Tommy Hilfiger Licensing, Inc.v.William D. Smith

Trademark Trial and Appeal Board

Jul 11, 2001

No. 91113238 (T.T.A.B. Jul. 11, 2001)

7/11/01
Paper No. 18
HRW
UNITED STATES PATENT AND TRADEMARK OFFICE
_____
Trademark Trial and Appeal Board
______
Tommy Hilfiger Licensing, Inc.
v.
William D. Smith, d/b/a Team Hawaii Sports
_____
Opposition No. 113,238
to application Serial No. 74/703,279
filed on July 19, 1995
_____
Louis S. Ederer and Debra Bodian Bernstein of Gursky &
Ederer, P.C. for Tommy Hilfiger Licensing, Inc.
William J. Mason of Rhodes & Mason, PLLC for William D.
Smith, d/b/a Team Hawaii Sports.
______
Before Cissel, Wendel and Holtzman, Administrative Trademark
Judges.
Opinion by Wendel, Administrative Trademark Judge:
William D. Smith, d/b/a Team Hawaii Sports has filed an
application to register the design mark shown below for
“stickers” in Class 16; “T-shirts and golf shirts” in Class
25 and “surfboards” in Class 28.1
1 Serial No. 74/703,279, filed July 19, 1995, claiming a first
use date and a first use in commerce date of May 1, 1993.
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Opposition No. 113,238
2
Tommy Hilfilger Licensing, Inc. has filed an opposition
to registration of the mark on the ground of priority and
likelihood of confusion under Section 2(d) of the Trademark
Act. In the Notice of Opposition opposer has alleged, inter
alia, that opposer owns registrations for the marks TH and
design,2 TOMMY HILFIGER,3 TOMMY HILFIGER (stylized),4 TOMMY
tommy HILFIGER (label),5 Tommy box design6 and TOMMY
HILFIGER DIVISION 42 ATHLETICS;7 that opposer, through its
licensees has since 1984 been engaged in the manufacture,
distribution and sale of all types of apparel and related
accessories and since 1996 in the manufacture, distribution
and sale of all types of cosmetic products; and that since
2 Registration No. 2,050,013, issued April 1, 1997.
3 Registration No. 1,398,612, issued June 24, 1986;
Registration No. 1,738,410, issued December 8, 1992;
Registration No. 1,833, 391, issued April 26, 1994;
Registration No. 1,978,987, issued June 4, 1996;
Registration No. 1,995,802, issued August 20, 1996;
Registration No. 2,103,148, issued October 7, 1997;
Registration No. 2,162,940, issued June 2, 1998.
4 Registration No. 1,940,671, issued December 12, 1995.
5 Registration No. 2,124,016, issued December 23, 1997.
6 Registration No. 2,025,974, issued December 24, 1996.
Opposition No. 113,238
3
1985, opposer, through its licensees, has operated retail
stores and retail store outlets. Opposer further alleges
that it has used and promoted a family of TH marks in
connection with its various products, including both the
aforenamed TH mark and the marks THinsole, Thxtreme,
T.H.A.W., Thrmo, TH2O and THSkew; that as a result of
extensive use of the initials TH alone and in combination
with other terms on a wide variety of apparel and related
accessories, the initials TH have become widely recognized
by the public and the fashion industry as being synonymous
with opposer; that the dominant portion of applicant’s mark
is TH, which would be likely to be understood by consumers
as being part of opposer’s TH family of marks; and that
applicant’s mark, when used in connection with applicant’s
goods, is therefore likely to cause confusion or cause
purchasers to mistakenly believe that applicant’s goods
emanate from opposer or are sold under opposer’s
sponsorship.
Applicant, in his answer, has denied the salient
allegations of the Notice of Opposition.
The Record
The record consists of the file of the involved
application; opposer’s testimony depositions, and
accompanying exhibits, of Jade Huang, a Vice-President and
7 Registration No. 2,041,463, issued February 25, 1997.
Opposition No. 113,238
4
associate counsel of Tommy Hilfiger U.S.A,8 Tracey Ann
Tango, Director of Graphic Design for Tommy Hilfiger U.S.A.,
and Steven Gursky, an attorney representing opposer since
March 1989; and, pursuant to opposer’s request on consent to
file evidence after the close of the testimony period, a
copy of the file history for opposer’s application Serial
No. 75/975,631 and a copy of opposer’s application Serial
No. 74/459,720. Applicant has taken no testimony or offered
any other evidence, except for a single exhibit made of
record during the cross-examination of Ms. Huang. Both
parties have filed briefs, but an oral hearing was not
requested.
