The NASDAQ Stock Market, Inc. v. Antarctica, S.r.l.

This Opinion is Citable as

Precedent of the TTAB

Mailed: Paper No. 46

June 30, 2003 GFR

UNITED STATES PATENT AND TRADEMARK OFFICE

_____

Trademark Trial and Appeal Board

______

The NASDAQ Stock Market, Inc.

v.

Antartica, S.r.l.

_____

Opposition No. 91121204

to application Serial No. 75/546,122

filed on September 1, 1998

_____

Karol A. Kepchar and Chad T. O’Hara of Akin, Gump, Strauss,

Hauer & Feld, LLP for The NASDAQ Stock Market, Inc.

Anthony S. Cannatella and Alessandro Saracina of Pavia &

Harcourt LLP for Antartica, S.r.l.

______

Before Seeherman, Quinn and Rogers,

Administrative Trademark Judges.

Opinion by Rogers, Administrative Trademark Judge:

Antartica, S.r.l., a corporation of Italy, has applied

to register the mark set forth below, for the various goods

also set forth below.

Opposition No. 91121204

International Class 9: safety helmets for bicycling,

motorcycling, and skiing;

International Class 25: sport clothing, namely, shirts,

shorts, visors, hats, wind resistant jackets and pants, gym

shorts, sweat shorts, sweat pants, sweatshirts, sweat socks,

ski boots, apres-ski shoes and sports shoes;

International Class 28: sports goggles for use in swimming,

skiing, motorcycling, motorcross, bicycling, basketball,

running, squash, and racquetball; protective padding for

playing soccer, football, skiing, and bicycling; skis; ski

poles; snowboards; ski wax; ski bindings; stationary

exercise bicycles; exercise weights; exercise benches;

stationary cross-country ski machines; exercise treadmills;

stair-stepping machines; exercise mats; and anti-vibration

plates for skis and ski bindings.

The application is based on Section 44 of the Lanham

Act, 15 U.S.C. §1126 and claims a priority filing date of

July 14, 1998, based on the filing, on that date, of an

Italian application to register the mark. An Italian

registration for the mark has issued. A translation of the

description of the mark in the Italian registration reads:

“The Trademark consists of [the] word NASDAQ in block

letters with tridimensional effect in grey colour, within a

stylized red griffon.” The involved application to register

the mark in the United States does not include a translation

statement or description of any kind.1

1

In a motion made in this opposition to amend the mark, and

subsequently withdrawn, applicant described the mark as

consisting “of two elements: the term ‘NASDAQ’ and an

accompanying design element consisting of the wings of a bird.”

Applicant also explained that “the term ‘NASDAQ’ is somewhat

unique” and is an acronym for the Italian phrase “Nuovi Articoli

Sportivi Di Alta Qualita,” which applicant translates as either

“new high quality sporting goods” (answer, ¶ 29) or “new sports

products of high quality” (brief, p. 1). Further, applicant

2

Opposition No. 91121204

THE PLEADINGS

The NASDAQ Stock Market, Inc. has opposed registration

of applicant’s mark, asserting that it has operated, and

continues to operate, The Nasdaq Stock Market; that opposer

and its predecessors in interest have used NASDAQ “as a mark

and a component of marks for gathering, processing and

providing securities information to the financial industry

and to the public and securities trading support services in

connection with The Nasdaq Stock Market continuously in

United States commerce since 1968” and continues to use

NASDAQ “as a mark and component of marks for such services

in the United States and elsewhere”; that “Nasdaq” is the

distinctive part of opposer’s trade name, which has been in

continuous use in U.S. commerce since 1992, and that

opposer, the general public, and members of the financial

industry and media refer to opposer as “Nasdaq”; that

listings for the “Nasdaq” stock market appear daily in

publications and electronic media in the United States and

throughout the world, and that opposer has promoted and

advertised its “NASDAQ”2 services throughout the world; and

stated that it considered NASDAQ unique for two reasons: first,

“Applicant was unaware that the term ‘NASDAQ’ had ever been

employed by anyone else”; second, “because in the Italian

language there are no words that can end with the letter ‘q,’

Applicant believed that the term ‘NASDAQ’ would be particularly

distinctive….”

2

Opposer appears to utilize “Nasdaq” when discussing that term

as an element of its trade name and “NASDAQ” when discussing that

term as its trademark. We shall do the same.

3

Opposition No. 91121204

that its websites www.nasdaq.com, www.nasdaqtrader.com, and

www.nasdaqnews.com provide stock quotes, news reports and

other financial information 24 hours a day, with its primary

website, www.nasdaq.com being “the world’s second most

popular financial website.”

Opposer also asserts that its promotional activities

include the distribution and sale, by it or its licensees,

of t-shirts, hats, jackets, golf balls, footballs,

basketballs and baseballs bearing the “NASDAQ” mark; that

its mark is famous “around the world” and well-known among

the general public and within the financial industry; that

its mark is a coined term with no descriptive or generic

significance and, therefore, inherently distinctive; and

that opposer has obtained a registration for NASDAQ on the

Principal Register for “listing of securities for quotation

for sale or information purposes” which is “valid,

subsisting, incontestable and renewed.”3

Opposer asserts that, in view of its registration,

there is no issue as to priority in this case. In addition,

opposer asserts that the verbal portion of applicant’s mark

is identical in sound, appearance and connotation to

opposer’s name and mark; that neither party’s mark has

denotative meaning; that the design element in applicant’s

3

Registration No. 922,973, issued October 26, 1971, first

renewal term began October 26, 1991, second renewal term began

October 26, 2001.

4

Opposition No. 91121204

mark is insufficient to distinguish the parties’ marks; and

that the marks are confusingly similar in their overall

commercial impressions. Opposer asserts that there are

overlapping classes of purchasers from the general public

and that those familiar with opposer and its services and

ancillary goods would be likely to believe in error that

applicant’s goods are “sponsored, licensed or approved by”

opposer. Thus, opposer asserts there exists a likelihood of

confusion among consumers.

Finally, opposer asserts that its mark became famous

long prior to the filing date of applicant’s application,

and that use of applicant’s mark “will diminish and dilute

the distinctive quality of Opposer’s federally-registered

‘NASDAQ’ mark….”

Applicant, by its answer to the notice of opposition,

admits that opposer operates The Nasdaq Stock Market; that

listings for that stock market “appear daily in newspapers

in the United States”; that the websites opposer claims to

operate in fact exist; and that it filed the involved

application and that both the filing date of the application

by opposer to register NASDAQ and the issuance date of the

registration based on that application predate the filing

date of applicant’s application. Applicant also admits that

it has not yet used its mark in the United States and that

both parties promote their goods and services over the

5

Opposition No. 91121204

Internet.4 Otherwise, applicant has expressly or

effectively denied the allegations of the Notice of

Opposition.

Captioned as affirmative defenses are the following

allegations: that “NASDAQ” in applicant’s mark “is an

acronym” for “Nuovi Articoli Sportivi Di Alta Qualita”

(emphasis in original) which, in English, means “new high

quality sporting goods”; that opposer’s pleaded registration

does not encompass either the “ancillary goods” referred to

in the notice of opposition or the goods listed in

applicant’s application and, therefore, “Opposer does not

have the right to oppose Applicant’s use of the Mark or the

term ‘NASDAQ’ in connection with such goods and services”;

and that opposer is barred by the equitable doctrines of

laches, estoppel and/or acquiescence from opposing the

involved application because opposer has known of

applicant’s use of the mark since at least as early as 1998

and “Applicant owns several existing registrations for the

same (or substantially the same) mark for use in connection

with the same (or substantially the same) goods and

services.”

4

Applicant also admitted that copies of certain materials were

attached to the Notice of Opposition. This does not, however,

stand as an admission of the authenticity of any of these

materials and thus, the materials did not, by virtue of the

admission, become part of the record. See 37 C.F.R. §2.122(c)

and discussion in TBMP Section 705.01.

6

Opposition No. 91121204

Applicant’s self-titled affirmative defenses are either

mere amplifications of the reasons why applicant believes

the opposition should be dismissed or, to the extent they

may be properly cognizable affirmative defenses, they were

not pursued and have not been discussed in the briefs.

Accordingly, any properly cognizable affirmative defenses,5

i.e., laches, estoppel and acquiescence, are deemed waived

and will not be further discussed.

THE RECORD

The record includes opposer’s notices of reliance on

its pleaded registration; on applicant’s responses and

supplemental responses to opposer’s requests for

production6; on applicant’s responses to opposer’s first and

5

To the extent that applicant intended to assert a Morehouse

defense [Morehouse Manufacturing Corp. v. J. Strickland and Co.,

407 F2d 881, 160 USPQ 715 (CCPA 1969)] by its reference to its

“existing registrations,” which we presume are registrations

issued in countries other than the United States, we note that a

Morehouse defense may not be based on ownership of registrations

outside the United States. In addition, insofar as applicant has

admitted that it has not used its mark in the United States,

applicant’s assertion of “laches, acquiescence and estoppel”

would certainly appear to be inappropriate.

6

It does not appear that applicant actually produced any

documents in response to opposer’s document requests. The notice

of reliance states that opposer is relying on (1) responses to

many requests that state that there are no responsive documents

and (2) a declaration furnished as a supplemental response, by

which the declarant states that some documents already produced

are responsive to certain interrogatories and document requests

and that no documents exist that are responsive to other

requests. We read declarant’s references to previously produced

documents as references to documents produced in response to

interrogatories under Fed. R. Civ. P. 33(d).

