Otto International, Inc.v.Otto Studio, LLC

Trademark Trial and Appeal Board

Jun 1, 2009

No. 91175103 (T.T.A.B. Jun. 1, 2009)

Mailed: 6/1/09

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
______

Otto International, Inc.
v.
Otto Studio, LLC
_____

Opposition No. 91175103
to application Serial No. 78776177
filed on December 19, 2005
_____

Thomas T. Chan, Lisa A. Karczewski and Andrew D. Shupe of
Chan Law Group for Otto International, Inc.

Christopher P. O’Hagan, Casey L. Griffith and Amanda K.
Jenkins of Carstens & Cahoon for Otto Studio, LLC.
______

Before Quinn, Drost and Mermelstein, Administrative
Trademark Judges.

Opinion by Quinn, Administrative Trademark Judge:

Otto Studio, LLC filed, on December 19, 2005, an
intent-to-use application to register the mark shown below

for “footwear” in International Class 25.
Otto International, Inc. opposed registration under
Section 2(d) of the Trademark Act, 15 U.S.C. §1052(d), on
the ground that applicant’s mark, if used in connection with
THIS OPINION
IS NOT A PRECEDENT OF
THE T.T.A.B.
Opposition No. 91175103
2
applicant’s goods, would be likely to cause confusion with
opposer’s previously used and registered marks OTTO (in
typed form) and the mark shown below

both for “clothing, namely caps, hats and sun visors” in
International Class 25.1
Applicant, in its answer, denied the salient
allegations of likelihood of confusion.
The parties agree as to the contents of the record that
consists of the pleadings; the file of the involved
application; trial testimony, with related exhibits, taken
by opposer; applicant’s responses to discovery requests,
copies of official records (including third-party
registrations), and excerpts of a discovery deposition taken
of applicant, all introduced by way of opposer’s notices of
reliance. Applicant neither took testimony nor introduced
any other evidence. Opposer and applicant filed briefs on
the case.
By way of background, the Board, in an order dated
March 25, 2008, granted opposer’s motion for summary
judgment on priority and likelihood of confusion in view of

1 Registration Nos. 2947026 and 2947027, respectively, both
issued May 10, 2005.
Opposition No. 91175103
3
applicant’s consent to the entry of judgment against it with
respect to “garment belts; belts; belts made of leather;
boleros; garter belts; gloves; gloves including those made
of skin, hide or fur; hat bands; hats; head scarves;
headwear; small hats; suspender belts for women; and waist
belts.” Applicant’s consent to the entry of judgment
stemmed from its admission that it lacked a bona fide
intention to use the mark on these specific goods. Thus,
this case went to trial “solely on the ground of priority
and likelihood of confusion with respect to applicant’s
footwear.” (Board’s March 25, 2008 order, p. 11).
Opposer manufactures and sells headwear, both at retail
and wholesale, to over 30,000 customers, including screen
printing shops, embroidery stores, and marketing and
promotional companies. Some of these customers sell both
headwear and footwear. Opposer has enjoyed substantial
sales under its marks, and has actively promoted its marks
through its catalogs and website, as well as through
magazine advertisements and trade show appearances.2
Applicant has not yet used its mark, but it has
developed prototypes and models of shoes. Applicant has
stated that its focus is on high-end, luxury footwear, with
a primary emphasis on women’s footwear. Applicant has one

