Otto International, Inc.v.Otto Kern GmbH

Trademark Trial and Appeal Board

Sep 28, 2009

No. 91170126 (T.T.A.B. Sep. 28, 2009)

Hearing: Mailed:
June 25, 2009 September 28, 2009

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
______

Otto International, Inc.
v.
Otto Kern GmbH
_____

Opposition No. 91170126
to application Serial No. 79009963
filed on November 29, 2004
_____

Thomas T. Chan of Chan Law Group for Otto International,
Inc.

Edward M. Prince and Alan Behr of Alston & Bird LLP for Otto
Kern GmbH
______

Before Holtzman, Kuhlke and Cataldo, Administrative
Trademark Judges.

Opinion by Kuhlke, Administrative Trademark Judge:

Applicant, Otto Kern GmbH, seeks registration of the
mark shown below for goods identified in the application as:
bleaching preparations, soaps, detergents, and
essential oils for laundry use; cleaning,
polishing, scouring and abrasive preparations for
household use; soaps for face, body, bath, hands
and medicated soap; perfumery, essential oils for
personal [sic]; cosmetics; hair lotions;
dentifrices, in International Class 3;

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Opposition No. 91170126
2
leather and imitations of leather, and goods made
of these materials, namely, bags, purses, tote
bags, overnight bags, shoulder bags, sling bags,
traveling bags and hand luggage; briefcases; mens’
and womens’ wallets and change purses; key chains
made primarily of leather or imitation leather;
business card holders made of leather or imitation
leather; animal skins, hides; trunks and traveling
bags; umbrellas, parasols and walking sticks;
whips, harness and saddlery, in International
Class 18; and

clothing, namely clothing for men, women, children
and infants, sweaters, pullovers, t-shirts, tops,
dresses, skirts, knit and woven shirts, blouses,
jackets, suits, vests, overalls, knit and woven
pants, shorts and slacks, pants made of denim,
underwear, bathing suits, hosiery; outerwear,
namely, jackets made of wind resistant materials,
capes, overcoats, parkas; clothing accessories,
namely, belts, gloves, socks, scarves, ties;
footwear; headgear, namely, hats and caps, in
International Class 25.1

The application includes the following statements:
The colors red, white and black are claimed as
features of the mark.

The letter K appears in red; the remaining letters
appear in white. The rectangular background
surrounding the letters is black.

The name(s), portrait(s), and/or signature(s)
shown in the mark identifies OTTO KERN, whose
consent(s) to register is submitted.

1 Serial No. 79009963, filed November 29, 2004. The application
is based on a request for extension of protection under Section
66(a) of the Trademark Act, 15 U.S.C. §1141(f), claiming a
priority date of August 17, 2004 under Section 67, 15 U.S.C.
§1141(g).
Opposition No. 91170126
3
Opposer, Otto International, Inc., opposed registration
of applicant’s mark for the goods in International Classes
18 and 252 on the ground that, as applied to applicant’s
goods, the mark so resembles opposer’s previously used and
registered marks for “handbags, sport bags, fanny
packs, and luggages,” and OTTO in typed form and for
“clothing, namely, caps, hats and sunvisors,” as to be
likely to cause confusion, to cause mistake, or to deceive
under Trademark Act Section 2(d), 15 U.S.C. §1052(d).3
Opposer further alleges that it has “consistently used the
color red in connection with its respective marks.” Amended
Notice of Opposition ¶3.4
Applicant filed an answer by which denied the salient
allegations.
The evidence of record consists of the pleadings
herein; the file of the opposed application; opposer’s
notice of reliance on applicant’s responses to certain

2 The opposition is only against applicant’s goods in
International Classes 18 and 25 and the application will proceed
to registration for the goods in International Class 3 regardless
of the outcome of this proceeding.

3 To the extent opposer pleaded a claim of dilution this claim
was not addressed in the brief and we consider it waived.

4 Applicant’s request that we reconsider the September 5, 2007
order granting opposer’s motion to amend the pleading to include
this allegation is denied as untimely.

