91241102 (T.T.A.B. Jun. 24, 2020)

Wrangler Apparel Corp.v.Kevin Barnett

Trademark Trial and Appeal BoardJun 24, 2020

91241102 (T.T.A.B. Jun. 24, 2020)

This Opinion is Not a Precedent of the TTAB Mailed: June 24, 2020 UNITED STATES PATENT AND TRADEMARK OFFICE _____ Trademark Trial and Appeal Board _____ Wrangler Apparel Corporation v. Kevin Barnett _____ Opposition No. 91241102 _____ Paul J. Kennedy and Sean P. McConnell of Pepper Hamilton LLP, for Wrangler Apparel Corporation. Kevin Barnett, pro se. _____ Before Wellington, Goodman, and Larkin, Administrative Trademark Judges. Opinion by Larkin, Administrative Trademark Judge: Kevin Barnett (“Applicant”), appearing pro se, seeks registration on the Principal Register of the mark shown below Opposition No. 91241102 - 2 - for goods identified as “Bottoms as clothing; Footwear; Headwear; Tops as clothing,” in International Class 25.1 Wrangler Apparel Corporation (“Opposer”) opposes registration of Applicant’s mark under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), claiming that Applicant’s mark so resembles Opposer’s various registered and common law “W” marks for clothing as to be likely, when used on or in connection with the goods identified in the application, to cause confusion, to cause mistake, or to deceive. Only Opposer submitted evidence and filed a brief.2 We sustain the opposition. I. The Record The record consists of the pleadings,3 including pages from the Trademark Status & Document Retrieval (“TSDR”) electronic database of the United States Patent and Trademark Office (“USPTO”) attached to Opposer’s Notice of Opposition pursuant to Trademark Rule 2.122(d)(1), 37 C.F.R. § 2.122(d)(1), showing the current status and 1 Application Serial No. 87326298 was filed in February 6, 2017 under Section 1(b) of the Trademark Act, 15 U.S.C. § 1051(b), based on Applicant’s allegation of a bona fide intention to use the mark in commerce. Applicant describes his mark as “a gold ‘W’ inside a gold heart with unspecified background.” The color gold is claimed as a feature of the mark. 2 Only Opposer was required to do so. See Trademark Rule 2.128(a)(1), 37 C.F.R. § 2.128(a)(1). Opposer has the burden of proving that Applicant is not entitled to a registration even in the absence of contrary evidence or argument. See, e.g., Threshold TV, Inc. v. Metronome Enters., Inc., 96 USPQ2d 1031, 1040 (TTAB 2010). Citations in this opinion to Opposer’s brief, the record, and other filings in the case refer to TTABVUE, the Board’s online docketing system. Turdin v. Tribolite, Ltd., 109 USPQ2d 1473, 1476 n.6 (TTAB 2014). Specifically, the number preceding TTABVUE corresponds to the docket entry number, and any numbers following TTABVUE refer to the page number(s) of the docket entry where the cited materials appear. 3 Applicant denied most of the salient allegations in Opposer’s Notice of Opposition. Applicant admitted that “opposer is owner of various trademarks,” 4 TTABVUE 2 (Ans. ¶ 3), and that “opposer has used their [sic] trademarks listed in notice long before filing date of my application.” Id. at 3 (Ans. ¶ 5). Applicant’s answer also includes several statements that are in the nature of amplifications of his denials of a likelihood of confusion. Opposition No. 91241102 - 3 - Opposer’s title to its pleaded Registration Nos. 634868, 3322277, 3777026, 3985886, 4090286, 4572699, 4656517, and 4782316, 1 TTABVUE 13-15 (Not. of Opp. Ex. A); the file of the opposed application, by operation of Trademark Rule 2.122(b)(1), 37 C.F.R. § 2.122(b)(1); Opposer’s Notice of Reliance on various articles in printed publications, 19 TTABVUE; and the testimony declaration of Opposer’s Vice President & General Manager-Western Wrangler, Allen Montgomery, 20 TTABVUE, and accompanying Exhibits 1-7, id. at 13-248, Exhibits 8-9, 21 TTABVUE 2-340, Exhibits 10-12, 22 TTABVUE 2-214, and Exhibits 13-18. 23 TTABVUE 2-226.4 II. Standing A threshold issue in every inter partes case is the plaintiff’s standing to challenge registration. Empresa Cubana Del Tabaco v. Gen. Cigar Co., 753 F.2d 1270, 111 USPQ2d 1058, 1062 (Fed. Cir. 2014). “To have standing, a plaintiff must have a real interest, i.e., a personal stake in the outcome of the proceeding and a reasonable basis for its belief that it will be damaged” by registration of the involved mark. TiVo Brands, LLC v. Tivoli, LLC, 129 USPQ2d 1097, 1102-03 (TTAB 2018) (citing Empresa Cubana Del Tabaco v. Gen. Cigar Co., 753 F.3d 1270, 111 USPQ2d 1058, 1062 (Fed. Cir. 2014); and Ritchie v. Simpson, 170 F.3d 1092, 50 USPQ2d 1023, 1025-28 (Fed. Cir. 1999)). Opposer properly made of record its pleaded registrations of its various W marks pursuant to Trademark Rule 2.122(d)(1), 37 C.F.R. § 2.122(d)(1), and the 4 We will cite the Montgomery Declaration by paragraph and exhibit number (e.g., “Montgomery Decl. ¶ 7, Ex. 1”) and, where helpful in following our discussion, by TTABVUE pages as well. Opposition No. 91241102 - 4 - registrations give Opposer standing based on a real interest in the proceeding and a reasonable belief that it will be damaged by registration of Applicant’s mark. Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1844 (Fed. Cir. 2000). III. Analysis of Likelihood of Confusion Claim Section 2(d) of the Trademark Act prohibits the registration of a mark that “[c]onsists of or comprises a mark which so resembles a mark registered in the Patent and Trademark Office, or a mark or trade name previously used in the United States by another and not abandoned, as to be likely, when used on or in connection with the goods of the applicant, to cause confusion, or to cause mistake, or to deceive.” 