The B.V.D. Licensing Corporationv.Right Ascension, Inc.

Trademark Trial and Appeal Board

Dec 14, 2007

No. 91169355 (T.T.A.B. Dec. 14, 2007)

Mailed: December 14, 2007

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
______

The B.V.D. Licensing Corporation
v.
Right Ascension, Inc.
_____

Opposition No. 91169355
to application Serial No. 78505251
filed on October 25, 2004
_____

Louis K. Ebling of Greenbaum Doll & McDonald PLLC for The
B.V.D. Licensing Corporation.

Roy E. Leonard of Stonecipher, Cunningham, Beard & Schmitt
for Right Ascension, Inc.
______

Before Holtzman, Kuhlke and Walsh, Administrative Trademark
Judges.

Opinion by Kuhlke, Administrative Trademark Judge:

Applicant, Right Ascension, Inc., seeks registration of
the mark DVD EMPIRE (in standard character form) for goods
identified in the application as “shirts” in International
Class 25.1

1 Serial No. 78505251, filed October 24, 2004, alleging first use
and use in commerce on December 1, 2003 under Section 1(a) of the
Trademark Act, 15 U.S.C. §1051(a).
THIS OPINION IS NOT A
PRECEDENT OF THE
T.T.A.B.
Opposition No. 91169355
2
Opposer, The B.V.D. Licensing Corporation, has opposed
registration of applicant’s mark on the ground that, as
applied to applicant’s goods, the mark so resembles
opposer’s previously used and registered B.V.D. and BVD
marks, for underwear, t-shirts, shirts and shorts “as to be
likely ... to cause confusion, to cause mistake, or to
deceive within the meaning of Section 2(d) of the Lanham
Act, 15 U.S.C. §1052(d).” Notice of Opposition ¶ 11. In
addition, opposer asserts a claim of dilution under Section
43(c) of the Trademark Act. However, inasmuch as opposer
has not argued dilution in its brief, we have only
considered the claim of priority of use and likelihood of
confusion under Trademark Act Section 2(d), 15 U.S.C.
§1052(d).
Applicant has filed an answer by which it has denied
the salient allegations.
The evidence of record consists of the pleadings herein
and the file of the opposed application. In addition,
opposer submitted the following material under a notice of
reliance: certified copies of six of opposer’s pleaded
registrations, which show that the registrations are
subsisting and owned by opposer; excerpts from pages of
various printed publications showing opposer’s
advertisements; dictionary excerpts; and an excerpt from a
Opposition No. 91169355
3
printed publication on a brand survey.2 Opposer did not
take any testimony. Applicant did not take any testimony,
file a notice of reliance or file a brief.
PRIORITY AND LIKELIHOOD OF CONFUSION
The pleaded registrations made of record, which are in
full force and effect and are owned by opposer, are
summarized as follows:3
Registration No. 49931 for the mark B.V.D. (in
typed form) for “undershirts and under-drawers” in
International Class 25, issued on February 27,
1906, renewed;

Registration No. 1506054 for the mark for
“men’s and boy’s underwear” in International Class
25, issued on September 27, 1988, Section 8
accepted and Section 15 acknowledged;

Registration No. 764348 for the mark B.V.D. (in
typed form) for “men’s and boy’s t-shirts and
underwear” in International Class 25, issued on
February 4, 1964, renewed;

Registration No. 1506049 for the mark
for “men’s and boy’s underwear” in International
Class 25, issued on September 27, 1988, Section 8
accepted and Section 15 acknowledged;

2 Opposer also submitted excerpts from opposer’s catalogs,
samples of opposer’s brochures and a printout of a page from
applicant’s website. However, this is not proper subject matter
for a notice of reliance. See Wagner Electric Corp. v. Raygo
Wagner, Inc., 192 USPQ 33, 36 n. 10 (TTAB 1976) and Raccioppi v.
Apogee Inc., 47 USPQ2d 1368 (TTAB 1998). In view thereof, we
have not considered these exhibits. Original Appalachian
Artworks Inc. v. Streeter, 3 USPQ2d 1717 n. 3 (TTAB 1987)
(inasmuch as applicant did not submit evidence or file a brief,
Board could not determine whether applicant treated it as being
of record thus material improperly offered by notice of reliance
not considered).

3 Hereinafter we refer to the marks collectively as the “BVD
marks.”
Opposition No. 91169355
4

Registration No. 367184 for the mark for
“underwear, shirts, shorts and union suits” in
International Class 25, issued May 3, 1939,
renewed; and

Registration No. 546353 for the mark for
“hose for men” in International Class 25, issued
August 7, 1951, renewed.