Opposition No. 91170126
4
discovery requests,5 printouts of registrations obtained
from the USPTO TARR database; opposer’s testimony
deposition, with exhibits, of Jennifer Lee, opposer’s vice
president; applicant’s notice of reliance on Reg. No.
2432890, applicant’s cancelled registration for the stylized
mark OTTO KERN, opposer’s responses to certain
interrogatories and requests for admissions, and a printout
from an online dictionary source for the word Otto6;
applicant’s testimony deposition upon written questions,
with exhibits, of Oliver Galling, divisional board member
for internal auditing and risk management with Ahlers AG,
applicant’s parent company; applicant’s stipulated
supplemental testimonial declaration, with exhibits, of
Sarah Hsia, applicant’s outside counsel; opposer’s rebuttal
testimony deposition, with exhibits, of Jennifer Lee; and
opposer’s rebuttal notice of reliance on certain discovery
requests.

5 Documents produced in response to requests for production of
documents that are not printed publications or official records
within the meaning of Trademark Rule 2.122(e) are not proper
matter for notice of reliance and we have not considered them.
Trademark Rule 2.120(j)(3)(ii).

6 Certain exhibits were struck by Board order on September 18,
2008. These exhibits were subsequently introduced under the
stipulated declaration of Ms. Hsia. The online dictionary
reference is acceptable because it is also available in book
form. In re CyberFinancial.Net Inc., 65 USPQ2d 1789, 1791 n.3
(TTAB 2002).
Opposition No. 91170126
5
EVIDENTIARY ISSUES
As a preliminary matter, we address various evidentiary
issues.
Applicant argues that opposer’s pleaded registrations
are not of record because no “certified status copy of any
registration showing current ownership has been attached” to
the Notice of Opposition or introduced during the testimony
period.
A party may rely on testimony to establish the current
title and status of pleaded registrations to be able to
assert and rely on Section 7(b) presumptions. “A Federal
registration owned by any party to a Board inter partes
proceeding may be made of record by that party by
appropriate identification and introduction during the
taking of testimony, that is, by introducing a copy of the
registration as an exhibit to testimony, made by a witness
having knowledge of the current status and title of the
registration, establishing that the registration is still
subsisting, and is owned by the offering party.” TBMP §
704.03(b)(1) (2d ed. rev. 2004).
During the testimony of Jennifer Lee, opposer’s vice
president, opposer introduced Exhibit No. 1, which consists
of printouts from the USPTO database Trademark Applications
and Registrations Retrieval (TARR) and, as such, is an
official record that is self-authenticating. We, therefore,
Opposition No. 91170126
6
accept it into the record. However, these printouts are not
sufficient without supporting testimony to make opposer’s
pleaded registrations of record for the purpose of relying
on Section 7(b) presumptions because they are not “status
and title” copies within the meaning of the Trademark Rules
prior to the 2007 amendments.7 Ms. Lee testified as
follows:
Q. Okay. Let’s get started. I’ll give you a set
of documents we’re going to mark as Exhibit 1.
And for the record, these are status internet
printouts downloaded from the USPTO TARR server,
and they are of Otto’s three registered marks,
Otto net [sic] registration number is 2947026; the
Otto and design mark, that registration number is
2947[027]; and the Otto design mark, that
registration number is 3035238. Ms. Lee, have you
seen these documents before?

A. Yes.

Q. Okay. And who is the current owner of, if you
look at the first printout, registration number
2947026 for the Otto mark, who is the current
owner of those?

A. Otto International.

Q. Okay. And if you look at the next document,
registration number 2947027 for the Otto design
mark, could you tell me who is the owner of this
mark?

A. Otto International.

7 This case was commenced prior to August 31, 2007, the effective
date of the amended rule 2.122(d)(1), which allows for such
printouts. Thus, opposer is subject to the prior rule which
required copies of the registration “prepared and issued by the
Patent and Trademark Office showing both the current status of
and current title to the registration.” Trademark Rule
2.122(d)(1).
Opposition No. 91170126
7
Q. And the third printout for the Otto design
mark registration number 3035238, could you tell
me who is the current owner of this mark?

A. Otto International.

Lee Test. p. 12.

The testimony as to ownership is clear and unequivocal.
With regard to status, the TARR printouts depict the status
as “registered” and taken as a whole we find that Ms. Lee
has sufficiently testified to the status of the
registrations in her acknowledgment of counsel’s
representations to support what is on the face of the TARR
printouts. We further note that applicant did not object to
this testimony during the deposition. In view thereof,
opposer’s pleaded registrations are of record.
Applicant also argues that Exh. Nos. 2-27 were either
not identified by the witness or not introduced into
evidence. Below is an example of testimony pertaining to
these exhibits:
Q. ...And I’m going to mark as the next exhibit,
Exhibit No. 2, and that’s going to be – okay.
Exhibit 2, for the record, is we have three
prosecution file histories for each of the Otto
marks. The first is for registration 3035238; the
second set of documents is for the prosecution
file history for registration 2947026; and then we
also have a prosecution file history for
registration number 2947027. (Exhibit 2 was marked
for identification by the Deposition Officer.)
Ms. Lee, have you seen these documents before?

