Trademark Trial and Appeal Board Electronic Filing System. 39145
`
`ESTTA Tracking number: ESTTA14982
`
`Filing d9-t33
`
`09/13/2004
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Proceeding
`
`91158634
`
`Defendant
`ASHLEY NETTYE, INC.
`ASHLEY NETTYE, INC.
`§ 463 Seventh Avenue
`New York, NY 10018
`
`JAMES W. DABNEY
`’PENNIE & EDMONDS LLP
`
`Address
`
`, 1155 AVENUE OF THE AMERICAS
`NEW YORK, NY 10036
`
`Submission
`
`1. Applicant's Opposition to Summary Judgment 2. Declaration of
`Stuart Pollack Wl Exhibits 3. Declaration of Jacqueline Lesser W’
`i Exhibits 4. Motion to Strike Declarations
`
`Filer's Name
`Filer's e—mail
`Signature
`
`Jacqueline Lesser
`jlesser@whitecase.com
`/Jacqueline Lesserl
`
`Date
`
`09/13/2004
`
`Attachments
`
`Applicant's Opposition to Summary Judgementpdf ( 32 pages )
`Declaration of Stuart Pollack.pdf ( 2 pages )
`Exhibit A Part 1 to Declaration of Stuart Pollack.pdf ( 28 pages )
`§ Exhibit A part 2 to Declaration of Stuart Pollack.pdf ( 21 pages )
`Exhibit B to Declaration of Stuart Pollack.pdf ( 8 pages )
`Exhibit C to Declaration of Stuart Pollackpdf ( 4 pages )
`Exhibit D to Declaration of Stuart Pollackpdf ( 2 pages )
`§ Exhibit E B Collection Label.pdf ( 1 page )
`Exhibit F-B Kids Hang Tag.pdf( 1 page )
`Exhibit F-B Kids Label.pdf ( 1 page )
`Exhibit F-B Kids on garment 1.pdf ( 1 page )
`Exhibit F-B Kids on garment 2.pdf ( 1 page )
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`

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`Exhibit F-B Kids on garment 3.pdf ( 1 page )
`Exhibit F-B Kids on garment 4.pdf ( 1 page )
`Declaration of Jacqueline Lesser.pdf ( 2 pages )
`Exhibit A to Declaration of Jacqueline Lesser.pdf ( 9 pages )
`§ Exhibit B to Declaration of Jacqueline Lesser.pdf ( 6 pages )
`Exhibit C to Declaration of Jacqueline Lesser.pdf ( 7 pages )
`Exhibit D to Declaration of Jacqueline Lesser.pdf ( 3 pages )
`Exhibit E to Declaration of Jacqueline Lesser.pdf ( 5 pages )
`Exhibit F to Declaration of Jacqueline Lesser.pdf ( 31 pages )
`§ Exhibit G Part 1 to Declaration of Jacqueline Lesser.pdf ( 21 pages )
`Exhibit G Part 2 to Declaration of Jacqueline Lesser.pdf ( 20 pages )
`Exhibit H Part 1 to Declaration of Jacqueline Lesser.pdf ( 27 pages )
`Exhibit H Part 2 to Declaration of Jacqueline Lesser.pdf ( 32 pages )
`§ Motion to Strike Declaration.pdf ( 4 pages )
`
`

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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`____________________________________________________________________ X
`
`Federated Department Stores, Inc.,
`
`'
`
`Opposer,
`
`V.
`
`Ashley Nettye, Inc.,
`
`:
`Applicant.
`____________________________________________________________________ X
`
`Oppdsition No. 91 158634
`
`APPLICANT’S OPPOSITION TO
`
`SUMMARY JUDGMENT
`
`WHITE & CASE, LLP
`1155 Avenue of the Americas
`
`New York, New York 10036
`(212) 819-8200 A
`
`Jonathan E. Moskin
`Jacqueline Lesser
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`Table of Contents
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`figs
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`INTRODUCTION ......................................................................................................................... .. 1
`
`I.
`
`FACTS ............................................................................................................................... ..2
`
`II. ARGUMENT..................................................................................................................... .. 7
`
`A.
`
`B.
`
`C.
`
`D.
`
`E.
