Wallyball Int’l., Inc.v.Joe Garcia

Trademark Trial and Appeal Board

Sep 26, 2003

No. 91120198 (T.T.A.B. Sep. 26, 2003)

Mailed:
Sept. 26, 2003
Paper No. 16
Bottorff
UNITED STATES PATENT AND TRADEMARK OFFICE
_____
Trademark Trial and Appeal Board
______
Wallyball International, Inc.
v.
Joe Garcia
_____
Opposition No. 120,198
to application Serial No. 75/707,289
filed on May 17, 1999
_____
Edward W. Pilot for Wallyball International, Inc.
Joe Garcia, pro se.
______
Before Simms, Bottorff and Drost, Administrative Trademark
Judges.
Opinion by Bottorff, Administrative Trademark Judge:
In the above-referenced application, applicant seeks
registration on the Principal Register of the mark MR.
WALLYBALL, in typed form, for goods identified in the
application, as amended, as “t-shirts, wrist bands,
sweatshirts, caps and shorts” in Class 25, and “wallyball
balls” in Class 28. As to the Class 28 goods only,
applicant has disclaimed the exclusive right to use
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT
OF THE TTAB
Opposition No. 120,198
2
WALLYBALL apart from the mark as shown. The application is
based on applicant’s asserted bona fide intention to use the
mark in commerce. Trademark Act Section 1(b), 15 U.S.C.
§1051(b).
On August 25, 2000, opposer filed a timely notice of
opposition to registration of applicant’s mark as to both
classes of goods. In the notice of opposition, opposer
appears to be attempting to allege1 the following as grounds
of opposition: likelihood of confusion vis-à-vis opposer’s
previously-used “WALLYBALL INTERNATIONAL & DESIGN” mark,
under Trademark Act Section 2(d), 15 U.S.C. §1052(d); unfair
competition, under Trademark Act Section 43(a), 15 U.S.C.
§1125(a); dilution, under Trademark Act Section 43(c), 15
U.S.C. §1125(c); and breach by applicant of a non-
competition agreement between the parties. We shall discuss
each of these grounds, infra.
In his answer to the notice of opposition, applicant
denied all of the allegations in the notice of opposition,
except that he admitted that opposer has used the stylized
mark described in the notice of opposition on “clothing,
equipment and accessories” since 1985, that opposer is the
owner of an abandoned application and a newly-filed
application to register that mark, and that applicant was
1 Opposer’s pleading is hardly a model of clarity.
Opposition No. 120,198
3
formerly a minority shareholder in opposer corporation and
that he surrendered his shares in April 1999.
Neither party properly made any evidence of record.
The numerous exhibits attached to each party’s pleading were
not properly made of record during the parties’ respective
testimony periods, and they therefore are not evidence in
this case. See Trademark Rule 2.122(c), 37 C.F.R.
§2.122(c); TBMP §704.05 (2d ed. June 2003). During its
testimony period, opposer submitted the July 2001
“declaration” of its president and CEO, Michael O’Hara,
along with exhibits thereto consisting of the exhibits which
were attached to the notice of opposition as well as two
additional exhibits. However, the testimony of a witness
may be submitted in affidavit or declaration form only by
written agreement of the parties. Trademark Rule 2.123(b),
37 C.F.R. §2.123(b). No such written agreement is of
record, and we therefore have given no consideration to the
O’Hara declaration or its exhibits. See Trademark Rule
2.123(l), 37 C.F.R. §2.123(l)(“Evidence not obtained and
filed in compliance with these sections will not be
considered”). Applicant submitted no evidence during his
testimony period. Opposer attached evidence to its brief on
the case, including a February 2003 declaration by Michael
O’Hara (which, in essence, is a verbatim repetition of his
earlier July 2001 declaration) and exhibits thereto (which
Opposition No. 120,198
4
essentially are the same exhibits as those attached to his
earlier declaration and to the notice of opposition).
Evidence attached to briefs is untimely and will not be
considered. See TBMP §704.05 (2d ed. June 2003).
