Tommy Hilfiger Licensing, Inc.v.Henri-Lloyd, Ltd.

Trademark Trial and Appeal Board

Sep 3, 2003

No. 91118396 (T.T.A.B. Sep. 3, 2003)

Mailed:
September 3, 2003
Paper No. 25
Bucher

UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
Tommy Hilfiger Licensing, Inc.
v.
Henri-Lloyd, Limited
________
Opposition No. 118,396
to Application Serial No. 75/489,129
_______
Mary L. Greico, Louis S. Ederer and Charu Narang of Gursky &
Ederer, LLP for Tommy Hilfiger Licensing, Inc.
Alan H. Levine and Howard F. Mandelbaum of Levine &
Mandelbaum for Henri-Lloyd, Limited.
_______
Before Chapman, Bucher and Rogers, Administrative Trademark
Judges.
Opinion by Bucher, Administrative Trademark Judge:
An application has been filed by Henri-Lloyd, Limited
to register the composite mark shown below.
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT
OF THE TTAB
Opposition No. 118,396
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At the request of the Trademark Examining Attorney,
applicant described its mark as consisting of “an open
crown, the letters H and L and a wreath, all placed upon a
diamond background.”
According to the application papers, applicant intends
to use the mark on the following goods:
“marine, life saving, and emergency equipment and
garments, namely, life saving belts, inflatable suits,
buoys, jackets, nets and rafts, safety harnesses,
safety ropes, and safety lines,” in International
Class 9;
“articles made from leather and imitation leather,
namely, wallets, purses, handbags, and briefcases,
trunks, traveling bags, suit cases, holdalls,
overnight bags, sail bags, and duffle bags,” in
International Class 18; and
“clothing, footwear and headgear, namely, coats,
suits, jackets, trousers, salopettes, overtrousers,
pants, shorts, shirts, sweatshirts, t-shirts, vests,
waistcoats, cagoules, anoraks, smocks, sweaters,
pullovers, bodywarmers, scarfs, ties, gloves, belts,
socks, hoods, caps, hats, headbands, underwear,
neckwear, sandals, shoes, slippers, boots, and
sneakers,” in International Class 25.1
Registration has been opposed by Tommy Hilfiger
Licensing, Inc., but only as to the goods in International
Classes 18 and 25, on the ground that it has previously used
and registered its Hilfiger crest design as shown below;
1 Application Serial No. 75/489,129 was filed on May 21, 1998,
based upon applicant’s allegation of a bona fide intention to use
the mark in commerce.
Opposition No. 118,396
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2
as well as the same Hilfiger crest design lined for color
shown below;
2 (1) Reg. No. 1,673,527 for “clothing for men and boys,
namely, shirts, sweaters, sportcoats, pants,
sweatshirts, shorts, sports jackets, raincoats, parkas,
overcoats, bathing suits, vests, turtlenecks,” in
International Class 25, issued on January 28, 1992,
renewed;
(2) Reg. No. 1,816,430, for “ties, socks, suspenders, hats,
caps, suits and blazers,” in International Class 25,
issued on January 11, 1994, Section 8 affidavit
accepted and Section 15 affidavit acknowledged;
(3) Reg. No. 1,879,005, for “retail store services,” in
International Class 42, issued on February 14, 1995,
Section 8 affidavit accepted and Section 15 affidavit
acknowledged;
(4) Reg. No. 1,935,702, for “articles of leather and
imitation leather; namely wallets, credit card cases,
umbrellas, traveling bags, billfold,” in International
Class 18, issued on November 14, 1995, Section 8
affidavit accepted and Section 15 affidavit
acknowledged;
(5) Reg. No. 2,120,621, for “footwear, namely, shoes,
boots, sneakers, sandals and slippers,” in
International Class 25, issued on December 9, 1997;
(6) Reg. No. 2,153,151, for “sunglasses, eyeglasses and
eyeglass frames,” in International Class 9, issued on
April 21, 1998;
(7) Reg. No. 2,179,671, for “jewelry made of precious and
nonprecious metals and stone, namely, cuff links,” in
International Class 14, issued on August 4, 1998.