2 Opposer’s sales and advertising numbers are designated as
“confidential.”
Opposition No. 91175103
4
employee, David Pedack, its owner and “creative director.”
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 registrations of its marks
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).
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). Further, in its
brief, applicant specifically indicates that it does not
contest priority. (Brief, p. 5). Thus, the only
issue to decide herein is 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
Opposition No. 91175103
5
evidence. The relevant du Pont factors in the proceeding
now before us are discussed below.
Inasmuch as opposer introduced evidence bearing on the
du Pont factor of fame, we first turn to consider this
factor. 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 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). Given the nature of opposer’s
goods, the relevant consuming public herein comprises the
general public.
Opposer contends that its mark is strong, although it
stops short of claiming that its mark is famous. We agree
that the record establishes significant strength of the mark
OTTO for headwear. Opposer claims that it is the leading
supplier of hats and caps in the United States. Its OTTO
mark appears on a label inside the hats and caps. (Lee
dep., p. 24). Opposer has used its registered marks for
Opposition No. 91175103
6
over twenty-four years with great success. Although
opposer’s specific sales figures are confidential, we can
say that under the OTTO marks its annual sales are in the
tens of millions, and total sales this decade number in the
hundreds of millions of dollars. Opposer also has made
substantial expenditures in advertising and promoting its
marks during that same time. Further, the record is devoid
of any third-party uses or registrations of the same or
similar marks in the clothing and footwear fields. See
Glamorene Products Corp. v. Procter & Gamble Co., 538 F.2d
894, 190 USPQ 543, 545 (CCPA 1976).
The significant strength of opposer’s OTTO mark weighs
in favor of a finding of likelihood of confusion.
With respect to the marks, we must compare the marks in
their entireties as to appearance, sound, connotation and
commercial impression to determine the similarity or
dissimilarity between them. Palm Bay Imports, Inc. v. Veuve
Clicquot Ponsardin Maison Fondee En 1772, supra. 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. The focus is on the
recollection of the average purchaser, who normally retains
Opposition No. 91175103
7
a general rather than a specific impression of trademarks.
See Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106 (TTAB
1975).
With respect to applicant’s mark, 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. In re National Data Corp., 753 F.2d
1056, 224 USPQ 749, 751 (Fed. Cir. 1985) (“There is nothing
improper in stating that, for rational reasons, more or less
weight has been given to a particular feature of a mark,
provided the ultimate conclusion rests on consideration of
the marks in their entireties. Indeed, this type of
analysis appears to be unavoidable.”). See Hewlett-Packard
Co. v. Packard Press, Inc., 281 F.3d 1261, 62 USPQ2d 1001,
1004 (Fed. Cir. 2002).
Where both words design features comprise the mark (as
in applicant’s mark), then the words are normally accorded
greater weight because the words are likely to make an
impression upon purchasers, would be remembered by them, and
would be used by them to request the goods. In re Appetito
Provisions Co., 3 USPQ2d 1553, 1554 (TTAB 1987); and
Kabushiki Kaisha Hattori Tokeiten v. Scuotto, 228 USPQ 461,
462 (TTAB 1985). See Giant Food, Inc. v. Nation’s
Foodservice, Inc., 710 F.2d 1565, 218 USPQ 390 (Fed. Cir.
Opposition No. 91175103
8
1983). Thus, notwithstanding the design features of
applicant’s mark, we find that the dominant portion is the
literal portion of the mark, namely the words OTTO STUDIO.
This literal portion in turn is dominated by the word OTTO;
the word is in larger type font and mostly surrounds the
word STUDIO that appears below OTTO and in smaller type
font.3
With respect to opposer’s typed mark and its logo mark,
the typed mark is closest to applicant’s mark, thereby
presenting opposer with its strongest case. Thus, we will
focus our comparison of the marks between opposer’s typed
mark and applicant’s mark.
As to appearance applicant asserts that the “O” letters
in its mark comprise two flat open semi-circles, separated
by a gap, and in between the semi-circles is a symbol for
the double “Ts” that resembles the mathematical symbol “Pi”
or a table with legs. According to applicant, its mark
“considered as a whole almost does not even appear to
include the term ‘Otto’ in Otto Studio.” (Brief, p. 9).
We readily appreciate that applicant’s mark is a logo
mark and that the “OTTO” portion of its mark is stylized,
thereby differing in appearance from opposer’s typed mark.
Nevertheless, opposer’s OTTO mark, being depicted in typed