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`Summary Judgment Standard ..................................................................................... ..7
`
`Opposer Has No General Rights In the Merely Descriptive Term “b kids” .............. .. 8
`
`Federated Has Not Met its Burden of Proof on the Issue of Priority. ..................... .. 14
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`Federated Has Not Met Its Burden of Proving Likelihood of Confusion. ............... .. 19
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`Conclusion ................................................................................................................ ..24
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`TABLE OF AUTHORITIES
`
`FEDERAL CASES
`
`In re A La Vieille Russie, Inc., 60 U.S.P.Q.2d 1895 (T.T.A.B. 2001) ......................................... ..12
`
`AMF Inc. v. Am. Leisure Prods., Inc., 474 F.2d 1403, 177 U.S.P.Q. 268 (C.C.P.A. 1973) ........ ..21
`
`Accu Personnel Inc. v. AccustaflSys. Inc., 38 U.S.P.Q. 2d 1443 (T.T.A.B. 1996) ....................... ..8
`
`Am. Optical Corp. v. Am. Olean Tile Co., 185 U.S.P.Q. 405 (S.D.N.Y. 1974) .......................... ..13
`
`Anderson v. Liberty Lobby, Inc. , 477 U.S. 242 (1986) .................................................................. ..7
`
`Application ofE.I. duPont DeNemours & Co., 476 F.2d, 1357, 177 U.S.P.Q. 563
`(C.C.P.A. 1973) ................................................................................................................. ..2, 19
`
`Banfl Ltd. v. Federated Dept. Stores, Inc., 638 F. Supp. 652 (S.D.N.Y. 1986) ....................... ..8, 9
`
`Banfl," Ltd. v. Federated Dept. Stores, Inc., 841 F.2d 486 (2d Cir. 1988) ............................... ..9, 13
`
`BellSouth Corp. v. Planum Tech. Corp., 14 U.S.P.Q.2d 1555 (T.T.A.B. 1988) ......................... ..19
`
`BigStar Entm’t, Inc. v. Next Big Star, Inc., 105 F. Supp. 2d 185 (S.D.N.Y. 2000) ..................... ..22
`
`Estate ofBiro v. Bic Corp., 18 U.S.P.Q.2d 1382 (T.T.A.B. 1991) .............................................. ..16
`
`In re Bonni Keller Collections Ltd, 6 U.S.P.Q.2d 1224 (T.T.A.B. 1987) .................................. ..12
`
`In re Boston Beer Co.Ltd. P’shp., 198 F.3d 1370, 53 U.S.P.Q.2d 1056 (Fed. Cir. 1999) ..... ..12, 17
`
`In re Burndy, 300 F.2d 938, 133 U.S.P.Q. 196 (C.C.P.A. 1962) ................................................ ..20
`
`Champagne Louis Roederer, S.A. v. Delicato Vineyards, 148 F.3d 1373, 47 U.S.P.Q.2d
`1459 (Fed. Cir. 1998) ............................................................................................................. ..23
`
`Commodore Elecs. Ltd. v. CBMKabushiki Kaisha Opposition, 26 U.S.P.Q.2d 1503
`(T.T.A.B. 1993) ................................................................................................................. ..7, 16
`
`Copelands'Enters Inc. v. CNV, Inc., 945 F.2d 1563, 20 U.S.P.Q.2d 1295 (Fed. Cir. 1991) ........ ..7
`
`In re Dayco Prods., Eaglemotive Inc., 9 U.S.P.Q.2d 1910 (T.T.A.B. 1988) .............................. ..21
`
`Dyneer Corp. v. Auto. Prods. plc., 37 U.S.P.Q.2d 1251 (T.T.A.B. 1995) .............................. ..7, 17
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`In re E.I. Kane, Inc., 221 U.S.P.Q. 1203 (T.T.A.B. 1984) .......................................................... ..17
`
`In re Electrolyte Labs. Inc., 929 F.2d 645, 16 U.S.P.Q.2d 1239 (Fed. Cir. 1990) ...................... ..2l
`
`Era Corp. v. Elec. Realty Assocs., Inc., 211 U.S.P.Q. 734 (T.T.A.B. 1981) ............................... ..18
`
`GHMumm & Cie v. Desnoes & Geddes, Ltd, 917 F.2d 1292, 16 U.S.P.Q.2d 1635 (Fed.