Because opposer has made the pleaded registrations
summarized above properly of record, 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).
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). Two
key considerations are the similarities between the marks
and the similarities between the goods. See Federated
Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192
USPQ 24 (CCPA 1976). See also, In re Dixie Restaurants
Inc., 105 F.3d 1405, 41 USPQ2d 1531 (Fed. Cir. 1997).
Another important factor, when presented, is the fame of the
mark. Palm Bay Imports, Inc. v. Veuve Clicquot Ponsardin
Opposition No. 91169355
5
Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1694
(Fed. Cir. 2005).
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).
The record shows that opposer owns several
registrations for the BVD marks for various undergarments
and shirts and they have been continuously registered since
1906. Opposer has widely advertised its mark for many
decades. See, e.g., BVD advertisements in “Everybody’s
Magazine” (1907); “The American Magazine” (1910);
“Cosmopolitan” (June 1913); “The Saturday Evening Post”
(1926); “Colliers” (June 1, 1935); “Daily News Record” (May
3, 1957); “Sports Illustrated” (1979); “Rolling Stone”
(September 18, 1997); “Sporting News” (September 1, 2003);
and “Sports Illustrated” (September 18, 2006). The BVD
brand was recently ranked as the 35th most well-known
menswear brand in 2005. See “DNR America’s 50 Best-Known
Men’s Brands An Exclusive DNR Survey” (November 21, 2005).
The BVD brand has also benefited from celebrity
endorsements, including, Larry Hagman, Mario Andretti, Wilt
Chamberlin, Chubby Checker, Orel Hershiser and Milton Berle.
The BVD mark appears in several dictionaries. See, e.g.,
Webster’s New Collegiate Dictionary (1980) “B.V.D. -
Opposition No. 91169355
6
trademark – used for underwear”; Merriam-Webster’s
Collegiate Dictionary (11th ed. 2003) “BVD trademark – used
for underwear”; The Random House Dictionary of the English
Language (1973) “B.V.D. - Trademark a suit of men’s
underwear, esp. a pair of undershorts. Also BVDs.”
Based on the record, we find that the evidence
demonstrates that the BVD marks are famous for, at a
minimum, men’s underwear. We also note that the Federal
Circuit and the Board have found the marks to be famous on
prior occasions. See The B.V.D. Licensing Corp. v. Body
Action Design Inc., 6 USPQ2d 1719 (Fed. Cir. 1988); The
B.V.D. Licensing Corp. v. Florencio Rodriguez, Opp. No.
91157529, Slip Op. (February 21, 2007). We note in
particular that “[w]hen a trademark attains dictionary
recognition as a part of the language, we take it to be
reasonably famous.” The B.V.D. Licensing Corp. v. Body
Action Design Inc., supra at 1722. Thus, given the wide
latitude of protection afforded famous marks, we proceed
with our analysis keeping this in mind. See Kenner Parker
Toys Inc. v. Rose Art Industries Inc., 963 F.2d 350, 22
USPQ2d 1453 (Fed. Cir. 1992).
In considering the next factors, we have limited our
determination of likelihood of confusion to the most
relevant registrations, Registration Nos. 764348 for the
mark B.V.D. (in typed form) for “men’s and boy’s t-shirts
Opposition No. 91169355
7
and underwear” and Registration No. 367184 for the stylized
mark B.V.D. for “underwear, shirts, shorts and union suits.”
With regard to the goods, the “shirts” identified in
opposer’s Registration No. 367184 are identical to
applicant’s “shirts” and the “t-shirts” identified in
opposer’s Registration No. 764348 could be encompassed by
applicant’s “shirts.” “Shirts” is defined as “1. A garment
for the upper part of the body, typically having a collar,
sleeves, and a front opening. 2. An undershirt. 3. A
nightshirt. The American Heritage Dictionary of the English
Language (4th ed. 2006).4
Considering the channels of trade and class of
purchasers, because the goods are in part legally identical
and otherwise closely related and because there are no
limitations in either the registrations or the subject
application, we must presume that applicant’s and opposer’s
goods will be sold in the same channels of trade and will be
bought by the same classes of purchasers. See Hewlett-
Packard Co. v. Packard Press Inc., 281 F.3d 1261, 62 USPQ2d
1001 (Fed. Cir. 2002); Canadian Imperial Bank v. Wells Fargo
Bank, 811 F.2d 1490, 1 USPQ2d 1813 (Fed. Cir. 1987); and In
re Smith and Mehaffey, 31 USPQ2d 1531 (TTAB 1994).