A. Yes.

...

Opposition No. 91170126
8
Q. I’m going to introduce next into the record
Exhibit 3. And for the record, this is Otto
Kern’s prosecution file history for the mark, the
Otto Kern mark, application serial number
79009963. (Exhibit 3 was marked for
identification by the Deposition Officer.) Ms.
Lee, have you seen this document before?

A. Yes.

Q. And you understand that to be a prosecution
file history of Otto Kern’s of Otto Kern mark
which is at issue in this proceeding?

[applicant’s counsel] Objection to the form.

Q. You can answer.

A. Yes.

Lee Test. pp. 13-15.

To the extent Exh. Nos. 2-27 were not properly
identified or introduced, in that it is opposer’s attorney
testifying as to the nature of the documents or at best
posing a leading question, applicant did not object or raise
this issue during the taking of testimony and such matter
could have been cured had the issue been raised.8 Pass &
Seymour, Inc. v. Syrelec, 224 USPQ 845, 847 (TTAB 1984)
(objection on ground of improper identification or
authentication of exhibits waived since defects could have
been cured if made during the deposition). In view thereof,
applicant’s objections are overruled and we have considered
these exhibits.

8 In one instance opposer objected only to the form of counsel’s
question.

Opposition No. 91170126
9
Finally, opposer submitted appendices of objections
based primarily on relevancy and hearsay which are directed
more to the probative value of applicant’s testimony and
exhibits. We have considered the evidence, keeping in mind
the objections, and have accorded whatever probative value
it merits.
PRIORITY/STANDING
Because opposer has made its pleaded registrations of
record and has shown that the registrations are valid and
subsisting and owned by opposer, opposer has established its
standing to oppose registration of applicant’s mark and its
priority is not in issue. See King Candy Co., Inc. v.
Eunice King’s Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108
(CCPA 1974). We further find that opposer has established
first use of its marks OTTO and OTTO and design, at least in
connection with caps, hats and sunvisors, in 2002. Lee
Test. p. 29 Exh. No. 18 (2002 catalog including caps, hats
and visors). This date is earlier than applicant’s priority
date of August 17, 2004 under Sections 66 and 67 of the
Trademark Act. Compagnie Gervais Danone v. Precision
Formulations, LLC, 89 USPQ2d 1251, 1254 (TTAB 2009).
Accordingly, we turn to the question of likelihood of
confusion.
Opposition No. 91170126
10
LIKELIHOOD OF CONFUSION
Opposer’s three pleaded registrations are set forth as
follows:
Registration No. 2947026 for the mark OTTO in
typed form for “clothing, namely, caps, hats, and
sunvisors” in International Class 25, issued May
10, 2005;

Registration No. 2947027 for the mark for
“clothing, namely, caps, hats and sunvisors” in
International Class 25, issued May 10, 2005; and

Registration No. 3035238 for the mark for
“handbags, sport bags, fanny packs, and luggages”
in International Class 18, issued on December 27,
2005.

Our likelihood of confusion determination under Section
2(d) is based on an analysis of all of the probative facts
in evidence that are relevant to the factors set forth in In
re E. I. du Pont de Nemours and Co., 476 F.2d 1357, 177 USPQ
563 (CCPA 1973). See also, In re Majestic Distilling Co.,
Inc., 315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir. 2003).
Opposer presented evidence and argument on the factors
of the similarity of the marks, the relatedness of the
goods, channels of trade, classes of purchasers and the fame
or strength of its marks.
We begin with the factor of fame because fame “plays a
‘dominant’ role in the process of balancing the du Pont
factors.” Recot Inc. v. Becton, 214 F.3d 1322, 54 USPQ2d
1894, 1897 (Fed. Cir. 2000). “[T]he fame of a mark may be
Opposition No. 91170126
11
measured indirectly, among other things, by the volume of
sales and advertising expenditures of the goods traveling
under the mark, and by the length of time those indicia of
commercial awareness have been evident.” Bose Corp. v. QSC
Audio Products, Inc., 293 F.3d 1367, 63 USPQ2d 1303, 1305
(Fed. Cir. 2002).
On this record, while opposer’s OTTO marks appear to
have some strength, at least in connection with caps on the
wholesale level,9 based on opposer’s evidence of sales and
advertising (Lee Test. pp. 37, 44, 45, Exh. No. 19)10 and
the lack of evidence that would indicate the mark is not
strong, such as any use of similar marks by third parties,
we find that opposer has not met its burden to show that it
owns a famous 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