`Cir. 1990) ............................................................................................................................... ..19
`
`Georgia-Pacific Corp. v. Great Plains Bag Co., 614 F.2d 757, 204 U.S.P.Q. 697
`(C.C.P.A. 1980) ..................................................................................................................... ..20
`
`H Marvin Ginn. Corp. v. Int’l Ass’n ofFire Chiefs, Inc., 228 U.S.P.Q. 528 (Fed. Cir.
`1986) ...................................................................................................................................... ..12
`
`In re J.M Originals Inc., 6 U.S.P.Q.2d 1393 (T.T.A.B. 1987) .................................................. ..21
`
`Keebler Co. v. Murray Bakery Prods., 866 F.2d 1386, 9 U.S.P.Q.2d 1736 (Fed. Cir.
`1989) ................................................................................................................................ ..22, 23
`
`Kellogg Co. v. Pack'em Enters., 951 F.2d 330, 21 U.S.P.Q.2d 1142 (Fed. Cir. 1991) ............... ..23
`
`In re Kwik Lok Corp., 217 U.S.P.Q. 1245 (T.T.A.B. 1983) ........................................................ ..17
`
`Larami Corp. v. Talk to Me Programs, Inc., 36 U.S.P.Q.2d 1840 (T.T.A.B. 1995) ................... ..14
`
`Liqwacon Corp. v Browning-Ferris Indus., Inc., 203 U.S.P.Q. 305 (T.T.A.B. 1979) ................ ..18
`
`Lloyd's Food Prods., Inc. v. Eli ’s, Inc., 987 F.2d 766, 25 U.S.P.Q.2d 2027 (Fed. Cir.
`1993) ........................................................................................................................................ ..7
`
`In re Melville Corp., 18 U.S.P.Q.2d 1386 (T.T.A.B. 1991) ........................................................ ..21
`
`In re Melville Corp., 228 U.S.P.Q. 970 (T.T.A.B. 1986) ...................................................... ..IO, 12
`
`Minn. Mining & Mfg. Co. v. Stryker, 179 U.S.P.Q. 433 (T.T.A.B. 1973) ................................... ..15
`
`NASA v. Bully Hill Vineyards, Inc., 3 U.S.P.Q.2d 1671 (T.T.A.B. 1987) ................................... ..19
`
`In re Nat'l Shooting Sports Found, Inc., 219 U.S.P.Q. 1018 (T.T.A.B. 1983) ....................... ......14
`
`Enters., Inc., 889 F.2d 1070, 12 U.S.P.Q.2d 1901 (Fed Cir.
`Nina Ricci, S.A.R.L. v.
`1989) ...................................................................................................................................... ..19
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`Otto Roth & Co. v. Universal Foods Corp., 640 F.2d 1317, 209 U.S.P.Q. 40 (C.C.P.A.
`1981), on remand, 215 U.S.P.Q. 1140 (T.T.A.B. 1982) .................................................... ..8, 14
`
`In re Packaging Specialists, Inc., 221 U.S.P.Q. 917 (T.T.A.B. 1984) ........................................ ..15
`
`Perma Ceram Enters., Inc. v. Preco Indus., Ltd, 23 U.S.P.Q.2d 1134 (T.T.A.B. 1992) ............ ..14
`
`Plus Prods. v. Star-Kist Foods, Inc., 220 U.S.P.Q. 541 (T.T.A.B. 1983) ................................... ..21
`
`In re Redken Labs, Inc., 170 U.S.P.Q. 526 (T.T.A.B. 1971) ....................................................... ..16
`
`In re Remington Prods. Inc., 3 U.S.P.Q. 2d 1714 (T.T.A.B. 1987)............................................. ..10
`
`S. Industries Inc. v. Lamb-Weston Inc., 45 U.S.P.Q.2d 1293 (T.T.A.B. 1997) ..................... ..16, 18
`
`Sanyo Watch Co. v. Sanyo Elec. Co., 691 F.2d 1019, 215 U.S.P.Q. 833 (Fed. Cir. 1982) ..... ..7, 23
`
`Specialty Brands, Inc. v. Coflee Bean Distribs., Inc., 748 F.2d 669, 223 U.S.P.Q. 1281
`(Fed. Cir. 1984) ...................................................................................................................... ..21
`
`Sweats Fashions, Inc. v. Panill Knitting Co., 833 F.2d 1560, 4 U.S.P.Q.2d 1793 (Fed.
