Retail Royalty Company and American Eagle Outfitters, Inc.v.S.A.S.C.O. Trading Inc.

Trademark Trial and Appeal Board

Jul 10, 2009

No. 91173803 (T.T.A.B. Jul. 10, 2009)

Mailed: July 10, 2009
PTH

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
______

Retail Royalty Company and
American Eagle Outfitters, Inc.

v.

S.A.S.C.O. Trading Inc.
_____

Opposition No. 91173803
to application Serial No. 76646177
filed on September 5, 2006
_____

Sarah Otte Graber of Wood, Herron & Evans, L.L.P. for Retail
Royalty Company and American Eagle Outfitters, Inc.

Ezra Sutton, Esq. of Ezra Sutton & Associates, P.A. for
S.A.S.C.O. Trading, Inc.
______

Before Quinn, Hairston and Kuhlke, Administrative Trademark
Judges.

Opinion by Hairston, Administrative Trademark Judge:

S.A.S.C.O. Trading, Inc. (applicant) filed an
application to register the design mark shown below,
for “jackets, coats, pants, shirts, shorts, t-shirts, swim
wear, underwear, sweat shirts, sweat pants, jogging suits,
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Opposition No. 91173803
2
and vests” in International Class 25.1

SASCO design mark
Registration has been opposed by Retail Royalty Company
and American Eagle Outfitters, Inc. (opposers) under Section
2(d) of the Trademark Act. Opposers allege that American
Eagle Outfitters (American Eagle) is the exclusive licensee
in the United States of Retail Royalty Company (Retail
Royalty) for the design mark shown below,

AE design mark

1 Serial No. 76646177, filed September 5, 2006, alleging dates of
first use of February 28, 2005. The application includes the
statements that “[t]he color red is claimed as a feature of the
mark” and “[t]he color red appears in the stylized depiction of
an eagle.”

Opposition No. 91173803
3
that American Eagle’s use of the mark inures to the benefit
of Retail Royalty; that Retail Royalty is the owner of
application Serial No. 78803194 for the mark for a variety
of clothing, accessories, bags and retail services in the
field of clothing, footwear and headwear, bags and packs,
wallets, personal care products, sporting goods and jewelry;
that since prior to the filing date of applicant’s
application American Eagle has used the mark in connection
with clothing, accessories and retail store services; and
that applicant’s mark, when used in connection with
applicant’s goods, so resembles opposers’ previously used
mark as to be likely to cause confusion.
Applicant, in its answer, denied the salient
allegations of the notice of opposition.2
The Record
The record consists of the pleadings and file of the
involved application. Opposers submitted the testimony
deposition (with exhibits) of Kathleen Eshleman, the senior

2 Applicant also asserted the affirmative defenses of laches,
acquiescence, and estoppel. As discussed infra, applicant did
not properly introduce any evidence of record pertaining to these
affirmative defenses at trial and, therefore, we deem them
waived. Applicant’s other “affirmative defenses” that (1) the
respective marks are different in appearance and commercial
impression, (2) the parties’ respective goods travel in different
trade channels to different purchasers, and (3) applicant’s first
use of its mark predates opposers’ first use of their mark are
not true affirmative defenses, but mere affirmations of
applicant’s denials.
Opposition No. 91173803
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financial analyst of American Eagle; and notices of reliance
on applicant’s responses to opposers’ first set of
interrogatories, excerpts of articles from printed
publications, and a certified copy of Retail Royalty’s
application Serial No. 78803194.
Applicant took no testimony and did not properly
introduce any other evidence. Although applicant attached a
large number of exhibits to its brief on the case, in an
order issued June 16, 2009, the Board granted opposers’
motion to strike these exhibits as untimely.3
The opposition has been fully briefed.
The Parties
Since 2003 American Eagle has continuously used the AE
design mark in connection with the marketing and sale of
men’s and women’s polo shirts and jeans, men’s hooded sweat
shirts, men’s t-shirts, women’s dresses, canvas shoulder
bags, and other accessories. Eshelman Test. Dep. 35-36;
Exhibit 8. The AE design mark is prominently displayed on