15 U.S.C. § 1052(d). To prevail on its § 2(d) claim, Opposer must prove, by a preponderance of the evidence, that it has priority in the use of its marks and that Applicant’s use of his mark is likely to cause confusion, mistake, or deception as to the source or sponsorship of the goods identified in the application. Cunningham, 55 USPQ2d at 1848. We will focus our analysis on the mark shown below: Opposition No. 91241102 - 5 - which is registered for “tops” and “belts’ in Registration No. 4656517,5 and for “bottoms” in Registration No. 3985886,6 because we find this mark to be the most pertinent of Opposer’s pleaded W marks. If we find a likelihood of confusion as to this mark and the goods in Registration Nos. 4656517 or 3985886, we need not find it as to Opposer’s other W marks. Conversely, if we do not find a likelihood of confusion as to this mark, we would not find it as to the other marks. Fiserv, Inc. v. Elec. Transaction Sys. Corp., 113 USPQ2d 1913, 1917 (TTAB 2015) (citing In re Max Capital Grp. Ltd., 93 USPQ2d 1243, 1245 (TTAB 2010)). A. Priority Because all of Opposer’s pleaded registrations are properly of record, including Registration Nos. 4656517 and 3985886, and Applicant did not counterclaim to cancel them, priority is not at issue with respect to Opposer’s registered W mark and the goods identified in the registrations. Mini Melts, Inc. v. Reckitt Benckiser LLC, 118 USPQ2d 1464, 1469 (TTAB 2016) (citing King Candy Co. v. Eunice King’s Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108, 110 (CCPA 1974)). B. Likelihood of Confusion Our determination of the issue of likelihood of confusion is based on an analysis of all probative facts in evidence that are relevant to the factors set forth in In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973). See Cai 5 Registration No. 4656517 issued on December 16, 2014. Color is not claimed as a feature of the mark. 6 Registration No. 3985886 issued on June 28, 2011 and has been maintained. The mark is described as “consist[ing] of a stylized W.” Color is not claimed as a feature of the mark. Opposition No. 91241102 - 6 - v. Diamond Hong, Inc., 901 F.3d 1367, 127 USPQ2d 1797, 1800 (Fed. Cir. 2018) (DuPont “articulated thirteen factors to consider when determining likelihood of confusion”). “‘Not all of the DuPont factors are relevant to every case, and only factors of significance to the particular mark need be considered,’” id. (quoting In re Mighty Leaf Tea, 601 F.3d 1342, 94 USPQ2d 1257, 1259 (Fed. Cir. 2010)), but all factors “‘must be considered’ when [they] are of record.” In re Guild Mortg. Co., 912 F.3d 1376, 129 USPQ2d 1160, 1162-63 (Fed. Cir. 2019) (quoting In re Dixie Rests, Inc., 105 F.3d 1405, 41 USPQ2d 1531, 1533 (Fed. Cir. 1997) (internal quotation omitted)). In every Section 2(d) case, two key factors are the similarity or dissimilarity of the marks and the goods or services. Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976) (“The fundamental inquiry mandated by § 2(d) goes to the cumulative effect of differences in the essential characteristics of the goods [or services] and differences in the marks.”). Opposer discusses these key factors, 28 TTABVUE 21-28, as well as the third DuPont factor regarding channels of trade, DuPont, 177 USPQ at 567, 28 TTABVUE 28-29; the fourth DuPont factor, the “conditions under which and buyers to whom sales are made, i.e. ‘impulse’ vs. careful, sophisticated purchasing,” DuPont, 177 USPQ at 567, 28 TTABVUE 29-30; the fifth DuPont factor, the “fame of the prior mark,” DuPont, 177 USPQ at 567, 28 TTABVUE 18-20; the eighth DuPont factor, the “length of time during and conditions under which there has been concurrent use without evidence of actual confusion,” DuPont, 177 USPQ at 567, 28 TTABVUE 31-32, and the ninth DuPont factor, the Opposition No. 91241102 - 7 - “variety of goods on which a mark is or is not used (house mark, ‘family’ mark, product mark),” DuPont 177 USPQ at 567. 28 TTABVUE 30-31. 1. Fame of Opposer’s Marks We begin with the fifth DuPont factor, the “fame of the prior mark (sales, advertising, length of use),” DuPont, 177 USPQ at 567, because the “[f]ame of an opposer’s mark, if it exists, plays a ‘dominant role in the process of balancing the DuPont factors.’” Palm Bay Imps. v. Veuve Cliquot Ponsardin Maison Fondee en 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1694 (Fed. Cir. 2005) (quoting Recot, Inc. v. M.C. Becton, 214 F.3d 1322, 54 USPQ2d 1894, 1897 (Fed. Cir. 2000)). “A mark ‘with extensive public recognition and renown deserves and receives more legal protection than an obscure or weak mark.” Omaha Steaks Int’l, Inc. v. Greater Omaha Packing Co., 908 F.3d 1315, 128 USPQ2d 1686, 1689 (Fed. Cir. 2018) (quoting Kenner Parker Toys Inc. v. Rose Art Indus., Inc., 963 F.2d 350, 22 USPQ2d 1453, 1456 (Fed. Cir. 1992)). “Because of the wide latitude of legal protection accorded a famous mark and the dominant role fame plays in the likelihood of confusion analysis, the party asserting fame must clearly prove it.” Weider Publ’ns, LLC v. D & D Beauty Care Co., 109 USPQ2d 1347, 1353 (TTAB 2014). “[L]ikelihood of confusion fame ‘varies along a spectrum from very strong to very weak.’” Joseph Phelps