Musidor B.V.v.Peter Kaveh

Trademark Trial and Appeal Board

Jan 29, 2009

No. 91168841 (T.T.A.B. Jan. 29, 2009)

Mailed: January 29, 2009

UNITED STATES PATENT AND TRADEMARK OFFICE
_______

Trademark Trial and Appeal Board
_______

Musidor B.V.
v.
Peter Kaveh
______

Opposition No. 91168841
to Application No. 78493602
filed on
_______

Louis J. Bovasso of Greenberg Traurig for Musidor B.V.

Ronald D. Jaman, Esq. for Peter Kaveh.
_______

Before Walters, Grendel and Walsh, Administrative Trademark
Judges.

Opinion by Walters, Administrative Trademark Judge:

Musidor B.V. filed its opposition to the application of
Peter Kaveh to register the standard character mark JAGGER
for “clothing, namely, suits, shirts, T-shirts, pants,
shorts, sweatshirts, jackets, skirts, dresses, tops,
sweaters, headwear, raincoats, underwear, pajamas, robes,
infant wear, swim wear, beach wear; accessories, namely,

THIS OPINION
IS NOT A PRECEDENT OF
THE TTAB
Opposition No. 91168841
2
gloves, mittens, scarves, belts; socks and footwear,” in
International Class 25.1
As grounds for opposition, opposer asserts that it is
the owner of all marks and registrations of the rock group,
The Rolling Stones, and that applicant’s mark, when applied
to applicant’s goods so resembles opposer’s previously used,
registered and famous mark MICK JAGGER2 for, inter alia,
video and sound recordings featuring music and performances3
as to be likely to cause confusion, under Section 2(d) of
the Trademark Act.4
Applicant, in its answer, denied all of the allegations
of the asserted claims.

1 Application Serial No. 78493602, filed October 3, 2004, based upon use
of the mark in commerce, alleging dates of first use and first use in
commerce as of June 1, 2004.

2 While opposer asserted in its pleading only the mark MICK JAGGER,
opposer’s evidence and brief pertain also to the use of JAGGER for
clothing. Therefore, we consider the issue of likelihood of confusion
with respect to the mark JAGGER for clothing to have been also tried.

3 Registration No. 2860464, issued July 6, 2004 based on an application
filed May 10, 1999, for “phonograph records, pre-recorded audio and/or
digital cassettes, tapes and/or disc, all featuring dramatic and non-
dramatic performances of musical works, comedy, drama, action, adventure
or animation; downloadable video recordings featuring music, comedy,
drama, action, adventure or animation and downloadable musical sound
recordings,” in International Class 9 for the mark MICK JAGGER. The
registration includes the statement that “the name in the mark
identifies a living individual whose consent is of record.”

4 Opposer also asserted that the proposed use of the mark by applicant
violates Mr. Mick Jagger’s right of publicity and would constitute a
false designation of origin under Section 43(a) of the Trademark Act.
Not only does the Board have no jurisdiction to consider a claim under
Section 43(a), but opposer made no further reference to these
allegations. We have given them no consideration.

Opposition No. 91168841
3
The Record
The record consists of the pleadings; the file of the
involved application; a certified status and title copy of
Registration No. 2860464; and the testimony deposition by
opposer of Norman Perry, co-CEO at Anthill Trading Limited
LLC, a brand merchandiser of opposer and opposer’s exclusive
licensee for apparel, with accompanying exhibits. Applicant
submitted no testimony or other evidence. Only opposer
filed a brief on the case.
Factual Findings
Opposer owns the intellectual property rights of Mick
Jagger and the musical group the Rolling Stones. (Perry
Deposition, p. 11, “Perry at 11.”) The Rolling Stones have
been recording and performing more or less continuously
since the 1960’s. (Id. at 12.) Mick Jagger is the lead
singer and one of the main songwriters of the Rolling
Stones. (Id. at 14.) Mick Jagger is also a solo artist who
records and performs under his own name.5 (Id. at 18.)
Opposer, through its licensee since 1989, Anthill
Limited LLC, has an extensive worldwide merchandising
program in connection with the Rolling Stones and Mick
Jagger. This merchandising program relies heavily on

5 While opposer contends that MICK JAGGER is a famous mark and a famous
individual, and that the Rolling Stones is a famous musical group, the
record contains only the deponent Mr. Perry’s opinion in this regard and
this is not the type of fact of which the Board can take judicial
notice. Therefore, we have no basis to find fame.