3 We should add that even if we had considered these exhibits,
the result in this case would be the same. The exhibits consist
of documents from a trial involving American Eagle and a third-
party; and copies of third-party registrations for marks that
consist of or include an eagle design for various goods and
services. The litigation, however, has no bearing on the issues
in this proceeding. Also, third-party registrations are not
evidence of use of the marks shown therein; thus, they are not
proof that consumers are familiar with such marks so as to be
accustomed to the existence of the same or similar marks in the
marketplace. AMF Inc. v. American Leisure Products, Inc., 474
F.2d 1403, 177 USPQ 268 (CCPA 1973).
Opposition No. 91173803
5
American Eagle clothing, and hang tags and packaging
associated with the clothing. Eshelman Test. Dep. Exhibit
8. American Eagle advertises its clothing on television and
in magazines such as Teen Vogue, Maxim, Seventeen, Rolling
Stone, and Sports Illustrated, and by way of direct
mailings, email blasts and through special events and grass-
roots advertising. Eshelman Test. Dep. 16-19. American
Eagle’s advertising expenditures totaled $30 million in
2004; $41 million in 2005; $43 million in 2006; and over $50
million in 2007. Eshelman Test. Dep. 8-11. A majority of
these advertising expenditures were for products that bear
the AE design mark. Eshelman Test. Dep. 11-12. Although
American Eagle sells its clothing and accessories to persons
of all ages, it targets the “teen demographic.” Eshelman
Test. Dep. 37. American Eagle has over 800 retail stores
located throughout the United States. Eshelman Test. Dep.
33. From 2004 to 2006 American Eagle’s sales totaled
approximately $7 billion. Eshelman Test. Dep. Exhibit 13.
An article in the May 23, 2003 edition of Financial News
noted that American Eagle was one of the top five “hottest
retailers” in a survey conducted by the International
Council of Shopping Centers; and an article in the April 23,
2007 edition of the same publication noted that, in a survey
conducted by Teenage Research Unlimited, American Eagle was
Opposition No. 91173803
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ranked eighth among the retailers “most shopped by teenage
girls.” Notice of Reliance, Exhibits (c) and (f).
As previously noted, applicant took no testimony and
failed to properly introduce any other evidence. Thus, the
only information about applicant is contained in the
application and applicant’s responses to opposers’ first set
of interrogatories. Applicant has used the SASCO design
mark on clothing, but has not yet engaged in any
advertising. Applicant’s Response to Interrogatory No. 9.
Applicant’s clothing is sold to “ultimate consumer[s]
through retail stores.” Applicant’s Response to
Interrogatory No. 8.
Standing and Priority
By virtue of Retail Royalty’s ownership of application
Serial No. 78803194 for the AE design mark for a variety of
clothing and accessories and American Eagle’s use of the AE
design mark in connection with such goods, opposers have
established a real interest in this proceeding and,
therefore, their standing to challenge the registration of
the involved application. Lipton Industries, Inc. v.
Ralston Purina Co., 670 F.2d 1024, 213 USPQ 185 (CCPA 1982).
In addition, the evidence establishes that American Eagle
has used the AE design mark in connection with clothing and
accessories since at least as early as 2003. Because
applicant has not taken testimony or introduced any evidence
Opposition No. 91173803
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regarding its first use of the mark sought to be registered,
the earliest date upon which applicant may rely is the
filing date of its application (i.e., September 5, 2006).
Chicago Corp. v. North American Chicago Corp., 20 USPQ2d
1715 (TTAB 1991). In view thereof, opposers have proven
that they have priority of use.
Likelihood of Confusion
Our likelihood of confusion determination under Section
2(d) is based on an analysis of all of the facts in evidence
that are relevant to the likelihood of confusion factors set
forth in In re E. I. duPont de Nemours and Co., 476 F.2d
1357, 177 USPQ 563 (CCPA 1973). In any likelihood of
confusion analysis, however, two key considerations are the
similarities between the marks and the similarities between
the goods and/or services. Federated Foods, Inc. v. Fort
Howard Paper Co., 544 F.2d 1098, 192 USPQ 24 (CCPA 1976).
The Similarity or Dissimilarity of the Goods, Trade Channels
and Purchasers