It is well-settled that documents produced in response to

document requests may not be made of record by notice of

reliance, unless otherwise qualified for introduction by such a

7

Opposition No. 91121204

second set of interrogatories and documents produced

pursuant to Fed. R. Civ. P. 33(d) in lieu of responses; on

excerpts from printed publications; on applicant’s responses

to opposer’s first and second set of requests for admission;

on certain specified excerpts of the discovery deposition of

John F. Jacobs, a non-party witness testifying as vice

president of Reliable Racing Supply, Inc. (referred to by

both parties and hereafter as “Reliable dep.”); and a

supplemental notice of reliance on printed publications.

Opposer also took the testimony, during its main testimony

period, of John L. Jacobs, a vice president of opposer, and

of Anahi Pilarz, a manager in opposer’s marketing

department.

Applicant filed a notice of reliance on opposer’s

responses to interrogatories, including documents provided

under Fed. R. Civ. P. 33(d). Applicant also, during its

testimony period, took the testimony of William G. Shaw, a

non-party witness, and a former chairman of an invitational

skiing competition that has been sponsored by opposer.

notice. See 37 C.F.R. §2.120(j)(3)(ii). The rule, however,

states that a party “which has obtained documents from another

party … may not make the documents of record by notice of

reliance alone….” It does not prohibit introduction of a

response to a request for production that states that no

responsive documents exist. In any event, neither party

discusses the apparent absence of particular classes of documents

in its brief and the “non-production” has had no bearing on our

decision.

8

Opposition No. 91121204

During the rebuttal trial period, opposer filed a

notice of reliance on its supplemental responses to

applicant’s interrogatories, under 37 C.F.R. § 2.120(j)(5).

After rebuttal closed, opposer filed a request to

substitute an “official copy” of a document previously

submitted with one of opposer’s timely-filed notices of

reliance; and a copy of its requests for admission from

applicant, the responses to which had been included with one

of opposer’s timely-filed notices of reliance. Applicant

has not objected and we accept each proffer.

Prior to briefing, opposer filed the transcripts and

exhibits of the testimony depositions of John L. Jacobs and

Anahi Pilarz and exhibits 1-41. Applicant, however, did not

file the transcript of the testimony deposition of its

witness William Shaw. Opposer submitted a copy of that

transcript with its reply brief.7 A party cannot avoid the

consideration of testimony it has taken by failing to submit

it to the Board. 37 C.F.R. §2.123(h). Although it was

applicant’s responsibility to file the testimony deposition,

in view of opposer’s submission of the testimony, we need

7

Opposer complains that applicant, apart from failing to file

the transcript, did not arrange for its correction and signature

by the witness. Nonetheless, correction and signature are

technical objections to the transcript which should have been

raised following its receipt and are considered to have been

waived by opposer.

9

Opposition No. 91121204

not insist on applicant’s filing of a copy at this point.

The Shaw testimony has been considered.

In regard to the Reliable discovery deposition, we

approve the parties’ pre-trial stipulation “to introduce as

evidence” the deposition and their agreement that “any

portion thereof may be introduced into evidence by either

party for any purpose.” We agree, however, with opposer’s

argument, set out in its reply brief on the case, that

applicant, having failed to notice its reliance on any

additional portions of the deposition, made improper

references thereto in its discussion of the Reliable

deposition in its brief. Accordingly, except to the extent

that applicant has discussed excerpts already introduced by

opposer, we have not considered those portions of the

Reliable deposition discussed by applicant in its brief.

Neither party renewed, in any brief, objections

interposed during the taking of testimony. Therefore, any

such objections are deemed waived. Further, we note that we

have credited testimony, exhibits, and materials submitted

with notices of reliance with only whatever probative value

is appropriate, even in the absence of objections.

THE PARTIES

Applicant

Applicant, not having taken any testimony from its own

officers, board members, employees or the like, has offered

10

Opposition No. 91121204

no direct testimony concerning its activities and

background. In its brief, applicant asserts that it “is a

well-known Italian company that has, since 1996, been

engaged primarily in the research, manufacture and

distribution of certain high-quality ‘technical’ athletic

gear.” Brief, p. 1.

Applicant submitted two product catalogues in lieu of a

response to opposer’s interrogatory no. 4, which requested

applicant to identify “each of the products in connection

with which Applicant’s ‘NASDAQ’ mark is used.”8 One

catalogue features the mark NASDAQ as a term standing alone

and in conjunction with a design different from that in the

mark in the involved application. This catalogue is

entirely in Italian, and no translation has been submitted.

Thus, it is of limited probative value. However, we note

that on the cover overlaying the term NASDAQ, the catalogue

displays the phrase “Nuovi Articoli Sportivi Di Alta

Qualita.” The goods featured in the catalogue appear to be

8

Because we do not have a copy of opposer’s interrogatories as

originally served on applicant, we do not have the instructions

and definitions. Thus, we do not know the definition of

“Applicant’s ‘NASDAQ’ mark.” Because applicant’s response refers

to catalogues that show not the mark in the involved application

but, rather, the term NASDAQ alone and NASDAQ with a different

design (specifically, the NASDAQ and design mark that applicant

attempted to substitute for the mark in the involved

application), we have considered references to “Applicant’s

‘NASDAQ’ mark” in discovery requests and responses to include any

mark consisting in whole or in part of the term NASDAQ. Of

course, the better practice is to submit the interrogatories,

instructions and definitions therefor, and responses thereto,

with the notice of reliance. See 37 C.F.R. §2.120(j)(3)(i).

11

Opposition No. 91121204

casual athletic wear, i.e., t-shirts, sweatshirts,

sweatpants, shorts and the like, along with a duffel bag and

some sunglasses. The catalogue is undated.

The second catalogue, the “Ski Stuff! Catalogue

2000/2001,” is in English [an Italian version is also in the

record] and features NASDAQ and the other composite NASDAQ

and design marks. Often, in this catalog, these marks are

followed by the legend “by penguin,” as in “NASDAQ by

penguin.” The record, however, does not reveal to whom or

what “penguin” refers, other than a name and/or mark of some

company, which may or may not be related to applicant. See

applicant’s responses to opposer’s requests for admission,

nos. 35, 38 and 40. This second catalogue covers various

ski helmets, shin, hand and arm guards, and ski plates,

which apparently are for attaching to skis to obtain certain

technical performance characteristics.9 This catalogue does

not display the phrase “Nuovi Articoli Sportivi Di Alta

Qualita” [nor does the Italian version of this catalogue].

Applicant has “temporary” webpages posted for

www.nasdaq.it, www.nasdaqsport.net, and www.nasdaqsport.com,

each of which displays a NASDAQ and design mark different

from that in the involved application and the phrase “Il

sito è in allestimento.” Opposer’s request for admission

no. 49 and exhibit B (reprints of the webpages) and

9

Reliable discovery deposition, p. 43.

12

Opposition No. 91121204

applicant’s response thereto. We take the Italian phrase to

translate roughly as “The site is under preparation.”10 We

note that the “temporary” webpages do not bear the phrase

“Nuovi Articoli Sportivi Di Alta Qualita.”

In its responses to certain requests for admission,

applicant denies that it has sold any clothing or sporting

equipment in the United States, but states its intention to

do so. Opposer’s requests for admission nos. 27-30 and

applicant’s responses thereto. In its response to opposer’s

interrogatory no. 20, applicant asserts annual sales revenue

for “‘NASDAQ’ products” of approximately $3,000,000 (U.S.).

Of course, as applicant has denied selling any products in

the United States, we take this interrogatory response to

reflect annual sales outside the United States, since 1996,

i.e., applicant’s asserted date of commencement of its

manufacture and distribution of at least its ski gear. In

this regard, we also note the minutes of the April 12, 1998

meeting of applicant’s shareholders (a copy of which, along

with a translation from Italian, was produced with other

documents in response to opposer’s interrogatories), wherein

applicant’s shareholders apparently discussed the company’s

10

In an Italian-English dictionary we have consulted,

“allestimento” is translated to mean “preparation.” A wire

service report introduced by opposer via notice of reliance also

quotes applicant’s Italian counsel as stating that applicant’s

web sites “are still under construction” and that work on them

has “been suspended.”

13

Opposition No. 91121204

strategic plan and budget for the five-year period from

1998-2002. In the minutes is a chart with sales projections

for Europe and the United States. For Europe, sales of ski

products are projected as follows: 3 million Euros (1998),

3.5 million Euros (1999), 4.5 million Euros (2000), 5

million Euros (2001) and 6.5 million Euros (2002). Again

for Europe, sales of fitness wear are projected as 8 million

Euros (1998), 9.5 million Euros (1999), 12 million Euros

(2000), 15 million Euros (2001) and 18 million Euros (2002).

There are no sales projected for the United States until

2001 and the record in fact reveals no sales have yet taken

place in the United States. There is no way to tell from

the record whether any 1996 and 1997 European sales were of

ski products or of fitness wear, or both.

Opposer

The testimony of John L. Jacobs, opposer’s senior vice

president of worldwide marketing and financial products11,

provides background concerning opposer’s formation and role

in the securities industry. The following background is

gleaned from the Jacobs testimony deposition, unless

indicated otherwise.

Opposer was originally organized by the National

Association of Securities Dealers. In the 1960s, the United

11

Jacobs is also president and CEO of NASDAQ Financial Products

Services, Inc., a wholly-owned subsidiary of opposer.

14

Opposition No. 91121204

States Congress had determined that “there should be an

alternative way to trade securities not listed on The New

York or The American Stock Exchange[s].” Congress

authorized the Securities and Exchange Commission to look

into the matter. Eventually, the National Association of

Securities Dealers (NASD) was “tasked with that mission.”

Jacobs test. dep. pp. 13-14.