`Cir. 1987) ................................................................................................................................. ..7
`
`In re Taylor & Francis (Publishers), Inc., 55 U.S.P.Q.2d 1213 (T.T.A.B. 2000) ...................... ..14
`
`Tektronix, Inc. v. Daktronics, Inc., 534 F.2d 915, 189 U.S.P.Q. 693 (C.C.P.A. 1976) ............... ..21
`
`In re The Paint Prods. Co., 8 U.S.P.Q.2d 1863 (T.T.A.B. 1988) ................................................ ..15
`
`Towers v. Advent Sofiware, Inc., 913 F.2d 942, 16 U.S.P.Q.2d 1039 (Fed. Cir. 1990) ........... ..8, 9,
`14, 20
`
`United Foods Inc. v. J.R. Simplot Co., 4 U.S.P.Q.2d 1172 (T.T.A.B. 1987) .............................. ..22
`
`Universal Foods Corp. v. Otto Roth & C0,, 215 U.S.P.Q. 1140 (T.T.A.B. 1982) ................ ..10, 14
`
`Visa Int'l Serv. Assn. v. Life-Code Sys., Inc., 220 U.S.P.Q. 740 (T.T.A.B. 1983) ......................... ..8
`
`Wagner Elec. Corp. v. Raygo Wagner, Inc., 192 U.S.P.Q. 33 (T.T.A.B. 1976) ......................... ..15
`
`In re Whataburger Sys., Inc., 209 U.S.P.Q. 429 (T.T.A.B. 1980) ............................................... ..10
`
`In re Wickerware, Inc., 227 U.S.P.Q. 970 (T.T.A.B. 1985) ........................................................ ..12
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`Yamaha Int’! Corp. v. Hoshino Gakki Co., 840 F.2d 1572, 6 U.S.P.Q.2d 1001 (Fed. Cir.
`1988) ...................................................................................................................................... ..23
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`STATUTES
`
`15 U.S.C.§ 1127 ........................................................................................................................... ..16
`
`Fed. R. Civ. P. 56(a), 56(b) .......................................................................................................... ..15
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`Fed. R. Civ. P. 56(e) .............................................................................................................. ..13, 16
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`Fed. R. Evid. 901 ......................................................................................................................... ..13
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`____________________________________________________________________ X
`
`Federated Department Stores, Inc.,
`
`Opposer,
`
`V.
`
`'
`
`2
`
`Ashley Nettye, Inc.,
`
`:
`:
`Applicant.
`..................................................................__ X
`
`Opposition No. 91158634
`
`APPLICANT’S OPPOSITION TO
`
`SUMMARY JUDGMENT
`
`WHITE & CASE, LLP
`1155 Avenue of the Americas
`New York, New York 10036
`(212) 819-8200
`
`Jonathan E. Moskin
`
`Jacqueline Lesser
`
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`Applicant, Ashley Nettye, Inc. (“ANI”) submits the following opposition to Federated
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`Department Stores, Inc.’s (“Federated”) motion for summary judgment.
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`INTRODUCTION
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`One week before its scheduled trial period, Federated has moved for summary judgment
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`arguing simply that the descriptive use of the unregistered term “b kids” (without stylization or
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`other distinguishing features) in certain advertising and undocumented signage by its
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`Bloomingda1e’s stores -- the “b” standing for Bloomingdale’s, an initial to which Federated
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`claims no independent rights--gives Federated rights sufficient to prevent registration of ANI’s
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`earlier filed, and pending application for a highly stylized B Kids and Design logo. Although
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`Federated contends that as a matter of law it has priority of the use of the descriptive term, and
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`that it has proven a likelihood of confusion, its papers lack any explanation of how either of these
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`necessary elements have been proven so as to warrant summary judgment, much less how they
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`may be proven at trial. Federated has made no claim that “b kids” is inherently distinctive, or
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`that it has acquired distinctiveness, and has offered no evidence (much less undisputed evidence)
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`to sustain its burden of proof. As such, Federated’s motion should be denied.
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`Although completely ignored in Federated’s papers, there are a substantial number of
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`material facts in dispute that render summary judgment inappropriate on both issues of priority
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`and likelihood of confusion . First, and selectively ignored by Federated, its claimed rights in “b
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`kids” a nondistinctive designation are solely in an application, filed subsequent to the application
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`opposed. Relying merely on an application, it is Federated’s burden to prove the factual issue of
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`distinctiveness to support either a finding of priority, or the likelihood of confusion.
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`Because the factual issue of distinctiveness is disputed, summary judgment on either
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`issue of priority or likelihood of confusion is inappropriate. Indeed, the record presented here --
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`the only record that Federated can present at trial -- would support summary judgment agafi
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`Federated, dismissing the case. At the close of discovery Federated has no evidence upon which
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`it may rely that “b kids” is inherently distinctive or has acquired distinctiveness. Unable to meet
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`its burden of proving distinctiveness, Federated cannot sustain its burden of proof under Section
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`2(d) and its opposition may be dismissed.
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`Finally, although Federated devotes little attention to analyzing likelihood of confusion,
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`and certainly does not consider most of the factors set out in Application ofE.I. duPont
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`DeNemours & Co., 476 F.2d, 1357, 1361, 177 U.S.P.Q. 563, 567 (C.C.P.A. 1973); since the
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`marks here share only descriptive or generic elements in which the opposer has no rights, Federal
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`Circuit precedent establishes as a matter of law that there can be no likelihood of confusion.
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`Indeed, since Federated only claims rights in the “b kids” as a service mark for retail services,
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`the impossible burden Federated faces is to show that a prospective customer of one of ANI’s
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`washable suede garments in a Nordstrom’s or J.C. Penney’s store, upon seeing ANI’s highly
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`stylized B-Kids and Design Logo on an garment label will think that they are in opposer’s
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`Bloomingdale’s store, or a store otherwise offering services from opposer. No facts or law
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`support that conclusion, and opposer’s motion should accordingly be denied.
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`I. FACTS
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`ANI is the preeminent U.S. manufacturer of washable suede outerwear and apparel which
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`it sells through national department stores under its trademark and trading name BERNARDO,
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`as well as under subsidiary brands, including B Collection, and the stylized B Kids Design Logo.
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`Declaration of Stuart Pollack (“Pollack Decl.” ) at 111] 3 and 4. Applicant’s washable suede
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`apparel is exclusive to it, and ANI has developed substantial good will in this product, as well as
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`in its women, men’s and children apparel lines sold nationally, through stores such as
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`Nordstrom’s, Macys, Sears and J.C. Penney. Pollack Decl. at 1] 4. BERNARDO is a registered
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`trademark of applicant. Pollack Decl. at 1[ 5. One of applicant’s subsidiary lines, B
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`COLLECTION for which applicant also owns a registration, for junior wear, is sold in such
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`establishments as J.C. Penney, and has been available for the past two years. Pollack Decl. at 1]
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`7. Drawing on the stylized design element of ANI’s registered B COLLECTION mark, ANI
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`created a children’s wear extension, using a similar stylized “B” logo (but in a more juvenile
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`format) with the descriptive term “kids”. Pollack Decl. at 1| 7. The logo stylization is virtually
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`identical to the “B” in ANI’s B COLLECTION Pollack Decl. at 1] 6. The term “kids” is
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`disclaimed. The logo also contains a childlike drawing with a crown and smiley face. The two
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`marks appear as follows:
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`Federated has not objected to ANI’s use or registration of B COLLECTION. Both the B
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`COLLECTION and the B Kids Logo Design products have been and are currently offered for
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`sale. Pollack Decl. $1 7. Federated has admitted it has no evidence that these sales have led to
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`any confusion. See Declaration of Jacqueline M. Lesser, dated September 10, 2004 (“Lesser
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`Decl.”) at 1111 7 and 8.‘
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`It was only upon publication of ANI’s stylized B Kids Design Logo that Federated,
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`while extending its time to oppose, filed an application to register the phrase "b kids" for retail
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`services claiming as it has acknowledged (mistakenly) a service mark usage dating back to 1997.
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`In support of its application, Federated only submitted an advertisement for
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`BLOOMINGDALE’S indicating a sale in its children’s department and showing the descriptive
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`use of “b kids” to describe the location of the children’s department.2
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`In response to ANI’s discovery requests, Federated’s verified response admitted that there
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`were no sales of any products under the designation “b kids”, Lesser Decl. at 1] 3. These
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`responses were subsequently changed, twice, and the changes were sworn to by different people,
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`all after discussion with Federated’s outside counsel. Lesser Decl. at 111] 4; 5; 7; Bailey Tr. at 13-
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`16; 45-49). Discovery revealed that the 1997 use claimed by Federated for a retail service mark
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`use was actually not a use as a service mark, but apparently based on Bloomingdale’s circular
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`advertisements for a concedely abandoned line of toddler clothing labeled BLOOMINGDALE’S
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`B KIDS, and referred to in tiny print random circulars produced by Bloomingdale’s as “b kids.”
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`Lesser Decl. at 111} 7 and 8; Bailey Tr. at 49-50, Beckmann Tr. at 19-21. Federated has not
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`1 “Bailey Tr.” refers to transcript pages from the deposition of Elizabeth Bailey, Federated’s designated 30(b)6 witness taken on
`June 14, 2004; “Beckmann Tr.” refers to transcript pages from the deposition of Kathy Beckmann, taken on June 15, 2004.
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`2 (See Declaration of Marc Rosenberg submitted in support of Summary Judgment at Exh. 28).
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`amended either its application or its Notice of Opposition to clarify what rights it actually
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`purports to claim.
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`3
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`After initially admitting that it had no use, Federated subsequently argued that any use of
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`“b kids” in the years 1997 to 2001 was related to an abandoned private label
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`BLOOM1NGDALE’S B KIDS used for infant clothing. Lesser Decl. at 1[ 1] 7 & 8; Bailey Tr. at
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`49; 67. Beckmann Tr. at 19-21. That BLOOMINGDALE’S branded private label line was
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`discontinued with no intent to resume. Lesser Decl. at 1] 8; Be
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`é“a
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`Tr. at 10; 20-22, 39.
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`To prove senior mark use, Federated contends that it has placed signs bearing the legend
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`“b kids” in a small number of its Bloomingdale’s stores, however, throughout discovery,
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`Federated was also unclear to the extent or manner of any use of “b kids” signage in any of its
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`stores. Federated’s designated 30(b)6 deposition witness, as well as and its marketing director
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`each testified that customers would not refer to the children’s department as “b kids”, but rather,
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`as the kids department, the children’s department — or Young World, the internal name of the
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`department. Lesser Decl. at 111] 7 and 8; Bailey Tr. at 50; Beckmann Tr. at 25-26, 35; In fact,
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`Federated’s 30(b)6 witness, Elizabeth Bailey is identified in interrogatory responses as an
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`employee in the Young World Department. Lesser Decl. at 1] 3.
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`Internal records supporting service mark use of “b kids” are scarce or nonexistent. There
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`are no records when any signs were purchased or created. Lesser Decl. 1] 7; Bailey Tr. at 96.
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`Federated is relying on the memory of the witnesses. There is no advertising budget for the so-
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`called b-kids department. Lesser Decl. at 1] 7, Bailey Tr. at 76-66; Federated concedes it has no
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`means of tracking the “use” of “b kids.” Although a small number of the stores seem now to
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`have some signage in the children’s department, it is unclear when these signs were first used,
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`Federated’s contradictory discovery responses alone raise material factual issues which preclude summary Judgment.
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`and they appear only a small minority of the Bloomingdale’s stores. Lesser Decl. 1] at 7. Bailey
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`Tr. at 96. Following her deposition, and as part of the summary judgment papers, Federated’s
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`so
`30(b)6 deposition witness conceded that of the few signs she has seen she first saw in 2004.4
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`There is no “unified” look, logo sheet or style guide for those signs Lesser Decl. at 111] 7; Bailey
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`Tr. at 19; 94; 97-98. No one within Federated or its Bloomingdale’s division checks to see if a
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`store has a “b kids” sign, or how, or when it appears. Lesser Decl. at ‘H 7; Bailey Tr. at 54-56
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`To the extent the term is used at all, it apparently is used simply to help direct customers who
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`already know they are in a Bloomingdale’s store to find the children’s or Young World
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`department. The sign appears for example on the floor landing of the flagship store to let a
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`customer know that he or she has reached the children’s department. Lesser Decl. at 111] 7&8;
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`Bailey Tr. at 21-22; Beckmann Tr. at 29-30. The few signs are used, that is, to distinguish
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`between different departments of Bloomingdale’s stores, not to distinguish Bloomingdale’s retail
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`services from the services of other clothing stores. As conceded by Federated’s papers, all
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`consumer source identification is with the well known Bloomingdale s name. S.J.Brf. at 1.
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`Just prior to the close of discovery, Federated acknowledged that it does not intend to
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`call any experts, and does not intend to produce a survey in the case. Lesser Decl. at 1] 5.