Opposition No. 118,396
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3
and its TH and laurel design shown below.
4
Opposer also asserts various common law uses of a letter
“H,” examples of which will be discussed later in this
opinion. Opposer asserts that each of these marks have been
used since long prior to applicant’s filing date herein.
Opposer then asserts that applicant’s mark, when used on its
goods in International Classes 18 and 25, so resembles
3 Reg. No. 1,940,821, for “articles of clothing, namely,
shirts, sweaters, sportscoats, pants, sweatshirts, shorts, sports
jackets, raincoats, parkas, overcoats, bathing suits, vests,
turtlenecks, ties, socks, suspenders, hats, caps, suits and
blazers,” in International Class 25, issued on December 12, 1995,
Section 8 affidavit accepted and Section 15 affidavit
acknowledged.
4 Reg. No. 2,050,013, for “shirts, hats, caps, pants, shorts
and socks,” in International Class 25, issued on April 1, 1997,
Section 8 affidavit accepted and Section 15 affidavit
acknowledged.
Opposition No. 118,396
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opposer’s previously used and registered trademarks as to be
likely to cause confusion, to cause mistake, or to deceive.
Applicant, in its answer, denied the salient
allegations of the notice of opposition.
The record consists of the pleadings; the file of the
opposed application; opposer’s notice of reliance and
supplemental notice of reliance; and the testimony, with
exhibits, of opposer’s Vice President and Associate Counsel,
Jade H.J. Huang. Applicant took no testimony and offered no
evidence at trial. The parties have fully briefed the case
but an oral hearing was not requested.
Before turning to the merits of this case, we must
discuss several preliminary matters.
First, applicant has objected to much of the testimony
of opposer’s only trial witness, Ms. Jade H.J. Huang.
Although Ms. Huang testified that she was hired as associate
counsel and vice president of opposer in March 1999, her
testimony related to opposer’s use of its various marks
since 1985. Accordingly, applicant has objected to much of
her testimony on the ground of hearsay.
In the face of repeated objections to this testimony by
applicant’s counsel at the time the deposition was being
taken, opposer’s counsel elicited detailed information from
Ms. Huang about how her job duties had permitted her to
Opposition No. 118,396
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acquire her personal knowledge of relevant facts to which
she was testifying. She explained her role as opposer’s
primary intellectual property manager, and how she gathered
information regarding opposer’s trademarks and franchising
agreements. For example, she described her orientation to
the firm in 1999 through contact with her predecessor and
visits with the heads of each of opposer’s divisions. She
testified to her participation in discussions of Tommy
Hilfiger’s annual design directives, and of her review of
existing files in the legal department she heads as well as
the files existing in opposer’s other divisions.5
In this case, we find that applicant’s objections to
Ms. Huang’s testimony are not well taken. As opposer’s
primary in-house trademark counsel, she plays a distinct
role in opposer’s overall marketing function, and
specifically in promoting opposer’s brand image. She
testified as to how she became aware of the history of the
selection and use of opposer’s various marks. The documents
and files she relied upon are business information, and as
such, fall within the business records exception to the
hearsay rule. Accordingly, this witness is competent to
testify to those matters of which she had personal
5 Trial testimony of Jade H.J. Huang, pp. 4 - 5, 7 - 8, 34 -
35.
Opposition No. 118,396
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knowledge, including her knowledge of company history based
upon her personal and repeated review of, and familiarity
with, company business records.