The decision was made not to create an auction style or

order-driven market in a physical location but to create an

automated market utilizing telecommunications and a

quotation-driven system. By 1968 or so, the concept of the

National Association of Security Dealers Automated Quotation

system was formed. The first day of trading was February 8,

1971. In its early days, the market was often referred to

as the “over-the-counter” market because it was concerned

with trading in companies not listed on the New York and

American stock exchanges and trading in interests in such

companies were typically referred to as “over-the-counter”

transactions. See, generally, excerpts from printed

publications submitted under opposer’s notice of reliance.

In 1975, listing standards for companies were promulgated.

Opposer generates revenue for itself in four primary

ways: First, it gets paid for transactions of investors and

traders who use a NASDAQ facility or system, paying on a per

transaction or subscription basis. Second, opposer packages

15

Opposition No. 91121204

data from various sources, including transactions in its own

markets, and sells the information to consumers and

investors. Third, “whether it’s Microsoft… or the latest

IPO,” companies pay fees to be listed on the NASDAQ stock

market. Fourth, opposer licenses use of the NASDAQ name for

use on or in connection with other financial products and

services. An example of a licensing arrangement is The

NASDAQ 100 Index Tracking Stock. That is an investment

vehicle focusing on 100 NASDAQ-listed companies.

By 1994, more domestic and foreign companies were

listed on the NASDAQ stock market than on all other United

States stock markets combined. Also by 1994, the NASDAQ

stock market had surpassed the New York Stock Exchange and

become the leading stock exchange in terms of share volume.

In 1997, the NASDAQ stock market became a hybrid market

utilizing both orders and quotes. In 1999, the NASDAQ stock

market became the leading stock exchange in terms of dollar

volume.

Opposer has been involved in joint ventures with other

securities markets in Hong Kong, Japan and London.

Opposer’s website, www.nasdaq.com, was launched in April

1996. It includes financial news, investment tracking

tools, stock quotations – including for stocks listed on

markets other than opposer’s - and the like. Many of the

tools assist consumers with issues not directly related to

16

Opposition No. 91121204

the stock market, such as mortgages and retirement planning.

The nasdaq.com website generates high traffic, from visitors

both inside and outside the United States, serving up 7

million page views per day. Opposer also has a separate

website, www.nasdaqtrader.com, for professional investors

and traders.

Since 1997, opposer has maintained a formal University

Outreach program, whereby it distributes information and

brochures on the stock market to schools, professors and

students. Opposer began running television ads in 1991 and

aired some in at least every year from 1996 on. It started

measuring awareness of its brand in 1990 and charted an

increase in awareness through a decade of paid advertising,

distribution of premiums and gifts, hosting of events,

sponsorship of events and broadcasts, direct marketing,

media relations, and public relations. Though the amount is

confidential, opposer has spent very significant sums on

these activities, by any measure.

The primary target group for opposer’s advertising is

men, 35 to 64, with at least a $75,000 annual income.

Opposer has found that sports programming is the best way to

reach them. The NASDAQ-sponsored half-time report during

professional football broadcasts began at least as early as

the 1997-98 football season. Opposer was a sponsor of the

televised 1997 Senior Skins Game (a golf tournament), and

17

Opposition No. 91121204

has been a sponsor of the Big 10 college basketball

tournament. At least as early as the 1997-98 season, it

sponsored broadcasts of NCAA college football.

To compete with the media exposure the New York Stock

Exchange receives for its ceremonial daily openings and

closings on its trading floor, opposer, which does not have

a trading floor, opened the “MarketSite” in its downtown New

York City offices in 1997. The facility was developed as a

place to take issuers, i.e., NASDAQ-listed companies, and as

a setting from which reporters could broadcast news of the

NASDAQ market. Opposer, however, felt the downtown location

and lack of access to the public were drawbacks. Thus,

opposer planned and opened a new MarketSite in New York

City’s Times Square. Mr. Jacobs [test. dep. p. 94]

explained the motivation behind the move as follows:

It was a huge departure for a stock market to

go to Time[s] Square, but it was clearly in light

of our mission. We were looking at 2 million

international, high-net-worth mostly individuals

going through Time[s] Square every year. So what

we looked at is we were positioning ourselves

among main stream. You’ve got a lot more people

going, going to plays and different places, and it

was the international audience. The international

audience that goes through Time[s] Square has to

have money to go there. We were going to be smack

dab in the middle of it all.

We had this video wall on the outside which

is the largest video wall at the time. That’s the

picture right here [referring to an exhibit].

Obviously, it’s NASDAQ, and even down to walking

on the sidewalk, everything says NASDAQ, NASDAQ,

NASDAQ. So you can’t miss it if you’re in site

[sic-sight] that this is NASDAQ.

18

Opposition No. 91121204

The Times Square MarketSite large video wall was

operational for New Year’s Eve 1999, and the site has hosted

numerous televised market openings by celebrities and sports

figures.

Opposer’s distribution of collateral products branded

with its NASDAQ mark was the subject of testimony by Anahi

Pilarz, a manager in opposer’s marketing department, and to

a lesser extent, by Mr. Jacobs. This will be discussed

infra, as will other evidence, in conjunction with our

consideration of opposer’s claims.

PRIORITY AND LIKELIHOOD OF CONFUSION

Priority

Opposer essentially has made two claims under Section

2(d) of the Lanham Act. First, opposer claims that the

registered mark NASDAQ is famous, incontestable, and has

been so widely promoted for the registered services, various

other financial services and through use on collateral

promotional items, in sponsoring sporting events (or

broadcasts of the same), and for various types of academic

competitions, course offerings and the like, that

applicant’s use of its NASDAQ and design mark would be

likely to cause confusion among consumers. Second, opposer

claims that its use of the NASDAQ mark on collateral

promotional items, followed by subsequent sales of such

branded items, yields opposer actual priority of use on

19

Opposition No. 91121204

goods that are similar to those identified in applicant’s

involved application. Under both these claims, opposer

essentially is asserting that prospective purchasers of

applicant’s goods will believe that they emanate from, or

are somehow approved by, opposer.12

We agree with opposer’s argument that priority is not

an issue insofar as the first of these two claims is

concerned, as opposer has introduced into the record a

certified copy of its pleaded registration showing that it

is valid and subsisting and that title is in opposer. King

Candy Company v. Eunice King's Kitchen, Inc., 496 F.2d 1400,

182 USPQ 108 (CCPA 1974); Carl Karcher Enterprises Inc. v.

Stars Restaurants Corp., 35 USPQ2d 1125 (TTAB 1995).

However, insofar as opposer, by its second claim, is

asserting that it has acquired superior proprietary rights

in NASDAQ for goods such as “t-shirts, hats, jackets, golf

balls, footballs, basketballs and baseballs” (Notice of

Opposition, ¶ 9), and that applicant’s use of the involved

NASDAQ and design mark for closely related goods would be

likely to cause confusion, proof of the acquisition of the

12

Opposer’s Section 2(d) claims are, of course, related, insofar

as each relies on use of the NASDAQ mark on goods which are

asserted to be in part the same as, and otherwise closely related

to, the identified goods of applicant. But it is the nature of

opposer’s use of its mark on such goods that varies with the

claim, one claim involving use on these goods as an activity

collateral to the operation of the stock market and the other

claim asserting use in such a manner as to create superior rights

in opposer even apart from its operation of the stock market and

activities related thereto.

20

Opposition No. 91121204

superior proprietary interest must be shown. Otto Roth &

Company, Inc. v. Universal Foods Corporation, 640 F.2d 1317,

209 USPQ 40, 43 (CCPA 1981) (“the opposer must prove he has

proprietary rights in the term he relies upon to demonstrate

likelihood of confusion as to source, whether by ownership

of a registration, prior use of a technical "trademark,"

prior use in advertising, prior use as a trade name, or

whatever other type of use may have developed a trade

identity.”). Accordingly, we have examined the record to

see what it reveals about opposer’s distribution of goods

such as “t-shirts, hats, jackets, golf balls, footballs,

basketballs and baseballs.”

Mr. Jacobs testified at length about events opposer has

sponsored and which served as the means for distribution of

NASDAQ-branded products. There was testimony about the

Directors Invitational Ski Classic, an invitation-only event

for business people to which opposer, by virtue of its

sponsorship of the event, was able to invite officers,

directors and the like from NASDAQ-listed companies.

Participants competed in teams led by guest professional

skiers.13 Mr. Jacobs also testified about opposer’s

participation in a ski tournament for teams from different

stock markets; opposer’s sponsorship of Women’s Tennis

Association events; opposer’s distribution of NASDAQ-branded

13

Mr. Shaw’s testimony discussed the ski event at length.

21

Opposition No. 91121204

baseballs through a joint venture with Major League

Baseball’s Cleveland Indians; and opposer’s sponsorship of a

golf tournament known as “The Senior Skins Game.” Testimony

on each of the sponsored events included explanation by Mr.

Jacobs of premiums and other items distributed to

participants or observers. Mr. Shaw, too, testified about

distribution of items at the ski event. Finally, Mr. Jacobs

testified concerning distribution of a wide variety of

collateral merchandising items illustrated by opposer’s

exhibits 20 and 22. He deferred to Ms. Pilarz in regard to

when opposer began selling such items through its

www.nasdaq.com website and its MarketSite store.

Ms. Pilarz testified that, in 1995, she became the

“main person” although not the only one responsible for

opposer’s purchases of NASDAQ-branded merchandise, for

subsequent distribution and/or sale. Ms. Pilarz testified

that the Nasdaq MarketSite store opened in February 2000 and

the nasdaq.com online store opened in September of 2000.

Pilarz, pp. 5-6.