Thus, the evidence of record in this case consists of
the file of the opposed application (see Trademark Rule
2.122(b), 37 C.F.R. §2.122(b)), the above-referenced factual
admissions contained in applicant’s answer to the notice of
opposition (see TBMP §704.06(a)(2d ed. June 2003), and two
dictionary definitions of the word “wallyball” of which we
take judicial notice (see discussion infra). We note,
however, that even if we were to deem the materials the
parties have submitted to have been timely and properly made
of record, our decision in this case would be the same.
Opposer filed a brief on the case (which consists in
large part of a mere verbatim repetition of the allegations
contained in the notice of opposition). Applicant did not
file a brief. Neither party requested an oral hearing.
In view of applicant’s admission (in Paragraph 1 of his
answer to the notice of opposition) that opposer has used a
mark which incorporates the term “wallyball” since 1985, we
find that opposer has standing to bring this opposition
proceeding. See, e.g., Lipton Industries, Inc. v. Ralston
Purina Company, 670 F.2d 1024, 213 USPQ 185 (CCPA 1982).
Opposition No. 120,198
5
We turn now to a discussion of the grounds of
opposition asserted by opposer in this case. First, we note
that the Board has no jurisdiction over claims of unfair
competition, and that such claims (whether asserted under
Section 43(a) of the Lanham Act or otherwise) are not
available as grounds of opposition in proceedings before the
Board. See TBMP §102.01 (2d ed. June 2003), and cases cited
therein. Accordingly, to the extent that opposer’s
allegations in the notice of opposition (including,
especially, the allegations in Paragraphs 8, 10 and 12) can
be construed as opposer’s attempt to plead unfair
competition as a ground of opposition, we have given those
allegations no consideration.
Opposer also has alleged that applicant and opposer
entered into a non-competition agreement in 1999, and that
applicant breached that agreement by filing the intent-to-
use application involved in this proceeding. The Board has
no jurisdiction to consider a breach of contract claim, per
se. We shall assume that opposer is attempting to assert a
claim based on the theory of “estoppel by agreement,” i.e.,
that applicant’s prior agreement with opposer estops
applicant from filing the present application. See, e.g.,
M-5 Steel Mfg Inc. v. O’Hagin’s Inc., 61 USPQ2d 1086, 1095
(TTAB 2001), and cases cited therein. We find, however,
that opposer has failed to prove such a claim. In his
Opposition No. 120,198
6
answer to the notice of opposition, applicant denied the
existence of a non-competition or any other agreement
between the parties, and opposer has failed to present any
evidence that such an agreement exists, much less that
applicant breached it by filing his application.2 Opposer’s
ground of opposition based on the alleged existence and
breach of such agreement accordingly is dismissed.
Opposer, in the notice of opposition, makes two
references to dilution (in paragraphs 9 and 14). However,
opposer has failed to allege facts which are essential to a
claim of dilution, including, e.g., that its mark is famous
and became famous prior to the filing date of applicant’s
application. See, e.g., Toro Co. v. ToroHead, Inc., 61
USPQ2d 1164 (TTAB 2001). Moreover, even if we were to deem
opposer’s pleading to be sufficient and opposer’s evidence
to have been properly made of record (it was not), that
evidence fails to establish even a prima facie case of
2 Mr. O’Hara’s July 2001 and February 2003 declarations are not
evidence of record, for the reasons discussed above. Moreover,
we note that Mr. O’Hara’s assertion in these declarations
regarding the existence of a non-competition agreement between
the parties is an essentially verbatim repetition of the
allegation in the notice of opposition pertaining to such
agreement, an allegation which was expressly denied by applicant
in his answer to the notice of opposition. Even if Mr. O’Hara’s
declaration were deemed to be of record (it is not), it does not
suffice to prove opposer’s claim. Similarly, the April 14, 1999
letter from Mr. O’Hara to applicant (Exhibit E to opposer’s
notice of opposition, to Mr. O’Hara’s declarations, and to
opposer’s brief) is not properly of record, and even it were, it
fails to establish the existence of a non-competition or any
other agreement between the parties which would preclude
applicant from filing the application.
Opposition No. 120,198
7
dilution. Accordingly, to the extent that opposer might be
deemed to be asserting dilution as a ground of opposition,
that ground is dismissed.