Next, we note that opposer has filed a motion to amend
its notice of opposition to conform to the evidence under
Fed. R. Civ. P. 15(b). Opposer has no federal trademark
registration of a mark consisting of a letter “H,” and while
the notice of opposition discusses opposer’s “crest design”
and its “TH and laurel” design, nowhere in the notice of
opposition does opposer allege rights in the letter “H”
alone. Nonetheless, during the trial testimony of its
witness, opposer’s counsel spent substantial time eliciting
information about opposer’s use for more than a decade of a
letter “H,” such testimony being supported by exhibits
demonstrating such usage.
6
6 Trial testimony of Jade H.J. Huang, pp. 60 – 72, and Exhibit
#14, pp. 1 and 4, letter “H” as applied to a jacket, rugby shirt
and hat.
We also find that all of opposer’s exhibits were clearly
intended to be offered into evidence during this testimony period
Opposition No. 118,396
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Although applicant objected to this testimony on the
basis of hearsay, etc., as discussed above, opposer made
clear during its trial testimony that in addition to the
“crest design” and the “TH and laurel design” marks it had
initially pleaded, it was also basing its likelihood of
confusion argument on the use of a prominent letter “H” as
well.
Under Fed. R. Civ. P. 15(b), when issues not raised by
the pleadings are tried by express or implied consent of the
parties, the pleadings may be amended to conform to the
evidence. Implied consent to the trial of an unpleaded
issue can be found only where the non-offering party (1)
raised no objection to the introduction of evidence on the
unpleaded issue and (2) was fairly apprised that the
evidence was being offered in support of the unpleaded
issue. See Colony Foods, Inc. v. Sagemark, Ltd., 735 F.2d
1336, 222 USPQ 185 (Fed. Cir. 1984); Levi Strauss & Co. v.
R. Josephs Sportswear Inc., 36 USPQ2d 1328 (TTAB 1994); and
Devries v. NCC Corporation, 227 USPQ 705 (TTAB 1985).
We find that the issue of whether opposer has
established common law rights in the letter “H” per se was
tried by the implied consent of applicant. Applicant did
deposition. See 37 C.F.R. §2.123(e)(2) and TBMP §713.08 (2d ed.
June 2003).
Opposition No. 118,396
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not raise objections to the introduction of this evidence on
the ground that it was irrelevant or outside the scope of
the proceeding; and applicant was fairly apprised that the
evidence was being offered in support of the issue of
likelihood of confusion. See TBMP Section 507.03(b)(2d ed.
June 2003) and cases cited therein. In this case, there is
direct testimony supported by evidence appropriately made of
record from which we can say that applicant was or should
have been on notice that opposer was asserting common law
rights in the letter “H” per se. Applicant had the
opportunity to meet this showing as it saw fit, and in fact,
cross-examined the witness on this evidence. Amending the
notice of opposition to include this claim does not create
prejudice to applicant, and hence we grant opposer’s motion
and consider the notice of opposition to be amended to
conform to the evidence pursuant to Fed. R. Civ. P. 15(b).
We turn next to applicant’s objection to opposer’s
supplemental notice of reliance. Applicant argues that this
notice was not timely and should be excluded. We disagree.
Opposer’s Registration No. 2,050,013 (TH and laurel wreath
design) issued on April 1, 1997. Immediately upon receiving
the registration certificate, opposer filed a Section 7
request for a corrected certificate because the mark was
incorrect. The records of the United States Patent and
Opposition No. 118,396
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Trademark Office (USPTO) demonstrate that the new
registration certificate was reprinted on June 30, 1997 to
correct the USPTO’s error. Opposer thought the error had
been corrected until such time as it sought a certified copy
of the registration from the USPTO to file with its Notice
of Reliance in this proceeding dated March 14, 2002, but
such copy did not reflect the correction. Opposer noted
this problem in an extensive footnote of its Notice of
Reliance, and the USPTO has since effected the change. The
corrected registration appeared in the Trademark Official
Gazette of July 9, 2002, and opposer submitted its
supplemental Notice of Reliance on August 22, 2002. We find
this involves a timely attempt on opposer’s part to provide
a certified copy of a subsisting registration despite USPTO
error. Moreover, we find that permitting opposer to
supplement its original Notice of Reliance in this manner
does not involve prejudice to applicant.