Mr. Jacobs testified that Nasdaq did not sell NASDAQ-

branded merchandise other than through “the NASDAQ store”14:

“No. We gave it away.” Jacobs, p. 151. That would mean

opposer did not sell such items prior to some time in the

14

We take this to mean both the MarketSite store and the

www.nasdaq.com online store.

22

Opposition No. 91121204

year 2000. In contrast, Ms. Pilarz testified that opposer

has both sold such items and distributed them without cost

since she joined opposer in 1991. Moreover, she testified

that the products in exhibit 22, e.g., t-shirts, windshirts,

zip-front pullovers, gym shorts, golf towels, golf ditty

bags, polo shirts, socks, turtlenecks, sweaters,

sweatshirts, fleece vests, binoculars, dartboards, and

baseball hats, are representative of the products that have

been sold and distributed during her tenure. Pilarz, pp. 8-

9. Ms. Pilarz also recounted one instance whereby opposer

sold hats to a broker-dealer to give to customers, although

she did not state when this occurred. Pilarz, p. 11.

Finally, Ms. Pilarz testified about the existence of “a

store at the K Street [Washington, DC] office. It was a

retail store with a cash register, and we sold hats, pens,

T-shirts, sweatshirts, different types of wearables,

sporting things, and that store was there because of

demand.” Pilarz, p. 112. From 1991 through some time

between 1996 and 1998, any visitor or company employee could

purchase items, and even after the store closed because of

construction at that address, employees could still make

purchases of gift items from a fellow employee of opposer,

which “happened quite a bit.” Ms. Pilarz testified that she

made a number of purchases in this manner. Pilarz, pp. 113-

115.

23

Opposition No. 91121204

“[T]he challenger's burden of proof in both opposition

and cancellation proceedings is a preponderance of the

evidence.” Eastman Kodak Co. v. Bell & Howell Document

Management Products Co., 994 F.2d 1569, 26 USPQ2d 1912, 1918

(Fed. Cir. 1993), citing 2 J. Thomas McCarthy, McCarthy on

Trademarks and Unfair Competition, Section 20.16 (3d ed.

1992). Opposer has failed to meet this burden in its

attempt to show, without regard to its federal registration

for NASDAQ for stock market services, that it made prior use

of NASDAQ for goods such as those identified in applicant’s

application, or for opposer’s collateral products that are

closely related thereto.

We do not, by this finding, mean to imply that

opposer’s proof fails because it largely deals with give-

aways and premiums bearing the NASDAQ mark, as opposed to

the sale of such goods (which did not begin in earnest until

after applicant’s priority filing date).15 It is, instead,

the vague or imprecise nature of the Jacobs and Pilarz

testimony that prevents opposer from meeting its burden of

proof. While Mr. Jacobs was expansive in his testimony

regarding distribution of branded products at sponsored

15

Though applicant argues against the sufficiency of give-away

NASDAQ promotional goods to establish trademark rights, applicant

itself appears to recognize the advantages of such a practice in

creating brand awareness: “We also enjoy the support of many so-

called VIPs, to whom we will be supplying casual wear items, to

create a trend.” Minutes of applicant’s April 12, 1998 Board

meeting.

24

Opposition No. 91121204

sporting events, he generally did not testify to specific

dates so as to establish that NASDAQ-branded ski goods,

tennis goods, golf goods, or baseballs were distributed

prior to applicant’s filing date.16 Likewise, while the

testimony of Ms. Pilarz that NASDAQ-branded products were

both sold and distributed from 1991 on is unequivocal, the

testimony is vague concerning actual distribution; and the

exhibits to testimony corroborate purchases by opposer, not

from opposer.17 Opposer has failed to prove its Section

2(d) claim only insofar as it is based on opposer’s

assertion of priority of use of NASDAQ for collateral

products and premiums that are the same as or closely

related to the goods in applicant’s application.

Nonetheless, we find nonetheless that the record establishes

that opposer’s use of its mark for collateral goods, and in

connection with its sponsorship of various events, including

16

One exception was his testimony that opposer sponsored The

Senior Skins Game golf tournament in 1997, i.e., prior to

applicant’s priority filing date. However, during cross-

examination in regard to his testimony about The Senior Skins

Game golf tournament, Mr. Jacobs admitted he tends to generalize

and could not be specific about items distributed at the event.

Jacobs, pp. 249, 251.

17

The spreadsheet that is Jacobs/Pilarz exhibit 25 evidences only

some purchases of branded items in 1998 prior to applicant’s

priority filing date; most of the spreadsheet covers purchases

made later. However, for the 1998 purchases to aid opposer’s

attempt to prove priority, we would have to infer that opposer

very quickly distributed the purchased items. While we have been

presented testimony on how orders from within opposer for NASDAQ-

branded premiums and collateral products are processed and

filled, we have no testimony concerning how quickly or routinely

opposer distributes such items after they have been received.

25

Opposition No. 91121204

athletic events and broadcasts, has been a natural outgrowth

of its business, has expanded over time, and contributes, as

discussed below, to our finding of likelihood of confusion

in regard to opposer’s Section 2(d) claim based on its

pleaded registration.

Likelihood of Confusion

We analyze the issue of likelihood of confusion using

the factors that were articulated by one of the predeceesors

of our primary reviewing court, the Court of Customs and

Patent Appeals, in the case of In re E. I. du Pont de

Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (CCPA

1973). See also Recot, Inc. v. Becton, 214 F.3d 1322, 54

USPQ2d 1894, 1896 (Fed. Cir. 2000).

“The likelihood of confusion analysis considers all

DuPont factors for which there is evidence of record but

‘may focus ... on dispositive factors.’” Hewlett-Packard

Co. v. Packard Press Inc., 281 F.3d 1261, 62 USPQ2d 1001,

1003 (Fed. Cir. 2002) (citations omitted).

1. The Marks

The similarity or dissimilarity of the marks, a key

factor, is assessed by comparing the marks as to appearance,

sound, connotation and commercial impression. Herbko

International Inc. v. Kappa Books Inc., 308 F.3d 1156, 64

USPQ2d 1375, 1380 (Fed. Cir. 2002). Opposer’s mark, as

registered, consists solely of the term NASDAQ. As used, it

26

Opposition No. 91121204

is almost universally set forth in plain block letters; only

occasionally is it used in conjunction with a globe design.

Applicant’s mark, in the involved application, consists of

the same term, NASDAQ, set forth in a block letter format.

There is also a stylized representation of what may be a

griffon (as described in the Italian registration that

serves as the basis for the involved application) or an

eagle with open wings (applicant’s brief, p. 3).18

Regardless of what the design element represents, we view it

as highly stylized and as not possessed of any particular,

unmistakable connotation. In other words, in considering

the contribution the design makes to the mark, it may depend

on the individual viewing the mark.

Applicant asserts in its brief that it first used

“[t]he Italian phrase and its appropriate acronym together

with the eagle design… in Europe… in 1998 and… has continued

to do so since.” Brief, p. 4. Apart from the fact that

there is, however, nothing in the record that shows use of

the phrase, acronym and design together, the mark in the

involved application does not include the Italian phrase.

18

Applicant did not include a description of its mark in the

involved application, but appears not to consider the design

element to represent a griffon, notwithstanding the description

in its Italian registration. See, in this regard, applicant’s

withdrawn motion to amend its mark, wherein it described the

design element of its mark as consisting of the wings of a bird

and asserted that applicant desired to associate its goods with

“speed, precision, power and grace, attributes which are

naturally associated with an eagle or falcon in flight.”

27

Opposition No. 91121204

Thus, we do not consider the Italian phrase as making any

contribution to the connotation of applicant’s composite

mark, or to the individual components thereof, i.e., the

acronym and griffon or eagle design.

Opposer’s mark is an acronym for the phrase National

Association of Securities Dealers Automated Quotations.

Jacobs, p. 15. Opposer’s supplemental notice of reliance

under 37 C.F.R. § 2.122(e) of January 30, 2002.19 Opposer’s

vice president (Jacobs) testified, however, that opposer

does not use the full phrase, favoring instead just NASDAQ,

which has “become part of the common lexicon.” Jacobs, pp.

37-39. In fact, the voluminous NEXIS article excerpts and

other printed publications made of record (Opposer’s notice

of reliance under 37 C.F.R. § 2.122(e) of January 7, 2002)

show that the vast majority of references to opposer’s stock

market are to NASDAQ alone.

Apart from the many public references to opposer’s mark

that have appeared in printed publications, opposer has done

a great deal of advertising of its stock market and the

types of companies that are listed on its market. While the

specific outlets and amount spent are confidential, we can

state that opposer has extensively advertised its stock

market on radio, on cable and broadcast television, and in

19

Some of the reference works use Quotations, others use

Quotation System.

28

Opposition No. 91121204

print. Jacobs confidential testimony, pp. 50-88; see also

tape of television ads submitted as exhibit 13.20 Opposer

promotes its stock market as innovative and a more efficient

market that utilizes technology. See, e.g., Jacobs exhibits

16 and 19. As an example, opposer utilizes the tag lines

“Stock Market For The Digital World” and “The Stock Market

For A Digital World.” Id. In addition, the growth of

opposer’s market has in large part been accomplished by

gaining listings of high-technology companies. Jacobs, pp.

42-45.

The connotation of opposer’s NASDAQ mark, both as

registered for its stock market services and as used on or

in conjunction with its collateral products, is that of a

technology-laden and technology-driven stock market

different from older, more traditional markets. The overall

commercial impression of opposer’s mark is that of an

inherently distinctive mark.

To the extent they would be pronounced, as in radio

advertising or in conversation, opposer’s and applicant’s

marks are identical. Visually, they are virtually

identical, for we do not find that consumers of applicant’s

product are likely to place great emphasis on the amorphous,

20

Opposer, in its brief, which is not confidential, asserts that

it has spent “in excess of $200 million on direct advertising.”