Opposition No. 91168841
4
imagery connected with the Rolling Stones and the individual
members of the group, and it is often centered on the
recordings and concert tours of the group. This imagery
includes images that evoke the band or its members, such as
a drawing of a mouth with large lips and a tongue sticking
out, actual likenesses and photographs of the band and its
members, and marks, such as MICK JAGGER and JAGGER. (Id. at
25-26.)
Opposer has used since prior to the filing date and
alleged first use date of the subject application, and
continues to use, the marks MICK JAGGER and JAGGER in
connection with various clothing items including, for
example, t-shirts, shirts, sweatshirts, dresses and
lingerie. In particular, opposer has used these marks in
connection with many of the items listed in the opposed
application. (Id. at 59.) Some of opposer’s t-shirts are
custom-made with expensive fabrics and sell for over $100.
(Id. at 45.) Opposer’s merchandise is sold at concerts, on
the Rolling Stones official website, in high-end boutiques
and specialty stores, and by mass merchandisers such as Wal-
Mart. (Id. at 57.)
Opposer’s licensee, Anthill Limited LLC, represents
approximately fifty entertainers and musical groups; and it
is one of six or seven companies that handle merchandising
Opposition No. 91168841
5
and brand awareness programs for about 95% of all popular
entertainers. (Id. at 25.)
Applicant has no license from or other relationship to
opposer. (Id. at 61.)
Analysis
Standing
Because opposer has properly made its pleaded
registration of record, we find that opposer has established
its standing to oppose registration of applicant’s mark.
See Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d
1842 (Fed. Cir. 2000); Lipton Industries, Inc. v. Ralston
Purina Co., 670 F.2d 1024, 213 USPQ 185 (CCPA 1982).
Priority
Because opposer’s pleaded registration is of record,
Section 2(d) priority is not an issue in this case as to the
mark and goods covered by said registration. See King Candy
Co. v. Eunice King’s Kitchen, Inc., 496 F.2d 1400, 182 USPQ
108 (CCPA 1974). Moreover, opposer has established its use
of the marks MICK JAGGER and JAGGER on various items of
clothing, including many of the items listed in the opposed
application. This use predates both the filing date of the
subject application and the date of first use asserted in
the application, although that date is not established
herein. Thus, opposer has also established its priority
Opposition No. 91168841
6
with respect to the marks MICK JAGGER and JAGGER for
apparel.
Likelihood of Confusion
Our determination of likelihood of confusion under
Section 2(d) must be 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). 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 Company,
Inc., 315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir. 2003); and 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). See also
In re Azteca Restaurant Enterprises, Inc., 50 USPQ2d 1209
(TTAB 1999) and the cases cited therein.
The Goods
With respect to the goods of the parties, we observe
that there is a substantial overlap in the clothing items
Opposition No. 91168841
7
identified in the application and those upon which opposer
has demonstrated it uses its marks. The evidence
establishes that opposer markets and sells clothing items
with decorations that reflect the names, themes and imagery
connected with their recordings and performances. The
record establishes that other entertainers and musical
groups also have merchandising programs to promote their
brands.
Thus, we conclude that the apparel items of the parties
are either identical or closely related; and that the
recordings identified in opposer’s registration and the
clothing items listed in the application are sufficiently
related that confusion as to source is likely if the
respective goods are identified by confusingly similar
marks.
The Trade Channels and Purchasers
Both opposer’s goods in its registration and
applicant’s identified goods are broadly worded, without any
limitations as to channels of trade or classes of
purchasers. Thus, we presume that applicant’s clothing
items travel through all the normal channels of trade for
such goods, including the boutiques, specialty stores and
mass merchandisers through which opposer sells its clothing
items. In other words, with respect to the parties’
apparel, the trade channels are overlapping.
Opposition No. 91168841
8
We must presume that opposer’s identified recordings
are sold through all usual trade channels for such goods.
While there is no evidence in the record regarding the trade
channels for opposer’s recordings, we find that there is
likely to be an overlap in trade channels for applicant’s
clothing and opposer’s recordings, e.g., mass merchandisers,
at least. See Canadian Imperial Bank v. Wells Fargo, 811
F.2d 1490, 1 USPQ2d 1813 (Fed. Cir. 1987).
Clearly, the usual purchasers of both parties’ apparel,
as well as opposer’s recordings, are the general consumer.
Thus, the purchasers of the parties’ goods are the same.
Marks
We turn, finally, to a determination of whether
applicant’s mark, JAGGER, and opposer’s marks, MICK JAGGER
and JAGGER, when viewed in their entireties, are similar in
terms of appearance, sound, connotation and commercial
impression. 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 impressions that confusion
as to the source of the goods or services offered under the
respective marks is likely to result. The focus is on the
recollection of the average purchaser, who normally retains
a general rather than a specific impression of trademarks.
See Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106 (TTAB
Opposition No. 91168841
9
1975). Furthermore, although the marks at issue must be
considered in their entireties, it is well settled that one
feature of a mark may be more significant than another, and
it is not improper to give more weight to this dominant
feature in determining the commercial impression created by
the mark. See In re National Data Corp., 753 F.2d 1056, 224
USPQ 749 (Fed. Cir. 1985).
Obviously, applicant’s and opposer’s JAGGER marks are
identical in appearance and sound. There is nothing in the
record to indicate that there would be any differences in
connotation or commercial impression between these marks,
especially because both marks identify clothing.
In the context of opposer’s MICK JAGGER mark, JAGGER is
a surname.6 Thus, while applicant’s mark may be arbitrary
when considered by itself, when compared to opposer’s MICK
JAGGER mark, it is likely to also have the connotation of a
surname. Persons familiar with opposer’s mark MICK JAGGER
are likely to perceive of applicant’s mark as a mere
variation on, or shortening of, opposer’s mark. As such, we
consider the marks JAGGER and MICK JAGGER more similar than
dissimilar.

6 To show that the surname JAGGER may be obscure, opposer sought to
introduce Internet-obtained evidence through its deponent, who did not
personally download such evidence. As such, the evidence has not been
properly authenticated and we have not considered it. See Raccioppi v.
Apogee Inc., 47 USPQ2d 1368, 1370 (TTAB 1998).

Opposition No. 91168841
10
Conclusion
When we consider the record and the relevant likelihood
of confusion factors, we conclude that in view of the
identity of the parties’ JAGGER marks and the substantial
similarity in the commercial impressions of applicant’s
mark, JAGGER, and opposer’s mark, MICK JAGGER, their
contemporaneous use on the identical and closely related
goods involved in this case is likely to cause confusion as
to the source or sponsorship of such goods.
Decision: The opposition is sustained.