Opposer’s Priority
With respect to priority of use, because opposer has
submitted proper status and title copies of its pleaded
registrations (e.g., its “crest design” marks and its “TH
and laurel design” mark), the issue of priority with regard
to these marks does not arise. King Candy Co. v. Eunice
Opposition No. 118,396
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King’s Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108 (CCPA
1974). With regard to opposer’s claim of common law rights
in the mark “H,” the undisputed evidence of record
establishes that opposer has used variations of the letter
“H” in connection with specific clothing items for several
years prior to the earliest date upon which applicant can
rely, i.e., its May 21, 1998 application filing date.
In view of the above, opposer has established its
priority.
Likelihood of Confusion
We turn then to the question of likelihood of
confusion.
Opposer contends that its registered goods include a
line of sailing apparel similar to applicant’s identified
goods; that opposer has created one of the best known
lifestyle brands in the United States; and that a consumer
familiar with opposer’s “crest design,” “TH and laurel
design,” and single letter “H” designations will associate
applicant’s applied-for mark with opposer’s well-known
marks.
By contrast, applicant contends that the parties’ marks
are dissimilar; that opposer’s so-called “sailing” line of
clothing does not even use any of the three marks claimed by
Opposition No. 118,396
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opposer; that even if HILFIGER, TOMMY and TOMMY HILFIGER
may be famous marks, the same has not been shown for the
“crest design” or the “TH and laurel design”; and that the
goods of both parties are not “impulse” items, but rather
would be purchased only after a period of deliberate and
careful decision-making.
After careful consideration of the facts before us and
the relevant law on the issue of likelihood of confusion, we
hold that opposer has failed to show a likelihood of
confusion herein, and that applicant is entitled to the
registration it seeks.
In the course of determining the question of likelihood
of confusion herein, we have followed the guidance of In re
E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1362, 177 USPQ
563, 567-68 (CCPA 1973). The du Pont case sets forth each
factor that should be considered, if relevant information is
of record, in determining likelihood of confusion.
We turn first to the similarity or dissimilarity and
nature of the goods as described in applicant’s application
and as listed in opposer’s claimed registrations and in
connection with which its prior marks have been in use as
shown by the record for its unregistered but previously used
“H” mark. As listed in the involved application and
registrations, we find that the travel bags and luggage
Opposition No. 118,396
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items, as well as the items of clothing must be deemed to be
legally identical. Likewise, the “H” mark of opposer has
been proven to have been used, inter alia, on jackets,
shirts and hats, which are legally identical to the same
listed items in the involved application. This factor
favors finding a likelihood of confusion as to these goods,
as argued by opposer.
In a related du Pont factor focusing on the similarity
or dissimilarity of established, likely-to-continue trade
channels, we must assume that these identical and closely
related goods identified in the application and
registrations will be moving in identical channels of trade
to the same types of consumers inasmuch as the
identifications are not restricted to any specific classes
of consumers or channels of trade.7
We turn next to the similarity or dissimilarity of the
marks in their entireties as to appearance, sound,
connotation and commercial impression. The parties spend
7 Similarly, while the extrinsic evidence made part of this
record suggests both parties’ goods may be pricier than the
average lines of luggage and clothing, there are no restrictions
to this effect in the identification of goods in the involved
application or in the pleaded registrations. Thus, we much
presume conditions of the level of care exercised by ordinary
purchasers of articles of leather and traveling bags in
International Class 18 as well as items of wearing apparel in
International Class 25.