Vineyards, LLC v. Fairmont Holdings, LLC, 857 F.3d 1323, 122 USPQ2d 1733, 1734 (Fed. Cir. 2017) (quoting Palm Bay Imps., 73 USPQ2d at 1694). In placing the pertinent registered W mark on that spectrum, our “applicable viewpoint is that of the relevant market,” not that of the general public. Id. (citing Palm Bay Imps., 73 USPQ2d at 1694 (“Fame for confusion purposes arises as long as Opposition No. 91241102 - 8 - a significant portion of the relevant consuming public . . . recognizes the mark as a source indicator,” and “a mark’s renown within a specific product market is the proper standard.”)). “‘Direct evidence of fame, for example from widespread consumer polls, rarely appears in contests over likelihood of confusion.’” Omaha Steaks, 128 USPQ2d at 1689-90 (quoting Bose Corp. v. QSC Audio Prods., Inc., 293 F.3d 1367, 63 USPQ2d 1303, 1305 (Fed. Cir. 2002)). There is no such evidence in the record here, but “‘the fame of a mark may be measured indirectly, among other things, by the volume of sales and advertising expenditures of the goods traveling under the mark, and by the length of time those indicia of commercial awareness have been evident.’” Id. (quoting Bose, 63 USPQ2d at 1305). Mr. Montgomery testified that the “use of the W mark was specifically designed so consumers could identify and connect with Wrangler branded products,” Montgomery Decl. ¶ 8, and the record establishes that the W mark is typically used together with Opposer’s WRANGLER house mark.7 We reproduce below several historical and more recent representative examples of such use: 7 The converse is not true, however, as the record is replete with examples of the use of the WRANGLER house mark without any accompanying W mark. Opposition No. 91241102 - 9 - Montgomery Decl. ¶ 21; Ex. 16 (23 TTABVUE 112). Opposition No. 91241102 - 10 - Montgomery Decl. ¶ 21; Ex. 16 (23 TTABVUE 151). Opposition No. 91241102 - 11 - Montgomery Decl. ¶ 13; Ex. 11 (22 TTABVUE 111, 113, 127). Opposition No. 91241102 - 12 - Montgomery Decl. ¶ 13; Ex. 11 (22 TTABVUE 115, 126). Montgomery Decl. ¶ 17; Ex. 12 (22 TTABVUE 150 (arrow highlighting supplied by Opposer)). Opposition No. 91241102 - 13 - Montgomery Decl. ¶ 13; Ex. 11 (22 TTABVUE 139 (arrow highlighting supplied by Opposer)). As discussed below, the record leaves little doubt that Opposer’s WRANGLER house mark is very strong for clothing in the United States, but we must assess the strength of Opposer’s W mark separately from the strength of its house mark. See Bose, 63 USPQ2d at 1308 (“those who claim fame for product marks that are used in tandem with a famous house mark can properly be put to tests to assure their entitlement to the benefits of fame for the product marks.”). In Bose, the Federal Circuit found that the opposer’s ACOUSTIC WAVE and WAVE marks for loudspeaker systems were famous separate and apart from the opposer’s BOSE house mark, id. at 1309, which the Board and the applicant had accepted as famous. Id. at 1304. In finding that the Board had erred in reaching the contrary conclusion, the court held that the distinction between uniform coupling of the famous house mark with the product marks and communication to consumers that typically gives significant independent reference to the product apart from the house mark is important, because in the latter instance the consumer has a basis on which to disassociate the product mark from the house mark. Id. at 1307. The court found that it was “not faced with a record on which substantially every reference to the marked product is joined with a reference to the famous house mark,” id. at 1306-07, because “the consumer is presented through the advertising and other promotional material with frequent references to the marked product standing alone and apart from the famous house mark.” Id. at 1307. Opposition No. 91241102 - 14 - Mr. Montgomery testified that Opposer has “consistently employed advertising that calls attention to its iconic W Marks,” and that “[t]aglines such as ‘The W Backs It Up’ and ‘Wremember – the ‘W’ is Silent’ were used to call consumer attention to the W Marks in past advertising,” Montgomery Decl. ¶ 20, but the record here is closer to one in “which substantially every reference to the marked product is joined with a reference to the famous house mark,” Bose, 63 USPQ2d at 1306-07, than to one “with frequent references to the marked product standing alone and apart from the famous house mark.” Id. at 1307. Accordingly, we will put Opposer to the test “to assure [its] entitlement to the benefits of fame for the [W] product mark[ ].” Id. at 1308. To prove the commercial strength of its W marks,8 Opposer cites its long use of the marks; advertising and sales figures; examples of its catalogs and advertisements, including advertisements that call attention to the W marks; celebrity endorsements, media coverage, and Opposer’s presence on social media. 28 TTABVUE 19-20. a. Length and Extent of Use Mr. Montgomery testified that the “Wrangler brand and Wrangler’s iconic ‘W’ mark were first introduced in connection with authentic western jeans in 1947,” Montgomery Decl. ¶ 7, and have been used continuously since then. Montgomery 8 We agree with Opposer that its W marks are conceptually strong. 