The Tommy Hilfiger company was formed in 1985, and at
that time its primary market was men’s sportswear. The
company has grown rapidly since that time and has expanded,
through a licensing program begun in the early 90’s, into
different apparel categories and accessories. The company’s
products now include apparel and accessories for men, women
and children and, in addition, leather goods, home products
and cosmetics. The net revenues of the company have grown
from $320 million in 1995 to $1.63 billion in 1999. (Exhibit
A). Since the early 90’s the company has expended $50 to $75
million in advertising.
8 Tommy Hilfiger U.S.A. is the parent company and licensee of
opposer. Opposer owns all the trademarks, patent brands and
Opposition No. 113,238
5
The primary trademarks of the company are TOMMY
HILFIGER, the flag logo, the crest design, the Tommy marks
and the TH designation. The TH designation consists of the
letters TH, but the letters are not used in any one
particular style. (Huang deposition, p.12). Of all the
labels, hang tags, prints, embroideries and so forth which
carry a mark, approximately 25% of the designs reviewed for
proposed use involve the designation TH, with 10% being used
in connection with style names (names for a product) and 15%
being used as the design on the actual garments or the
packaging. There is no one consistent style of usage of the
designation TH, but rather the letters appear in a number of
ways. (Huang deposition p.24-25). One design used prior to
1991 was the T star H design, which is still in use today.
(Tango deposition p.11-14). Other designs in use prior to
1995 include the T crest H, the T anchor H, the T golf club
design H, and the TH laurel, as in the pleaded registration.
One specific TH design shown to have been used on a shirt
owned by Mr. Gursky for the past 12-13 years features the
letter T with a slightly larger letter H adjacent thereto.
Interlocking TH’s have also been used, in varying forms,
with at least the conception of such use dating back to
1992. (Tango deposition p.27,33). Other interlocking
designs used in more recent years show the block letters TH
intangibles of the Hilfiger brands, but Tommy Hilfiger U.S.A.
Opposition No. 113,238
6
in varying positions, including the letter T superimposed
over the letter H. (Exhibits E and V).
Opposer has also used the letters TH as part of a style
name, such as THskew for a particular shoe style (Exhibit C-
11), or TH as the base for word marks such as Thrmo, THAW,
THextreme, TH2O and THinsolar to designate certain kinds of
fabrics or textures in its garments. (Huang deposition
p.40, Exhibits F and G).
Applicant has introduced no evidence other than a
printout from the Office Website of applicant’s mark.
Applicant is accordingly limited for purposes of priority to
the filing date of his application, July 19, 1995.
The Opposition
We look first to opposer’s pleaded registrations for
purposes of priority. Despite applicant’s arguments that
these registrations were not properly made of record,
opposer introduced these registrations during the testimony
of Ms. Huang (Exhibits K-1 and K-2) and thus the
registrations are of record.9 For the marks covered by the
registrations, there is no question of priority, regardless
of the issue date. See King Candy Co., Inc., v. Eunice
handles all the intellectual property management issues.
9 We note that in addition to the pleaded registrations, opposer
introduced during testimony two other registrations, namely,
Registration No. 2,286,255 for the mark TOMMY HILFIGER and
Registration No. 2,304,661 for the mark TH SKEW. Although
opposer also introduced several applications, these are
irrelevant for purposes of priority, particularly when filed as
intent-to-use applications.
Opposition No. 113,238
7
King’s Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108 (CCPA
1974). The more significant question is the relevance of
the pleaded marks. Of these registrations we find only one
which is pertinent to the use by opposer of TH marks,
namely, Registration No. 2,050,013 for the TH and laurel
design shown below for “shirts, hats, caps, pants, shorts,
and socks”:
The remainder of opposer’s case rests in its common law
usages of TH designations prior to the July 19, 1995 filing
date of applicant’s application. As shown by the record,
these usages cover designations such as T star H, T crest H,
T anchor H as well as the letters TH used in adjacent
positions. The specific examples of record of the letter T
superimposed over the letter H are all dated later than
applicant’s filing date.
Opposer’s claim, however, is not simply to each of
these individual designations and prior use thereof, but
rather to the existence of a family of TH marks. As argued
by opposer,
[t]he issue is not when Hilfiger commenced use of a
particular embodiment of “TH” but whether Hilfiger’s
“TH” mark, which was originally used long before
Applicant began using its mark, is so well-known
Opposition No. 113,238
8
to consumers that Applicant’s usage is understood by
consumers to be a Hilfiger usage. Even if the specific
versions of “TH” used by Hilfiger before Applicant’s
filing date did not include an interlocked combination
of “T” and “H”, there is no doubt that because of
Hilfiger’s fame and position in the marketplace ( which
has been conceded by Applicant).and its extensive use
of “TH”, both before and after Applicant commenced use,
consumers would believe that apparel and related
products bearing a “TH” originate from or are
associated with Tommy Hilfiger. (Emphasis in
original). (Reply brief, p.4).
Such an argument is clearly founded upon, and requires the
proof of, the existence of a family of marks bearing the
“TH” designation prior to the date to which applicant is
entitled.
As stated by our principal reviewing court in J & J
Snack Foods Corp. v. McDonald’s Corp., 932 F.2d 1460, 18
USPQ2d 1889, 1891 (Fed. Cir. 1991):
A family of marks is a group of marks having a
recognizable common characteristic, wherein the marks
are composed and used in such a way that the public
associates not only the individual marks, but the
common characteristic of the family, with the trademark
owner. Simply using a series of similar marks does not
of itself establish the existence of a family. There
must be a recognition among the purchasing public that
the common characteristic is indicative of a common
origin of the goods.
The need for evidence of promotion resulting in the
recognition of the common characteristic of the family as an
indicator of source by the purchasing public has been
pointed out in Hester Industries Inc. v. Tyson Foods Inc., 2
USPQ2d 1645 (TTAB 1987), the Board stating:
... it is well settled that the mere ownership of a
Opposition No. 113,238
9
number of marks sharing a common feature (or even
ownership of registrations thereof) is insufficient to
establish a claim of ownership of a “family” of marks
characterized by the feature in the absence of
competent evidence showing that prior to the first use
by the alleged interloper, the various marks said to
constitute the “family,” or at least a goodly number of
them, were used and promoted together in such a manner
as to create among purchasers an association of
common ownership based upon the “family”
characteristic... .
In other words, as noted in American Standard Inc. v. Scott
& Fetzer Company, 200 USPQ 457, 461 (TTAB 1978):
... it must be demonstrated that the marks asserted
to comprise its “family” or a number of them have
been used and advertised in promotional material or
used in everyday sales activities in such a manner
as to create common exposure and thereafter recognition
of common ownership based upon a feature common to each
mark.
Opposer has failed, however, to produce any evidence
which might demonstrate such promotion of its various TH
designations in such a manner as to create common exposure
of the public to the marks. While opposer may well have
used a series of TH marks over the years, and many of these
prior to the use by applicant of his mark, there is no
evidence that opposer has promoted these marks together or
has in any way referred to the marks as members of a family
of marks owned by opposer. See Trek Bicycle Corp. v. Fier,
56 USPQ2d 1527 (TTAB 2000).
Instead, opposer has adopted many different TH designs
as its marks, as is readily apparent from the testimony of
its witnesses as to the many designs they have reviewed over
Opposition No. 113,238
10
the years. The series of varying designs, although all may
have incorporated the letters TH in some manner, have
clearly not been promoted as a family. There has been no
use together, but rather just the opposite, one at a time.
Thus, opposer has not established that it is entitled to
claim a family of TH marks. Opposer has not established it
has promoted and used its various TH marks in such a manner
that the public would automatically equate the use of a
design bearing the letters TH with a “Hilfiger usage.” For
the purpose of determining likelihood of confusion, our
comparison is necessarily restricted to those TH marks for
which opposer either owns a registration or has demonstrated
use prior to the filing date of applicant’s application,
July 19, 1995.
Turning at this point to the issue of likelihood of
confusion, we take under consideration all of the du Pont
factors which are relevant under the present circumstance
and for which there is evidence of record. See E.I. du Pont
de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973).
We look first to the specific marks of opposer falling
within the bounds outlined above and applicant’s mark and
the similarities or dissimilarities thereof. Opposer’s TH
marks include the letters TH surrounded by a laurel design
(the pleaded registration), the letters TH separated by
various figures such as a star, an anchor or a crest, and
Opposition No. 113,238
11
the letters TH alone adjacent to one another. We have no
evidence of use prior to July 1995 of an interlocking
design, particularly one in which the letter T is
superimposed over the letter H.
Applicant describes his mark as being “essentially the
design of a mask that incorporates vertically stacked and
interlocked T and H to form a part of the mask design.”
(Brief, p.10). We find this to be an accurate description.
While the letters T and H are clearly present, the overall
commercial impression is much more than that of the letters
alone. Although the letters may be viewed as a reference to
Team Hawaii, nonetheless the entire impression created by
the mark is greater, the mask design incorporating the
letters being highly distinctive. Despite opposer’s
arguments and the testimony of its witnesses to the effect
that the letters TH dominate applicant’s mark, these letters
cannot be considered to the substantial exclusion of the
other features of applicant’s mark. See In re Electrolyte
Laboratories Inc., 913 F.2d 930, 16 USPQ2d 1239 (Fed. Cir.
1990). The overall commercial impression created by
applicant’s mark is markedly different from that created by
any of opposer’s TH marks. It is in opposer’s marks that
the letters TH are clearly the dominant feature. The
difference in overall commercial impressions of the marks of
Opposition No. 113,238
12
opposer and applicant is a strong factor in applicant’s
favor.
Turning to the goods involved, we agree with opposer
that there is overlap between opposer’s wearing apparel and
the T-shirts and golf shirts of applicant. As for the
stickers of applicant, although we do not consider these the
same as the hang tags and labels to which opposer likens the
goods, we do consider such stickers well within the
potential of promotional items which might be perceived by
purchasers as emanating from opposer. The surfboards of
applicant, on the other hand, do not fall within any such
reasonable extension of opposer’s wearing apparel. Although
opposer has shown that in recent years it has expanded its
swimwear goods to include a surfwear line and has sponsored
a surf camp in California, we do not consider this a
sufficient basis on which opposer can claim that applicant’s
surfboards per se reasonably lie within the natural
expansion of opposer’s wearing apparel business. See Mason
Engineering and Design Corp. v. Mateson Chemical Corp., 225
USPQ 956 (TTAB 1985).
No distinctions can be made between the channels of
trade or potential purchasers for the goods of both. There
being no restrictions in the application as to channels of
trade, we must assume that the goods of applicant would
travel in all the normal channels of trade, which would
Opposition No. 113,238
13
encompass those of opposer. See Kangol Ltd. v. KangaROOS
U.S.A. Inc., 974 F.2d 161, 23 USPQ2d 1945 (Fed. Cir. 1992).
The other factor raised by opposer as being relevant
here is the fame of the Hilfiger marks. From the statistics
previously noted, it is clear that opposer’s marks have
achieved a strong degree of fame, particularly in the last
five years. Applicant himself has acknowledged that TOMMY
HILFIGER is a famous mark.
The issue in the present case, however, is the fame of
the various TH marks which have been used by opposer. There
is no breakdown of the sales and advertising figures by
which we may attribute any certain percentage to the TH
marks. From the testimony of Ms. Huang, the TH designation
is present at the most in 25% of the proposed usages which
she reviews. Thus, we have no basis on which to conclude
that the TH designation in itself is a famous mark,
particular since it is used in many different formats. We
cannot conclude that the TH designation has attained such a
level of recognition that this designation, regardless of
the particular design in which it is used, is entitled to a
broader than normal scope of protection.
Accordingly, on weighing the relevant factors, and
particularly in view of the decidedly different commercial
impressions created by the marks of the parties, we find no
Opposition No. 113,238
14
likelihood of confusion with the contemporaneous use by the
parties of their respective marks.10
Decision: The opposition is dismissed.
10 Although opposer makes a major point of the examination history
of applicant’s application and the Examining Attorney’s apparent
unawareness that opposer’s cited application later issued as a
divisional application, we find this immaterial to our present
decision. The evidence of record in this opposition is the
determinative factor here.