4 The Board may take judicial notice of dictionary definitions.
University of Notre Dame du Lac v. J.C. Gourmet Food Imports Co.,
213 USPQ 594, 596 (TTAB 1982), aff’d, 703 F.2d 1372, 217 USPQ 505
(Fed. Cir. 1983).
Opposition No. 91169355
8
In view of the above, the du Pont factors of the
similarity of the goods, the channels of trade and class of
purchasers favor a finding of likelihood of confusion.
With regard to the conditions of sale, these goods
include general clothing items that would not be purchased
with a great deal of care or require purchaser
sophistication, which increases the likelihood of confusion.
See Recot, supra, 54 USPQ2d at 1899 (“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). Thus, this factor
also favors opposer.
We now turn to consider the similarity or dissimilarity
of the marks when compared in their entireties in terms of
appearance, sound, connotation and commercial impression.
We make this determination in accordance with the following
principles. The test, under this 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
impressions that confusion as to the source of the goods
offered under the respective marks is likely to result.
Moreover, where the goods are identical “the degree of
similarity [between the marks] necessary to support a
Opposition No. 91169355
9
conclusion of likely confusion declines.” Century 21 Real
Estate Corp. v. Century Life of America, 970 F.2d 874, 877,
23 USPQ2d 1698, 1701 (Fed. Cir. 1992), cert. denied, 506
U.S. 1034 (1992).
In comparing the marks B.V.D. and DVD EMPIRE within the
above-noted legal parameters and taking into account the
fame of opposer’s marks, we find the points of similarity
outweigh the dissimilarities. ESSO Standard Oil Co. v. Sun
Oil Co., 229 F.2d 37, 108 USPQ 161, 163 (D.C. Cir. 1956).
We first observe that the term DVD is the dominant element
in applicant’s mark. It is the first word in the mark and,
as opposer notes, EMPIRE has a certain laudatory quality to
it inasmuch as it connotes a degree of supremacy, rendering
it less influential as the source identifier in applicant’s
mark.5 See In re National Data Corp., 732 F.2d 1056, 224
USPQ 749, 751 (Fed. Cir. 1985) (“[T]here 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”).

5 Empire is defined as “Imperial or imperialistic sovereignty,
domination, or control.” The American Heritage Dictionary of the
English Language (4th ed. 2006). The word “Imperial” has been
found to be laudatory. See Imperial Knife Associated Companies,
Inc. v. Dalton, 153 USPQ 422, 423 (TTAB 1967).
Opposition No. 91169355
10
While the marks begin with different letters, B versus
D, the last two letters are identical and B and D are
visually similar and are somewhat phonetically similar. In
addition, in considering the similarity of appearance with
the stylized BVD mark, because applicant’s mark is in
standard character form, we must consider the possibility of
it being presented in any reasonable form of display
including the manner in which opposer’s mark is displayed.
Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d
1842, 1847-48 (Fed. Cir. 2000).
As to connotation, both letter combinations are
arbitrary in the context of the relevant goods. As noted by
opposer, although the “letters DVD do have a recognized
meaning with respect to electronics and recorded media ...
applicant’s letter combination DVD has no special meaning
with respect to shirts.” Br. p. 14. Used on a label inside
a shirt, the letters DVD would have no particular meaning.
Further, a difference of one letter in a multiple-
letter designation generally is not sufficient to
distinguish between two otherwise identical letter
combinations. See Weiss Associates Inc. v. HRL Associates
Inc., 14 USPQ2d 1840 (Fed. Cir. 1990); and Alberto-Culver
Co. v. F.D.C. Wholesale Corp., 16 USPQ2d 1597 (TTAB 1990)
and cases cited therein. This is particularly true where
the involved goods are subject to impulse purchasing and
Opposition No. 91169355
11
further exacerbated here, due to the fame of opposer’s
marks.
Given the identical and closely related goods, trade
channels, and class of purchasers, we find that the overall
commercial impression engendered by each of these marks is
such that the similarities outweigh the differences. Taking
into consideration the fame of opposer’s BVD marks, we
conclude that the parties’ marks are substantially similar.
Thus, considering the marks in their entireties, we
conclude that the evidence of record as it pertains to the
relevant du Pont factors supports a finding of a likelihood
of confusion as between applicant’s DVD EMPIRE mark and
opposer’s BVD marks, such that registration of applicant’s
mark is barred under Trademark Act Section 2(d). As noted
above, applicant has not submitted any evidence, taken any
testimony or presented any legal argument to rebut opposer’s
showing. To the extent we have any doubt, we must resolve
that doubt in favor of opposer, the prior registrant. See
Hard Rock Cafe International (USA) Inc. v. Thomas D. Elsea,
56 USPQ2d 1504, 1514 (TTAB 2000) and W.R. Grace & Co. v.
Herbert J. Meyer Industries, Inc., 190 USPQ 308, 311 (TTAB
1976).
Decision: The opposition is sustained as to opposer’s
claim of priority and likelihood of confusion under Section
2(d) of the Trademark Act.