9 It is not clear from this record to what extent the ultimate
end user is exposed to the OTTO marks. The trade channels are
described as wholesale and retail and “individual consumers” are
not included. Lee Test. p. 55 (“Q. Now, you testified
previously that your customers include retailers, wholesalers,
embroidery companies, screen-printing companies, marketing
organizations, souvenir shops. Are there any other types of
customers that you can think of that purchase products from Otto
International? A. Also schools, like education, schools. Q.
Are there any individual consumers who are customers of Otto
International? A. I’m not really sure what you mean by
‘individual.’ Q. Like you or me. Could I call up Otto
International and buy hats? A. No.”). See also Lee Test. Exh.
18 (opposer’s 2002 catalog “Otto International Inc. is a
wholesale supplier to embroiderers, screen printers and marketing
specialty distributors, etc. ... We do not sell to individual or
end users.”)

10 The specific figures were submitted under seal.
Opposition No. 91170126
12
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 (TTAB 2007). In view thereof,
the strength of opposer’s registered marks of record does
not reach the level of playing “a ‘dominant’ role in the
process of balancing the du Pont factors.” Recot, 54 USPQ2d
at 1897.
This brings us then to our consideration of the
similarities between opposer’s and applicant’s goods,
channels of trade and classes of purchasers. We must make
our determinations under these factors based on the goods as
they are recited in the application and registrations,
respectively. See Octocom Systems Inc. v. Houston Computers
Services, Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed.
Cir. 1990) (“The authority is legion that the question of
registrability of an applicant’s mark must be decided on the
basis of the identification of goods set forth in the
application regardless of what the record may reveal as to
the particular nature of an applicant’s goods, the
particular channels of trade or the class of purchasers to
which sales of the goods are directed.”); In re Elbaum, 211
USPQ 636 (TTAB 1981).

Opposition No. 91170126
13
Applicant’s arguments centered on the type of clothing
items and actual channels of trade ignore well established
case law requiring that the comparison of the goods is based
on how the identifications read in the involved application
and opposer’s registrations. The identification of goods in
the subject application and pleaded registrations are not
limited by trade channel or classes of purchasers and,
therefore, we must consider all possible, not actual,
ordinary channels of trade and classes of purchasers.11
The identification of goods in applicant’s application
and opposer’s Reg. Nos. 2947026 and 2947027 include
identical goods, namely, caps and hats. In addition,
opposer’s handbags and luggage in Reg. No. 3035238 encompass
several of applicant’s listed goods, including leather and
imitation leather bags and hand luggage. To establish this
du Pont factor, i.e., that the goods are related, it is
sufficient that any item encompassed by the identifications
of goods is identical or related. Tuxedo Monopoly, Inc. v.
General Mills Fun Group, 648 F.2d 1335, 209 USPQ 986 (CCPA

11 Applicant states in its conclusion that it “is now ready to
expand to the United States in a completely different channel of
trade than that occupied by Opposer.” Br. p. 43. However,
applicant’s identification of goods, as written, includes
opposer’s trade channels, classes of consumers and conditions of
sales. Similarly, opposer’s registrations are not so limited.
Such limitations could be sought through a petition under Section
18 of the Trademark Act; however, no such counterclaim was
brought in this case. We hasten to add that we make no
suggestion as to what effect such limitations would have had on
the ultimate outcome.