28 TABVUE 19. The registrations of the pertinent W mark issued on the Principal Register without any requirement of a showing of acquired distinctiveness, and have become incontestable, and the pertinent W mark is thus conclusively presumed to be inherently distinctive for the goods. Tea Bd. of India v. Republic of Tea, Inc., 80 USPQ2d 1881, 1899 (TTAB 2006). Opposition No. 91241102 - 15 - Decl. ¶ 10. He also testified that the use of the W mark has expanded from its initial use on western jeans and work wear, and that Opposer’s “product line featuring W Marks has consistently included denim, casual pants, shorts, woven shirts, knit shirts, boots, jackets, outdoor apparel, hats, and accessories, all for at least the last 40 years.” Montgomery Decl. ¶ 12. The record shows some historical advertising and labels that call attention to the W mark specifically, in the manner of “look for” advertising, see, e.g., Kohler Co. v. Honda Giken Kogyo K.K., 125 USPQ2d 1468, 1516-17 (TTAB 2017): Opposition No. 91241102 - 16 - Opposition No. 91241102 - 17 - Opposition No. 91241102 - 18 - Opposition No. 91241102 - 19 - Montgomery Decl.¶ 21; Ex. 16 (23 TTABVUE 114-15, 149-51, 155, 157-59, 161).9 The record shows extensive subsequent use of the WRANGLER house mark, but relatively less use of the W mark, in product catalogs and advertising in the 1970s, 1980s, and 1990s, and earlier in this century. Montgomery Decl. ¶ 13; Exs. 2-6, 16. The W marks are used more frequently and more prominently in more recent materials, particularly on labels, on the goods themselves, and in social media. Montgomery Decl. ¶¶ 13, 17; Exs. 8-14. For example, variants of the W mark are 9 The Blue Bell advertisement stating “Look for the W on the Pocket” appears to be from 1955, 23 TTABVUE 116, while the advertisement stating that “You have to look for the ‘W’ because it’s silent” appears to be from the May 1966 issue of Ebony magazine. Id. at 161. A 1950 theater program also states in text that “That W on the hip pocket is the hallmark.” Montgomery Decl. ¶ 21; Ex. 16 (23 TTABVUE 139-40). Opposition No. 91241102 - 20 - shown stitched on the back pockets of jeans in 2016 catalogs, Montgomery Decl. ¶ 13; Exs. 7-8 (20 TTABVUE 221, 224; 21 TTABVUE 8, 20, 22-23, 31-32, 147-49, 157, 159, 161), and in a 2019 catalog, Montgomery Decl. ¶ 13; Ex. 10 (22 TTABVUE 9-13), and in the latter there are also references to the “Wrangler® ‘W’ Decorative Logo Stitch on Pockets” and the “‘W’ Stitching on Pockets” of western work shirts and jackets. Montgomery Decl. ¶ 13; Ex. 10 (22 TTABVUE 14, 16, 25). We depict below an additional and different use of the W mark on jeans. Montgomery Decl. ¶ 13; Ex. 11 (22 TTABVUE 135): Mr. Montgomery also testified that “Wrangler’s products are also widely available to ordinary consumers both online and through a network of nearly 900 retail outlets around the world, including mass retailers such as Target, Walmart, K-Mart, JCPenney, Kohl’s, and Sears.” Montgomery Decl. ¶ 25; Ex. 17. The extent of retail availability of Opposer’s goods is impressive, cf. Omaha Steaks, 128 USPQ2d at 1691 (fame of opposer’s OMAHA STEAKS mark shown in part by sales through 75 stores in 25 states), but the retailer webpages in the record show exposure of, and reference Opposition No. 91241102 - 21 - to, the WRANGLER house mark, not the W mark. Montgomery Decl. ¶ 25; Ex. 17 (23 TTABVUE 192-224). b. Sales and Advertising Figures Mr. Montgomery testified that Opposer “enjoys substantial sales of products bearing its Marks,” Montgomery Decl. ¶ 27, citing “a summary of Annual Sales and Advertising Expenditures that relate to Wrangler’s branded clothing and accessories.” Montgomery Decl. ¶ 28; Ex. 18. Exhibit 18 covers the years from 2008- 2018 and sets forth “Worldwide Sales” and “Worldwide Advertising” figures for “WRANGLER (All Brands).” Montgomery Decl. ¶ 28; Ex. 18 (23 TTABVUE 226). The sales and advertising figures, which were redacted as confidential under the Board’s Standard Protective Order, are very substantial, with annual worldwide sales well in excess of one billion dollars,10 and annual worldwide advertising expenditures well into eight figures. Mr. Montgomery testified that “Wrangler branded products, including those bearing the W Marks, are widely available around the world,” Montgomery Decl. ¶ 23, but he did not distinguish between US and non- US sales and advertising, or between sales and advertising of goods bearing the W marks and sales and advertising of goods bearing Opposer’s other marks.11 The 10 We discuss the figures in general terms to give the parties, readers of this opinion, and any reviewing court an explanation of the basis for our finding as to the strength of Opposer’s W mark. See, e.g., Noble House Home Furnishings, LLC v. Floorco Enters., LLC, 118 USPQ2d 1413, 1416 n.21 (TTAB 2016). In that regard, we note that an unredacted page from Exhibit 1 to the Montgomery Declaration captioned “About the Brand” and “Wrangler® at a Glance” states that 2018 Revenues were “$1.7B.” Montgomery Decl. ¶ 7; Ex. 1 (20 TTABVUE 42). 