3 We have taken judicial notice, pursuant to applicant’s request
and over opposer’s objection, of the dictionary definition of the
word “studio” referenced in its brief.
Opposition No. 91175103
9
form in the pleaded registration, is “not limited to any
particular rendition of the mark and, in particular, [is]
not limited to the mark as it is used in commerce.”
Cunningham v. Laser Golf Corp., 55 USPQ2d at 1847. In
evaluating likelihood of confusion based on a typed
registration, one must consider “all reasonable manners” in
which the mark could be depicted. INB National Bank v.
Metrohost Inc., 22 USPQ2d 1585, 1588 (TTAB 1992). In
registering its mark in typed form, opposer remains free to
change the display of its mark OTTO at any time and may, in
fact, use it in a stylized form, namely large “O” letters
and small “T” letters, that may resemble the form employed
by applicant.
With respect to sound, the marks sound alike, that is,
OTTO and OTTO STUDIO.
As to meaning, opposer chose OTTO because the term
sounded reminiscent of both Japanese and German names,
connoting high-quality products such as Japanese electronics
and German cars, in the hope that consumers of opposer’s
headwear would similarly think of these products as high end
and high tech. (Lee dep., p. 72). Applicant chose OTTO
because OTTO “is a German surname,” its footwear would have
“advanced engineered parts” and “Germany is typically
associated with excellent engineering.” Thus, applicant
seeks to “invoke the image of German luxury engineering.”
Opposition No. 91175103
10
(Interrogatory No. 2 response). As envisioned by the
respective parties, the marks convey similar meanings.
Given the similarities in sound, appearance and
meaning, we find that the marks also engender similar
overall commercial impressions. The similarities between
the marks OTTO and OTTO STUDIO and design weigh in favor of
a finding of likelihood of confusion.
Insofar as the goods are concerned, it is well
established that the goods and/or services of the parties
need not be similar or competitive, or even offered through
the same channels of trade, to support a holding of
likelihood of confusion. It is sufficient that the
respective goods and/or services of the parties are related
in some manner, and/or that the conditions and activities
surrounding the marketing of the goods and/or services are
such that they would or could be encountered by the same
persons under circumstances that could, because of the
similarity of the marks, give rise to the mistaken belief
that they originate from the same source. See Hilson
Research, Inc. v. Society for Human Resource Management, 27
USPQ2d 1423 (TTAB 1993); and In re International Telephone &
Telegraph Corp., 197 USPQ 910, 911 (TTAB 1978). The issue,
of course, is not whether purchasers would confuse the goods
and/or services, but rather whether there is a likelihood of
Opposition No. 91175103
11
confusion as to the source of the goods and/or services. In
re Rexel Inc., 223 USPQ 830 (TTAB 1984).
The question of likelihood of confusion must be
determined based on an analysis of the goods and/or services
recited in applicant’s application vis-à-vis the goods
and/or services identified in opposer’s pleaded
registration(s). Canadian Imperial Bank v. Wells Fargo
Bank, 811 F.2d 1490, 1 USPQ2d 1783 (Fed. Cir. 1992.
We acknowledge, at the outset of our consideration of
this du Pont factor, that there is no per se rule governing
likelihood of confusion in cases involving clothing items.
In re British Bulldog, Ltd., 224 USPQ 854 (TTAB 1984).
Nevertheless, we find that opposer’s headwear and
applicant’s footwear are complementary apparel items. Such
items may be part of an ensemble that may be purchased in a
single shopping trip. See in re Melville Corp., 18 USPQ2d
1386 (TTAB 1991) (shoes may be featured in a larger ensemble
of clothing items frequently purchased in a single shopping
expedition, and shoes and clothing may be found in the same
stores; thus, shoes found to be complementary with
clothing). See also In re United States Shoe Corp., 8
USPQ2d 1938 (TTAB 1988) (cowboy boots and clothing items,
including hats, are related and may be sold in the same
stores); and Nina Ricci, S.A.R.L. v. ETF Enterprises, Inc.,
Opposition No. 91175103
12
203 USPQ 947 (TTAB 1979) (shoes and clothing are
“commercially related”).
The respective identifications of goods do not include
any limitations regarding trade channels and customers. In
the absence of such restrictions, we presume that the goods
move in similar trade channels typical for headwear and
footwear (e.g., clothing stores and department stores). The
related nature of the goods is borne out by photographs
showing headwear and footwear being displayed and/or sold in
close proximity in the same stores. (Lee dep., ex. nos. 15-
29). Moreover, we presume that the goods are marketed to
the same classes of purchasers, including ordinary consumers
who would use nothing more than ordinary care in making
their purchasing decisions about headwear and footwear.
Thus, applicant’s claim that its footwear will be upscale
and high fashion, being sold in high-end luxury department
stores and specialty boutique retail outlets, is irrelevant
to our analysis. See Kangol Ltd. Kangaroos U.S.A., Inc.,
974 F.2d 161, 23 USPQ2d 1945 (Fed. Cir. 1992).
Also of record are approximately 100 third-party
registrations showing in each instance that the same entity
has registered a single mark for both headwear and footwear.
Third-party registrations which individually cover different
items and which are based on use in commerce are probative
to the extent that they suggest that the listed goods are of
Opposition No. 91175103
13
a type which may emanate from a single source. In re Albert
Trostel & Sons Co., 29 USPQ2d 1783 (TTAB 1993). The problem
with opposer’s evidence, however, is that the registrations,
without exception, are not based on use in commerce, but
rather on international registrations. Inasmuch as use in
commerce prior to registration is not required in such
circumstances (see TMEP §1904.01(d)(5th ed. 2007)), these
registrations based on international registrations have
little, if any, persuasive value.
Applicant places significant reliance on the Board’s
decision in the case of In re British Bulldog, Ltd., supra.
In that case the Board found no likelihood of confusion
between underwear and shoes when sold under the same mark
PLAYER. Unlike that case, however, the instant case
involves marks that have similar connotations and overall
commercial impressions when applied to the goods, and the
goods are complementary and more closely related than are
shoes and underwear.
In sum, the marks are similar, and the goods are
related and travel in similar trade channels to ordinary
consumers. Further, the strength of opposer’s mark merits
significant weight in our analysis. We find that the du
Pont factors, on balance, weigh in favor of a finding of
likelihood of confusion. We conclude that consumers
familiar with opposer’s headwear sold under the mark OTTO
Opposition No. 91175103
14
would be likely to believe, upon encountering applicant’s
mark OTTO STUDIO and design for footwear, 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 finding of likelihood of confusion, we resolve that
doubt, as we must, in favor of opposer as the prior user and
registrant of a strong mark. See Giant Food, Inc. v.
Nation’s Foodservice, Inc., 218 USPQ at 395.
Decision: The opposition is sustained, and
registration to applicant is refused.