Opposition No. 118,396
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considerable time discussing the similarities or the
dissimilarities of the marks:
Opposer argues as follows:
…Henri[-]Lloyd’s [applicant’s] Laurel Design Mark
consists of a crest design comprised of a prominent
letter “H” and a much smaller, less prominent,
small interlocking “L,” surrounded by laurel
leaves, with a crown above and a ribbon below the
two letters. … [T]he Hilfiger Crest Design Mark is
a stylized crest design comprised of a heraldic
lion surrounded by laurel leaves with a crown above
and a ribbon below the lion…
By contrast, applicant argues as follows:
The differences between Applicant’s Mark and
Opposer’s Lion Design mark are numerous:
(a) The most prominent feature of Opposer’s Lion
Design mark is the Lion Design at the Center.
Applicant’s Mark has no such element;
(b) Applicant’s Mark has the letters H and L at
the center, and Opposer’s Lion Design mark
includes no letters whatsoever;
(c) The sprigs of the laurel leaf designs of the
two marks are different in shape as are the
laurel leaves themselves;
(d) Applicant’s Mark includes a crown beneath the
middle of the upper ends of the laurel leaf
springs, whereas Opposer’s Lion Design has a
castle Design located between the ends of the
laurel sprigs;
Opposition No. 118,396
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(e) The two laurel sprigs of Applicant’s Mark abut
each other at their lower ends, whereas the
lower ends of the laurel sprigs of Opposer’s
mark are spaced apart;
(f) The ribbon designs of the two marks are
totally different; and
(g) Opposer’s Lion Design mark has no element
comparable to applicant’s black diamond
background.
Keeping in mind that the comparison of marks is not
made on a side-by-side basis and that recall of purchasers
is often hazy and imperfect, this decision cannot turn on
the minimal differences in the laurel sprigs and ribbons
(applicant’s arguments (c), (e) and (f) above). On the
other hand, we agree with applicant that there are
significant differences between the appearances of these two
marks that should obviate any likelihood of confusion. The
central element in opposer’s crest design is a lion while
the central element of applicant’s composite mark consists
of the letters HL. Opposer’s self-described crown design
actually appears more to be a turret of a castle and hence
is different from applicant’s crown design. Accordingly,
when considered in their entireties, the appearance and
overall commercial impression of these two marks is quite
different and, we find, would not lead to a likelihood of
confusion.
The parties have also disagreed about the similarities
between the second of opposer’s pleaded marks (registered
Opposition No. 118,396
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for shirts, hats, caps, pants, shorts and socks in
International Class 25 only) and the mark for which
applicant seeks registration:
Opposer argues as follows:
…Henri[-]Lloyd’s [applicant’s] Laurel Design Mark
consists of a crest design comprised of a prominent
letter “H” and a much smaller, less prominent,
small interlocking “L,” surrounded by laurel
leaves, with a crown above and a ribbon below the
two letters. The Hilfiger Laurel Design Mark
consists of a capital “T” and capital “H”
surrounded by virtually identical leaves. …
By contrast, applicant argues as follows:
The differences between Applicant’s Mark and TH and
Design mark are as follows:
(a) Opposer’s Mark has no black diamond
background;
(b) Applicant’s Mark includes the letters H and L
superimposed on each other, whereas Opposer’s
mark has the letters TH adjacent to each
other;
(c) Opposer’s mark includes no crown;
(d) Opposer’s mark includes no ribbon.
Again, when considered in their entireties, while both
marks do include a letter “H” within a laurel wreath, the
two composite marks are dissimilar enough in appearance that
Opposition No. 118,396
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we find they create very different overall commercial
impressions. Specifically, the letters “TH” are a
significant part of opposer’s mark while the crown and the
large letter “H” are significant features of applicant’s
mark.
Finally, turning to opposer’s common law marks, even
though opposer has shown a variety of forms of usage of the
letter “H” on items of outerwear, there is no consistency in
overall commercial impression of these various usages
permitting us to conclude that the letter “H” dominates each
of these marks.8 Accordingly, we cannot find that opposer’s
composite marks containing the letter “H” are confusingly
similar to applicant’s composite mark, which clearly
contains other arbitrary and prominent elements.