We turn first to a consideration of the goods.
Applicant’s goods are identified as “jackets, coats, pants,
shirts, shorts, t-shirts, swim wear, underwear, sweat
shirts, sweat pants, jogging suits, and vests.” The record
shows that American Eagle has made prior use of its AE
design mark in connection with men’s and women’s polo shirts
and jeans, men’s hooded sweat shirts, men’s t-shirts,
women’s dresses, and canvas shoulder bags. Therefore,
Opposition No. 91173803
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applicant’s and opposers’ goods are not only related, they
are in part identical. Furthermore, in the absence of any
restrictions in applicant’s identification of goods, it is
presumed that the identified goods move in all channels of
trade that would be normal for such goods, and that the
goods would be purchased by all potential customers. See
Canadian Imperial Bank v. Wells Fargo Bank, 811 F.2d 1490, 1
USPQ2d 1813, 1815 (Fed. Cir. 1987). In this regard, we
also note that applicant has stated in response to opposers’
interrogatories that its clothing is sold in retail stores
to consumers. As previously indicated, American Eagle sells
its goods at its retail stores to ordinary consumers,
especially teenagers. We conclude that at the very least,
the trade channels and purchasers of applicant’s and
opposers’ goods are overlapping. The factors of the
similarity of the goods, trade channels and purchasers favor
a finding of likelihood of confusion.
The Conditions of Sale
As for the conditions of sale, the involved goods are
general consumer goods, and the customers cannot be treated
as particularly sophisticated or knowledgeable.
Furthermore, several of the items can be relatively
inexpensive, e.g. t-shirts and sweat shirts, and are likely
to be purchased on impulse and without a great deal of care,
which increases the likelihood of confusion. See Recot Inc.
Opposition No. 91173803
9
v. M.C. Becton, 214 F.3d 1322, 54 USPQ2d 1894, 1899 (Fed.
Cir. 2000) [“When products are relatively low-priced and
subject to impulse buying, the risk of likelihood of
confusion is increased because purchasers of such products
are held to a lesser standard of purchasing care”][citations
omitted]. This du Pont factor therefore favors a finding of
likelihood of confusion.
The Similarity or Dissimilarity of the Marks
We turn next to a consideration of the marks. Inasmuch
as the respective marks are design marks which cannot be
pronounced, the issue of likelihood of confusion must be
decided primarily on the basis of the overall visual
similarity of the marks. This essentially comes down to an
“eyeball test” as explained at 4 J. Thomas McCarthy,
McCarthy on Trademarks and Unfair Competition, §23.25 (4th
ed. updated 2009) as follows (footnote omitted):
Because a picture is worth a thousand words, there
is little in the way of guidelines to determine
the visual similarity which will cause a
likelihood of confusion of buyers. Obviously, for
picture and design marks (as opposed to word
marks), similarity of appearance is controlling.
There is no point in launching into a long
analysis of the judicial pros and cons regarding
visual similarity of marks. Regarding visual
similarity, all one can say is “I know it when I
see it.”

Thus, the similarity of design marks is determined by
considering the overall impression created by the marks as a
whole rather than by simply comparing individual features of
Opposition No. 91173803
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the marks. Applicant’s and opposers’ design marks are
reproduced below:

Applicant’s SASCO Opposers’ AE
design mark design mark

In comparing applicant’s mark with opposers’ mark, we are of
the view that the overall commercial impression created by
applicant’s mark when compared with opposers’ mark is highly
similar. Both marks consist of flying eagle designs
depicted in silhouette form. Also, in both marks the eagles
are facing to the left, with outstretched wings, and with
feet thrust forward as if landing.
While there are specific differences in the marks (e.g.
in applicant’s mark the eagle’s head is more noticeable and
its wings are spread further apart) these differences are
not likely to be recalled by purchasers seeing the marks at
different times. Under actual marketing conditions,
consumers do not have the luxury of side-by-side comparison
of the marks, and furthermore, we must consider the
recollection of the average purchaser, who normally retains
Opposition No. 91173803
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a general, rather than a specific, impression of trademarks.
Thus, the purchaser’s fallibility of memory over a period of
time must also be kept in mind. See Grandpa Pidgeon’s of
Missouri, Inc. v. Borgsmiller, 477 F.2d 586, 177 USPQ 573
(CCPA 1973). Viewing the involved marks in this light, it
is obvious that there are marked resemblances in the overall
design and commercial impression thereof. We find that the
du Pont factor of the similarity of the marks favors a
finding of likelihood of confusion.
Third-party Use of Similar Marks
Applicant maintains that there are numerous third-party
eagle design marks in use in the clothing field, and that
opposers’ AE design mark is weak and therefore entitled to
only a narrow scope of protection. However, there is no
evidence in the record of any third-party use of eagle
design marks.
In fact, not only has applicant failed to show that
opposers’ AE design mark is weak but, on the contrary, the
evidence shows that the AE design mark is a strong mark.
With advertising expenditures ranging from $30 million in
2004 to over $50 million in 2007, and sales of clothing and
accessories totaling $7 billion from 2004 to 2006, the AE
design mark must be considered well-known in the field. At
best for applicant, this du Pont factor is neutral.

Opposition No. 91173803
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Actual Confusion
Finally, applicant argues that there is no evidence of
actual confusion, and this factor favors a finding of no
likelihood of confusion. Opposers note that applicant
submitted no evidence of use of its mark, and therefore,
applicant has no basis to argue that the absence of evidence
of actual confusion is a factor here.
Of course, our focus here is likelihood of confusion,
not actual confusion. HRL Associates Inc. v. Weiss
Associates Inc., 12 USPQ2d 1819 (TTAB 1989), aff’d, 14
USPQ2d 1840 (Fed. Cir. 1990). Neither party offered
testimony or other evidence as to whether there were or were
not incidents of actual confusion. In the absence of
probative evidence on this factor, we conclude that it is
neutral.
Conclusion
In view of the identity of the goods, overlapping trade
channels and purchasers, relatively inexpensive nature of
some of the goods, and similarity of applicant’s SASCO
design mark and opposers’ AE design mark, we find that
confusion is likely to result from the contemporaneous use
of the marks involved in this case.
Decision: The opposition is sustained.