The opinion
THIS DISPOSITION IS
CITABLE AS
PRECEDENT OF THE TTAB
Oral Hearing: June 9, 2005 Mailed: January 10, 2006
UNITED STATES PATENT AND TRADEMARK OFFICE
_____
Trademark Trial and Appeal Board
______
Standard Knitting, Ltd.
v.
Toyota Jidosha Kabushiki Kaisha
_____
Opposition No. 91116242
_____
John F.A. Earley III of Harding, Earley, Follmer & Frailey for
Standard Knitting, Ltd.
David J. Kera of Oblon, Spivak, McClelland, Maier & Neustadt,
P.C. for Toyota Jidosha Kabushiki Kaisha.
______
Before Walters, Holtzman and Kuhlke, Administrative Trademark
Judges.
Opinion by Holtzman, Administrative Trademark Judge:
Toyota Jidosha Kabushiki Kaisha (applicant or Toyota) has
filed an application to register the mark TUNDRA on the Principal
Register for "automobiles and structural parts thereof" in
International Class 12.1
1
Application Serial No. 75493787, filed on June 1, 1998, based on an
allegation of a bona fide intention to use the mark in commerce.
Opposition No. 91116242
On January 12, 2000, Standard Knitting, Ltd. (opposer or
Standard Knitting) filed an opposition to registration of the
above mark. In the notice of opposition, opposer alleges that
since 1969, long prior to the June 1, 1998 filing date of the
involved application, opposer has used the mark TUNDRA in
interstate commerce in connection with the sale of clothing.
Opposer also alleges that it is the owner of the following
registrations:
Registration No. 2268109 for the mark TUNDRA for men's,
ladies' and children's clothing, namely, sweaters, hats,
jackets, coats, t-shirts, vests, and shirts;2 and
Registration No. 2268110 for the mark TUNDRA SPORT for
men's, ladies', and children's clothing, namely, sweaters,
hats, jackets, coats, shorts, t-shirts, vests and shirts.3
Further, opposer alleges that it is the owner of two applications
filed on May 14, 1997, one for TUNDRA (Serial No. 75291854) and
the other for TUNDRA SPORT (Serial No. 75291853);4 and that
applicant's mark so resembles opposer's marks, as to be likely,
when applied to applicant's goods, to cause confusion.
2
Issued August 10, 1999 with claimed dates of first use and first use
in commerce in 1969.
3
Issued August 10, 1999 with claimed dates of first use and first use
in commerce in 1994. The word SPORT is disclaimed.
4
Both applications were filed on the basis of a bona fide intention to
use the mark in commerce. Application Serial No. 75291854 was
subsequently abandoned. Applicant filed a statement of use in Serial
No. 75291853 on February 3, 2000, asserting dates of first use and
first use in commerce in 1994. The application subsequently issued as
Registration No. 2408997 on November 28, 2000. The word SPORT is
disclaimed.
2
Opposition No. 91116242
Applicant, in its answer, has denied the salient allegations
in the opposition. In addition, applicant asserted counterclaims
on March 24, 2000 which, as subsequently amended on April 24,
2001, seek to cancel the pleaded registrations and Registration
No. 2408997 which issued on November 28, 2000 from pleaded
application Serial No. 75291853, on the ground of fraud, or in
the alternative to restrict the three registrations.
In particular, as to Registration No. 2268109, applicant
alleges that the mark TUNDRA was not used in commerce in
connection with any of the identified goods, other than possibly
men's sweaters and shirts, when the underlying application
(Serial No. 75291872) was filed on May 14, 1997; that
specifically, opposer was not using the mark TUNDRA on the
identified children's clothing as of the filing date of the
application; that the mark was not used continuously since the
claimed date of first use in 1969; that the application was
signed on May 5, 1997 by Michael Wang as president of opposer;
and that Mr. Wang signed the declaration reciting the
identification of goods that included articles on which the mark
had not, and was not, being used with knowledge of the falsity of
the material representation that the mark was being used on all
of the goods identified in the application.
In a similar charge with respect to Registration No. 2268110
for the mark TUNDRA SPORT, applicant asserts that the mark TUNDRA
3
Opposition No. 91116242
SPORT was not used in commerce in connection with any of the
identified goods, other than possibly men's sweaters, when the
underlying application (Serial No. 75291873) was filed on May 14,
1997; that the mark was not used continuously since the asserted
date of first use on December 31, 1994; that specifically, the
mark was not used on the identified children's clothing as of the
filing date of the application; and that Michael Wang signed the
declaration of the application with knowledge of the falsity of
the material representation that the mark was being used on all
the goods identified in the application.
With respect to Registration No. 2408997 for TUNDRA SPORT,
applicant alleges that the underlying application (Serial No.
75291853) which was based on a bona fide intention to use the
mark in commerce, identified goods on which opposer was not using
the mark as of the February 2, 2000 filing date of the statement
of use; that the mark was not used at least on the children's
clothing and on some or all of the listed goods for men and women
when the statement of use was filed; that the statement of use
was signed by Ross Yarnell, secretary of Standard Knitting, with
knowledge of the falsity of the material representation that the
mark was being used on all the goods identified in the statement
of use.
In the alternative, applicant alleges that the respective
marks have never been used in commerce in connection with any of
4
Opposition No. 91116242
the goods listed in the three registrations except possibly men's
sweaters and shirts in Registration No. 2268109; men's sweaters
in Registration No. 2268110; and men's and ladies' mitts, skirts,
pants, dresses and scarves in Registration No. 2408997; and that
the registrations should be restricted accordingly.
Opposer in its answer denied the allegations in the
counterclaims.
The record includes the pleadings; the files of the
involved application and registrations; and testimony and other
evidence filed by the parties. Opposer has introduced the
testimony (with exhibits) of opposer's chief operating officer,
George Groumoutis, taken on July 26, 2002 and on January 14-15
2003; and notices of reliance on materials including status and
title copies of its pleaded registrations and the registration
issuing from its pleaded application; and applicant's responses
to certain discovery requests. Applicant has submitted the
testimony (with exhibits) of Kevin Higgins, national truck
advertising manager of Toyota Motor Sales, U.S.A. (applicant's
subsidiary); Ernest Bastien, corporate manager for the vehicle
operations group of Toyota Motor Sales, U.S.A.; Joseph M. Husman,
business strategy manager of Toyota Motor Sales, U.S.A.; the
stipulated testimony of Norman Bafunno, vice president of
production and quality of Toyota Motor Manufacturing Indiana
(applicant's subsidiary); and the stipulated testimony (with
5
Opposition No. 91116242
attachments) of Dawn Ziebarth, customer loyalty manager-analysis
and reporting of Toyota Motor Sales, U.S.A. Applicant has also
submitted a notice of reliance on opposer's responses to certain
written discovery requests and portions of the discovery
depositions of opposer's chief operating officer, George
Groumoutis taken on January 15 and 16, 2002; opposer's president,
Michael Wang; and opposer's secretary, Ross Yarnell.
Both parties filed briefs and an oral hearing was held on
June 9, 2005.
EVIDENTIARY MATTERS
Applicant has objected to opposer's (first) notice of
reliance on Registration No. 1604765 for TUNDRA TEX, a
registration that was neither pleaded in the notice of opposition
nor tried by the parties. The objection is well taken.5
Applicant has also objected to opposer's (second) notice of
reliance as improper rebuttal. The objection is overruled as to
the articles from the Lexis/Nexis database, and is sustained as
5
Mr. Groumoutis, during his discovery deposition referred to that
registration in deciding whether it was appropriate to include the
goods identified therein in another application. The registration was
not introduced for the purpose of trying any matters relating to the
registration itself, nor did the parties do so. We do not consider the
registration of record.
In addition to its pleaded registrations, opposer's notice of
reliance includes a status and title copy of what appears to be a
third-party registration of TUNDRA for luggage, backpacks and tents
which opposer has not addressed in its brief. Opposer has not
explained what this registration pertains to or why it was submitted,
and it accordingly will not be considered.
6
Opposition No. 91116242
to the third-party registrations and printouts from the eBay
website. This evidence was not submitted for the proper purpose
of denying, explaining or discrediting applicant's case but
instead was clearly an attempt by opposer to strengthen its case-
in-chief. See The Ritz Hotel Limited v. Ritz Closet Seat Corp.,
17 USPQ2d 1466 (TTAB 1990). The evidence is of precisely the
same type and has been submitted for the same purpose as the
evidence submitted by opposer in support of its main case, i.e.,
to show purported use of the same marks on automobiles and
clothing.
Applicant has submitted a statement of objections, to which
opposer responded, challenging a substantial portion of the
evidence adduced during the testimony depositions of Mr.
Groumoutis taken on July 26, 2002 and January 14-15, 2003. We
have addressed some of these objections below. Other objections,
including some of those objections going to the weight of the
evidence rather than its admissibility, will be addressed as an
issue relating to the particular evidence is discussed. Unless
otherwise noted, the referenced objections pertain to the July
26, 2002 deposition.
Exhibits 2, 4, 5 (TUNDRA line books and brochures from 2001).
The objection is not well taken. Mr. Groumoutis's knowledge
provides a sufficient foundation for the brochures. Further,
applicant did not maintain this objection with respect to the
subsequent introduction of similar exhibits. On the other hand,
there is no evidence as to whether and to whom these brochures
7
Opposition No. 91116242
were ever distributed and they are therefore of limited probative
value.
Exhibit 19 (catalogue of TUNDRA accessories from 2002 of
opposer's alleged licensee, Arden Leather Company). The
objection is sustained. Although copies of all license
agreements were requested by applicant, a copy of this license
was not produced. Opposer does not dispute that this document
was covered by a discovery request or that it was not produced.
Applicant's objection to the testimony (at 248) regarding the
Mansack license agreement, which was admittedly not produced
during discovery, is sustained.
Exhibit 36. Applicant's objection to the introduction of a
TUNDRA TEC hang tag is sustained insofar as opposer is attempting
to introduce evidence on an unpleaded mark.
Exhibits 51, 52, 56, 58-60 (spec sheets from 1993-2001) and
Exhibits 100-333 (January 14-15, 2003 deposition; spec sheets
from 1987-2001, and invoices from 1993-2002). The objection on
the ground that the documents were not produced during discovery
is not well taken. The objections as to Exhibit Nos. 51, 52, 56,
58-60 were subsequently withdrawn during the deposition. As to
Exhibits 100-333, applicant did not specify the document requests
that were allegedly not satisfied. Further, opposer has
sufficiently shown that the document requests had only asked for
spec sheets and invoices covering certain years, and Mr.
Groumoutis testified that opposer had produced all the spec
sheets and invoices requested for the designated years.6
Opposer's remaining objections to this evidence are addressed
later in this section.
Exhibits 62, 63, 64 (TUNDRA brochures, undated). The objections
to these exhibits are sustained. Exhibit 62 is a brochure
identified as featuring a John Elway sportswear collection by
opposer for which no date has been provided or can be
ascertained. Although Mr. Groumoutis states that it was, or
would have been, handed out at trade shows there is no indication
as to when that occurred. Exhibit 63 is a brochure which appears
on its face to be distributed only in Canada and which was
6
However, opposer's contention that the requests asked for
"representative samples" of such documents has not been supported as a
copy of the disputed requests have not been made of record. Therefore,
applicant's objection to Mr. Groumoutis's testimony that these are only
a sample of some of the invoices in existence, on the basis that they
were not all produced, is sustained.
8
Opposition No. 91116242
identified by Mr. Groumoutis as dating back to the 1970s before
Mr. Groumoutis's employment with the company. Opposer has not
provided sufficient foundation for its introduction and, in any
event, it is unclear from the testimony whether this brochure, or
one like it, was distributed in the United States. Exhibit 64,
identified by Mr. Groumoutis as dating back to the 1970s,
predates his arrival at the company and Mr. Groumoutis was
unclear about whether it was actually distributed at trade shows.
Exhibit 67 (advertisement in Sedona Magazine, 2001 issue). The
objection to this exhibit is overruled. Mr. Groumoutis initially
mischaracterized the exhibit as an advertisement placed by
opposer but later clarified the source as a co-op advertisement
that was placed by one of opposer's customers and approved by
opposer.
Exhibit 68 (TUNDRA brochure, undated). Applicant's objection on
the basis of lack of foundation is overruled. Although the
brochure was initially insufficiently identified, applicant did
not maintain the objection after Mr. Groumoutis further
identified the brochure as "post 1978" and explained the time
frame of the brochure based on the current address of the
manufacturing plant, his recognition of one of the sales
representatives whose name was listed on the back of the
brochure, and the types of product sold in the catalogue. On the
other hand, the brochure is virtually of no probative value in
showing early use of the mark.
Exhibit 69 (articles and advertisements in Style Magazine with
various 1999 dates and an invoice for one of the ads; and an
advertisement from Western Garment Industry and Wholesale, marked
1968). The objection for lack of foundation as to Style Magazine
is overruled. However, the magazine is, on its face, a Canadian
publication, and it is unclear whether the publication was
distributed in the United States. The objection for lack of
foundation as to Western Garment Industry and Wholesale is
sustained. In any event, it is clear that this magazine is, too,
a Canadian publication and, again, there is no testimony that it
was distributed in the United States.
Exhibit 70 (article in the New York Post, undated). This
article, which is a write-up about opposer's Tundra retail store
in Manhattan (in existence from 1999-2001), is only admissible
for what it shows on its face.
9
Opposition No. 91116242
Exhibits 79, 80 and 81 (photographs of a cap, t-shirt, and shirt,
respectively, all bearing "TOYOTA TUNDRA"). Applicant's
objection to these exhibits for lack of foundation are sustained.
Mr. Groumoutis instructed his sales representative to go to "a
Toyota dealership in Seattle" and "see if they can find these."
(Test. at 177). Exhibit 82, the invoice for these purchases, is
also excluded and does not serve to provide a foundation for the
photographs. Further, this type of invoice, generated solely for
purposes of litigation is not, as opposer claims, a regularly
kept business record. In addition, applicant's admission in
response to discovery that the dealership sells clothing, does
not overcome the objection.
Exhibit 93 (article appearing on just-style.com, a third-party
website); Exhibit 94 (The Licensing Book, March 2002 issue), and
Exhibit 95 (cover for The Licensing Book); and Testimony at 167
and 175. The objection to Exhibit 94 on the ground of hearsay is
sustained. This publication is not admissible for the truth of
the matters shown therein, and cannot serve opposer's purpose of
proving that "Jeep consumer products has expanded with Old Toledo
brands" or of proving any other asserted matters regarding this
company's licensing activities. To the extent opposer is relying
on this evidence to show the source of Mr. Groumoutis's knowledge
about licensing, it is admissible. However, the evidence fails
to qualify Mr. Groumoutis as competent to testify about the
licensing activities of particular companies. Applicant's
objection to Exhibit 93, an article purporting to show the
affiliation of clothing designers with automobile companies, is
sustained for the same reason. Exhibit 95 which is a cover for
the front of The Licensing Book is not admissible to show that
the company identified thereon is the worldwide licensing agent
for Jeep. As to the testimony at 167, Mr. Groumoutis's
discussions with licensing agents is inadmissible hearsay.
Regarding the testimony at 175, Mr. Groumoutis is not competent
to testify about the alleged licensing activities of Jaguar, and
his testimony about his personal knowledge of a product allegedly
licensed by Jaguar will not be given any weight.
Exhibits 96 and 97 (Jacobson's catalogue, 2001; Bachrach
catalogue, August 2001). These exhibits have been sufficiently
identified as a catalogues of department stores and are
admissible to show that opposer's garments are displayed in the
catalogues. There is no evidence that the catalogues were
distributed, however, and therefore the evidence is entitled to
little weight.
10
Opposition No. 91116242
Exhibits 98 and 99. Correspondence between counsel for the
parties is inadmissible hearsay.
Testimony at 188, 189, 190, 251, and 266 (regarding activities of
Tundra Knitwear). Applicant has not provided a specific
explanation for this objection in its statement and, in any
event, has itself relied on this evidence throughout its case.
Testimony at 195. Mr. Groumoutis's testimony that opposer's
products appear in Norm Thompson catalogues is admissible,
however, his hearsay testimony regarding the distribution of the
catalogue is not.
Testimony at 129. Mr. Groumoutis was not employed by opposer
until 1991. His testimony regarding first use of the mark TUNDRA
in 1960s "based on discussions" with others in the company is
inadmissible hearsay. What a witness represents as his knowledge
must be based on personal observation or authenticated business
records rather than from hearsay based on the reports of others.
Objections based on leading questions relating to both the July
2002 and January 2003 depositions: Exhibit 21; Exhibits
consisting of invoices and spec sheets; certain identified
testimony. These objections go to the weight of the evidence and
not its admissibility. For the most part, we do not find the
questions were leading but more an attempt to focus the attention
of the witness on a particular issue. Further, applicant has
offered no explanation as to why specific questions should be
considered leading. However, to the extent that the questions
are patently leading (such as counsel's question "Would you
forecast that the advertising efforts of Tundra would grow?"
(Test., July 2002, at 20)) the elicited testimony has been given
little weight.
Objections based on lack of foundation: Exhibits 51, 52, 56, 58-
60 (spec sheets from 1993-2001) and Exhibits 100-333 (January 14-
15, 2003 deposition; spec sheets from 1987-2001, and invoices
from 1993-2002). These objections are overruled. Mr. Groumoutis
has adequately established that these documents are records
maintained by opposer in the ordinary course of business and that
he is qualified to testify as to such matters. In addition,
there is nothing to indicate that the records are not
trustworthy.
For purposes of context, spec sheets are generated from work
orders and show that the garments were produced. They are used
to set up cost sheets which are necessary to establish prices for
11
Opposition No. 91116242
shipping the garments. Spec sheets are generated, prepared and
maintained by the design department of Standard Knitting, and the
overall responsibility for them and their approval falls upon the
director of manufacturing, Dominic Sacco, or someone under his
authority. Each spec sheet contains a style number and each
style number corresponds to a specific garment type. The spec
sheet describes the garment, and also identifies the mark that
will appear on the garment, and where the mark will appear, i.e.,
whether on a neck label, hang tag, and/or packaging for the
garment.
The invoices identify style numbers, customers, dates of sale,
and quantities of goods sold. While the style number appears on
the invoice, the description of the garment sold does not.
However, as each style number corresponds to a particular garment
type, the description of the garment can be ascertained from the
spec sheet containing that style number.
The spec sheets and invoices are all admissible.7
Objection for lack of foundation to summary sheets contained in
Exhibits 51, 52, 56, 58-60. The summary sheets are lists of
style numbers compiled by Gaylene Schroeder Nishimura, opposer's
controller. Although they may have been prepared under the
authority and on instructions from Mr. Groumoutis they are
hearsay and will not be considered. The summary sheets are not
compilations prepared in the ordinary course of business,
although they were apparently derived from those records, but
instead were prepared for purposes of litigation, not a normal
activity of the company. Ms. Schroeder, who prepared the
summaries, was not called to testify as to the method used in
preparing them or to authenticate or establish their accuracy.
We note that there are spec sheets for many, but not all of the
invoices. Therefore, while all the invoices are admissible, in
determining whether a garment was actually sold, those invoices
for which there are no correlating spec sheets are of little
probative value.
7
However, we have disregarded the handwritten descriptions of the
garments that appear on some of the invoices. Those entries clearly
are not part of the original documents but rather were filled in for
purposes of this litigation.
12
Opposition No. 91116242
COUNTERCLAIMS FOR FRAUD
We turn then to the counterclaims to cancel opposer's three
pleaded registrations on the ground of fraud.8
As background, opposer, Standard Knitting, Ltd., is an
apparel manufacturer. It is a Canadian company with its
headquarters in Winnipeg, Manitoba. The clothing manufactured by
opposer is sold in the United States and Canada and in other
foreign markets. Opposer sells its clothing in the United States
through its wholly owned subsidiary, Tundra Knitwear, Ltd.
(Tundra Knitwear), a North Dakota corporation, and it licenses
Tundra Knitwear to use the TUNDRA and TUNDRA SPORT marks.
George Groumoutis is the chief operating officer of both
Standard Knitting and Tundra Knitwear. He joined Standard
Knitting in 1991 as controller, where his duties included
maintaining records of trademark registrations. He became vice
president of finance in 1992 with the same duties. Subsequently
in 1998, he became chief operating officer where he continued to
maintain the trademark portfolio and was also responsible for the
overall operations of Tundra Knitwear, that is, sales and
marketing of the TUNDRA and TUNDRA SPORT clothing in the United
States. Mr. Groumoutis reports to Michael Wang, the president of
8
All references to the discovery deposition of Mr. Groumoutis are to
the deposition taken on January 16, 2002, unless otherwise noted.
13
Opposition No. 91116242
Standard Knitting and Tundra Knitwear since approximately 1993,
and keeps Mr. Wang informed of trademark filings.
Mr. Groumoutis states that opposer prepares a new line of
clothing twice a year, for the fall and spring seasons. Mr.
Groumoutis, according to his testimony, has reviewed the entire
product line of the company since 1999, and that prior to 1999,
the line would have been reviewed by the design department headed
by Dominic Sacco, Ian Rentz, the individual responsible for the
Tundra Sport division of the company from 1992 to 1998, and Mr.
Wang. According to Mr. Groumoutis, Mr. Wang still participates
in the annual reviews and has done so since prior to 1994.
Mr. Wang signed the underlying applications for Registration
Nos. 2268109 and 2268110 and had the authority to do so. Ross
Yarnell, a director and the secretary of both Standard Knitting
and Tundra Knitwear, signed the statement of use in connection
with Registration No. 2408997. Mr. Yarnell was authorized to
sign documents in Mr. Wang's absence.
REGISTRATION NOS. 2268109 (TUNDRA) AND 2268110 (TUNDRA SPORT)
In May 1997, Mr. Groumoutis received the applications for
registration of the TUNDRA and TUNDRA SPORT from his attorney,
John Earley. According to Mr. Groumoutis, the identifications of
goods in the applications were not devised by anyone in opposer's
office, and he did not recall giving a list of goods to Mr.
14
Opposition No. 91116242
Earley to include and does not know where Mr. Earley got the
list. Mr. Groumoutis testified that upon receiving the
applications he "would have done a cursory review" (Disc. Dep. at
108) "which might mean going through the pages, just looking to
understand what, in general, is asked" (Disc. Dep. at 108-109)
but he did not recall what specific paragraphs he read or did not
read. He did, however, indicate that he did not make any effort
to confirm that the marks TUNDRA and TUNDRA SPORT were in fact
then being used on each of the goods listed in the applications
when the applications were filed, and that he made no effort to
verify what goods were in fact then being sold, and sold in the
United States, although he admitted that there were sources of
documentary information that could have been consulted (possibly
invoices, if not destroyed and if they could be located), or
price lists and cost sheets, for at least some of the goods.
As support for his claim of current use on all of the
identified goods, Mr. Groumoutis states that he "had personal
knowledge or knowledge of looking at past brochures that they, in
fact, had done those in the past" [the meaning of "done" in this
context being unclear], and he indicates that some brochures
would have been current, and some three or more years old.
(Disc. Dep. at 133.) At various points in his deposition, he
states that he may have discussed the goods to be included in the
applications with Mr. Sacco, and would have asked "have we ever
15
Opposition No. 91116242
sold these goods" (Disc. Dep. at 201, 202) or have we made, or
did we make these goods (Disc. Dep. at 164); or that he "may have
spoken" to "say Mr. Rentz" to find out if the list was correct
but "it may have been just general, are we using these, yes, we
are, and that would have been the end of it." (Disc. Dep. at
124.) However, when asked by applicant's counsel, "did you make
any..." [then proceeding to list items of children's clothing],
Mr. Groumoutis answered "not sure" as to children's sweaters, and
"no" as to hats, jackets, coats, t-shirts, vests, shorts and
shirts for children. (Disc. Dep. at 91-92.) When asked whether
TUNDRA had been used at least as early as May 14, 1997 on hats,
jackets, coats, t-shirts, Mr. Groumoutis initially stated that
"some children under the age of 18 can actually wear the clothing
that they make." Later, having agreed that children's clothing
is designed by size, not age, and using the example of a child
who is between three and four feet tall, Mr. Groumoutis stated
that opposer did not make sweaters, jackets, coats, t-shirts, or
vests for children that size. (Disc. Dep. at 77-79.) Then, when
asked about the use of TUNDRA SPORT on children's clothing, Mr.
Groumoutis said that he was not sure about sweaters, but that
opposer did not make hats, jackets, coats, t-shirts, or vests,
shorts, shirts, mitts, skirts, dresses, tank tops, jogging suits,
leisure suits, slacks, culottes, jump suits, blouses, scarves,
16
Opposition No. 91116242
footwear, undergarments or sleepwear for children. (Disc. Dep.
at 90, 93.)
As to the statement of use, Mr. Groumoutis at first did not
recall whether he reviewed it, but later says he would have
looked at it and discussed it "with say" Mr. Sacco. (Disc. Dep.
at 197.) He admits that opposer never sold any undergarments
under the TUNDRA SPORT mark. (Disc. Dep. at 194.)
When Mr. Groumoutis presented the three applications to Mr.
Wang for his signature, Mr. Wang states that he read the
applications and authorized their filing. He testified that at
the time of signing the applications, he was "personally aware"
that Standard Knitting was selling sweaters, jackets, t-shirts,
vests, and shirts in the United States under the TUNDRA mark, but
that he did not personally know whether opposer was selling hats
and coats under the mark. (Disc. Dep. at 30-31.) He also
testified that to his personal knowledge at the time of signing,
sweaters, t-shirts, vests, shirts were being sold in the United
States under the TUNDRA SPORT mark, but that hats, jackets, coats
and shorts were not. (Disc. Dep. at 38-39.) Mr. Wang states
that Mr. Groumoutis,
Told me that this was an application to register, I think it
was to register our trademark. I asked him, if he has read
it. And he said yes. I asked him if it was accurate. And
he said yes. And I signed it. (Disc. Dep. at 40.)
17
Opposition No. 91116242
Mr. Wang indicated that he did not look at any other documents in
connection with the applications at that time and that the
process took five minutes.
REGISTRATION NO. 2408997 (TUNDRA SPORT)
The statement of use was delivered by fax from Gaylene
Schroeder Nishimura, opposer's controller, to Mr. Yarnell for his
signature. Mr. Yarnell stated that he was not acquainted with
the trademark matters of Standard Knitting, that he was not kept
apprised of trademark matters, and that he was not informed of
the line of clothing sold by opposer under its marks in any
detail. Mr. Yarnell states that he did not discuss the contents
of the statement of use with Ms. Schroeder9 and had no
conversation with her about the accuracy of the statements. Mr.
Yarnell states that he was not personally acquainted with the
products on which the TUNDRA SPORT mark was in use in the United
States. He indicates that he relied on the implicit assurance
that the contents were accurate and that he made no effort to
obtain independent confirmation of the accuracy.
AMENDMENTS TO THE REGISTRATIONS
On April 24, 2001, after the opposition was commenced and
the original counterclaims were filed, opposer filed proposed
amendments to the registrations, not with the Board, but with the
9
As opposer refers to Gaylene Schroeder Nishimura as "Ms. Schroeder,"
we will do the same here.
18
Opposition No. 91116242
Post Registration section of the USPTO. Opposer sought to amend
Registration No. 2268109 (TUNDRA) to delete hats, coats and t-
shirts, and to limit the goods to "sweaters, jackets, vests, and
shirts"; Registration No. 2268110 (TUNDRA SPORT) to delete hats,
coats, shorts, and shirts, and to limit the goods to "sweaters,
jackets, t-shirts, and vests"; and Registration No. 2408997
(TUNDRA SPORT) to delete all goods except "pants."10
In each amendment opposer stated that it "believes certain
items...should either not have been listed, and/or should no
longer be listed"; that registrant "had proceeded with
information and belief when executing the [original
application/statement of use]"; and that registrant "has since
learned that it may have been mistaken about certain information
which caused it to list certain items of goods which Registrant
now believes should be changed."
When questioned about the use of the language, "should...
not have been listed"/"should no longer be listed," Mr.
Groumoutis explained:
If we had evidence other than invoices, that would suggest
that we actually made those wares, then we would consider it
as should no longer be listed. If we had no evidence, not
even invoice, or any other type of evidence that we ever did
those, then it should not have been listed. (Disc. Dep. at
208.)
10
The amendments were rejected by the Office as improperly filed and
were ultimately abandoned.
19
Opposition No. 91116242
This "other" evidence appears to have consisted essentially of
"discussions" with other individuals in the company to see if the
item had been "done" in the past, and if no documentary support
for the items could be found, they were deleted. (Disc. Dep. at
211.) Although this explanation is quite confusing, Mr.
Groumoutis had earlier stated that the decision to delete
particular goods meant that the goods were not being sold in 1997
when the application was filed. (Disc. Dep. at 209.) Mr.
Groumoutis admitted that under the TUNDRA SPORT mark, mitts and
skirts "had never been sold" and that, except for pants, all of
the goods in the '997 registration "should never have been"
listed. (Disc. Dep. at 214, 220.)
In explaining why he included an overly expansive listing of
goods in the registrations, Mr. Groumoutis said:
Because we felt that we had been using that in the past, and
a lot of time, ...the declarations that would come up to us
for signature, we had made an assumption, that because they
are coming from our law firm, and because they would have
got it from somewhere, that they got to be accurate. There
was cursory reviews done with the plant manager, did we make
these, and he would say, yeah, we made them.
What was not, in hindsight, in sitting here today, was that
we did not suggest a timeframe when was it made, can, and,
the other thing that we didn't do was, to who did we sell it
to, and do we have invoices to support those things?...And
hence, that's where the errors occurred, and why we filed an
amendment about year ago. (Disc. Dep. at 165.)
And further that,
Because we thought at that time that we had, because we had
done it, we could have done it eight years ago, we could
20
Opposition No. 91116242
have done it ten years ago. We relied on, I relied on, on
the director of manufacturing, his knowledge. And that's
why we did it. (Disc. Dep. at 165.)
DECISION
Fraud in obtaining a trademark registration occurs "when an
applicant knowingly makes false, material representations of fact
in connection with his application." Torres v. Cantine
Torresella S.r.l, 808 F.2d 46, 1 USPQ2d 1483, 1484 (Fed. Cir.
1986); Mister Leonard Inc. v. Jacques Leonard Couture Inc., 23
USPQ2d 1064, 1065 (TTAB 1992) ("Thus, according to Torres, to
constitute fraud on the PTO, the statement must be (1) false, (2)
a material representation and (3) made knowingly."). See also
Medinol Ltd. v. Neuro Vasx Inc., 67 USPQ2d 1205 (TTAB 2003) ("A
Trademark applicant commits fraud in procuring a registration
when it makes material representations of fact in its declaration
which it knows or should know to be false.").
Fraud must be proven with clear and convincing evidence, and
any doubt must be resolved against a finding of fraud. See Giant
Food, Inc. v. Standard Terry Mills, Inc., 229 USPQ 955, 962 (TTAB
1986) and cases cited therein. Furthermore, fraud will not lie
if it can be proven that the statement, though false, was made
with a reasonable and honest belief that it was true. See
Woodstock's Enterprises Inc. (California) v. Woodstock's
Enterprises Inc. (Oregon), 43 USPQ2d 1440 (TTAB 1997).
21
Opposition No. 91116242
Mr. Wang and Mr. Yarnell each represented in a verified
statement that the mark is in current use in commerce.
The critical question is whether the marks were in use in
connection with the identified goods as of the May 17, 1997
filing date of the use-based applications and as of the February
3, 2000 filing date of the statement of use in the intent-to-use
application. If the mark was in current use, then the first use,
even if false is not fraud. See Colt Industries Operating Corp.
v. Olivetti Controllo Numerico S.p.A., 221 USPQ 73, 76 (TTAB
1983) ("The Examining Attorney gives no consideration to alleged
dates of first use in determining whether conflicting marks
should be published for opposition.").
We first consider whether the statements of current use in
the applications and the statement of use were false.
It is clear from the record that the marks were not in use
on, at a minimum, most, if not all, of the items of children's
clothing identified in each of the three registrations. With the
possible exception of children's sweaters, it is clear that no
children's clothing was being sold in the United States as of the
relevant dates of filing.
We further note that the invoices (dated 1993-2002) for
which a spec sheet is associated, do not show sales of any items
of children's clothing and further, no children's clothing is
shown in any of opposer's catalogues or line books. In fact,
22
Opposition No. 91116242
contrary to opposer's contention, none of the documentary
evidence of record substantiates any use of either mark in
connection with children's clothing at any time, let alone as of
the relevant filing dates.11
As to other items of clothing, Mr. Groumoutis admitted
that the mark TUNDRA SPORT was never used on undergarments.
Further, in opposer's responses to third request for admissions
(nos. 36-45, 53, 57-72, 76-81) signed by opposer on December 21,
2001, opposer admitted that TUNDRA SPORT was not used in commerce
as of the filing of the statement of use in connection with the
following goods:
men's, ladies' or children's mitts, ladies' and children's
skirts, ladies' and children's dresses, men's, ladies' and
children's tank tops, men's, ladies' and children's leisure
suits, ladies' slacks, ladies' and children's jump suits,
ladies' and children's blouses, men's, ladies' and
children's socks, men's, ladies' and children's scarves,
men's and children's neckwear, men's, ladies' and children's
footwear, men's, ladies' and children's sleepwear, men's,
ladies' and children's belts.
Thus, the statements that the marks were in current use in
commerce on the goods identified in the three registrations were
false. Moreover, the false statements were material to the
issuance of the registrations. There is no question that the
USPTO would not have granted registrations covering goods on
which the mark is not being used.
11
The evidence allegedly shows, according to opposer, that all of the
listed products were actually made and/or sold.
23
Opposition No. 91116242
We turn then to the question of whether opposer committed
fraud when it signed the applications and statement of use
declaring that the marks are in current use in commerce.
Mr. Wang, who signed the underlying applications for these
registrations, did not personally know, at the time of signing,
whether or not certain of the identified goods, specifically,
hats and coats, were being sold under the TUNDRA mark in the
United States. He also stated that to his personal knowledge
hats, jackets, coats and shorts were not being sold under the
TUNDRA SPORT mark in the United States. Mr. Wang relied on Mr.
Groumoutis's representation that the applications were accurate.
However, that representation turned out to be false.
It is opposer's contention that the false statement was the
result of an honest mistake, and not due to any fraudulent
intent; that opposer was making and selling a variety of clothing
items; that the evidence, including invoices and spec sheets,
shows that all of the listed products were actually made and/or
sold by Standard Knitting, and substantiates the first use dates
for each of its challenged registrations; that opposer did not
know or understand the legal meaning of "use in commerce" and
that its understanding of use was that the item was made or was
sold; and that opposer had a reasonable belief, after making
inquiries, that the marks were being used with the listed goods.
As to the statement of use, opposer argues that it was filed on
24
Opposition No. 91116242
the basis of a mistaken belief that use was being made; that Mr.
Yarnell also had a belief that the mark was being used since it
was received from Ms. Schroeder to be signed; and that the mark
was in use with at least some goods as of the statement of use
date.
Mr. Groumoutis's asserted mistake, assuming it truly was a
mistake, was not a reasonable one. The language in the
application that the mark "is now in use in commerce" is clear,
and its meaning is unambiguous. It was not reasonable for Mr.
Groumoutis to believe that if the items of clothing were ever
made or sold, even if the last sale took place 20 years ago, it
would support a claim that the mark "is" in use on the goods.12
Further, opposer's claim that the mistake was innocent is
not credible. When Mr. Groumoutis was asked if he recalled ever
being advised by any lawyer that in order to claim that a mark is
being used in the United States, there has to be bona fide use in
the ordinary course of trade, he responded "Not in those exact
words, as you have indicated, but I understood it, that you had
to have used the mark before you can place a registration on it"
(Disc. Dep. at 142). Then, when asked, "When did you acquire the
understanding that a mark had to be used in the United States?"
12
Also, as a person who is familiar with the apparel industry, Mr.
Groumoutis must have understood that "children's" clothing is not
defined by age (under the age of 18 as he originally claimed) but
rather by size.
25
Opposition No. 91116242
Mr. Groumoutis answered "I guess in, when the first instance, in
my dealings with trademark matters. ...After 1993." (Disc. Dep.
at 142.)
Mr. Groumoutis clearly understood, prior to filing the
applications, that "use" of a mark meant use in the United
States. Given that none of Standard Knitting's clothing was made
in the United States, Mr. Groumoutis could not have honestly
believed that "use" simply meant that the goods were "made."
This is not a situation where opposer misunderstood the
significance of the statements it signed. Rather, opposer
disregarded the significance.
Considering that Mr. Groumoutis did not personally know
whether the marks were in use on children's clothing in the
United States, he was obligated to inquire and to the extent he
did inquire, by looking at prior registrations, relying on his
attorney's representations, and asking Mr. Sacco and/or Mr. Rentz
whether the goods were ever made or sold, those inquiries were
grossly insufficient.13 See Medinol, supra at 1209 ("Statements
made with such degree of solemnity clearly are — or should be —
investigated thoroughly prior to signature and submission to the
USPTO.").
13
The case of Kingsdown Med. Consultants Ltd. v. Hollister, Inc., 863
F.2d 867, 9 USPQ2d 1384 (Fed. Cir. 1988) cited by opposer is not
applicable here. See Minnesota Mining & Manufacturing Co. v. Shurtape
Technologies Inc., 62 USPQ2d 1606 (DC Minn 2002) (providing that
reliance on patent cases to resolve issues of trademark fraud is
misplaced).
26
Opposition No. 91116242
As to the statement of use, it is clear that Mr. Yarnell had
no idea which, if any, of the listed items were being sold in the
United States and that when Ms. Schroeder delivered the statement
of use to Mr. Yarnell for signature she made no representations
as to its accuracy. Mr. Yarnell signed the document stating that
TUNDRA SPORT is used on children's clothing, among other items of
clothing, when he knew or should have known that the mark was not
being used on those goods. Opposer is charged with knowing what
it is signing and by failing to make any appropriate inquiry, Mr.
Yarnell signed the statement of use with a "reckless disregard
for the truth." See Medinol, supra.
The specific or actual intent of Mr. Wang and Mr. Yarnell is
not material to the question of fraud. As stated in General Car
and Truck Leasing Systems, Inc. v. General Rent-A-Car Inc., 17
USPQ2d 1398, 1400 (S.D. Fla. 1990), "proof of specific intent to
commit fraud is not required, rather, fraud occurs when an
applicant or registrant makes a false material representation
that the applicant or registrant knew or should have known was
false."14 See also Medinol, supra.
14
It is important to note that the United States Patent and Trademark
Office relies on the thoroughness, accuracy and honesty of each
applicant. In general, the Office does not inquire as to the use of
the mark on each good listed in a single class and only requires
specimens of use as to one of the listed goods, relying on applicant's
declaration with regard to use on the other listed goods. TMEP
Sections 806.01(a) and 904.01(a) (4th ed. 2005). Allowing registrants
to be careless in their statements of use would result in registrations
improperly accorded legal presumptions in connection with goods on
27
Opposition No. 91116242
We find that opposer committed fraud on the USPTO in
procuring each of the three registrations. Accordingly the
registrations will be cancelled in their entireties. Fraud
cannot be cured by the deletion of goods from the registrations.
See Medinol, supra.
If opposer should ultimately prevail in any appeal of this
decision, we find in the alternative that the registrations would
in any event require restriction. Based on the record, it is
clear that certain goods must be deleted from the registrations.
In this regard, we have also considered opposer's testimony that
the items sought to be deleted by amendment should not be
included in the registrations.
In addition to the deletion of goods, the record further
shows that opposer would not be entitled to the 1969 date of
first use of TUNDRA asserted in Registration 2268109. Mr.
Groumoutis was not employed by the company until 1991 but he
based that date on "discussions" with other employees, an undated
advertisement appearing in a Canadian publication which Mr.
Groumoutis identified as dating back to 1968, and a hang tag
which he identified as being used since the 1960s. The
discussions are hearsay, Mr. Groumoutis did not know whether the
publication or the advertisement reached the United States, and
which the mark is not used.
28
Opposition No. 91116242
it is unclear whether the goods to which the hang tags were
applied were sold in the United States. The invoices (and
associated spec sheets), the only competent evidence of early
use, show sales of sweaters and shirts under the TUNDRA mark in
1993.15
Based on our review of the record, should Standard Knitting
ultimately prevail on the issue of fraud, we find that the
registrations should be restricted as follows:16
Registration No. 2268109 will be restricted to "men's and
ladies' clothing, namely sweaters, vests, and shirts." The dates
of first use in this registration will be changed to 1993.
Registration No. 2268110 will be restricted to "men's and
ladies' clothing, namely sweaters, jackets, t-shirts and vests."
Registration No. 2408997 will be restricted to "men's and
ladies' pants."
LIKELIHOOD OF CONFUSION
As fraud only relates to the acquisition of the
registrations, opposer is still entitled to rely on its common
law rights in asserting its claim of likelihood of confusion in
15
Opposer has stated in its brief that the Board may restrict the
registrations to conform to the documentary evidence of record.
16
We have construed applicant's claim that the marks have not been in
continuous use on the goods as part of the fraud claim and not a
separate abandonment claim. However, we have taken continuous use into
account in determining the extent to which the registrations should be
restricted.
29
Opposition No. 91116242
the opposition. See Volkswagenwerk AG v. Wheeler, 814 F.2d 812,
2 USPQ2d 1264 (1st Cir. 1987).
In order to establish priority based on common law rights,
opposer's burden is to demonstrate by a preponderance of the
evidence proprietary rights in TUNDRA and TUNDRA SPORT for
clothing prior to June 1, 1998, the filing date of applicant's
intent-to-use application. See, e.g., Eastman Kodak Co. v. Bell
Howell Document Management Products Co., 994 F.2d 1569, 26 USPQ2d
1912 (Fed. Cir. 1993); and NASDAQ Stock Market Inc. v. Antartica
S.r.l., 69 USPQ2d 1718 (TTAB 2003).
Prior common law rights in a mark may be established through
use of the designation in connection with a product in commerce
in a manner analogous to trademark use, i.e., through use in
advertising, use as a trade name, or any other manner of public
use.17 See Otto Roth & Co. v. Universal Foods Corp., 640 F.2d
1317, 209 USPQ 40 (CCPA 1981); and Jim Dandy Co. v. Martha White
Foods, Inc., 458 F.2d 1397, 173 USPQ 673 (CCPA 1972).
The testimony shows that opposer's invoices represent actual
sales of clothing in the United States, and that they identify
customers in the United States to whom the goods were sold and
the dates of such sales. When the invoices are viewed in
conjunction with the spec sheets that describe the garments and
17
Opposer's reference to a family of marks in its brief, will not be
considered as this claim was neither pleaded nor tried by the parties.
30
Opposition No. 91116242
the mark that appeared thereon, we find the evidence sufficient
to establish opposer's prior and continuous use in the United
States of TUNDRA since 1993 and TUNDRA SPORT since 1994, in
connection with clothing, including sweaters and shirts.18
Thus, we turn to the question of likelihood of confusion
between applicant's mark TUNDRA for "automobiles and structural
parts thereof" and opposer's marks TUNDRA and TUNDRA SPORT for
clothing. Our determination under Section 2(d) is based on an
analysis of all of the probative facts in evidence that are
relevant to the factors bearing on the likelihood of confusion
issue, including the similarities or dissimilarities between the
marks and the similarities or dissimilarities between the goods.
In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563
(CCPA 1973).
Applicant's mark TUNDRA is identical in sound and appearance
to opposer's mark TUNDRA and virtually identical in sound and
appearance to opposer's TUNDRA SPORT. The respective marks
convey somewhat different meanings and commercial impressions in
connection with clothing and automobiles. According to the
dictionary entry supplied by the parties, the term "tundra" is
18
Contrary to opposer's assertion, there is no evidence of prior use on
leather products such as wallets, or accessories such as belts, and in
any event common law use on such items has not been pleaded by opposer.
Further, as indicated earlier, evidence regarding the unpleaded mark or
registration for TUNDRA TEX will not be considered. Any references in
opposer's briefs to that mark or to another unpleaded mark, TUNDRATEC,
to which applicant has also objected, have not been considered.
31
Opposition No. 91116242
defined as "a level or rolling treeless plane that is
characteristic of arctic and sub arctic regions, consists of
black mucky soil with a permanently frozen subsoil...." While
TUNDRA as applied to clothing and particularly sweaters, suggests
protection against the elements, TUNDRA for automobiles suggests
the ruggedness of the vehicles or their suitability for rough
terrain. It can also be seen that TUNDRA is not an arbitrary or
fanciful mark in the context of opposer's goods but rather is
suggestive of opposer's goods.
Opposer argues that its marks are strong, and have had "wide
exposure," and that they are entitled to a broad scope of
protection. According to the record, however, exposure of the
TUNDRA and TUNDRA SPORT marks, if any, has been primarily to the
trade, not to the ultimate consumer. Opposer testified that it
advertises and promotes its clothing to the public through
catalogues, over the Internet, in newspapers, magazines and
cooperative advertisements, and through the use of its marks on
packaging for the clothing and point of purchase displays.
However, the extent of such advertising to consumers in the
United States is unknown and cannot be determined from the
record. There is for the most part no testimony as to whom or at
least to what extent any clothing catalogues were distributed.
Opposer has submitted an example of its cooperative advertising
32
Opposition No. 91116242
from 2001 with no indication as to often such ads might have run
or how many customers it might have reached.19
Mr. Groumoutis testified that "in some years" its
advertising expenditures "could be anywhere from five to eight
percent of our gross revenue" and that for the current year
(presumably 2002) it would be "in the mid or upper mid six
figures." (Test., July 2002, at 19.) This figure is
unsubstantiated, but more important there is no indication as to
whether or to what extent that figure reflects advertising in the
United States and directed to consumers.
Mr. Groumoutis also testified that opposer sells its
clothing to department stores and apparel shops in the United
States such as J.C. Penney, Jacobson's, Dillard's, Target, and
Marshall Fields and through catalogue companies such as Norm
Thompson and Bachrach, and that opposer presently has about 1600
retail customers. He also stated that opposer's clothing was
sold through its own retail store which was open for two years
from 1999-2001. There is also evidence that in one instance
opposer sold its clothing through the Green Bay Packers ProShop
catalogue (2000-2001)20 and also in connection with the 1994 World
19
Other evidence consisting of catalogues featuring TUNDRA clothing
worn by the sports figures John Elway and Bobby Hull, to the extent we
can determine, were only distributed to the trade, not to the public,
and possibly not in the United States.
20
Applicant's objection to the Green Bay Packers catalogue (Exhibit 66)
on the basis of lack of foundation is overruled. Mr. Groumoutis
33
Opposition No. 91116242
Cup Soccer Tournament. Again, however, there is no evidence of
volume of sales generated from any of these activities.21
Opposer's testimony regarding the number of units sold
annually22 as of "right now" in the United States (Test. at 110,
July 26, 2002) is not particularly meaningful without a context
for that figure or a dollar amount to associate with it.23 Also,
that figure represents the number of units sold to retailers, not
to ultimate consumers.
In addition, there is no evidence that consumers were
motivated to purchase opposer's TUNDRA SPORT clothing through the
testified from personal knowledge that the clothing shown in the
catalogue is representative of the TUNDRA SPORT products that were
specifically made by opposer for the Green Bay Packers to sell. The
letter "G" appears on the front of the items and they contain a TUNDRA
SPORT neck label. Although Mr. Groumoutis had nothing to do with the
preparation of the catalogue itself and had no direct knowledge of its
distribution, opposer provided information for the TUNDRA SPORT
clothing that appears in the catalogue, and had personal knowledge that
those particular products were for the most part sold through the
catalogues and that they sold very well. However, we agree with
applicant that the testimony as to where, other than through the
catalogue, the clothing was sold, is hearsay and lacking in foundation.
21
Mr. Groumoutis testified during his January 15, 2002 discovery
deposition regarding the number of catalogues distributed by one of
opposer's customers but he could not identify the customer or the time
period and did not identify whether it was a retail or wholesale
customer.
22
The actual figures are confidential and subject to a protective
order.
23
Opposer points to several invoices evidencing sales to the identified
retail stores but we cannot possibly draw any meaningful conclusions
about total sales from this evidence. Opposer's unsupported assertion
in its reply brief regarding the cost per unit of opposer's clothing
has been given no consideration. The portion of Mr. Groumoutis's
discovery deposition which allegedly supports this assertion has not
been made of record.
34
Opposition No. 91116242
Green Bay Packers ProShop catalogue and in connection the 1994
World Cup Soccer Tournament by recognition of opposer's mark or
anything other than the opportunity to wear clothing with a Green
Bay Packers logo or a World Cup logo.
Opposer's evidence as a whole falls far short of
establishing that TUNDRA and TUNDRA SPORT have achieved any
degree of strength and recognition in the consumer market, or
that opposer's mark is entitled to a broad scope of protection.
In view of the suggestive quality of opposer's marks in
connection with clothing, the marks are entitled to a more
limited scope of protection than arbitrary or fanciful marks.
We turn then to the question of whether applicant's goods
and opposer's goods are sufficiently related and/or whether the
circumstances surrounding the marketing of the goods are such
that purchasers encountering them would, in view of the
similarity of the marks, mistakenly believe that the goods
emanate from the same source. See Monsanto Co. v. Enviro-Chem
Corp., 199 USPQ 590 (TTAB 1978); and In re International
Telephone & Telegraph Corp., 197 USPQ 910 (TTAB 1978). Even if
the marks are identical, if these conditions do not exist,
confusion is not likely to occur. See, e.g., Nautilus Group Inc.
v. ICON Health and Fitness Inc., 71 USPQ2d 1173, 1185 (Fed. Cir.
2004); In re Unilever Limited, 222 USPQ 981 (TTAB 1984); and In
re Fesco, Inc., 219 USPQ 437 (TTAB 1983).
35
Opposition No. 91116242
Opposer's clothing and applicant's automobiles are vastly
different goods and opposer has failed to show that they are
related. Despite any overlap in purchasers, there is no
persuasive evidence that such purchasers would expect these
vastly different goods to emanate from the same source.
Opposer argues that the goods are "inherently" related,
contending that automobile manufacturers often use the same
trademarks on automobiles and clothing; that it is common for
automobile manufacturers to sell both automobiles and clothing
and that clothing manufacturers use marks used for their clothing
in connection with the sale of automobiles;24 and that it is the
practice of the automobile industry, including Toyota, to use the
same trademarks on both automobiles and clothing.
In support of these contentions, opposer has submitted a
number of third-party registrations of marks which, in each
instance, are registered for both clothing and automobiles;25
24
The cases cited by opposer, including Jaguar Cars, Ltd. v. Skandrani,
771 F.Supp. 1178, 18 USPQ2d 1626 (SD Fla 1991), cannot be relied on by
opposer as proof of the facts found therein.
25
Opposer introduced most of these registrations by notice of reliance.
Several other third-party registrations, as well as two pending
applications, were introduced during the testimony deposition of Mr.
Groumoutis on July 23, 2002 as Exhibits 84-89. Applicant has objected
to these exhibits on the ground of lack of foundation. In view of the
purpose for which this evidence is offered, the objections are
sustained. The applications/registrations are all admissible as
official records of the USPTO, but only for what they show on their
face. Mr. Groumoutis's testimony regarding the entities to whom the
registrations were granted and his speculative and unsupported
assertions as to the nature of their business activities will not be
36
Opposition No. 91116242
companies; and evidence of applicant's purported sales of
clothing under the mark TUNDRA.26
The relevant question is whether purchasers would perceive
goods as diverse as clothing and automobiles as emanating from
the same source. See Shen Manufacturing Co., Inc. v. The Ritz
Hotel Limited, 393 F.3d 1238, 73 USPQ2d 1350 (Fed. Cir. 2004).