Opposer’s theory of the case seems to turn on the fact
that “[a] consumer familiar with the three Hilfiger marks
upon which this opposition is based, all of which contain
key elements that are found in the Henri[-]Lloyd Laurel
Design Mark, will naturally associate the Henri[-]Lloyd
Laurel Design with Hilfiger.” (Opposer’s trial brief, p.
9).
8 In some of these cases, for example, consumers may well find
the HILFIGER or TOMMY HILFIGER portion more dominant.
Opposition No. 118,396
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In response to this line of reasoning, applicant argues
that “[a]pparently recognizing the weakness of its case,
Opposer … attempts to pick and choose various elements from
three different marks to contrive some similarity between
such a composite and Applicant’s Mark. Clearly, there is no
basis in law for selecting portions of different marks in
order to create an imaginary mark, i.e., a mark which does
not exist in reality, so as to fabricate a basis for a
likelihood of confusion.” (Applicant’s trial brief, p. 11).
We need not agree or disagree with the premise of
applicant’s argument (i.e., opposer’s recognizing the
weakness of its case), to concur with applicant’s position
that opposer cannot take elements of several distinct marks
and then argue that a combination of these elements creates
a likelihood of confusion.9 In looking at the similarity of
the marks, we must compare applicant’s applied-for mark
separately against each of opposer’s pleaded marks.
Accordingly, as to this du Pont factor, the overall
dissimilarity of the parties’ marks favors applicant’s
position that there is not a likelihood of confusion.
9 Cf. H. D. Hudson Manufacturing Company v. Food Machinery and
Chemical Corporation, 230 F.2d 445, 109 USPQ 48 (CCPA 1956)
[Opposer cannot rely upon argument that respondent wrongfully
combined parts of two or more different marks when creating a new
composite mark when that combination of elements was never
previously used by opposer.]
Opposition No. 118,396
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Turning to the fame of opposer’s claimed marks, it is
clear from this record that opposer has experienced
significant sales, has spent large sums on advertising, and
has created a strong brand awareness within the relevant
market sectors. However, this general level of marketing
and sales volume is in no way correlated with these pleaded,
registered marks. In fact, opposer’s catalogues,
advertisements and annual reports prominently and frequently
feature not the pleaded marks but the HILFIGER, TOMMY and
TOMMY HILFIGER marks alone and in combination with opposer’s
red, white and blue nautical flag logo, as shown below:
Accordingly, while we treat opposer’s pleaded,
registered marks as distinctive and strong marks, we cannot,
on this record, find them to be famous or accord them the
broad scope of protection to which opposer argues they are
entitled.
Finally, in looking at any other established fact
probative of the effects of use, we note opposer’s
suggestion of bad faith intent on the part of applicant in
choosing this composite mark: “[T]o bolster the evidence of
Henri[-]Lloyd’s intent, it is apparent that Henri[-]Lloyd
copied elements from several of Hilfiger’s marks to create
Opposition No. 118,396
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its own mark. Hilfiger is not picking and choosing bits and
pieces from its marks.” (Opposer’s reply brief, p. 8).
Absent compelling and objective evidence of bad faith,
however, we cannot infer such intent from the adoption of a
mark that arguably only moves applicant close to an
imaginary composite of opposer’s several pleaded marks.10
In conclusion, we find that while the goods are
identical or otherwise closely related and will move through
the same channels of trade, the marks themselves are not
confusingly similar, we do not regard opposer’s pleaded
marks as famous marks, and we do not impute any bad faith to
applicant in adopting its applied-for mark.
Decision: The opposition as to International Classes
18 and 25 is dismissed, and the application will be
forwarded for the issuance of a notice of allowance in all
three classes, namely International Classes 9, 18 and 25, at
the appropriate time.
10 Opposer seeks to make this point by contrasting the instant
opposition with several of applicant’s/Henri Lloyd’s other marks
to which opposer/Hilfiger does not object: