throbber
Sanford Astor
`
`J. Alison Grabell
`
`BIRCH, STEWART, KoLAscH & BIRCH, LLP
`10940 Wilshire Boulevard, 18”‘ Floor
`Los Angeles, California 90024
`Telephone: (310) 209-4400
`Facsimile:
`(310) 209-4450
`E-Mail: sba@bskb.com
`Jag
`s
`.c0m
`
`. @b kb
`
`Attorneys for Applicant
`
`llllllllllllllllllllllllllllllllllllllllllllllllll
`
`I
`
`05-03-2004
`
`u.s. Patent & TMOfcITM Mail Rap! 0t *2?
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`APPLICANT’S NOTICE OF
`RELIANCE ON RELEVANT
`PORTIONS OF THE NEIMAN
`MARCUS AND SAKS FIFTH AVENUE
`CATALOGUES
`
`Opposition No. 156,740
`
`In the Matter of Application Serial No. 78/127,374
`Filed May 8, 2002
`Mark: FAHARI and Design
`Published in the Official Gazette of March 18, 2003
`
`)
`)
`)
`)
`)
`
`) )
`
`) )
`
`)
`)
`
`ELIE TAHARI,
`
`Opposer,
`
`v.
`
`FAHARI, INC.
`
`_
`Applicant.
`
`K.'\FAHAR/8887lPLDWotice’RelianceNMCata/og. doc
`
`CERTIFICATION UNDER 37 CFR 1.8
`I hereby certify that this correspondence is being deposited with the
`United States Postal Service as First Class Mail in an envelope
`:4. -Commissioner for Tr
`Addressed to:
`
`'
`'
`- =.-
`s s, 2900 Crystal
`"
`
`
`
`.
`
`By:
`
`,
`
`'
`
`Drive, Arli A
`,1
`49. g4.‘ 4 .
`
` T
`.
`.
`",/
`
`
`
`
`

`
`
`
`To Gottlieb, Rackman & Reisman, P.C., attorneys of record for Opposer Elie Tahari,
`
`please take notice that, pursuant to 37 CFR § 2.122(e) and TBMP § 703.03, Applicant relies on
`
`the relevant portions of the Neiman Marcus catalogue of ay 2004 at pages 50-57 and the Saks
`
`Fifth Avenue catalogue of October 2003 attached hereto. The material being offered is relevant
`
`to absence of a likelihood of confusion between Applicant’s mark FAHARI and Design, Serial
`
`No. 78/127,374 and Opposer’s ELIT TAHARI Marks.
`
`Dated: April 30, 2004
`
`BIRCH, STEWART, KOLASCH & BIRCH, LLP
`
` J. Alison Grabell
`
`Attorneys for Applicant
`FAHARI, INC.
`
`K:\FAHARl8887\PLDWotice ’Re/ianceNMCata/og. doc
`
`

`
`
`
`PROOF OF SERVICE
`
`I am over the age of 18
`I am employed in the County of Los Angeles, State of California.
`and not a party to the within action; my business address is Eighteenth Floor, 10940 Wilshire
`Boulevard, Los Angeles, California 90024-3952. On April 30, 2004, I served the following
`document(s): APPLICANT’S NOTICE OF RELIANCE ON RELEVANT PORTIONS OF
`THE NEIMAN MARCUS AND SAKS FIFTH AVENUE CATALOGUES on the interested
`parties in this action, by placing a true copy thereof enclosed in a sealed envelope as follows:
`
`Amy B. Goldsmith, Esq.
`GOTTLIEB, RACKMAN & REISMAN, P.C.
`270 Madison Avenue
`
`New York, New York 10016-0601
`
`(X)
`
`(
`
`(
`
`)
`
`)
`
`()
`
`BY MAIL: I am "readily familiar" with the firm's practice of collection and processing
`correspondence for mailing. Under that practice it would be deposited with the U.S.
`Postal Service on the same day with postage thereon fully prepaid at Los Angeles,
`California, in the ordinary course of business.
`I am aware that on motion of the party
`served, service is presumed invalid if postal cancellation date or postage meter date is
`more than one day after the date of deposit for mailing in affidavit.
`
`BY FACSIIVIILE: I caused the document(s) to be transmitted via facsimile to the offices
`of the addressees at the addressees' facsimile numbers.
`
`BY PERSONAL SERVICE: I caused the document(s) to be delivered by personal service
`to the offices of the addressees.
`
`BY FEDERAL EXPRESS: I caused the document(s) to be delivered by priority
`overnight, next-business day service to the offices of the addressees.
`
`I declare that I am employed in the office of a member of the Bar of this Court at whose
`direction the service was made.
`
`Executed this 30”‘ day of April, 2004, at Los Angeles, California.
`
`Deborah Purnell
`
`K:\FahaI1’8887\PLD\SJMolion. doc
`
`

`
`

`
`

`
`
`
`Sanford Astor
`
`J. Alison Grabell
`
`BIRCH, STEWART, KOLASCH & BIRCH, LLP
`10940 Wilshire Boulevard, 18” Floor
`Los Angeles, California 90024
`Telephone: (310) 209-4400
`Facsimile:
`(310) 209-4450
`E-Mail: sba@bskb.com
`jag@bskb.com
`
`Attorneys for Applicant
`
`lllllllllllllllllllllllllllllllll\l\ll\\lll\\0
`
`I
`
`05.03-2004 .
`[TM Man RG91
`u.s. Patent 5 ""°'°
`
`D1. #22
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`In the Matter of Application Serial No. 78/127,374
`Filed May 8, 2002
`Mark: FAHARI and Design
`Published in the Official Gazette of March 18, 2003
`
`APPLICANT FAHARI, INC.’S
`MOTION FOR SUMMARY
`
`JUDGMENT; MEMORANDUM OF
`POINTS AND AUTHORITIES IN
`
`SUPPORT THEREOF; AND
`
`DECLARATIONS OF DOMINIQUE
`
`BRAUD, SANFORD ASTOR AND J.
`ALISON GRABELL
`
`) ) )
`
`) )
`
`) )
`
`) )
`
`ELIE TAHARI,
`
`Opposer,
`
`V.
`
`FAHARI, INC.
`
`)
`Applicant.
`_M_____:____:)
`
`Opposition No. 156,740
`
`CERTIFICATION UNDER 37 CFR 1.8
`I hereby certify that this correspondence is being deposited with the
`United States Pos l Service as First Class
`aiLin an envelope
`
`Addressed to: fifi ommissione
`o Trademarks, 2900 Crystal
`Drive, Arlin s_
`'
`
`i
`
`

`
`
`
`TABLE OF CONTENTS
`
`I.
`
`II.
`
`RECITATION OF UNDISPUTED FACTS ........................................ ..
`
`ARGUMENT ............................................................................ . .
`
`2
`
`7
`
`A. SUMMARY JUDGMENT IN FAHARI’S FAVOR IS APPROPRIATE
`
`BECAUSE THERE IS NO GENUINE ISSUE OF MATERIAL FACT
`
`TO SUPPORT TAHARI’S OPPOSITION ..................................... ..
`
`7
`
`B. UNDER du PONT, “FAHARI AND DESIGN” DIFFERS FROM
`
`“TAHARI”, WHEN THE MARKS ARE CONSIDERED IN THEIR
`
`ENTIRETIES, SUCH THAT THE FACTORS WEIGH HEAVILY
`IN FAHARI’S FAVOR AND CONFUSION IS UNLIKELY ............... ..
`
`9
`
`1.
`
`FAHARI And Design And The TAHARI Marks are Dissimilar
`As To Sight, Sound, Connotation And Commercial Impression. .
`
`The Parties’ Goods Are On The Whole Dissimilar, With The
`Exception of Tee-Shirts .................................................. ..
`
`The Parties’ Trade Channels Are Different ........................... ..
`
`12
`
`Fahari’s Purchasers Purchase On Impulse, Whereas Tahari’s
`Purchasers Are “Sophisticated” Purchasers .......................... ..
`
`Fame, If Any, Of The TAHARI Marks Is Irrelevant ................ ..
`
`The Trademark Office Record Shows No Other Similar
`
`Marks For Similar Goods ............................................... ..
`
`14
`
`14
`
`There Has Been No Actual Confusion Between FAHARI
`
`and Design and the TAHARI Marks .................................. ..
`
`Fahari and Tahari Have Used Their Respective Marks
`Concurrently Without Actual Confusion ............................. ..
`
`Fahari Uses FAHARI And Design Only On Tee-Shirts,
`Whereas Tahari Uses the TAHARI Marks On An
`
`Extensive Variety Of Designer Apparel ............................... ..
`
`15
`
`K:\1-‘arari'8B87\pld\'1‘ab1e of Contents.doc
`
`

`
`
`
`10.
`
`There Are No Agreements Between Fahari And
`Tahari To Preclude Confusion Because Confusion
`
`Is Not Likely............................................................... ..
`
`11.
`
`12.
`
`13.
`
`Fahari Has The Right To Exclude Others From
`Using The FAHARI And Design Mark On Tee-Shirts ............. ..
`
`Potential Confusion Is Unlikely Between FAHARI
`And Design And The TAHARI Marks ................................ ..
`
`The Probative Facts In This Case Support A Finding
`That Confusion Between FAHARI And Design And
`The TAHARI Marks Is Unlikely......................................... ..
`
`15
`
`16
`
`16
`
`16
`
`III.
`
`SUMMARY ............................................................................. ..
`
`17
`
`

`
`TABLE OF POINTS AND AUTHORITIES
`
`CASES
`
`PAGE
`
`Anderson v. Liberty Lobby, Inc.
`477 U.S. 242, 248, 106 S. Ct. 2505, 91 L. Ed. 2d 202 (1986) ..................... ..
`
`7, 8
`
`Celotex Corp. v. Catrett
`477 U.S. 317, 106 S. Ct. 2548, 91 L. Ed. 2d. 265 (1986) ............................ .. 7, 8
`
`Copelands’Ents. Inc. v. CNVInc.
`20 USPQ2d 1295 (Fed. Cir. 1991) ..................................................... ..
`
`Department of Commerce v. US. House ofRepresentatives
`525 U.S. 316, 327, 119 S. Ct. 765, 772, 148 L. Ed. 2d 797 (1999) ................ ..
`
`8
`
`8
`
`In re E. L DuPont de Nemours
`
`177 USPQ 563 (CCPA 1973) ........................................................... ..
`
`9
`
`In re Electrolyte Laboratories, Inc.
`913 F.2d 930, 16 USPQ2d 1239, 1240 (Fed. Cir. 1990) ............................ ..
`
`11
`
`Genesco, Inc. v. Levi Strauss & Co.
`
`219 USPQ 1205 (TTAB 1983), aff’d, 222 USPQ 939
`(Fed. Cir. 1984) ............................................................................ ..
`
`7
`
`Kangol Ltd. v. KagaRoos U.S.A., Inc.
`23 USPQ2d 1945, 1946 (Fed. Cir.1992) ................................................ .. 13
`
`L. D. Kichler Co. v. Davoil, Inc.
`
`52 USPQ 2d 1307, 1309 (Fed. Cir. 1999) .............................................. .. 7
`
`Lever Bros. Co. v. Babson Bros. Co.
`
`94 USPQ 161 (CCPA 1953) ........................................................ ..
`
`10, 11
`
`In re Sloppy Joe 's Int ’l, Inc.
`43 UPSQ2d 1350, 1355 (TTAB 1997) ................................................. .. 11
`
`Sweats Fashions, Inc. v. Pannill Knitting Co., Inc.
`4 USPQ2d 1793, 1795 (Fed. Cir. 1987) ................................................ ..
`
`8
`
`iii
`
`

`
`
`
`Statutes
`
`15 U.S.C. § 1052(d) ............................................................................. ..
`
`3, 14
`
`15 U.S.C. § 1063 ................................................................................ ..
`
`2
`
`Fed. R. Civ. P. 56 ................................................................................. .. 2, 7, 8
`
`Fed. R. Civ. P. 56(c) .............................................................................. ..
`
`Trademark Rules of Practice § 2.116 ....................................................... ..
`
`7
`
`2
`
`Trademark Act, Section 2(d) ................................................................... ..
`
`3, 14
`
`Trademark Act of 1946, as amended, Section 13 ........................................... ..
`
`2
`
`iv
`
`

`
`
`
`Applicant Fahari, Inc. (“Fahari”) hereby moves the Trademark Trial and Appeal Board,
`
`pursuant to § 2.116 of the Trademark Rules of Practice and Rule 5 6 of the Federal Rules of Civil
`
`Procedure, for summary judgment against opposer Elie Tahari (“Tahari”) dismissing the
`
`opposition against Fahari’s application Serial No. 78/127,374. In the alternative, if the
`
`Trademark Trial and Appeal Board denies Fahari’s Motion for Summary Judgment, Fahari
`
`requests that the testimony and other due dates in this opposition be reset.
`
`This Motion is based upon the record, consisting of Fahari’s application Serial No.
`
`78/ 127,374; the pleadings on file in this opposition; Fahari’s Responses to Opposer’s First Set of
`
`Interrogatories Nos. 1, 4, 5, 6, 7, 8, 9, 13; Fahari’s documents produced in response to Opposer’s
`
`First Set of Document Requests bearing the production numbers F0001-F0019; Tahari’s
`
`Responses to Applicant’s First Set of Requests for Admissions Nos. 3, 4, 8, 17, 19, 22, 23, 24,
`
`31, 32, 33, 34; Tahari’s Responses to Applicant’s Second Set of Interrogatories No. 34; copies of
`
`documents produced by Tahari in response to Fahari’s First Set of Requests for Production of
`
`Documents and Things, bearing Production Nos. OPP 001 — OPP 064; and the attached
`
`Declarations of Dominique Braud, Sanford Astor and J. Alison Grabell and the Exhibits thereto.
`
`I. RECITATION OF UNDISPUTED FACTS
`
`This is an action by Tahari opposing registration of application Serial No. 78/127,374 of
`
`Fahari under the provisions of Section 13 of the Trademark Act of 1946, as amended, 15 O.S.C.
`
`§ 1063.
`
`

`
`
`
`Fahari, Inc.’s Background
`
`Fahari is a small business, created by its president Dominique Braud to support “pride”
`
`among African-American women. Fahari, of Los Angeles, California, is engaged in the business
`
`of selling tee-shirts and has conducted its business since April 2002. Braud Decl. 1] ll; Astor
`
`Decl. 1] 3, Ex. 1 (Interrogatory Response No. 1). Fahari filed application Serial No. 78/127,374
`
`on May 8, 2002 for the mark FAHARI and Design, for “t-shirts”, on an intent to use basis. The
`
`mark consists of the word “FAHARI”, which means “have pride in yourself’ in Swahili,
`
`appearing under a drawing of a woman’s face, Afro hairdo and partial shoulder. Braud Decl. 1] 6,
`
`7 Ex. 1. The “i” at the end of FAHARI has a slash mark instead of a dot. The Trademark
`
`Attorney found no similar registered or pending mark which would bar registration of Fahari’s
`
`mark under Section 2(d) of the Trademark Act, 15 U.S.C. § l052(d). The Trademark Office
`
`approved FAHARI and Design for publication and the mark was published for opposition in the
`
`Office Gazette of March 18, 2003. This opposition was instituted on June 19, 2003.
`
`Dominique Braud created the FAHARI and Design mark in December 2000 because it
`
`conveyed African-American pride. Braud Decl. 1] 5. She intended to target goods and appeal to
`
`the Afiican-American neo-soul market‘. Braud Decl. 1] 4; Astor Decl. 1] 3, Ex. 1 (Interrogatory
`
`Response No. 4). Ms. Braud selected the word “fahari” because the word means “pride” in
`
`Swahili, one of the major African languages. Braud Decl. 1] 6, Ex. 1; Astor Decl. 1] 3, Ex. 1
`
`' “Neo-Soul” is a term describing a form of music that developed in the l990’s, combining elements of
`rhythm and blues, hip hop, and the soul music of artists like Aretha Franklin and Marvin Gaye. The sound
`is classified as “urban music”, and also includes radio formats catering predominantly to the African-
`American audience. Braud Decl. 1] 4; Astor Decl.1] 6, Ex. 4.
`
`3
`
`

`
`
`
`(Interrogatory Response No. 4). As to the design, Ms. Braud was inspired by a photograph she
`
`saw of an unidentified African-American woman and created an image depicting an African-
`
`American woman with a full Afro hairdo. Braud Decl. 1] 7; Astor Decl. 1] 3, Ex. 1
`
`(Interrogatory
`
`Response No. 4). Ms. Braud combined the word “fahari” and the image of an African-American
`
`woman to create the FAHARI and Design mark. Braud Decl. 1] 8; Astor Decl. 1] 3, Ex. 1
`
`(Interrogatory Response No. 4). Prior to filing the application, Ms. Braud conducted an on-line
`
`search of Trademark Office records for the mark FAHARI and found no conflicts. Braud Decl. 1]
`
`9; Astor Decl. 1] 3, Ex. 1 (Interrogatory Response No. 5).
`
`Ms. Braud first sold tee-shirts bearing the FAHARI and Design mark on March 2, 2002,
`
`at the Poetic Soul event in Long Beach, California, a poetry-reading event accompanied by
`displays and sales ofvarious fashions. Braud Decl. 1] 10; Astor Decl. 1] 3 Ex. 1 (Interrogatory
`
`Responses Nos. 6, 7). Fahari subsequently sold its tee-shirts bearing the FAHARI and Design
`
`mark at the African World Festival in Milwaukee, Wisconsin on July 31, 2003 and at the Afiican
`
`Marketplace at the Sports Arena in Los Angeles, California in August 2003. Braud Decl. 1] 12,
`
`13; Astor Decl. 1] 3, Ex. 1 (Interrogatory Response No. 7). Fahari’s customers are typically
`
`individuals who purchase a single tee-shirt. Braud Decl. 1] 12, 13; Astor Decl. 1] 3, Ex. 1
`
`(Interrogatory Response No. 13).
`
`Fahari also maintained a web site located at the URL www.fahari.com, which offered for
`
`sale tee-shirts bearing the FAHARI and Design, from March 2, 2002 to approximately November
`
`1, 2003. Braud Decl. 1] 14; Astor Decl. 1] 3 Ex. 1 (Interrogatory Response No. 7). The Fahari
`
`web site has not operated since March 23, 2004. Braud Decl. 1] 19, Ex. 3.
`
`From March 2002 through October 2003, Fahari’s sales of tee-shirts and other goods
`
`

`
`
`
`from its web site were approximately $15,000.00 and sales from festival attendance were
`
`approximately $10,000.00. Braud Decl. 1] 15, 16; Astor Decl. 1] 3, Ex. 1 (Interrogatory Response
`
`No. 8). Fahari has expended less than $7,000.00 on advertising and promoting its tee-shirts and
`
`developing and hosting its web site. Braud Decl. 1] 17; Astor Decl. 1] 3, Ex. 1 (Interrogatory
`
`Response No. 9). An urban soul singer wearing Fahari’s tee-shirt is featured in an article in Time
`
`Qut Magazine in February 2003. Braud Decl. 1] 18, Ex. 2; Astor Decl. 1] 3, Ex. 1 (Interrogatory
`
`Response No. 18[sic]). Other than the fact that the singer was wearing the tee-shirt, Fahari had
`
`no involvement in the singer’s appearance in the tee-shirt and did not know about the coverage in
`
`advance. Braud Decl. 1] 18; Astor Decl. 1] 7, Ex. 5.
`
`Elie Tahari’s Background
`
`Elie Tahari is the owner of Registration Nos. 1,489,405 for the mark TAHARI, 1,814,977
`
`for the mark TAHARI, 2,653,216 for the mark ELIE TAHARI and 2,681,767 for the mark ELIE
`
`TAHARI, as shown in the table below.
`
`
`2 G°°dS
`
`1489405
`Women’s high fashion designer blouses, skirts and suits
`1814977
`Women’s high fashion designer blouses, skirts, and suits;
`jackets, skirts, pants, dresses, suits, sweaters, jumpsuits,
`blouses, shirts, coats, vests, bustiers, belts, raincoats, jeans,
`bod suits and T-shirts.
`
`TAHARI
`
`
`
`
`
`
`
`
`
`Apparel, namely women’s high fashion design blouses, skirts
`and suits; jackets, skirts, pants, dresses, suits, sweaters,
`jumpsuits, blouses, shirts, coats, vests, bustiers, belts,
`raincoats, jeans, bodysuits, and t-shirts; lingerie, over-coats and
`children’s clothing, namely dresses, skirts, blouses, jackets,
`ants, shirts, blazers, ullovers, cardi ans, overalls and socks.
`
`Leather goods, namely belts, handbags, key cases, wallets, tote
`bags, cosmetic bags sold empty, backpacks, farmy packs, and
`lu; ae; and umbrellas.
`
`ELIE TAHARI
`
`2653216
`
`
`
`ELIE TAHARI
`
`2681767
`
`

`
`
`
`Elie Tahari is the Chairman and Chief Executive Officer of Tahari, Ltd. and is a corporate
`
`officer of Tahari, Ltd. Astor Decl. 1] 5, Ex. 3 (Opposer’s Responses to Requests for Admissions
`
`Nos. 22, 23, 24); Astor Decl. 1] 4, Ex. 2 (Opposer’s Response to App1icant’s Second Set of
`
`Interrogatories, No. 34). Elie Tahari is also Chairman, CEO and a corporate officer of Tahari
`
`Store-WFC Co., Inc. Astor Decl. 1] 5, Ex. 3 (Opposer’s Responses to Requests for Admissions
`
`Nos. 31, 32, 33). Elie Tahari is an upscale fashion designer who caters to a sophisticated user.
`
`Astor Decl. 1] 8, Ex. 6. Tahari’s aggregate sales figures for merchandise offered under the
`
`TAHARI Marks exceeded $100,000,000.00 (one hundred million dollars) at wholesale in 2002.
`
`Astor Decl. 1] 5, Ex. 3 (Response to Request for Admissions No. 15). Advertising expenditures
`
`in 2002 for goods bearing the Tahari Marks exceeded $1,000,000.00. Astor Decl. 1] 5, Ex. 3
`
`(Response to Requests for Admissions No. 17). Tahari did not advertise in Time Out magazine.
`
`Astor Decl. 1] 5, Ex. 3 (Response to Request for Admission No. 8). Tahari maintains a web site
`
`located at the URL www.tahari.com, which provides a detailed explanation of the stores in which
`
`Tahari’s goods are sold and distributed and the publications in which Tahari advertises its goods.
`
`Grabell Decl. 1] 6, Ex. 4; Astor Decl. 1] 5-7, Exs. 3, 5 (Responses to Requests for Admissions
`
`Nos. 3, 34).
`
`Tahari’s collection is offered at upscale department stores, among them Bergdorf
`
`Goodman in New York City. Astor Decl. 1] 3, Ex. 1 (Responses to Requests for Admission Nos.
`
`4, 19). Bergdorf Goodman is one of the most exclusive fashion retailers in the United States,
`
`“known throughout the world for elegance, luxury and superior service.” Grabell Decl. 1] 3, Ex.
`
`1. Tahari also sells it goods at Neiman Marcus and Saks Fifth Avenue. In addition, Tahari offers
`
`its goods at its own shops, Elie Tahari Central Valley (New York) and Elie Tahari Las Vegas.
`
`

`
`
`
`Astor Decl. 1] 5, Ex. 3 (see Response to Request for Admission No. 4). Tahari is unaware of any
`
`actual confiasion between the parties’ marks. among consumers. Astor Decl. 1] 5, Ex. 3
`
`(Responses to Applicant’s First Set of Requests for Admission No. 10(a)).
`
`The facts in this case are not in dispute. Tahari carmot raise any issue of material fact
`
`which would be contrary to Fahari’s evidence that the FAHARI and Design mark when used on
`
`or in connection with Fahari’s tee-shirts, is not likely to cause confusion, or to cause mistake or
`
`to deceive. Accordingly, the opposition must be dismissed.
`
`II.
`
`ARGUMENT
`
`A.
`
`SUMMARY JUDGMENT IN FAHARI’S FAVOR IS APPROPRIATE BECAUSE
`
`THERE IS NO GENUINE ISSUE OF MATERIAL FACT TO SUPPORT
`
`TAHARI’S OPPOSITION.
`
`The standard for granting summary judgment in an opposition on the issue of likelihood
`
`of confilsion is within the Board’s scope. Genesco, Inc. v. Levi Strauss & C0., 219 USPQ 1205
`
`(TTAB 1983), affd, 222 USPQ 939 (Fed. Cir. 1984). Summary judgment is proper where the
`
`pleadings, depositions, responses to interrogatories, admissions on file and affidavits show that
`
`there is no genuine issue as to any material fact and that the moving party is entitled to a
`
`judgment as a matter of law. Fed. R. Civ. P. 56(c); Celotex Corp. v. Catrett, 477 U.S. 317, 106
`
`S. Ct. 2548, 91 L. Ed. 2d. 265 (1986); L. D. Kichler Co. v. Davoil, Inc., 52 USPQ 2d 1307, 1309
`
`(Fed. Cir. 1999). The evidence must be viewed in a light favorable to the non-moving party and
`
`all justifiable inferences must be drawn in the non-moving party's favor. Anderson v. Liberty
`
`Lobby, Inc., 477 U.S. 242, 248, 106 S. Ct. 2505, 91 L. Ed. 2d 202 (1986).
`
`In a motion for summary judgment, once the moving party has made a primafacie case
`
`showing that summary judgment is appropriate under Rule 56 of the Federal Rules of Civil
`
`

`
`
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`Procedure, the burden of going forward shifts to the non-moving party to show, by affidavit or
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`otherwise, that there is an absence of evidence to support the summary judgment motion.
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`Celotex, 106 S. Ct. at 2554; Sweats Fashions, Inc. v. Pannill Knitting Co., Inc., 4 USPQ2d 1793,
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`1795 (Fed. Cir. 1987). A party does not meet this burden simply by resting on mere denials or
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`conclusory assertions, but must produce evidence in accordance with Fed. R. Civ. P. 56 showing
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`that there is a genuine issue of material fact for trial. Copelands ’ Ents. Inc. v. CNVInc., 20
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`USPQ2d 1295 (Fed. Cir. 1991); Sweats Fashions, 4 USPQ2d at 1795. Summary judgment must
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`be granted “forthwith” when one party is unable to show a genuine issue as to a material fact on
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`which that party will bear the burden of proof at trial, so long as judgment against the party is
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`appropriate as a matter of law. Department of Commerce v. US. House ofRepresentatives, 525
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`U.S. 316, 327, 119 S. Ct. 765, 772, 148 L. Ed. 2d 797 (1999). A “genuine issue” exists where
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`the evidence before the court is of such a nature that a reasonable jury could return a verdict in
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`favor of the non-moving party. A mere “scintil1a” of evidence, or evidence that is only
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`“colorable” or is not sufficiently probative, is not enough to defeat summary judgment. Instead,
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`there must be evidence upon which a jury could reasonably find in the non-moving party’s favor.
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`Anderson v. Liberty Lobby, Inc., 106 S. Ct. at 2510-12.
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`Whether a fact is “material” hinges on the substantive law at issue. The fact is “material”
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`if it might affect the outcome of the case. Id. at 2510. Disputes over irrelevant or unnecessary
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`facts are insufficient to defeat a motion for summary judgment. Id.
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`Here, no genuine issue of material fact exists. Tahari must show that there is a likelihood
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`of confusion between the FAHARI and Design mark for tee-shirts and the TAHARI Marks for a
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`variety of women’s clothing. This Tahari cannot do because it cannot meet the multi-factor test
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`

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`
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`for likelihood of confitsion as set forth in In re E. I. DuPont de Nemours, 177 USPQ 563 (CCPA
`
`1973).
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`B.
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`UNDER du PONT, “FAHARI AND DESIGN” DIFFERS FROM “TAHARI”,
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`WHEN THE MARKS ARE CONSIDERED IN THEIR ENTIRETIES SUCH
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`THAT THE FACTORS WEIGH HEAVILY IN FAHARI’S FAVOR AND
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`CONFUSION IS UNLIKELY.
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`The FAHARI and Design mark differs in its entirety from the TAHARI Marks as
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`to the majority of the du Pont factors such that there can be no likelihood of confusion. The
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`factors weigh heavily in Fahari’s favor, as summarized below. The Board must weigh the
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`evidence relative to each factor and balance the factors to reach its conclusion. No single factor
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`is dispositive; the Board must consider all of the evidence in reaching its decision. Id. at 567-
`
`68. Afier the Board has considered the factors, it will be clear that the evidence of no likelihood
`
`of confusion weighs overwhelmingly in Fahari’s favor.
`
`The thirteen duPont factors are: 1) similarity or dissimilarity of the marks as to sight,
`
`sound, connotation and commercial impression; 2) similarity or dissimilarity and nature of the
`
`goods; 3) similarity or dissimilarity of trade channels; 4) “impulse” purchasers vs.
`
`“sophisticated” purchasers; 5) fame of the prior mark; 6) number and nature of similar marks
`
`used on similar goods; 7) actual confusion; 8) concurrent use without actual confusion;
`
`9) variety of goods on which mark is used; 10) market interface; 11) applicant’s right to exclude
`
`others; 12) extent of potential confusion; and 13) other established probative facts.
`
`1.
`
`FAHARI And Design And The TAHARI Marks Are Dissimilar As To Sight,
`Sound, Connotation And Commercial Impression.
`
`The composite word and design mark FAHARI and Design looks quite different from the
`
`TAHARI word marks. FAHARI and Design consists of four components:
`
`the word “FAHARI”
`
`

`
`
`
`and the distinctive design of an African-American woman’s head, hair and shoulder. TAHARI,
`
`on the other hand, consists of a single element, which is the surname of Opposer and, as
`
`evidenced in the record, has no other meaning. ELIE TAHARI, similarly, is Opposer’s name and
`
`consists only of those two terms.
`
`Any visual and phonetic similarities in the “-ahari” syllables of “FAHARI” and
`
`“TAHARI” are not sufficient, without more, to support a finding of likelihood of confusion. Cf
`
`Lever Bros. Co. v. Babson Bros. Co., 94 USPQ 161 (CCPA 1953). In that case, both marks —
`
`SURF and SURGE for detergents, contained the first three letters “SUR” and there were no other
`
`relevant distinguishing features of the marks. The Court found that the letter similarity was
`
`insufficient to support a finding of likelihood of confusion. Even without the significant design
`
`elements of Fahari’s mark, buyers would be unlikely to confuse FAHARI and TAHARI merely
`
`on the basis of the “ahari” portion of the marks. Id. at 163-64 (holding that SURGE and SURF
`
`are not confusingly similar, despite the same first three letters, because of the differences in their
`
`respective meanings). Similarly here, the marks have completely different meanings: “fahari” is
`
`a Swahili word meaning “pride”; “Tahari” is the name of a women’s apparel designer.
`
`Further, the majority ofFahari’s composite word and design mark also consists ofa
`depiction of the head, hair and a shoulder of an Afiican-American woman above the term
`
`FAHARI. The design elements of the mark comprise more than 85% of the entire mark and are
`
`the dominant elements. The TAHARI Marks lack a dominant design component. In fact, the
`
`TAHARI Marks derive their commercial significance from the Tahari name, which distinguishes
`
`them from the FAHARI and Design mark. Where the ordinary purchaser of the goods is unlikely
`
`to confuse the meaning of the marks, there is no likelihood of confusion between the marks.
`
`10
`
`

`
`
`
`Lever Bros. Co. v. Babson Bros. Co., 94 USPQ at 163. On balance, the numerous differences
`
`between the marks at issue considered in their entireties above and beyond several shared letters
`
`make the likelihood of confusion remote.
`
`When considering whether a composite word and design mark is confusingly similar to a
`
`word mark, the Court of Appeals for the Federal Circuit has stated that there is no general rule
`
`for determining which element —- word or design -— predominates in a composite mark, nor is the
`
`dominance of one or the other dispositive. In re Electrolyte Laboratories, Inc., 913 F.2d 930, 16
`
`USPQ2d 1239, 1240 (Fed. Cir. 1990) (holding that composite letter and design mark K+ and
`
`stylized letter mark K+EFF, for dietary supplements, were not confusingly similar). The court
`
`considered all elements of the marks and stated that “the design [of K+] is a significant feature”
`
`and that “the design of the marks is substantially different.” Li. Even more so when the
`
`predominant design element is an “eye-catching” portrait, consumers are likely to perceive and
`
`remember the portrait portion of the mark. See In re Sloppy Joe 's Int ’I, Inc., 43 UPSQ2d 1350,
`
`1355 (TTAB 1997) (finding that the portrait of Hemingway in the mark SLOPPY JOE’S and
`
`Hemingway portrait was confusingly similar to HEMINGWAY and HEMINGWAY’S for
`
`similar restaurant services).
`
`In the instant case, the FAHARI and Design mark consists of the term “FAHARI”
`
`dominated by several distinctive design elements. In contrast, the TAHARI Marks consist of the
`
`names “TAHARI” or “ELIE TAHARI” only. Unlike the “Hemingway/’ case, where the author’s
`
`portrait reinforced the “Hemingway” name and word portion of the applicant’s mark in
`
`consumers’ perceptions, here Fahari’s African-American woman design does r1_o_t represent Elie
`
`Tahari. Indeed, the design portion of Fahari’s mark is so “eye-catching” and dominant that the
`
`11
`
`

