Trustees of Dartmouth Collegev.Jonathan D. Heavey

Trademark Trial and Appeal Board

Feb 27, 2001

No. 91113404 (T.T.A.B. Feb. 27, 2001)

2/27/01
Paper No. 11
HWR
UNITED STATES PATENT AND TRADEMARK OFFICE
_____
Trademark Trial and Appeal Board
______
Trustees of Dartmouth College
v.
Jonathan D. Heavey
_____
Opposition No. 113,404
to application Serial No. 75/375,714
filed on October 20, 1997
_____
William R. Hansen of Nims, Howes, Collison, Hansen & Lackert
for Trustees of Dartmouth College.
Michelle H. MacKenzie of Landels, Ripley & Diamond
for Jonathan D. Heavey.
_____
Before Quinn, Wendel and Drost, Administrative Trademark
Judges.
Opinion by Wendel, Administrative Trademark Judge:
Jonathan D. Heavey filed an application to register the
mark DARTMOUTH MOOSE and design, as shown below, for
“clothing, namely, T-shirts, athletic jerseys, sweat shirts,
sweat pants, shorts, pants, hats.”1
1 Serial No. 75/375,714, filed October 20, 1997, based on an
allegation of a bona fide intention to use the mark in commerce.
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Opposition No. 113,404
2
The Trustees of Dartmouth College filed an opposition
to registration of the mark on the ground of likelihood of
confusion under Section 2(d) of the Trademark Act. Opposer
alleges that since December 17, 1769 and long prior to
applicant’s filing date, opposer has used the names and
marks DARTMOUTH and DARTMOUTH COLLEGE in connection with the
offering of its educational services; that since before 1900
opposer has used the names and marks DARTMOUTH and DARTMOUTH
COLLEGE on the uniforms worn by its sports teams and the
Roman letter “D” has also been closely associated with these
teams, appearing on caps, jerseys and the like; that since
long prior to the filing date of the involved application,
with the consent of opposer and through related companies,
wearing apparel has been offered for sale using either alone
or in combination DARTMOUTH and the Roman letter “D”; and
that applicant’s mark DARTMOUTH MOOSE and design is a
colorable imitation of opposer’s famous names and marks, the
Opposition No. 113,404
3
use of which mark, as applied to applicant’s goods, would be
likely to cause confusion.
Applicant, in his answer, denied the salient
allegations of the notice of opposition, although admitting
that opposer had used the names Dartmouth and Dartmouth
College in connection with educational services.2
The Record
The record consists of the file of the involved
application; the trial testimony depositions, with
accompanying exhibits of Richard G. Jaeger, Director of
Athletics for opposer and Karen J. Mongeon, Licensing
Officer for opposer; and the status and title copies of six
registrations of opposer3 and applicant’s responses to
2 Applicant further pleaded the affirmative defenses of unclean
hands, estoppel, acquiescence, waiver and the geographic
descriptiveness of the names Dartmouth and Dartmouth College.
Applicant has failed to pursue any of these affirmative defenses,
however, and thus no consideration has been given thereto.
3 Registration No. 987,129, issued June 25, 1974, for the mark
DARTMOUTH for “educational services – namely, offering college
and graduate level courses; first renewal;
Registration No. 1,727,764, issued October 27, 1992, for the
mark DARTMOUTH AUTHENTICS for “athletic jerseys, sweat shirts,
sweat pants, shorts, T-shirts, knit shirts, pants, hats,
headbands”; Section 8 accepted;
Registration No. 1,729,497, issued November 3, 1992, for the
mark DARTMOUTH AUTHENTICS and design for the same wearing apparel
as above; Section 8 accepted;
Registration No. 2,041,854, issued March 4, 1997, for the mark
1900 TUCK AT DARTMOUTH and design for “clothing, namely, T-shirts
and sweatshirts;
Registration No. 2,158,256, issued May 19, 1998, for the mark
DARTMOUTH WINTER CARNIVAL for “T-shirts, sweatshirts and
sweaters”; and
Registration No. 2,305,032, issued January 4, 2000, for the
mark COL.DARTMUTH/NOV.HANT:IN AMERICA 1769 and design for
”clothing, namely, shirts, T-shirts, sweat shirts, sweat pants,
Opposition No. 113,404
4
opposer’s interrogatories made of record by means of
opposer’s notice of reliance. Applicant took no testimony
and made no evidence of record. Only opposer filed a brief.
Dartmouth College, as represented by its trustees, was
established as an educational institution in 1769. Opposer
has used both the name DARTMOUTH and the Roman letter “D” on
its athletic uniforms since the 1880’s. The official letter
“D” is considered the symbol of all the athletic teams and
is awarded to all those who earn varsity status. (Jaeger
deposition, p.8). Although the teams do not presently have
an official mascot, a moose has been used as an unofficial
mascot for the past five or six years and a moose figure has
appeared at sporting events.
Opposer began its licensing programs in the 1970’s,
permitting several top manufacturers to produce wearing
apparel and other items bearing Dartmouth marks, including
DARTMOUTH and the letter “D”, to be sold by various
retailers. The apparel includes T-shirts, athletic jerseys,
sweat shirts, sweat pants, shorts, pants and hats. Most
goods display one mark, but certain items, such as hats, may
bear both the letter “D” and the name Dartmouth College.
Potential purchasers for the licensed goods include
students, alumni, the teams, the faculty, and fans in
general at the athletic events. Sales of this merchandise
pants, shorts, boxer shorts and socks, jackets, sweaters, hats
Opposition No. 113,404
5
runs around $1 million per year, resulting in a royalty
intake for opposer of approximately $100,000 per year.
(Mongeon deposition, p. 13).
Applicant is a Dartmouth graduate who had occasional
employment in the physical education department and attended
meetings involving attempts by the students and staff to
find a new mascot for the college’s teams. (Jaeger