11 The record shows that in addition to its WRANGLER and W marks, Opposer uses numerous product marks. Examples from Opposer’s 2016 and 2019 catalogs include AURA, Q-BABY, CASH, SHILOH, WILLOW, THE ULTIMATE RIDING JEAN®, AS REAL AS WRANGLER®, PREMIUM PATCH®, BOOTY UP®, ROCK 47®, ALL AROUND BABY®, Opposition No. 91241102 - 22 - probative value of the worldwide sales and advertising figures for “All Brands” as proof of the strength of the W mark in the United States is reduced significantly because of the aggregate and undifferentiated nature of the reported figures. Cf. Sunnen Prods. Co. v. Sunex Int’l Inc., 1 USPQ2d 1744, 1748 n.16 (TTAB 1987) (fame of opposer’s mark not established by trial testimony that was “deficient in that it does not indicate under what mark the foreign or domestic sales were made. (The question was not asked.).”); Olin Corp. v. Hydrotreat, Inc., 210 USPQ 63, 68 (TTAB 1981) (criticizing testimony that did not distinguish between opposer’s domestic and foreign sales and advertising). c. Celebrity Endorsements and Collaborative Promotions Mr. Montgomery testified that Opposer “has consistently used brand ambassadors to promote its products and marks to the public,” Montgomery Decl. ¶ 18, and that “[e]arly examples included western rodeo legends, such as Jim Shoulders,” while more recent brand ambassadors have included “musicians George Strait and Jason Aldean, NASCAR legends Dale Earnhardt, Sr. and Dale Earnhardt, Jr., and NFL stars Brett Favre and Drew Brees.” Montgomery Decl. ¶ 18. The record shows that Opposer’s celebrity endorsers have primarily promoted the WRANGLER house mark and some of Opposer’s other marks, not the W mark. In a 2016 Wrangler catalog, George Strait’s name, photograph, and signature are used COWBOY CUT®, COOL VANTAGE, 20X®, 41 XTILITY®, SILVER EDITION®, RIATA®, WRANCHER®, RETRO®, PAINTED DESERT®, and DENIM BY WRANGLER®. Montgomery Decl. ¶ 13; Ex. 8 (21 TTABVUE 14-19, 20-26, 28-30, 32-34, 39-63, 94, 108-110, 112, 119, 124-30, 141, 144-46, 166, 170, 190, 200, 204, 227, 253, 260); Ex. 10 (22 TTABVUE 7-13, 17, 32-38, 77-82, 84-93). Opposition No. 91241102 - 23 - with the WRANGLER house mark and the GEORGE STRAIT COWBOY CUT® mark, and for goods in several George Strait “Collections,” Montgomery Decl. ¶ 13; Ex. 8 (21 TTABVUE 142-43, 177-88), but not with the W mark. He is similarly featured on Opposer’s Instagram account.12 Montgomery Decl. ¶ 17; Ex. 14 (23 TTABVUE 60). In a 2017 Wrangler catalog, Brett Favre’s photograph and signature are used in connection with the WRANGLER house mark, not the W mark. Montgomery Decl. ¶ 13; Ex. 9 (21 TTABVUE 309-10, 315-16, 321-22). Pages from Opposer’s Twitter and Instagram accounts use Dale Earnhardt Jr.’s name, photograph, and signature to promote Wrangler sunglasses with no mention of the W mark. Montgomery Decl. ¶ 17; Exs. 13-14 (23 TTABVUE 28, 55). A “celebrity” advertisement under the WRANGLER house mark on the JCPenney website shows several celebrity endorsers, but does not mention the W mark: 12 One of Opposer’s Twitter accounts, @WranglerWestern, contains a tweet that reads “[i]n the words of King @GeorgeStrait “How ‘bout them cowgirls!” with the hashtags “#Wrangler ButtsDriveUsNuts and #LongLiveCowgirls” |W|W|” beneath a photograph showing the rear ends of a number of women wearing jeans with the W mark stitched on the back pockets. Montgomery Decl. ¶ 17; Ex. 13 (23 TTABVUE 2, 23). Opposition No. 91241102 - 24 - Montgomery Decl. ¶ 25; Ex. 17 (23 TTABVUE 196). Opposer’s collaborations with other brands similarly have also primarily featured the WRANGLER house mark, not the W mark, Montgomery Decl. ¶¶ 13, 19; Ex. 8 (21 TTABVUE 206-08 (FORD, RAM, and JACK DANIEL’S brands)); Ex. 15 (23 TTABVUE 82-106), although one collaboration on the website of Urban Outfitters displays an advertisement stating that “You have to look for the ‘W’.” Montgomery Decl. ¶ 19; Ex. 15 (23 TTABVUE 89). d. Media Coverage Opposer made of record 15 articles, 12 of which Opposer claims “are relevant to demonstrate the strength, notoriety, and/or consumer recognition of Opposer and/or Opposer’s marks.” 19 TTABVUE 3. Only five of the articles refer to the W mark.13 An article in the June 17, 2013 edition of Business of Fashion, which discusses the denim jeans market in India, states that the “signature ‘W’ letter embroidered on the back pockets has become one of the most recognizable symbols in the word of denim.” Id. at 12-13. This characterization of the W mark “can only be considered as the author’s view,” Blue Man Productions, Inc. v. Tarmann, 75 USPQ2d 1811, 1815 (TTAB 2005), rev’d on other grounds, 2008 WL 6862402 (D.D.C. April 3, 2008), not as evidence that the mark actually “has become one of the most recognizable symbols in the world of denim,” and the record contains no information about the circulation and 13 As with most of the other evidence in the record, a number of the articles are probative of the fame of the WRANGLER house mark. For example, a March 12, 2014 Women’s Wear Daily article lists Wrangler as the second most effective television advertising brand, 19 TTABVUE 6, while a June 30, 2014 Women’s Wear Daily article ranks Wrangler as the 18th most patriotic brand in the United States in 2014. Id. at 9. Opposition No. 91241102 - 25 - exposure of this publication that would enable us to assess the extent to which the article is “competent to show, on [its] face, matters of relevance to trademark claims (such as public perceptions), regardless of whether the statements are true or false.” Harry Winston, Inc. v. Bruce Winston Gem Corp., 111 USPQ2d 1419, 1428 (TTAB 2014). Two of the other four articles discuss product or line extensions on which the “W” mark will appear,14 and the other two articles discuss the crowd at the 2007 Wrangler National Finals Rodeo in Las Vegas,15 and a story that Opposer’s predecessor in interest adopted the “W” mark in response to an infringement claim from a competitor.16 e. Social Media and Other Evidence The record, including Opposer’s social media uses, shows some standalone uses of the W marks, or uses where the W mark is more prominent than, or equal in 14 A January 5, 2012 article in Business of Fashion states that “Wrangler is introducing the ‘W’ logo in crystals on the back pocket or on a strip of black sequins edging it,” 19 TTABVUE 21, and a July 30, 1987 article in the Daily News Record states that following acquisition of Wrangler brand by VF Corporation, a new American Hero line will be “the first non-western jean that will have Wrangler’s ‘W’ stitched on the back pocket” and that “[o]ther Wrangler non-western style jeans, such as American Legend and Wrangler 909, do not have the ‘W’ marking.” Id. at 67. 