement would not be admissible for opposer's
intended purpose, that is to prove that the "events" in the
advertisement actually occurred, or that they took place on a
particular date. See, e.g., Fischer Gesellschaft m.b.H. v. Molnar and
Company, Inc., 203 USPQ 861, 864 n.3 (TTAB 1979).

4 Nevertheless, the Board retains the authority to decide the ultimate
issue of likelihood of confusion and that finding cannot be delegated
despite the facts deemed admitted.

Opposition No. 91175338
4
Applicant's admissions include the following:5
Opposer is the owner of application Serial No.
78873086 for the mark RUN LIKE A GIRL, and the
subject application has been cited as a potential
Section 2(d) bar to registration of opposer's mark
(Req. Nos. 20, 25);

Opposer's mark RUN LIKE A GIRL was first used in
commerce in connection with hats and t-shirts in 2002
(Req. No. 23);

Applicant's mark RUNLIKEAGIRL (and design) was not
used in commerce prior to 2005 (Req. No. 30);

Opposer's mark RUN LIKE A GIRL has priority of use
over applicant's mark (Req. No. 24);

Opposer's mark RUN LIKE A GIRL is distinctive "for
goods in Class 25" (Req. No. 47);

Opposer's mark RUN LIKE A GIRL and applicant's mark
RUNLIKEAGIRL and design are similar in sound,
appearance, connotation and overall commercial
impression (Req. Nos. 51-54);

The goods in use by opposer, i.e., hats and t-shirts,
are the same as, and/or similar to, the goods in the
involved application (Req. Nos. 58, 59);

Both applicant's and opposer's goods are sold or
distributed at sporting events (Req. No. 65); and

Opposer's and applicant's goods travel in the same
trade channels (Req. Nos. 60, 63); and the goods are
sold to similar consumers (Req. No. 66).

Standing and Priority
Applicant's admissions, and opposer's evidence of ownership
of an application that will be refused registration when

5 In the instructions for opposer's requests for admissions, opposer
states that "Opposer's Mark" refers to the mark RUN LIKE A GIRL
covering "hats, t-shirts" and common law rights thereto; and that
"Applicant's Mark" refers to the mark RUNLIKEAGIRL and design as set
forth in the subject application. We have construed the requests in
accordance with opposer's instructions.
Opposition No. 91175338
5
applicant's application matures into a registration, demonstrate
opposer's standing to bring the opposition. Furthermore,
applicant's admissions establish opposer's priority of use of the
distinctive mark RUN LIKE A GIRL for hats and t-shirts.
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 likelihood of confusion issue. In re
E.I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA
1973). In any likelihood of confusion analysis, however, two key
considerations are the similarities or dissimilarities between
the marks and the similarities or dissimilarities between the
goods. See Federated Foods, Inc. v. Fort Howard Paper Co., 544
F.2d 1098, 192 USPQ 24 (CCPA 1976).
Opposer has established, through applicant's admissions,
that opposer's hats and t-shirts are the same as, and/or similar
to, the goods identified in the application - "sports attire,
namely, shirts, hats, shorts, pants and shoes." Applicant's
admissions further establish that the respective goods are sold
in the same channels of trade, including at sporting events, to
the same types of purchasers.
In addition, applicant's admissions establish that opposer's
mark RUN LIKE A GIRL and applicant's mark RUNLIKEAGIRL (and
design) are similar in sound, appearance, connotation and overall
commercial impression. In fact, the marks are identical in
Opposition No. 91175338
6
sound, and to that extent, applicant has appropriated opposer's
mark in its entirety. Furthermore, the identity of the word
portions of the marks far outweighs any differences due to the
design element in applicant's mark or the display of the words in
her mark as a single term. See CBS, Inc. v. Morrow, 708 F.2d
1579, 218 USPQ 198, 200 (Fed. Cir. 1983) ("in a composite mark
comprising a design and words, the verbal portion of the mark is
the one most likely to indicate the origin of the goods to which
it is affixed"). The word portion of a composite word and design
mark is generally accorded greater weight because it would be
used by purchasers to request the goods. See In re Appetito
Provisions Co., 3 USPQ2d 1553, 1554 (TTAB 1987).
We find that because substantially similar marks are used on
identical and otherwise similar goods, likelihood of confusion
exists.
Decision: The opposition is sustained, and registration to
applicant is refused.