Brief, p. 12. The confidential portions of the record support

the claim.

29

Opposition No. 91121204

stylized design of a winged creature which frames the bold

letters NASDAQ.

While applicant argues that its mark has a connotation

distinct from that of opposer’s mark, we find little in the

record that would support the conclusion that it has any

particular connotation. For prospective consumers of

applicant’s products, or individuals who see others using or

wearing these products, and who are unaware of opposer and

its mark, both opposer’s mark and applicant’s mark will

likely be perceived as arbitrary and have no particular

connotation. For these consumers the overall commercial

impressions of the respective marks would be the same.

However, to the extent prospective consumers of applicant’s

products, or those who see applicant’s products being used

or worn by others, are aware of opposer’s mark, we find

these individuals are likely to ascribe to applicant’s mark

the same connotation as they would to opposer’s mark.21 For

these consumers, too, the overall commercial impressions of

the marks will be the same. The only difference between

those who are familiar with opposer’s mark and those who are

not, is that those who are familiar with it will have a

definite connotation come to mind, while those who are not

21

We note, too, that applicant’s 2000/2001 ski catalogue, to the

extent it is indicative of the way in which applicant will

promote its International Class 9 and International Class 28

goods, promotes the products as the marriage of “innovative

solutions and materials.”

30

Opposition No. 91121204

familiar with it will consider both opposer’s and

applicant’s marks to be arbitrary and may not ascribe any

particular connotation to the marks. Even if applicant were

to promote its products under the Italian phrase that is

asserted to be the derivation of applicant’s NASDAQ mark,

the significance will likely be lost on United States

consumers who are not familiar with Italian.

In sum, the marks are identical in sound and virtually

identical in the visual and connotative impressions they

create, a factor that weighs heavily against applicant. In

re Majestic Distilling Co., 315 F.3d 1311, 65 USPQ2d 1201,

1204 (Fed. Cir. 2003); In re Martin's Famous Pastry Shoppe,

Inc., 748 F.2d 1565, 223 USPQ 1289, 1290 (Fed. Cir. 1984).

2. Fame of Opposer’s Mark

On the record before us, we cannot but conclude that

opposer’s mark is famous for its stock market services.

Opposer engaged in television, radio and print advertising

on a large scale throughout the 1990s. Its website receives

7 million page views per day; and 2 million people pass by

its MarketSite facility in Times Square every year.

Throughout its decade-long advertising campaign, opposer

commissioned annual surveys to measure the level of

awareness of opposer’s stock market among the investing and

general public. The result -- “of [the] hundreds of

millions [opposer has] spent” on “advertising, premiums,

31

Opposition No. 91121204

gifts” -- has been an increase in awareness of opposer’s

stock market among investors from just above 20 percent in

1990 to more than 80 percent in 1999. See, in regard to the

advertising campaign and survey effort, Jacobs, pp. 170-183,

and exh. 28.

Tables for stocks listed in opposer’s stock market have

appeared in newspapers throughout the United States since

February 1972. The market’s daily results appear in

hundreds of newspapers, are reported on television, and are

posted on numerous web sites. Jacobs, pp. 194-96.

Considering the excerpts of printed publications submitted

by opposer, there have also been countless articles

published which discuss the NASDAQ stock market or “NASDAQ-

listed” companies.

See, as examples of articles about listed companies,

the following:

When a company has a hot [oil/gas] well on tap,

speculative fever can put the stock on NASDAQ’s

most-active list. Forbes magazine, December 15,

1976.

The recent growth of the six-year-old firm has

already earned it approval in May to trade its

common stock on the NASDAQ stock exchange (under

the symbol TLOG). Arizona Business Gazette, June

30, 1986.

I own shares of Advanced Genetic Sciences Inc.,

listed with NASDAQ stocks. I have read that the

company…. The Boston Globe, November 27, 1988.

[from a question from a reader answered in a

column for investors].

32

Opposition No. 91121204

“There is a level of credibility that relates to

NASDAQ membership, and losing it would have a very

detrimental effect on my company,” said Irwin Bosh

Stack…. St. Petersburg Times, May 14, 1990.

MICROSOFT, NASDAQ BECOME CLOSER

Microsoft’s chief financial officer, Mike Brown,

was named chairman of the Nasdaq Stock Market’s

board of directors last week.

The move further cements Microsoft’s

relationship with Nasdaq, in the face of attempts

by the New York Stock Exchange to woo the stock-

rich company. The Seattle Times, March 31, 1997.

Many articles have specifically focused on the market

itself, how it operates, its advertising and competition

with other markets, its joint ventures, and its expansion

abroad. See, for example:

[Bunker Ramo Corp.] realized $46 million in gross

income from its facilities management of the

NASDAQ over-the-counter stock quotation system and

from quotation services for listed securities and

commodities. The American Banker, September 12,

1979.

The London Stock Exchange’s governing council said

today that it had approved a new stock trading

system that would create a market closely

resembling the Nasdaq national system in the

United States. The New York Times, July 20, 1984.

To get onto Nasdaq, a company must…. … Nasdaq

estimates that 2,100 of its stocks… Nasdaq volume

in January slackened…. [The NASD president] said

that visits have been made to the chief executives

of the large Nasdaq companies to comfort them and

persuade them to stick with the market. The New

York Times, February 14, 1988 [lengthy article on

opposer’s operations].

A new ad hit the airwaves Sunday from the National

Association of Securities Dealers, home of NASDAQ

over-the-counter stocks. NASDAQ’s latest TV ad

gives a capsule history of MCI Corp., one of the

biggest companies listed on NASDAQ. The campaign

33

Opposition No. 91121204

now focuses on companies investors can buy on the

NASDAQ stock market, as opposed to the more

general “What is NASDAQ?” ads that have aired up

to now. USA Today, January 30, 1992.

GAO LAUDS NASDAQ FOR IMPROVEMENTS

The Nasdaq Stock Market is doing a better job of

checking out listing applicants and making sure

listed companies comply with its standards,

according to Congress’ General Accounting Office.

The Los Angeles Times, April 30, 1999.

S.F. Firm Grabs Piece of Nasdaq

Hellman & Friedman… has acquired a 9.8 percent

interest in the Nasdaq Stock Market for $240

million. The San Francisco Chronicle, March 29,

2001.

Even when opposer’s stock market has had troubles, it

received publicity. See Jacobs, pp. 46-49 ad 180. See

also:

New rules aimed at making the Nasdaq stock market

a fairer place for individual investors won

approval yesterday from the Securities and

Exchange Commission. Both rules were proposed by

the National Association of Securities Dealers,

which runs the screen-based Nasdaq. The Boston

Herald, June 30, 1994.

SEC reviewing day trading

…day trading, in which thousands of investors make

rapid-fire stock trades through firms with

immediate electronic access to the Nasdaq Stock

Market. Milwaukee Journal-Sentinel, February 28,

1999.

…when the Nasdaq stock market made its famous

1,000-point roundtrip… it had dropped – and

recovered – 500 points. San Jose Mercury News,

July 31, 2000 [from article recounting a

particularly volatile day for the market].

34

Opposition No. 91121204

All the foregoing and many other article excerpts were

submitted with Opposer’s notice of reliance under 37 C.F.R.

§ 2.122(e) of January 7, 2002.

The fame of opposer’s mark is particularly significant.

It extends beyond the stock market services identified in

opposer’s registration and opposer’s mark is “accorded more

protection precisely because [it is] more likely to be

remembered and associated in the public mind.” Recot, 54

USPQ2d at 1897 (Fed. Cir. 2000) citing Kenner Parker Toys,

Inc. v. Rose Art Industries, Inc., 963 F.3d 350, 22 USPQ2d

1453, 1457 (Fed. Cir. 1992) and Specialty Brands, Inc. v.

Coffee Bean Distribs., Inc., 748 F.2d 669, 675, 223 USPQ

1281, 1284 (Fed. Cir. 1984). See also, Bose Corp. v. QSC

Audio Products Inc., 293 F.3d 1367, 63 USPQ2d 1303 (Fed.

Cir. 2002) (Public discussion of trademarked product

provides confirmation of context of use of mark and evidence

that efforts to promote marked product have been

successful).

“This reasoning applies with equal force when

evaluating the likelihood of confusion between marks that

are used with goods that are not closely related, because

the fame of a mark may also affect the likelihood that

consumers will be confused when purchasing these products.”

Recot, 54 USPQ2d at 1897.

35

Opposition No. 91121204

“Although fame alone cannot overwhelm the other DuPont

factors as a matter of law, see University of Notre Dame du

Lac v. J.C. Gourmet Food Imports Co., Inc., 703 F.3d 1372,

217 USPQ 505 (Fed. Cir. 1983), fame deserves its full

measure of weight in assessing likelihood of confusion.”

Id. at 1898.

Based on the size of opposer’s stock market, the level

of investor recognition, and the frequent, indeed daily,

coverage the market receives in the media, we find opposer’s

mark famous and find that this DuPont factor weighs heavily

in favor of a finding of likelihood of confusion.

3. Goods and Services; Involved Consumers

Another key DuPont factor in the analysis of likelihood

of confusion is the relatedness of the involved goods and

services. Federated Foods, Inc. v. Fort Howard Paper Co.,

544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976). Moreover, “the

greater the degree of similarity in the marks, the lesser

the degree of similarity that is required of the products or

services on which they are being used in order to support a

holding of likelihood of confusion.” In re Concordia

International Forwarding Corp., 222 USPQ 352, 356 (TTAB

1983). See also, In re Shell Oil Co., 992 F.2d 1204, 26

USPQ2d 1687, 1689 (Fed. Cir. 1993) (Contemporaneous use of

identical or nearly identical marks can lead to the

assumption that there is a common source “even when [the]

36

Opposition No. 91121204

goods or services are not competitive or intrinsically

related.”)