15 A June 24, 2007 article in The New York Times states that at the Wrangler National Finals Rodeo in Las Vegas, there were “thousands of backsides stitched with the Wrangler patch.” Id. at 51. 16 An October 14, 2007 article in the News & Record (Greensboro, North Carolina) discusses the history and success of the Wrangler brand, and states that after Levi Strauss officials complained about the stitching on Wrangler jeans, which the article states “looked suspiciously like the symbol used by Levi’s,” “Wrangler switched to W’s on the back pockets.” Id. at 44. Opposition No. 91241102 - 26 - prominence to, the WRANGLER house mark. Two examples of the latter are displayed below: Montgomery Decl. ¶ 17; Ex. 14 (23 TTABVUE 56). Montgomery Decl. ¶ 17; Ex. 14 (23 TTABVUE 79). These are the exceptions, however, not the rule, and the record shows much more frequent use of the WRANGLER house Opposition No. 91241102 - 27 - mark alone, or in a combination with the W mark where the house mark is more prominent. f. Summary The record provides considerable support for a claim that the WRANGLER house mark is famous, but for the several reasons discussed above, it falls short of showing that Opposer has clearly proven that it is entitled to “the benefits of fame for the [W] product mark[ ].” Bose, 63 USPQ2d at 1308. Opposer’s demonstrated long use of the W mark, and some historical and more recent calling of attention to the W mark in Opposer’s advertising and other materials, are insufficient to show that the W mark is famous in the United States separate and apart from Opposer’s WRANGLER house mark. Opposer’s large aggregate worldwide sales and advertising figures do not distinguish between the United States and foreign countries, or between the W mark and the other marks in Opposer’s sizeable portfolio, there is little, if any, association of Opposer’s brand ambassadors with the W marks, and there is very modest recent media coverage of the W marks. On this record, we can only place the W mark slightly into the “strong” portion of the “spectrum from very strong to very weak,” Joseph Phelps Vineyards, 122 USPQ2d at 1734, and we accord the W mark somewhat more than “the normal scope of protection to which inherently distinctive marks are entitled.” Bell’s Brewery, Inc. v. Innovation Brewing, 125 USPQ2d 1340, 1347 (TTAB 2017). We find that the fifth DuPont factor slightly supports a finding of a likelihood of confusion. Opposition No. 91241102 - 28 - 2. Similarity or Dissimilarity of the Goods and Channels of Trade The second DuPont factor “considers ‘[t]he similarity or dissimilarity and nature of the goods or services as described in an application or registration,’” while the third DuPont factor considers “the similarity or dissimilarity of established, likely-to- continue trade channels.” In re Detroit Athletic Co., 903 F.3d 1297, 128 USPQ2d 1047, 1051 (Fed. Cir. 2018) (quoting DuPont, 177 USPQ at 567). Our analysis under these factors is based on the identifications of the goods in Applicant’s application and in Opposer’s two registrations. Id.; Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1161-63 (Fed. Cir. 2014). It is “not necessary that the goods be identical or even competitive to support a finding of a likelihood of confusion.” Coach Servs. Inc. v. Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1722 (Fed. Cir. 2012) (quoting 7-Eleven, Inc. v. Wechsler, 83 USPQ2d 1715, 1724 (TTAB 2007)). “[L]ikelihood of confusion can be found ‘if the respective goods are related in some manner and/or if the circumstances surrounding their marketing are such that they could give rise to the mistaken belief that they emanate from the same source.’” Id. (quoting 7-Eleven, 83 USPQ2d at 1724). We need not consider the relatedness of each good in Applicant’s application to each good in the pertinent registrations. “[I]t is sufficient for finding a likelihood of confusion if relatedness is established for any item encompassed by the identification of goods within a particular class in the application.” In re Aquamar, Inc., 115 USPQ2d 1122, 1126 n.5 (TTAB 2015) (citing Tuxedo Monopoly, Inc. v. Gen. Mills Fun Grp., 648 F.2d 1335, 209 USPQ 986, 988 (CCPA 1981)). Opposition No. 91241102 - 29 - The goods identified in the application are “Bottoms as clothing; Footwear; Headwear; Tops as clothing.” The goods identified in Registration No. 4656517 include “tops,” and the goods identified in Registration No. 3985886 are “bottoms.” The goods broadly identified as “tops” in Registration No. 4656517 encompass the goods more narrowly described as “tops as clothing” in the application, and the goods broadly identified as “bottoms” in Registration No. 3985886 encompass the