Third-party registrations may have some probative value to the
extent that they serve to suggest that the listed goods are of a
type which may emanate from a single source. However, this
considered. Further, the applications are not proof of anything except
that they were filed on a particular date. They are not proof, as
opposer claims, that applicant herein is the owner of the applications.
26
Opposer's additional evidence is either irrelevant or inadmissible
for opposer's intended purpose. The Lexis/Nexis articles (submitted by
notice of reliance) are hearsay as to Toyota's and/or any third-party
merchandising activities. The third-party website materials (Exhibit
90, Buick.com, and Exhibit 91, Autos.Yahoo.com), introduced to show
affiliations of clothing designers with automobile companies, have been
properly authenticated and are admissible for what they show on their
face. However, opposer has laid no foundation for offering reliable
testimony about the companies identified in these materials or the
purported business activities of those companies, the practice in the
industry or that the public would be aware of that practice. Further,
this evidence is not competent to prove, as opposer claims, that
"Toyota may have a tendency to 'overwhelm' the senior user Standard
Knitting." (Reply to Applicant's Statement of Objections at 7.)
Opposer's request that the Board take judicial notice of the additional
third-party website materials attached to its reply brief is denied.
These materials are clearly not proper subject matter for judicial
notice. See Michael S. Sachs Inc. v. Cordon Art B.V., 56 USPQ2d 1132
(TTAB 2000). Further, applicant objected to introduction of these
materials at the oral hearing. Opposer's evidence that the Lexus
division of Toyota Motor Sales, U.S.A. has used COACH (leather
products) to promote some of its automobiles, although admissible
(through applicant's responses to discovery requests) is irrelevant to
the question of whether the parties' clothing and automobiles are
related goods.
37
Opposition No. 91116242
evidence is insufficient to convince us, as opposer claims, that
its clothing will be perceived by consumers as emanating from or
sponsored by applicant. Third-party registrations are not proof
of sales of the products shown therein; nor are they evidence
that the marks shown therein are in use or that the public is
familiar with them, or even aware of them. See AMF Inc. v.
American Leisure Products, Inc., 474 F.2d 1403, 177 USPQ 268
(CCPA 1973).
To the extent applicant itself offers clothing, the evidence
shows that the clothing is marketed under TOYOTA TUNDRA, not
TUNDRA alone. In any event, there is no evidence in the record
to establish that such goods typically emanate from companies
that sell automobiles or that purchasers would naturally expect
both products to emanate from the same source.
Opposer, citing Tuxedo Monopoly, Inc. v. General Mills Fun
Group, Inc., 648 F.2d 1335, 209 USPQ 986 (CCPA 1981), and
asserting the existence of reverse confusion, argues that "famous
marks, like Toyota TUNDRA based on Toyota's boasted sales and
advertising allegations are frequently used on clothing." Reply
Brief at 2. An important factor in the Tuxedo Monopoly case was
the fame of the mark ("...MONOPOLY may properly be termed a
'famous' mark. ...[I]t is a matter of common knowledge that
famous marks are frequently used on items such as clothing...").
Supra at 988. Obviously, a famous mark is more likely to be
38
Opposition No. 91116242
associated by the purchasing public with a greater breadth of
goods or services. See Dan Robbins & Associates, Inc. v. Questor
Corp., 559 F.2d 1009, 202 USPQ 100 (CCPA 1979). It is clear
opposer's marks are not famous. As to applicant's mark, the
applied-for mark is TUNDRA, not "TOYOTA TUNDRA." The strength or
fame of "TOYOTA TUNDRA" is not the issue in this case. To
whatever extent fame has attached to the name TOYOTA, there is no
showing that any such fame extends to the mark TUNDRA.27
Further, the parties' very different products are sold in
completely different marketing environments. Opposer's clothing
is sold through the customary channels for such goods such as
apparel shops and department stores. Applicant's automobiles, on
the other hand, are sold through automobile dealerships, not
customary channels of trade for clothing. The marks for these
goods would not be encountered by purchasers under marketing
conditions that would give rise to a likelihood of confusion.
Opposer, however, argues that the channels of trade for
clothing and automobiles overlap in that both parties market
their products over the Internet.28 In support of this
27
Opposer argues that registration of TUNDRA for automobiles would
wrongfully preclude opposer from expanding its TUNDRA name to
automobiles as other clothing manufacturers have done. Among other
problems with this argument, there is no persuasive evidence of any
genuine intent by opposer to license its marks for use on automobiles.
28
We see no support in the record for opposer's claim that applicant
also markets its automobiles through professional sporting events.
39
Opposition No. 91116242
contention, opposer has introduced printouts of pages from the
eBay auction website showing that clothing and vehicles can both
be found on the website.29 First, while applicant may promote its
vehicles over the Internet, Mr. Bastien has testified that
applicant does not sell them over the Internet. Further, simply
because automobiles and clothing may both be marketed over the
Internet does not lead to the conclusion that the goods would
emanate from the same source. The fact that opposer could enter
the word "tundra" on the eBay search engine and pull up what
appears to be a randomly ordered listing of hundreds of "tundra"
goods, including cars and car parts, clothing, duck decoys,
cereal bowls and underwater photo equipment,30 is clearly not
proof that all these goods move in the same channels of trade or
that they would all be perceived as emanating from a common
source. The evidence does not establish that clothing and
automobiles are related or that their sale even under identical
marks would be likely to cause confusion. See Champion
29
Applicant has objected to this evidence (Exhibits 334 and 340).
These exhibits have been authenticated but are only admissible for what
they show on their face and not for the purpose of showing that they
display opposer's and/or applicant's products. Mr. Groumoutis did not
place the item(s) on the eBay website and did not know who did. As to
Exhibit 334, applicant's objection based on opposer's failure to
produce the documents in response to discovery is overruled as Mr.
Groumoutis testified that he retrieved these documents only shortly
before his testimony deposition.
30
There is no explanation for the order of the listings.
40
Opposition No. 91116242
International Corporation v. Genova, Inc., 199 USPQ 301 (TTAB
1978).
It is true that the purchasers of opposer's clothing are
ordinary consumers and that those same consumers would also be
the purchasers of applicant's automobiles. At the same time,
however, it is clear that automobiles are expensive and would
only be purchased after careful consideration, thereby reducing
the risk of confusion.
Opposer's vague hearsay accounts of alleged instances of
actual confusion are of no probative weight. Further, opposer
has not explained how the records of telephone calls to
applicant's company show any manner of actual confusion, and we
find that they do not.
In view of the foregoing and our finding that opposer's
marks are entitled to a more limited scope of protection than
arbitrary or fanciful marks, and since opposer has provided no
persuasive evidence that automobiles on the one hand and clothing
on the other are related goods, the protection of opposer's marks
should not extend beyond opposer's clothing to automobiles.
Accordingly, we find that the contemporaneous use of the marks in
connection with the respective goods is not likely to cause
confusion.
Decision: The counterclaims for cancellation of opposer's
registrations on the ground of fraud are sustained. Registration
41
Opposition No. 91116242
Nos. 2268109, 2268110 and 2408997 will be cancelled in due
course. The opposition on the ground of likelihood of confusion
is dismissed.
42