`
`
`
`likelihood of consumers’ confusing FAHARI and Design with the TAHARI Marks is virtually
`
`nil. Accordingly, based on the Federal Circuit’s approach, the visual and phonetic differences
`
`between FAHARI and Design and the TAHARI Marks render confusion unlikely.
`
`The parties’ marks also convey quite different connotations and commercial impressions.
`
`FAHARI and Design derived from strong verbal and visual references to Africa. “FAHARI” is
`
`the Swahili word for “pride”. The design elements are unquestionably African or Afiican—
`
`American. Fahari consciously and deliberately sought to create and adopt a mark that connoted
`
`and conveyed a commitment to pride among African-American women. The TAHARI Marks, in
`
`contrast, just as deliberately and consciously, were created and adopted to refer to and reflect the
`
`persona of Elie Tahari. Thus, the marks are not confusingly similar and this factor is virtually
`
`dispositive in Fahari’s favor.
`
`2.
`
`The Parties’ Goods Are On the Whole Dissimilar, With The Exception of
`Tee-Shirts.
`
`Fahari seeks to register FAHARI and Design for tee-shirts only. The TAHARI Marks are
`
`used on a wide variety of apparel, as evidenced in the record and set forth above. Although the
`
`TAHARI Marks cover tee-shirts, tee-shirts are but one item among the myriad items covered by
`
`Tahari’s pleaded registrations. As the marks at issue overlap as to a single item only, the weight
`
`of this factor favors Fahari.
`
`3.
`
`The Parties’ Trade Channels Are Different.
`
`Fahari sold its tee-shirts to individuals attending three Afiican-American heritage
`
`festivals:
`
`the Poetic Soul poetry-reading event in Long Beach, California; the African
`
`Marketplace in Los Angeles, California; and the African World Festival in Milwaukee,
`
`Wisconsin. Fahari also made sales via its website located at the URL www.fahari.com. Although
`
`12
`
`

`
`
`
`purchasers of Fahari’s tee-shirts were unknown to Fahari, it is reasonable to conclude, and there
`
`is no reason not to, that the purchasers were Afiican-American individuals and/or individuals
`
`interested in African-American heritage.
`
`Tahari’s customers, in contrast, purchase Tahari’s numerous apparel items bearing the
`
`TAHARI Marks in upscale department stores throughout the United States, including perhaps the
`
`most exclusive American department store. See Opposer’s Responses to Requests for Admission
`
`Nos. 3 and 19. Although African-Americans probably purchase goods bearing the TAHARI
`
`Marks, it is equally clear that Tahari, unlike Fahari, does not target specifically African-American
`
`channels of trade.
`
`Not only is there no evidence that Fahari and Tahari sell their respective goods in the
`
`same charmels of trade, but the Board must consider the “normal and usual charmels of trade and
`
`distribution” for the parties’ goods to determine whether confusion is likely. Kangol Ltd. v.
`
`KagaRoos U.S.A., Inc., 23 USPQ2d 1945, 1946 (Fed. Cir. 1992). In that case, the Court found
`
`that both the applicant’s golf shirts and the opposer’s athletic shirts, bearing confusingly similar
`
`marks, were likely to be sold in department stores or specialty stores “in close proximity” to each
`other. That is not the case here. As Fahari has shown, its goods bearing the FAHARI and
`
`Design mark are sold specifically at special, one-time events for and about Afiican-Americans.
`
`In contrast, Tahari’s goods are sold regularly at upscale, and exclusive, department stores
`
`throughout the United States and Tahari’s own retail outlets in New York and Nevada.
`
`4.
`
`Fahari’s Purchasers Purchase On Impulse, Whereas Tahari’s Purchasers
`Are “Sophisticated” Purchasers.
`
`As established above, Fahari sold its tee-shirts at ethnic festivals. It is commonplace for
`
`K:\Fahan"888 7\PLD\SJMotion. doc
`
`I 3
`
`

`
`
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`festival attendees to purchase commemorative or thematic tee-shirts as “souvenirs” on impulse
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`because they know that that is the only opportunity to acquire such goods. In contrast, Tahari
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`condu

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