goods more narrowly described as “bottoms as clothing” in the application, and those sets of goods are legally identical. In re Medline Indus., Inc., 2020 USPQ2d 10237, *4 (TTAB 2020). The “second DuPont factor thus strongly supports a finding of a likelihood of confusion.” Id. “Because the goods are legally identical, and there are no limitations in the respective identifications as to the channels of trade or classes of consumers, we must also presume that the channels of trade and classes of consumers are identical.” Id. “The third DuPont factor thus also strongly supports a finding of a likelihood of confusion.” Id. 3. Similarity or Dissimilarity of the Marks Under the first DuPont factor, we consider “the similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation and commercial impression.” Palm Bay Imps., 73 USPQ2d at 1691 (quoting DuPont, 177 USPQ at 567). “Similarity in any one of these elements may be sufficient to find the marks confusingly similar.” In re Inn at St. John’s, 126 USPQ2d 1742, 1746 (TTAB 2018) (quoting In re Davia, 110 USPQ2d 1810, 1812 (TTAB 2014)), aff’d mem., 777 F. App’x 516 (Fed. Cir. Sept. 13, 2019). “[W]here the question of likelihood of confusion to be Opposition No. 91241102 - 30 - decided involves design marks which are not capable of being spoken, the question of the similarity of the marks must be determined primarily on the basis of their visual similarity,” In re Vienna Sausage Mfg. Co., 16 USPQ2d 2044, 2047 (TTAB 1990), but here the design marks consist of or contain letters that can be verbalized, so both their visual and aural similarity must be considered. The proper test regarding similarity “is not a side-by-side comparison of the marks, but instead whether the marks are sufficiently similar in terms of their commercial impression such that persons who encounter the marks would be likely to assume a connection between the parties.” Cai, 127 USPQ2d at 1801 (quoting Coach Servs., 101 USPQ2d at 1721 (internal quotation marks and citation omitted)). “The proper perspective on which the analysis must focus is on the recollection of the average customer, who retains a general rather than specific impression of marks.” In re i.am.symbolic, llc, 127 USPQ2d 1627, 1630 (TTAB 2018) (citations omitted). Because the goods in Applicant’s application and in Opposer’s registrations are legally identical in part, the degree of similarity between the marks required to find a likelihood of confusion is reduced. See, e.g., In re Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1912 (Fed. Cir. 2012); Mighty Leaf Tea, 94 USPQ2d at 1260; Century 21 Real Estate Corp. v. Century Life of Am., 970 F.2d 874, 23 USPQ2d 1698, 1700 (Fed. Cir. 1992); Double Coin Holdings Ltd. v. Tru Dev., 2019 USPQ2d 377409, *6 (TTAB 2019). Opposer addresses only the marks’ similarity in appearance, 28 TTABVUE 22-28, arguing that “Applicant’s Mark and Wrangler’s W Marks share such visual Opposition No. 91241102 - 31 - similarities that the overall commercial impressions created by the parties’ respective marks are nearly identical or so highly similar that an ordinary consumer would likely assume the marks emanate from the same or related source.” Id. at 22. Opposer specifically argues that “there is nothing particularly unique about the shape of the heart or the W in Applicant’s Mark. The lines of the W are simple and the angles are sharp. The heart element is likewise plain.” Id. Opposer further argues that it “has also consistently incorporated a wide variety of other W designs on the back pocket of its jeans, including designs in gold stitching that substantially reflect the design of the ‘W’ in Applicant’s mark,” id. at 23; that it “has also incorporated gold and yellow-gold features, similar to the color claimed by Applicant, in connection with its W Marks,” id. at 25; that it “has also consistently incorporated a wide variety of designs that feature the W Mark within simple geometric shapes,” id.; and that it has “also used heart-shaped design features in connection with products bearing its W Marks and Wrangler Mark.” Id. at 27. Opposer concludes that “[a]s consumers have long become accustomed to seeing multiple designs used for Wrangler’s W Marks, it would not be surprising for a customer to view the design of Applicant’s Mark to be simply a varied or new version of Wrangler’s long-standing line of W Marks – whether in or out of a heart design.” Id. at 27-28. As noted above, the involved marks can verbalized, and when they are, they will be verbalized identically as the letter “W.” Although Applicant’s mark also includes a heart design, a “ design is viewed, not spoken,” In re Electrolyte Labs., Inc. 913 F.2d Opposition No. 91241102 - 32 - 930, 16 USPQ2d 1239, 1240 (Fed. Cir. 1990), and the heart design that surrounds the letter W in Applicant’s mark “does not create a separate commercial impression but serves merely as a carrier for the [letter].” Joel Gott Wines, LLC v. Rehoboth Von Gott, Inc., 107 USPQ2d 1424, 1430 (TTAB 2013). Cf. D.C. One Wholesaler, Inc. v. Chien, 120 USPQ2d 1710, 1716 (TTAB 2016) (mark I ♥ DC would be understood as “an expression of enthusiasm, affection or affiliation with respect to the city of Washington, D.C.”). We find that the marks are identical in sound. With respect to appearance, there are slight differences in the way in which the respective W letters are displayed, and Applicant’s mark has a design element