Opposer’s stock market services are, per se, very

different from applicant’s identified goods. The record,

however, is very clear that opposer has engaged in extensive

advertising and promotion of its mark. A great deal of the

promotion, especially television advertising, has involved

associating opposer with companies that are listed on

opposer’s stock market, and by derivation, the products and

services of those companies, insofar as in its radio and

television advertisements opposer portrays itself as aiding

the growth and development of these companies and the

marketing of their products and services. Jacobs exh. 13.

In addition, opposer has been the sponsor or backer of

numerous sporting events or broadcasts of the same; academic

conferences and competitions; maintains often-visited

websites which offer much information and software tools

distinct from operating a stock market; produces a widely

distributed magazine; and has distributed and sold a wide

variety of promotional products. Finally, notwithstanding

that we have previously concluded that the record created by

opposer falls short of establishing both (1) use by opposer

of its mark on particular types of promotional items and (2)

distribution or sale of such items prior to July 14, 1998,

we have no doubt, on this record, that opposer’s use of

37

Opposition No. 91121204

NASDAQ-branded promotional items or premiums to promote its

business is a long-standing practice.

In regard to this last point, applicant argues that

opposer’s promotional products, at least until its retail

MarketSite and website stores were open, were generally

given away and did not travel in the customary channels of

trade for goods such as those identified in applicant’s

application. Brief, p. 14. In addition, applicant argues

there is nothing in the record to show that opposer “intends

to become known as a designer, manufacturer or distributor

of any of the ancillary promotional items” and these

primarily promote opposer’s stock market. Brief, p. 15.

“We hasten to [note] that the mere fact that a

collateral product serves the purpose of promoting a party's

primary goods or services does not necessarily mean that the

collateral product is not a good in trade, where it is

readily recognizable as a product of its type (as would be

the case with T-shirts, for example), and is sold or

transported in commerce. See, for example: In re Snap-On

Tools Corp., 159 USPQ 254 (TTAB 1968) [ball point pens which

are used to promote applicant's tools, but which possess

utilitarian function and purpose, and have been sold to

applicant's franchised dealers and transported in commerce

under mark, constitute goods in trade], and In re United

Merchants & Manufacturers, Inc., 154 USPQ 625 (TTAB 1967)

38

Opposition No. 91121204

[calendar which is used as advertising device to promote

applicant's plastic film, but which possesses, in and of

itself, a utilitarian function and purpose, and has been

regularly distributed in commerce for several years,

constitutes goods in trade].” Paramount Pictures Corp. v.

White, 31 USPQ2d 1768, 1773 (TTAB 1994). Further, we note

that use of trademarks on collateral products has become

quite common. See Turner Entertainment Co. v. Nelson, 38

USPQ2d 1943 (TTAB 1996) and authorities discussed therein.

We conclude that countless individuals -- from market

traders to individual investors; those employed by or

directing “NASDAQ-listed” companies and those doing business

with them; academics, students and sports fans -- have been

exposed to opposer’s NASDAQ mark and to its use on or in

conjunction with collateral products and as an indicia of

opposer’s sponsorship of a wide variety of events. We also

conclude that, under these circumstances, individuals

familiar with opposer, its services, collateral products and

event-sponsorship activities, when confronted with

applicant’s mark used on at least some of its identified

goods, will consider such goods either to be promotional

items of opposer or products branded with opposer’s mark in

conjunction with opposer’s sponsorship of an event.

Applicant has argued that its goods are technically

advanced products that will be marketed only to

39

Opposition No. 91121204

sophisticated professional and amateur athletes. We note,

however, both that the identification of goods lists such

commonplace products as bicycling helmets, gym shorts and

sweat socks, and exercise mats, and that these items would

not necessarily be purchased by sophisticated athletes.

Even in regard to applicant’s ski products, its “Ride” model

ski helmet (see 2000-2001 Ski Stuff catalogue) is designed

for simplified use by “children and young people.”

Moreover, the channels of trade are not limited, so our

analysis of likelihood of confusion must assume that the

goods will be marketed to all possible consumers. Octocom

Systems Inc. v. Houston Computers Services Inc., 918 F.2d

937, 16 USPQ2d 1783 (Fed. Cir. 1990).

Applicant also argues that we should consider opposer’s

stock market services as being marketed only to corporate

executives who are deciding on what stock exchange their

companies will be listed. We disagree. The record

certainly makes it clear that, in administering its stock

market, a significant class of customers is corporate

executives and listed companies; but individual purchasers

of stocks are also customers, even if, as applicant asserts,

they make stock purchases through brokers.

4. Applicant’s Intent in Adopting NASDAQ

Applicant asserts it only became aware of opposer’s

mark as the result of a search report from Italian counsel

40

Opposition No. 91121204

dated June 29, 1998. Response, opposer’s interrogatory no.

11. That assertion is, at best, inaccurate. The minutes of

the meeting of applicant’s Board on April 12, 1998 show that

the Board had earlier “called a tender among various

professionals to conceive a new trademark” [a fact the

shareholders were reported to be aware of] “due to certain

problems arisen with the ‘NAFTA’ brand name,” and that the

Board had already chosen [emphasis added] the new mark

NASDAQ to replace NAFTA.22 The minutes go on to report

“advisors confirmed the possibility to file such trademark

[NASDAQ] without encountering any conflict. In certain

cases the index of the U.S. online stock exchange is filed

in Category 9, which is totally compatible with our

activity.” Thus, though applicant asserts that it did not

become aware of opposer until June 29, 1998, it appears

clear from the record that applicant had actually discussed

the availability of the mark, in the specific context of

opposer’s mark, with certain advisors prior to applicant’s

April 1998 Board meeting.

We also note that applicant’s responses to opposer’s

requests for admission nos. 4 and 9 are in direct conflict.

In response to the former, applicant admitted that it

“conducted a U.S. trademark investigation prior to using

22

Shareholders were informed they could review the other

candidates besides NASDAQ, but the minutes do not mention what

other candidates there were.

41

Opposition No. 91121204

“NASDAQ” as a trademark,” while in response to the latter,

applicant denied knowledge of opposer’s use of NASDAQ at the

time applicant adopted its NASDAQ mark. It appears

applicant is attempting to portray itself as a company that

investigates a mark before using it, yet it claims not to

have been aware of opposer’s prior use of NASDAQ when it

adopted the same mark.

Opposer implies that applicant’s earlier use of NAFTA,

as evidenced by applicant’s Board meeting minutes, coupled

with its switch from NAFTA to NASDAQ, is evidence of

applicant’s bad faith intent to capitalize on well-known

acronyms.23 Opposer would also have us rely on both a

statement of applicant’s Italian counsel regarding the

“technological feel” of NASDAQ (opposer’s notice of reliance

under 37 C.F.R. §2.122(e) of January 7, 2002)24, and on the

“concocted… acronymic significance” (brief, p. 14) of NASDAQ

as used by applicant, as evidence that applicant is a free

rider.

23

We take judicial notice that NAFTA is the acronym for North

American Free Trade Agreement. See authorities collected in TBMP

§712.01.

24

Various items submitted under this notice of reliance,

including the article which includes the quote from applicant’s

counsel, would not normally be admissible by notice of reliance.

However, because applicant has not objected to any of these

submissions, we have treated all attachments to the notice of

reliance as properly of record, whether or not they are of

probative value. Jeanne-Marc, Inc. v. Cluett, Peabody & Co.,

Inc., 221 USPQ 58 n.4 (TTAB 1984).

42

Opposition No. 91121204

In determining whether applicant adopted its mark in

good faith, or in bad faith intending to benefit from the

renown of opposer’s mark, we decline to rely on the hearsay

statement of applicant’s counsel. Nonetheless, we find

applicant’s choices in marks curious and agree that the

purported significance of NASDAQ appears concocted. For

example, though adoption of NASDAQ was discussed during

applicant’s Board meeting, no mention is made of what the

term stands for. Further, applicant’s discovery responses

are contradictory and evasive.

In sum, however, we do not find this record supports,

by a preponderance of the evidence, a conclusion of bad

faith adoption. In this regard, we note that applicant’s

counsel gave applicant clearance to proceed with the filing

of its Italian and U.S. applications. We do not believe

that applicant can be faulted for following the opinion of

its counsel, especially in view of the settled principles

that (1) mere prior knowledge of another’s mark does not

establish bad faith adoption and (2) the presumption of an

exclusive right to use extends only so far as the goods or

services listed in a registration [and those within a

registrant’s natural scope of expansion].25 See, in regard

25

While we cannot say that applicant, once it became aware of

opposer, had a duty to engage in further investigation regarding

any collateral use or expansion by opposer before filing its

applications, it certainly would have been prudent.

43

Opposition No. 91121204

to the former, Sweats Fashions Inc. v. Pannill Knitting Co.,

Inc., 833 F.2d 1560, 4 USPQ2d 1793, 1798 (Fed. Cir. 1987)

and, in regard to the latter, Mushroom Makers, Inc. v. R.G.

Barry Corp., 580 F.2d 44, 199 USPQ 65 (2d Cir. 1978) cert.

denied, 439 U.S. 1116, 200 USPQ 832 (1979). On the other

hand, merely because we decline to find that applicant

adopted its mark in bad faith, it does not follow from this

record that applicant has acted entirely in good faith.

While the factor does not weigh in the balance against

applicant, it does not weigh in its favor either.