Opposition No. 91170126
14
1981). Further, inasmuch as the identifications of goods
are legally identical, at least in part, we must presume,
for purposes of the likelihood of confusion analysis, that
the trade channels and classes of purchasers are identical.
Id.; Hewlett-Packard Co. v. Packard Press Inc., 281 F.3d
1261, 62 USPQ2d 1001 (Fed. Cir. 2002); and Octocom, 16
USPQ2d 1783. In addition, purchasers would include ordinary
members of the general public. In view of the above, the
goods are identical and related, and the channels of trade
and classes of purchasers overlap. These factors favor
opposer.
We next turn to consider the marks. At the outset of
this consideration, it is noted that “when marks would
appear on virtually identical goods or services, the degree
of similarity necessary to support a conclusion of likely
confusion declines.” Century 21 Real Estate Corp. v.
Century Life of America, 970 F.2d 874, 32 USPQ2d 1698 (Fed.
Cir. 1992).
With respect to the involved marks, we examine the
similarities and dissimilarities of the marks in their
appearance, sound, meaning, and commercial impression. Palm
Bay Imports Inc. v. Veuve Clicquot Ponsardin Maison Fondee
En 772, 396 F.3d 1369, 73 USPQ2d 1689, 1692 (Fed. Cir.
2005). The test is not whether the marks can be
distinguished when subjected to a side-by-side comparison,
Opposition No. 91170126
15
but rather whether the marks are sufficiently similar in
their entireties that confusion as to the source of the
goods 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 1975).
The dominant portion of opposer’s marks is the name
OTTO both in the typed mark OTTO and the OTTO mark with the
hat design, which is merely suggestive of opposer’s goods.
With regard to applicant’s mark, it is the literal element
OTTO KERN that dominates over the color and stylization
elements. However, within the literal element we cannot say
that one term dominates over the other but rather the full
name OTTO KERN will be taken as a whole. That being said,
the first part of applicant’s mark is identical to the first
part of opposer’s mark. Hercules Inc. v. National Starch &
Chemical Corp., 223 USPQ 1244, 1246 (TTAB 1984)
(“considering the marks NATROL and NATROSOL in their
entireties, the clearly dominant aspect of both marks is
that the first four letters and the final two are the
same.”). See also Palm Bay Imports, 73 USPQ2d 1689; Presto
Products Inc. v. Nice-Pak Products Inc., 9 USPQ2d 1895, 1897
(TTAB 1988) (“there are also similarities between them in
that both start with the term ‘KID’ a matter of some
Opposition No. 91170126
16
importance since it is often the first part of a mark which
is most likely to be impressed upon the mind of a purchaser
and remembered”).12
With regard to connotation, both are names and would be
perceived as such. The argument that the marks are distinct
because OTTO is merely a common German name whereas OTTO
KERN refers to a specific individual, is not persuasive.
The first name by itself could be perceived as referring to
a specific individual. Consumers, when presented with
identical goods in the same store under the respective marks
OTTO and OTTO KERN, are likely to perceive these two marks
as the same name with one being the shortened form of the
other. While applicant argues that consumers would
distinguish the marks because of OTTO KERN’s renown, there
is no evidence in the record from which to conclude that
current consumers in the United States are familiar with
OTTO KERN. In addition, this would not guard against
reverse confusion.
Applicant argues:
The addition of the word KERN and particularly the
emphasis on the word KERN with the red K
substantively transforms this mark into a separate
and distinct mark, unlikely to cause confusion
with Opposer’s marks. The correct analysis in
this case is substantially different from that

12 Applicant relies on Champagne Louis Roederer S.A. v. Delicato
Vineyards, 47 USPQ2d 1459 (Fed. Cir. 1998); however, that case
presented very different facts in that the marks CRISTAL and
CRYSTAL CREEK evoked different images one suggesting clarity of
the wine within the bottle and the other a very clear creek.
Opposition No. 91170126
17
advocated by Opposer, which would have the Board
simply focus on the word OTTO in Applicant’s mark
without considering the impact of the word KERN.
What makes Mr. Kern’s name a trademark is not his
first name, which, as noted here, he shares with
many, but his last name as used in connection with
his first name.

Br. p. 27.
First, “what makes [OTTO KERN] a trademark” is not
dependant on whether it is the first or last name but rather
the manner in which the mark is used in connection with
goods to identify source. In fact, for registration
purposes, the surname KERN could, by itself, require a
showing of secondary meaning under Section 2(e)(4) of the
Trademark Act, whereas the given name OTTO would not require
such a showing. We agree that the red K does present a
difference in appearance and opposer has not submitted
sufficient testimony or examples of use to reach any
conclusion about the use of red in association with its mark
such that it would minimize the difference or add to the
similarity of the marks. However, this difference does not
outweigh the similarities, given the dominance of the
literal portion of applicant’s mark and the identity in
goods and trade channels (again we emphasize we must make
this determination based on the existing identifications in
the application and registrations). The similarity
occasioned by the name OTTO occurring in both marks has
particular weight in the clothing and accessories industry
Opposition No. 91170126
18
where it is common for designers to shorten their name
marks.13
We conclude that the points of similarities in sound,
appearance and connotation outweigh the dissimilarities, and
the marks have the same overall commercial impressions.
This factor favors opposer.
Finally, applicant’s remaining arguments do not
persuade us of a different result. Applicant argues that
“different examining attorneys have concluded that there was
no likelihood of confusion” between the marks in opposer’s
registrations and applicant’s application; however,
determinations made by prior examining attorneys are not
binding on the Board. In re Nett Designs Inc., 236 F.3d
1339, 57 USPQ2d 1564 (Fed. Cir. 2001).
Applicant’s argument that there is no evidence of
actual confusion between opposer’s marks and applicant’s
other OTTO KERN mark not in the subject application and used