and a color that are absent from Opposer’s mark. These differences in appearance between the marks are noticeable when the marks are seen together, but the marks “must be considered . . . in light of the fallibility of human memory’ and ‘not on the basis of side-by-side comparison.’” In re St. Helena Hosp., 774 F.3d 747, 113 USPQ2d 1082, 1085 (Fed. Cir. 2014) (quoting San Fernando Elec. Mfg. Co. v. JFD Elecs. Components Corp., 565 F.2d 683, 196 USPQ 1, 3 (CCPA 1977)). The record is devoid of evidence of any third-party uses or registrations of W-formative marks for clothing, and a consumer with a “general rather than specific impression” of Opposer’s W mark, i.am.symbolic, 127 USPQ2d at 1630, who then encounters Applicant’s mark used on identical goods is not likely to distinguish the two because of the stylization of Applicant’s “W” or because Applicant’s mark contains a design and a color, particularly where the record shows that Opposer has employed various “carriers” for Opposition No. 91241102 - 33 - its W marks. Montgomery Decl. ¶¶ 30-31. We find that the marks are quite similar in appearance. Because the marks are identical in sound and quite similar in appearance, the first DuPont factor strongly supports a finding of a likelihood of confusion. 4. Other DuPont Factors As noted above, Opposer also invokes the fourth and eighth DuPont factors, apparently in anticipation of contrary arguments from Applicant, as well as the ninth factor. With respect to the fourth factor, Opposer argues that the involved goods “are ordinary clothing items” that “are not going to be purchased with anything more than ordinary care by ordinary consumers,” and that “this factor also weighs in favor of finding a likelihood of confusion.” 28 TTABVUE 30. Opposer further argues that in previous cases, the “Board has already determined that ordinary clothing items are the types of products that ordinary consumers would frequently purchase with nothing more than ordinary care,” id., but Opposer offers no evidence or argument that the identified “tops” and “bottoms” include goods that are “relatively low-priced and subject to impulse buying.” Sock It to Me, Inc. v. Fan, 2020 USPQ2d 10611, *8 (TTAB 2020) (finding that goods identified as “socks” include such low-priced goods purchased on impulse). We find that the fourth DuPont factor is neutral in our analysis of the likelihood of confusion. The eighth du Pont factor, the length of time during and conditions under which there has been concurrent use without evidence of actual confusion, “requires us to look at actual market conditions, to the extent there is evidence of such conditions of record.” In re Guild Mortg. Co., 2020 USPQ2d 10279, *6 (TTAB 2020) (quotation Opposition No. 91241102 - 34 - and quotation marks omitted). Opposer claims that “there is no evidence that Applicant’s Mark and Wrangler’s W Marks have coexisted in the marketplace at all, let alone for any appreciable or significant period of time that would have allowed evidence of actual confusion to come to light” and that “it is not surprising there is no evidence of actual confusion.” 28 TTABVUE 32. Opposer claims that “this factor is neutral, or favors” a finding of a likelihood of confusion. Id. Because there is no evidence of actual market conditions of record, we find that the eighth DuPont factor is neutral in our analysis of the likelihood of confusion. “The ninth DuPont factor takes into account the variety of goods on which a mark is or is not used.” DeVivo v. Ortiz, 2020 USPQ2d 10153, *14 (TTAB 2020). “If a party in the position of plaintiff uses its mark on a wide variety of goods, then purchasers are more likely to view a defendant’s related good under a similar mark as an extension of the plaintiff’s line.” Id. Opposer argues that this factor favors a finding of a likelihood of confusion because Opposer “has long sold a wide ranging line of clothing and accessories, including pants, shirts, tops, hats, and shoes” and it would be “common for [Opposer] to incorporate any number of its W Marks on its clothing designs, and for consumers to expect to see such . . . W Marks.” 28 TTABVUE 31. Opposer does not provide evidence of its actual use of the W marks with a sufficiently “wide ranging line of clothing and accessories” to persuade us that “Opposer has used [its] mark on a variety of goods and that this DuPont factor favors a finding of likelihood of confusion.” DeVivo, 2020 USPQ2d 10153 at *14 (finding that the opposer’s use of her mark on children’s books, T-shirts, tank tops, sweatshirts, Opposition No. 91241102 - 35 - hoodies, coffee mugs, stickers, postcards, greeting cards, tote bags and informational and educational services in the STEM fields did not show that the ninth DuPont factor favored her). We find that this DuPont factor is neutral in our analysis of the likelihood of confusion. 5. Conclusion The first, second, and third DuPont factors strongly support a finding of a likelihood of confusion, as the goods, channels of trade, and classes of customers are identical, and the marks are identical in sound and quite similar in appearance, and the fifth DuPont factor slightly supports such a finding. The other DuPont factors are neutral. We find, on the basis of the record as a whole, that Opposer proved by a preponderance of the evidence that confusion is likely. Decision: The opposition is sustained.

Wrangler Apparel Corp. v. Kevin Barnett