Balancing of Likelihood of Confusion Factors

The dissimilarity of marks can outweigh all other

DuPont factors and result in a finding of no likelihood of

confusion. Kellogg Co. v. Pack'em Enterprises Inc., 951

F.2d 330, 21 USPQ2d 1142, 1145 (Fed. Cir. 1991). On the

other hand, merely because marks are the same or very

similar does not dictate that likelihood of confusion must

be found, for there are many similar marks that coexist

because of use on or in connection with disparate goods or

services. Nonetheless, when the marks are virtually

identical, as in this case, resolution of a few significant

additional DuPont factors in favor of the prior registrant

and against the newcomer will result in a finding of

likelihood of confusion.

44

Opposition No. 91121204

In this case, we find the fame of opposer’s mark a

significant factor. Recot, 54 USPQ2d at 1897 (“fame of the

prior mark, when present, plays a ‘dominant’ role in the

process of balancing the DuPont factors”). Also, while

opposer’s mark is not registered for goods that are the same

as or closely related to those identified in applicant’s

application, opposer has clearly moved into collateral

merchandising and into sponsorship of various sporting

events, so that consumers, i.e., the general public,

encountering the NASDAQ mark on applicant’s goods likely

will be confused about their origin or sponsorship. See

Philip Morris Incorporated v. K2 Corporation, et al., 555

F.2d 815, 194 USPQ 81, 82 (CCPA 1977) (In a case involving

identical marks but where goods were held not “competitive

or intrinsically related,” the Court affirmed the Board’s

finding of likelihood of confusion, in part due to

association of both parties with skiing events.). Given the

renown of opposer’s mark, the general public may make

decisions regarding the purchase of applicant’s goods with

less care. See Specialty Brands, 223 USPQ at 1284.

Finally, while we do not find in the record conclusive

evidence of bad faith adoption of the NASDAQ mark by

applicant, neither do we find clear evidence of innocent

adoption devoid of intent to capitalize on a well-known

term.

45

Opposition No. 91121204

In summary, the DuPont factors we have discussed

dictate a finding that there exists a likelihood of

confusion. Therefore, we sustain the opposition insofar as

it is based on opposer’s Section 2(d) claim of ownership of

a registration of NASDAQ for stock market services.

DILUTION

Apart from its Section 2(d) claim, opposer has also

pressed a claim of dilution. The Federal Trademark Dilution

Act (FTDA) provides a federal cause of action for the

dilution of famous marks, and the Trademark Amendments Act

of 1999 (TAA) “requires the Board to consider dilution under

the FTDA as a ground for opposition.”26 Enterprise Rent-A-

Car Company v. Advantage Rent-A-Car, Inc., __ F.3d __, __

USPQ2d __ (Appeal No.02-1444, slip opinion p. 2) (Fed. Cir.

2003), Toro Co. v. ToroHead Inc., 61 USPQ2d 1164 (TTAB

2001). The FTDA and TAA protect any mark that is both

distinctive and famous against use and registration of marks

that would lessen the capacity of the famous mark to

identify and distinguish the famous mark owner’s goods or

services. Moseley v. V Secret Catalogue Inc., __ U.S. __,

65 USPQ2d 1801, 1802 (2003).

26

The FTDA, 109 Stat. 985, is codified at Section 43(c) of the

Lanham Act, 15 U.S.C. §1125(c), with dilution defined in Section

45, 15 U.S.C. §1127. The TAA, Pub. L. No. 106-43, 113 Stat. 218,

is codified in various sections of 15 U.S.C.; but for our

purposes, we focus on Sections 2(f), 13 and 14 of the Lanham Act,

15 U.S.C. §§ 1052(f), 1063 and 1064.

46

Opposition No. 91121204

The Supreme Court’s recent decision in Moseley raises a

threshold issue we must address -- as the Federal Circuit

did not have occasion to address it in Enterprise, its first

FTDA/TAA decision -- before we can consider opposer’s claim

of dilution. In Moseley, a case involving a civil action

under the FTDA, the Court held that a plaintiff must prove

actual dilution, not merely a likelihood of dilution.

Moseley, 65 USPQ2d at 1807. In this opposition, the

involved application is based on Section 44 of the Lanham

Act and applicant has not used its mark in the United States

or in commerce between Italy and the United States.

Accordingly, we can only reach opposer’s claim of dilution

if we first determine that, in Board proceedings, it is

sufficient for a plaintiff to establish likelihood of

dilution rather than actual dilution.

We find that there is a distinction to be drawn between

civil actions and Board proceedings and that, in a Board

proceeding, a plaintiff that establishes its ownership of a

distinctive and famous mark may prevail upon a showing of

likelihood of dilution. We have already held so in an

opposition involving an intent to use application, i.e., a

situation in which a plaintiff cannot show actual dilution.

See Toro, 61 USPQ2d at 1174 (“an application based on an

intent to use the mark in commerce satisfies the commerce

requirement of the FTDA for proceedings before the Board.”).

47

Opposition No. 91121204

We now extend the holding to this opposition alleging

prospective dilution by a mark not yet in use and that is

the subject of a Section 44 application.27 Our

determination is supported by the Lanham Act.

Congress, despite the existence and recognition of

state dilution statutes that permit relief on a showing of

likelihood of dilution, fashioned the FTDA to permit relief

for the owner of a famous mark only when it could show the

newcomer’s mark actually causes dilution. Moseley, 65

USPQ2d 1807. Moreover, when Congress subsequently passed

the TAA, it made no change in the “causes dilution” standard

applicable in judicial proceedings, yet allowed Board

proceedings to be based on a claim that a newcomer’s mark

“when used would cause dilution.” Compare 15 U.S.C.

§1125(c)(1) and 15 U.S.C. §1052(f) (emphasis added).

Further, the TAA amendment of Section 2(f) of the Lanham Act

to allow for dilution claims in Board proceedings

specifically refers to Section 13 (oppositions) and Section

14 (cancellations) as the proceedings in which a dilution

claim may be raised. Section 13 allows oppositions by any

person “who believes that he would be damaged … including as

a result of dilution,” and Section 14 allows cancellation

27

While applicant’s involved application is not based on intent

to use but, rather, on Section 44 of the Lanham Act, the Section

44 basis requires applicant to have and expressly state its bona

fide intention to use its mark in commerce. 15 U.S.C. §§ 1126(d)

and (e).

48

Opposition No. 91121204

actions “by any person who believes that he is or will be

damaged, including as a result of dilution…” (emphasis

added). The inescapable conclusion is that Congress

intended to limit judicial relief under the FTDA to cases

where dilution has already occurred but to allow cases

involving prospective dilution to be heard by the Board.28

We see no holding or statement in Moseley that runs counter

to this conclusion.

Having determined that Moseley does not preclude us

from deciding opposer’s dilution claim, we turn to an

assessment of the distinctiveness and fame of opposer’s

mark. Toro explains that our inquiry into distinctiveness

does not end merely because opposer’s mark is on the

Principal Register and was registered without resort to a

claim of acquired distinctiveness, because distinctiveness

for dilution purposes requires that the famous mark be “so

distinctive that the public would associate the term with

the owner of the famous mark even when it encounters the

term apart from the owner’s goods or services.” Toro, 61

USPQ2d at 1177.

While applicant appears to acknowledge that opposer’s

mark has achieved some degree of fame, it argues that NASDAQ

28

We note, too, that Congress permitted the filing of trademark

applications based on intent to use through its passage of the

Trademark Law Revision Act of 1988, and that many opposition

proceedings involve intent to use applications. See Toro, 61

USPQ2d at 1174.

49

Opposition No. 91121204

is not inherently distinctive because it is an acronym

formed from the assertedly descriptive phrase “National

Association of Securities Dealers Automated Quotation,” and

because use of acronyms is common in the stock market field.

Brief, pp. 5-6. More specifically, in regard to its first

point, applicant cites to authority from the Second Circuit

which holds that FTDA protection is available only to

inherently distinctive marks and asserts that acronyms, by

their very nature, cannot be considered inherently

distinctive.

In its reply brief, opposer argues that its

registration is incontestable so that its mark’s

distinctiveness is “conclusively settled”; that applicant’s

attack on the presumptive distinctiveness of opposer’s mark

is an impermissible collateral attack; that the registration

for its mark is, in any event, immune from attack on the

grounds of descriptiveness; and that any claim that the mark

is generic would have had to be the subject of a compulsory

counterclaim, which applicant did not file. Reply brief,

pp. 1-2. Thus, before considering applicant’s arguments, we

consider opposer’s contention that the arguments cannot even

be heard.

The law, of course, is well settled that an applicant

cannot collaterally attack opposer’s registration in the

absence of a counterclaim for cancellation. 37 C.F.R. §

50

Opposition No. 91121204

2.106(b); Contour Chair-Lounge Co. v. The Englander Co., 324

F.2d 186, 139 USPQ 285, 287 (CCPA 1963) (“[T]his is an

opposition only and in an opposition, this court has always

held that the validity of the opposer’s registrations are

not open to [collateral] attack”); Cosmetically Yours, Inc.

v. Clairol, Inc., 424 F.2d 1385, 165 USPQ 515, 517 (CCPA

1970) (“As long as the registration relied upon by an

opposer in an opposition proceeding remains uncanceled, it

is treated as valid and entitled to the statutory

presumptions”). Nonetheless, we do not find applicant to

have engaged in an impermissible collateral attack on

opposer’s registration.