13 Several cases have commented on the propensity of consumers to
shorten names. See Nina Ricci S.A.R.L. v. E.T.F. Enterprises
Inc., 889 F.2d 1070, 12 USPQ2d 1901, 1903 (Fed. Cir. 1989) (“the
Board has previously recognized the practice in the fashion
industry of referring to surnames alone”); Marshall Field & Co.
v. Mrs. Fields Cookies, 25 USPQ2d 1321, 1333 (TTAB 1992)
(“companies are frequently called by shortened names, such as
Penney’s for J.C. Penney’s, Sears for Sears and Roebuck...,
Ward’s for Montgomery Ward’s, and Bloomies for Bloomingdale’s);
Big M. Inc. v. United States Shoe Corp., 228 USPQ 614, 616 (TTAB
1985) (“[W]e cannot ignore the propensity of consumers to often
shorten trademarks and, in the present case, this would be
accomplished by dropping the ‘T.H.’ [in T.H. MANDY] in referring
to registrant’s stores”); and Polo Fashions, Inc. v. La Loren,
Inc., 224 USPQ 509, 512 (TTAB 1984) (“Lauren” is a shorthand term
for Ralph Lauren).
Opposition No. 91170126
19
in the “1990’s” is not relevant to this proceeding.
Further, to the extent such consideration would be relevant
there is not sufficient testimony on this point from which
to draw any conclusions.
As to applicant’s appeal to equitable principles, the
cases relied on by applicant merely refer to the right of an
individual to use of his or her name and not to the right to
register, as a trademark, their name. Friend v. H.A. Friend
& Co., Inc., 416 F.2d 526, 163 USPQ 159, 161-162 (9th Cir.
1969) (“...the law is reluctant to preclude an individual’s
business use of his own name when no attempt to confuse the
public has been made”); Johnny’s Fine Foods Inc. v. Johnny’s
Inc., 68 USPQ2d 1505, 1513 (M.D. Tenn. 2003) (“This mark
also happens to be a personal name, the use of which on an
individuals’ goods was historically considered to be ‘a
personal and inalienable birthright,’ and which even now is
enjoined only to the extent actually necessary to prevent
confusion.”). Cases involving the right to registration
recognize this difference. See In re SL&E Training Stable
Inc., 88 USPQ2d 1216, 1217 (TTAB 2008) (the Court of Appeals
for the Federal Circuit has not adopted a “strong public
policy” to allow individuals to use their names “[t]hus, the
fact that Sam Edelman is an individual’s name does not give
applicant an unfettered right to use that name if it
conflicts with a previously registered mark”); Justin
Opposition No. 91170126
20
Industries, Inc. v. D.B. Rosenblatt, Inc., 213 UPSQ 968, 976
(TTAB 1981) (“the right to use one’s name in his business
may be circumscribed if it conflicts with a mark previously
used by another and is likely to cause confusion as to the
origin of the business or of the goods sold thereunder”).
In view of the identical nature of some of the goods,
the overlap in the channels of trade and classes of
customers, and the similarity of the marks, we conclude that
there is a likelihood of confusion between applicant’s mark
OTTO KERN (stylized with color) and opposer’s OTTO marks.
To the extent there is any doubt, we must resolve that doubt
in favor of opposer as the prior user and registrant. Giant
Food, Inc. v. Nation’s Foodservice, Inc., Giant Food, Inc.
v. Nation’s Foodservice, Inc., 710 F.2d 1565, 218 USPQ 390,
395 (Fed. Cir. 1983).
Decision: The opposition is sustained, and
registration to applicant in Classes 18 and 25 is refused.
The application will proceed to registration only for the
goods in International Class 3.