Thus, opposer’s Section 2(d) claim of priority and
likelihood of confusion is the only ground of opposition
remaining for consideration. In Paragraph 1 of his answer
to the notice of opposition, applicant admits that opposer
has used opposer’s mark since 1985, a date prior to the
filing date of applicant’s intent-to-use application (which
is the earliest date upon which applicant can rely for
priority purposes in this case). In view thereof, we find
that Section 2(d) priority rests with opposer in this case.
We turn next to the issue of likelihood of confusion.
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 likelihood of confusion
factors set forth in In re E.I. du Pont de Nemours and Co.,
476 F.2d 1357, 177 USPQ 563 (CCPA 1973). In considering the
evidence of record on these factors, we keep in mind that
“[t]he fundamental inquiry mandated by §2(d) goes to the
cumulative effect of differences in the essential
characteristics of the goods and differences in the marks.”
Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d
1098, 192 USPQ 24, 29 (CCPA 1976).
Opposition No. 120,198
8
We first shall determine whether applicant’s goods and
opposer’s goods are similar or dissimilar, under the second
du Pont evidentiary factor. As noted above, opposer failed
to properly make any evidence of record, including any
evidence as to the nature of the goods or services on which
it uses its mark. However, in Paragraph 1 of the notice of
opposition, opposer alleged that it uses its mark on
“official Wallyball products including kits (ball, net, net
tightener, storage bag, official rule book, hardware and
installation instructions), banners, suction cups, and
clothes, including T-shirts, jerseys, jackets, shorts and
sweat pants.” In his answer, applicant responded to this
allegation by admitting that opposer uses its mark “on
equipment, clothing and accessories.” In Paragraph 2 of the
notice of opposition, opposer alleged that it “has been the
governing body of Wallyball since on or about September 18,
1985 and since that date has been exclusively and
continuously promoting the sport by conducting and
sponsoring games, tournaments and championships,” all of
which opposer (correctly) asserts are Class 41 services. In
his answer to Paragraph 2, applicant did not deny that
opposer provides these alleged services, but merely denied
opposer’s allegation that it is the exclusive provider of
such services.
Opposition No. 120,198
9
In view of these admissions by applicant, we find that
opposer’s goods and services, for purposes of our Section
2(d) likelihood of confusion analysis, comprise those goods
and services alleged in Paragraphs 1 and 2 of the notice of
opposition, i.e., goods consisting of “kits [for playing the
game of wallyball, comprising] (ball, net, net tightener,
storage bag, official rule book, hardware and installation
instructions), banners, suction cups, and clothes, including
T-shirts, jerseys, jackets, shorts and sweat pants,” and
services consisting of “promoting the sport [of wallyball]
by conducting and sponsoring games, tournaments and
championships.” Applicant’s goods, for purposes of our
likelihood of confusion analysis, are the goods identified
in the application, i.e., “t-shirts, wrist bands,
sweatshirts, caps and shorts” in Class 25, and “wallyball
balls” in Class 28.
We find that applicant’s goods, in both Class 25 and
Class 28, are legally identical to opposer’s goods in part
(“balls,” “t-shirts” and “shorts”) and otherwise are closely
related thereto, and that applicant’s goods also are related
to opposer’s services. This similarity in the parties’
respective goods and services weighs in opposer’s favor in
our likelihood of confusion analysis.
We also find that applicant’s goods and opposer’s goods
(and, to perhaps a lesser extent, opposer’s services) are of
Opposition No. 120,198
10
the type which are or would be marketed in the same trade
channels and to the same classes of purchasers. These
factors also support a finding of likelihood of confusion.
We next must determine whether applicant’s mark and
opposer’s mark, when compared in their entireties in terms
of appearance, sound and connotation, are similar or
dissimilar in their overall commercial impressions. The
test 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 impression that confusion as to the source of the
goods offered under the respective marks is likely to
result. The focus is on the recollection of the average
purchaser, who normally retains a general rather than a
specific impression of trademarks. See Sealed Air Corp. v.
Scott Paper Co., 190 USPQ 106 (TTAB 1975). Furthermore,
although the marks at issue must be considered in their
entireties, it is well-settled that one feature of a mark
may be more significant than another, and it is not improper
to give more weight to this dominant feature in determining
the commercial impression created by the mark. See In re
National Data Corp., 753 F.2d 1056, 224 USPQ 749 (Fed. Cir.
1985). Finally, where, as in the present case, the marks
would appear on virtually identical goods, the degree of
similarity between the marks which is necessary to support a
Opposition No. 120,198
11
finding of likely confusion declines. Century 21 Real
Estate Corp. v. Century Life of America, 970 F.2d 874, 23
USPQ2d 1698 (Fed. Cir. 1992).
In the notice of opposition, opposer alleged that its
mark is “WALLYBALL INTERNATIONAL & DESIGN,” said design
consisting of a “distinctive lightening [sic] bolt ‘W’
emblem and blue and gold colors.” (Notice of opposition, ¶
1.) Opposer also alleged ownership of (and attached a copy
of) a pending application, executed October 29, 1999, for
registration of the mark depicted below for goods in Classes
25, 28, and 41.
In his answer, applicant admitted that opposer is the prior
user of the mark described in Paragraph 1 of the notice of
opposition, and that opposer is the owner of the above-
referenced application for registration of that mark.
Because the mark depicted above (from opposer’s application)
is essentially the same as the mark pleaded by opposer (and
admitted by applicant), we deem it to be the mark on which
opposer’s claim is based, for purposes of our likelihood of
Opposition No. 120,198
12
confusion analysis.3 Thus, the issue for determination
under the first du Pont factor is whether applicant’s mark
MR. WALLYBALL and opposer’s mark WALLYBALL INTERNATIONAL,
INC. & DESIGN, when viewed in their entireties, are similar
or dissimilar when compared in accordance with the legal
principles outlined above.
We find that the marks obviously are similar in terms
of appearance and sound to the extent that they both include
3 Review of the Office’s automated records reveals that the
above-referenced application for registration of this mark, filed
by opposer on October 29, 1999 (a date subsequent to the filing
date of applicant’s involved intent-to-use application), was
abandoned on January 27, 2001 due to opposer’s failure to respond
to an Office action. However, opposer pleaded (and applicant
admitted) prior common law rights in this mark as well, and it is
those pleaded common law rights upon which opposer’s Section 2(d)
claim therefore is based in this case.
In its brief on the case, opposer for the first time asserted
that it is the owner of Registration No. 2,627,516, issued
October 1, 2002 from an application filed July 8, 2001, of the
mark depicted below for goods identified in the registration as
“sports balls, namely, a type of volleyball.”
In the registration, opposer has disclaimed the word WALLYBALL
apart from the mark as shown. A copy of the registration
(although not a status and title copy – see Trademark Rule
2.122(d)) is attached as Exhibit C to opposer’s brief. This mark
was not pleaded in the notice of opposition as a basis for
opposer’s Section 2(d) claim, and, in any event, opposer has
failed to prove the status and title of the registration with
timely and competent evidence. Accordingly, we find that
opposer’s mark, for purposes of our likelihood of confusion
analysis in this case, is the “WALLYBALL INTERNATIONAL & DESIGN”
mark pleaded in the notice of opposition (as depicted in the main
text of this opinion), and not the mark depicted in the
registration. We note, however, that our decision would be the
same in this case even if we were to consider opposer’s
registered mark to have been pleaded and made of record.
Opposition No. 120,198
13
the word WALLYBALL. The marks differ in terms of appearance
and sound in that applicant’s mark, but not opposer’s mark,
includes the term “MR.,” and in that opposer’s mark, but not
applicant’s mark, includes the words INTERNATIONAL, INC., as
well as distinctive design elements. In terms of
connotation, the marks are similar to the extent that they
both refer to the sport of wallyball, but are different to
the extent that applicant’s mark connotes a person named (or
nicknamed) “Mr. Wallyball,” while opposer’s mark carries no
such connotation.
Comparing the marks in terms of their overall
commercial impressions, we find that the similarity which
results from the fact that the word WALLYBALL appears in
both marks is outweighed by the dissimilarities in
appearance, sound and connotation which result from the
presence of the word “MR.” in applicant’s mark. The word
WALLYBALL is highly descriptive, if not generic, as applied
to the parties’ respective wallyball-related goods and
services. We take judicial notice4 that The American
Heritage Dictionary of the English Language (4th ed. 2000),
at pp. 1936-37, defines “wallyball” as follows: “noun : a
game similar to volleyball played on a four-walled court
4 The Board may take judicial notice of dictionary definitions.
See, e.g., University of Notre Dame du Lac v. J. C. Gourmet Food
Imports Co., 213 USPQ 594 (TTAB 1982), aff’d, 703 F.2d 1372, 217
USPQ 505 (Fed. Cir. 1983); see also TBMP §704.12 (2d ed. June
2003).
Opposition No. 120,198
14
with a ball the same size as but harder than a volleyball
that is allowed to bounce once off the ceiling or one of the
walls before being returned over the net.” We also take
judicial notice that The New Oxford American Dictionary
(2001), at p. 1899, similarly defines “wallyball” as
follows: “n. a game played on a four-walled court with
rules similar to volleyball, and with a ball the same size
as but harder than a volleyball. The ball is allowed to
bounce once against the ceiling or one of the walls before
being returned over the net.” “Wallyball” clearly is the
name of the sport itself, and thus is a generic or highly
descriptive term in which neither party can assert exclusive
proprietary rights. The Board previously has held as much.
See In re Wallyball, Inc., 222 USPQ 87 (TTAB 1984). Indeed,
applicant has disclaimed the exclusive right to use the term
as to his Class 28 goods, as has opposer in its registration
(see supra at footnote 3). In the notice of opposition,
opposer has alleged that its mark is distinctive, but the
evidence of record simply fails to support that allegation
insofar as the term WALLYBALL is concerned.
If the common element of two marks is “weak” in that it
is generic, descriptive or highly suggestive of the named
goods or services, consumers typically will be able to avoid
confusion unless the overall combinations have other
Opposition No. 120,198
15
commonality. See, e.g., In re Bed & Breakfast Registry, 791
F.2d 157, 229 USPQ 818 (Fed. Cir. 1986) (BED & BREAKFAST
REGISTRY for making lodging reservations for others in
private homes held not likely to be confused with BED &
BREAKFAST INTERNATIONAL for room booking agency services);
The U.S. Shoe Corp. v. Chapman, 229 USPQ 74 (TTAB 1985)
(COBBLER’S OUTLET for shoes held not likely to be confused
with CALIFORNIA COBBLERS (stylized) for shoes); In re
Istituto Sieroterapico E Vaccinogeno, Toscano “SCLAVO”
S.p.A., 226 USPQ 1035 (TTAB 1985) (ASO QUANTUM (with “ASO”
disclaimed) for diagnostic laboratory reagents held not
likely to be confused with QUANTUM I for laboratory
instrument for analyzing body fluids). In the present case,
no such other commonality exists between the marks.
Given the highly descriptive nature of the word
WALLYBALL, we find that presence of the term “MR.” In
applicant’s mark suffices to distinguish applicant’s mark
from opposer’s mark in terms of their overall commercial
impressions. The dominant feature in the commercial
impression created by applicant’s mark, when that mark is
viewed in its entirety, is the mark’s “personalized”
connotation; the mark will be perceived and recollected as
identifying and referring to a person, i.e., someone called
“Mr. Wallyball.” Whether that person is understood by
purchasers to be applicant himself (who asserts that he is
Opposition No. 120,198
16
“Mr. Wallyball” by virtue of the fact that he allegedly
invented the game), or is instead understood to refer to any
person who is an enthusiast of the game of wallyball, or to
a fanciful person or persona, it is clear that applicant’s
mark has a connotation and a commercial impression which
opposer’s mark simply does not have. That dissimilarity in
the mark’s connotations renders the marks dissimilar, for
purposes of the first du Pont evidentiary factor.
After careful consideration of the relevant du Pont
evidentiary factors in this case, we conclude that opposer
has failed to establish that a likelihood of confusion
exists. Notwithstanding the identical and closely related
nature of the goods involved in this case, we find that the
respective marks are sufficiently distinguishable that no
confusion is likely. See Kellogg Co. v. Pack‘Em Enterprises
Inc., 14 USPQ2d 1545 (TTAB 1990), aff’d, 951 F.2d 330, 21
USPQ2d 1142 (Fed. Cir. 1991).
Decision: The opposition is dismissed.