To prevail on its dilution claim, opposer must

establish that its mark is not merely famous, but is

distinctive. Toro, 61 USPQ2d at 1177. The FTDA, made

applicable to this opposition by the TAA, provides that one

factor to consider, in resolving the question whether a

plaintiff’s mark is distinctive and famous, is “the degree

of inherent or acquired distinctiveness of the mark.” 15

U.S.C. §1125(c)(1)(A). The inquiry is made even when it is

undisputed that the plaintiff’s mark is validly registered

on the Principal Register. See Toro, supra, wherein the

Board considered the degree of inherent or acquired

distinctiveness of opposer’s mark notwithstanding that it

51

Opposition No. 91121204

had been registered on the Principal Register without resort

to a claim of acquired distinctiveness.

In view of the fact that a plaintiff pursuing a

dilution claim in a Board proceeding must, as an element of

its claim, prove the distinctiveness of its mark, and that

consideration of such issue requires consideration of the

degree of inherent or acquired distinctiveness of the mark

without regard to the type of registration the plaintiff

owns, we hold that it is permissible for a defendant

addressing a dilution claim to present arguments regarding

the lack of distinctiveness of the plaintiff’s mark, even in

the absence of a counterclaim for cancellation of the

plaintiff’s pleaded registration. We do not see how we can

prohibit a defendant from presenting arguments on a factor

that the statute specifically delineates as relevant to a

dilution inquiry.29

Turning to applicant’s first argument as to why

opposer’s mark is not distinctive, i.e., that acronyms per

se cannot be inherently distinctive, we note that the

authority on which applicant has relied, Nabisco, Inc. v. PF

Brands, Inc., 191 F.3d 208, 51 USPQ2d 1882 (2d Cir. 1999),

29

Applicant has argued that opposer’s mark lacks distinctiveness

only in regard to the dilution claim; and has not done so in

contesting opposer’s Section 2(d) claim.

52

Opposition No. 91121204

establishes no such per se rule, and we decline to create

one.30

Applicant’s second argument as to why opposer’s mark is

not distinctive is the asserted frequent use of acronyms in

the securities field. While applicant did not, at trial,

offer any evidence to support this asserted practice, or

evidence of the use of the particular acronyms referenced in

its brief, we do not discount the argument, for the record

does include, at least, references to certain acronyms or

initialisms discussed by applicant, e.g., NYSE, AMEX and

OTC. Nonetheless, the argument does not undermine our

conclusion that opposer’s mark is inherently distinctive.

Of course, each mark must be considered on its own

merits. Thus, whether another acronym or initialism would

be perceived as a non-distinctive abbreviation of a

descriptive phrase does not establish that opposer’s mark

will be perceived as non-distinctive.31 Opposer’s mark is

30

We also note that the Second Circuit, in New York Stock

Exchange Inc. v. New York, New York Hotel LLC, __ F.3d __, 62

USPQ2d 1260, 1264-65 (2d Cir. 2002), has reiterated that

Circuit’s position that relief under the FTDA is available only

when the plaintiff’s mark is found to be inherently distinctive.

The Federal Circuit, our primary reviewing court, has not had

occasion to rule on the question of whether a plaintiff bringing

a dilution claim in a Board proceeding must own an inherently

distinctive mark, or whether it is sufficient if the mark has

acquired distinctiveness. Therefore, we proceed on the

assumption that a mark with inherent or acquired distinctiveness

may be protected under the dilution statute. It is an immaterial

point in this case, however, because we find opposer’s mark to be

inherently distinctive, for reasons discussed herein.

31

In addition, to the extent that applicant is correct in its

observation that use of acronyms is prevalent in the securities

53

Opposition No. 91121204

an acronym and is spoken as a two syllable word. Opposer’s

witness (Jacobs) testified that it is the acronym, not the

underlying words, that is advertised and promoted by

opposer, and the record bears this out. Further, we note

that even the reference works of record do not agree on

precisely what words are the root of NASDAQ, see footnote

19, infra, so that the one constant is the acronym itself.

We find that the NASDAQ acronym is, in effect, a unique word

that points to opposer’s stock market and is an inherently

distinctive mark.

We note that the record does not reveal any use of

NASDAQ -- except for the asserted use by applicant in Europe

-- by anyone besides opposer. Further, the numerous

excerpts from printed publications that have been made of

record by opposer’s notice of reliance all show NASDAQ as a

reference to a particular stock market. On this record,

NASDAQ is every bit the type of uniquely distinctive term

contemplated by the FTDA.

Turning to the fame of opposer’s mark, we have no

difficulty finding that NASDAQ is a famous mark. In Toro,

the Board held that an opposer pursuing a dilution claim

must establish that its mark became famous prior to the

filing date of the applicant’s application. Toro, 61 USPQ2d

field, the practice may actually illustrate that the acronyms are

distinctive, insofar as they are identified with particular stock

or equity markets.

54

Opposition No. 91121204

at 1174. In addition, the Board stated that establishing

fame for dilution purposes is a more rigorous endeavor than

establishing fame for a Section 2(d) likelihood of confusion

analysis. Toro, 61 USPQ2d at 1180-81. In particular,

regarding this second point, the Board held that evidence of

widespread recognition of a term is required of a dilution

plaintiff. Id. (listing recognition of fame by the other

party, intense media attention, and surveys as examples of

evidence sufficient to show FTDA fame). In this case we

have evidence meeting both Toro requirements.

First, the record clearly establishes that opposer's

mark was famous prior to the filing date of applicant's

application. Although our discussion of the evidence of

fame of opposer's mark in connection with the issue of

likelihood of confusion reviewed all the evidence of fame,

including activities engaged in after applicant's filing

date, we reiterate that the record is clear that a great

deal of the evidence of fame predates the priority filing

date of the involved application.

The second part of the inquiry is whether opposer has

established fame under the more rigorous standard required

for dilution. In this connection, even applicant has

acknowledged that opposer's mark has achieved some degree of

fame, although it can fairly be characterized as admitting

no more than fame within the field of investing. Brief, p.

55

Opposition No. 91121204

6. Opposer, however, also has shown that its advertising

actually resulted in recognition of NASDAQ by approximately

three-quarters of investors by mid-1998, if not earlier.

The dictionary references, newspaper and magazine articles,

and daily reports on opposer’s stock market in print and

broadcast media evidence very widespread recognition, beyond

just investors,32 and a great deal of this evidence is prior

to applicant’s priority filing date.

In short, we find that opposer has established that its

mark is famous for dilution purposes and that such fame was

acquired prior to the priority filing date of applicant’s

application.

Our final inquiry regarding whether use of applicant’s

NASDAQ mark for the identified goods would be likely to

cause dilution of opposer’s mark is whether blurring would

occur, so as to lessen the capacity of opposer’s mark to

identify its stock market services. Moseley, 65 USPQ2d 1807

(state dilution statutes provide that tarnishment and

blurring are actionable, while FTDA arguably refers only to

the latter).

32

We hasten to add that, while we do not rely solely on

recognition of opposer’s mark among investors, we do not believe

one can reasonably dispute that the portion of the general public

“invested” in stocks, whether through ownership of individual

securities, mutual funds, employee stock funds, retirement funds,

or the like, is a large percentage of the American public.

56

Opposition No. 91121204

Moseley suggests that blurring requires one viewing the

newcomer’s mark either to conclude that the famous mark is

now associated with a new product or service or to associate

the famous mark with its owner less strongly or exclusively.

Moseley, 65 USPQ2d at 1808. The Board held in Toro that

“blurring occurs when a substantial percentage of consumers,

upon seeing the junior party’s use of a mark on its goods,

are immediately reminded of the famous mark and associate

the junior party’s use with the owner of the famous mark,

even if they do not believe that the goods come from the

famous mark’s owner.” Toro, 61 USPQ2d at 1183. The Board

also held that three factors should be considered,

specifically, (1) the similarity of the marks; (2) renown of

the senior party, i.e., the person claiming fame; and (3)

“whether target customers are likely to associate two

different products with the mark even if they are not

confused as to the different origins of these products.”

Id.

In this case, we have no difficulty concluding that

dilution would occur, even in the absence of survey evidence

regarding consumer perception.33 The marks here are

effectively identical and opposer’s mark was famous, for

33

“It may well be, however, that direct evidence of dilution such

as consumer surveys will not be necessary if actual dilution can

reliably be proven through circumstantial evidence -- the obvious

case is one where the junior and senior marks are identical.”

Moseley, 65 USPQ2d at 1808.

57

Opposition No. 91121204

purposes of the dilution claim, prior to the filing date of

applicant’s application and has increased in renown since

then. Finally, in regard to the third Toro factor, we do

not believe that prospective purchasers or users of

applicant’s goods, i.e., the general public, would be likely

to associate NASDAQ with another entity besides opposer.

Rather, they “would wonder why another party could use a

mark that they thought would have identified a unique,

singular, or particular source.” Toro, 61 USPQ2d at 1184.

In Toro, the term common to each party’s mark was “Toro,”

i.e., the Spanish word for bull, and was found to be

suggestive in connection with the applicant’s goods rather

than a unique mark. By contrast, in this case we have a

term that is not a common word and is a unique mark. Thus,

members of the public familiar with opposer’s mark, when

encountering it in connection with applicant’s goods, would

either conclude that it was opposer’s mark being used on or

in connection with these products or would have to reach a

contrary conclusion only by associating the mark less

strongly with opposer. Either result would be a blurring

and would lessen the capacity of opposer’s mark to identify

goods and services having their source in opposer. Moseley,

65 USPQ2d at 1808.

We sustain the opposition based on opposer’s claim of

dilution.

58

Opposition No. 91121204

DECISION: The opposition to registration of

applicant’s mark is sustained both as to its likelihood of

confusion claim based on opposer’s registration and as to

opposer’s dilution claim; and registration to applicant is

refused.

59