deposition, p. 14). Applicant helped conduct a survey in
the mid-1990’s in which the students chose a moose to be the
unofficial mascot. (Applicant’s response to Interrogatory
No. 2).
The Opposition
Priority is not an issue here in view of opposer’s
submission in its notice of reliance, as well as the
identification during the testimony of Karen Mongeon, of
status and title copies of the six noted registrations for
the mark DARTMOUTH and variations thereof.4 See King Candy
Co., Inc. v. Eunice King’s Kitchen, Inc., 496 F.2d 1400, 182
USPQ 108 (CCPA 1974). Furthermore, opposer has established
prior and continuous use of both DARTMOUTH and the Roman
letter “D” since as early as the 1880’s, a date well prior
belts, pajamas, night shirts and ties.”
4 Although opposer failed to plead ownership of these
registrations in its notice of opposition, opposer timely
introduced the registrations during its testimony period and
applicant made no challenge thereto. Accordingly, the
registrations are considered part of the record.
Opposition No. 113,404
6
to the earliest date available to applicant, namely, the
filing date of his application.
Thus, we turn to the issue of likelihood of confusion,
making our determination on the basis of those of the
du Pont5 factors which are relevant in view of the evidence
of record. Two key considerations in any analysis are the
similarity or dissimilarity of the respective marks and the
similarity or dissimilarity of the goods with which the
marks are being used. See Federated Foods, Inc. v. Fort
Howard Paper Co., 544 F.2d 1098, 192 USPQ 24 (CCPA 1976); In
re Azteca Restaurant Enterprises, Inc., 50 USPQ2d 1209 (TTAB
1999).
Looking first to the respective marks, we agree with
opposer that the term DARTMOUTH is the dominant element in
both opposer’s DARTMOUTH marks and applicant’s DARTMOUTH
MOOSE mark. While marks must be considered in their
entireties in determining likelihood of confusion, it is
well established that there is nothing improper in giving
more or less weight to a particular portion of a mark. See
In re National Data Corp., 753 F.2d 1056, 224 USPQ 749 (Fed.
Cir. 1985). Here the word DARTMOUTH clearly dominates all
the marks. Applicant’s addition of the Roman letter “D”, a
designation in which opposer has established long prior
5 In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ
563 (CCPA 1973).
Opposition No. 113,404
7
common law rights, only reinforces the similarity of
connotation and commercial impression of the word DARTMOUTH.
While we are not convinced that opposer has established
common law rights in the use of a moose per se, although
opposer so argues, we consider this additional element to
have only a small impact in applicant’s mark as a whole.
While potential purchasers may well make an association
between the term MOOSE (and the moose design) with opposer,
even without this recognition of the mascot reference, we
find the commercial impressions created by the respective
marks highly similar. The source indicating significance of
the word DARTMOUTH remains the same.
Thus, on the basis of this high degree of similarity of
overall commercial impression, we turn to the respective
goods. We find the clothing items upon which applicant
intends to use his mark to be identical to items upon which
opposer is presently using its DARTMOUTH marks.
Furthermore, since there are no limitations in the
identification of goods in the application as to any
particular channels of trade, we must assume that
applicant’s goods would travel in all the normal channels of
trade and be sold to all the usual purchasers for goods of
this nature. See Canadian Imperial Bank v. Wells Fargo
Bank. 811 F.2d 1490, 1 USPQ2d 1813 (Fed. Cir. 1987).
Opposition No. 113,404
8
Clearly the potential purchasers for clothing items bearing
a DARTMOUTH MOOSE mark would encompass those also purchasing
opposer’s DARTMOUTH items. We must assume that applicant’s
wearing apparel, whether sold on the Internet, by mail-order
catalog or in retail stores, would be available in the same
type of outlets as opposer’s wearing apparel.
While opposer has also raised the factor of the degree
of fame of its DARTMOUTH marks, we do not find that opposer
has proffered sufficient evidence to establish, for purposes
of this proceeding and these goods, that DARTMOUTH has
attained the status of a famous mark. We would readily
concur, however, that the evidence is adequate to establish
that opposer’s DARTMOUTH mark is well-known, not only in
connection with the educational institution and its sports
teams, but also in connection with the college-related
clothing items upon which the marks are used. This in
itself weighs strongly in opposer’s favor in determining
likelihood of confusion.
Inasmuch as applicant has made no evidence of record,
we have no reason to consider the use of the mark DARTMOUTH
by third parties. Applicant’s response in his
interrogatories with respect to the existence of other marks
containing the term DARTMOUTH goes unsubstantiated. (See
applicant’s response to Interrogatory No. 15). Instead we
make our determination on the basis that opposer’s DARTMOUTH
Opposition No. 113,404
9
marks are well-known in the relevant field and entitled to a
broad scope of protection.
While opposer has also raised the issue of applicant’s
intent in adopting his mark, in view of his prior
association with Dartmouth College and his knowledge with
respect to the student body’s choice of a moose as a mascot
for the athletic teams, we find the evidence insufficient to
go so far as to hold that applicant has acted in bad faith.
Furthermore, such a finding is not necessary here. The
remaining du Pont factors which are before us weigh
overwhelming in opposer’s favor on the issue of likelihood
of confusion.
Decision: The opposition is sustained and registration
is refused to applicant.