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`Federated has no financial documents showing use of its claimed mark, other than the referenced
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`figures for a now defunct line of “b kids” clothing. Lesser Decl. at 1] 7; Bailey Tr. at 62, 65, 67
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`and 68. Federated has not conducted any study of consumer perceptions of “b kids”. Lesser
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`Decl. at W 7 and 8; Bailey Tr. at 52; Beckmann Tr. at 32. There has been no evidence produced
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`in discovery, and certainly none supporting Federated’s motion for summary judgment on what
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`is the key issue: whether consumers now recognize “b kids” as an indication of source. Instead,
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`4 See Declaration of Elizabeth Bailey Submitted in Support of Summary Judgment 4 Federated withdrew from its Notice of
`Opposition a claim that it has a “b” family of marks.
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`Federated now claims “analogous use” of its claimed mark, claiming its priority of rights is
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`based on “rights” on clothing sold in 1997 and advertising relating thereto.
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`11. ARGUMENT.
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`A.
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`Summag Judgment Standard
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`The Trademark Trial and Appeal Board will grant summary judgment if on the pleadings,
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`affidavits, and competent evidence submitted there is no genuine issue as to a material fact such
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`that the moving party is entitled to judgment as a matter of law. Copelands' Enters Inc. v. CNV,
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`Inc., 945 F.2d 1563, 20 U.S.P.Q.2d 1295 (Fed. Cir. 1991); Commodore Elecs. Ltd. v. CBM
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`Kabushiki Kaisha Opposition, 26 U.S.P.Q.2d 1503 (T.T.A.B. 1993). Entry of summary
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`judgment is appropriate only where there are no genuine disputes as to material facts and
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`judgment may be rendered as a matter of law. Sweats Fashions, Inc. v. Panill Knitting C0,, 833
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`F.2d 1560, 4 U.S.P.Q.2d 1793 (Fed. Cir. 1987). The evidence must be viewed in a light
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`favorable to the non-movant and all justifiable inferences are to be drawn in its favor. Lloyd ’s
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`Food Prods., Inc. v. Eli ’s, Inc., 987 F.2d 766, 767; 25 U.S.P.Q.2d 2027, 2029 (Fed. Cir. 1993).
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`The nonmoving party “need only present evidence from which a jury might return a verdict in its
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`favor.” Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 257 (1986). Issues of fact are not to be
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`tried by summary judgment. Dyneer Corp. v. Auto. Prods. plc., 37 U.S.P.Q.2d 1251, 1254
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`(T.T.A.B. 1995).
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`Federated, as a Section 2(d) opposer bears the burden of proof on both a priority of rights
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`u
`and that confusion is likely. See Sanyo Watch Co. v. Sanyo Elec. Co. 691 F.2d 1019, 1022, 215
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`U.S.P.Q. 833, 834 (Fed. Cir. 1982). Where, as here, the opposer is relying on a unregistered
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`mark, it also must prove distinctiveness of the term, either inherently or by acquired
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`distinctiveness through secondary meaning. See Towers v. Advent Software, Inc., 913 F.2d 942,
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`945, 16 U.S.P.Q.2d 1039, 1041 (Fed. Cir. 1990). Otto Roth & Co. v. Universal Foods Corp.,
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`640 F.2d 1317, 209 U.S.P.Q. 40 (C.C.P.A. 1981), on remand, 215 U.S.P.Q. 1140 (T.T.A.B.
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`1982). As discussed below, Federated has not explained how the combination of the initial “b”,
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`in which it has no right, with the generic term “kids”, has come to distinguish its services.
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`Without even attempting to meet this burden, not only is summary judgment for Federated
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`inappropriate, but as the record shows, such evidence is completely lacking, and thus Federated’s
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`claims must fail as a matter of law. The Board in reviewing the record here may indeed grant
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`summary judgment against Federated. See e.g., Accu Personnel Inc. v. AccustaflSys. Inc., 38
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`U.S.P.Q.2d 1443, 1446 (T.T.A.B. 1996); Visa Int ’l Serv. Assn. v. Life-Code Sys., Inc., 220
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`U.S.P.Q. 740 (T.T.A.B. 1983).
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`B.
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`Opposer Has No General Rights In the Merely Descriptive Term “b kids”
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`Without the benefits of a registration, Federated has no presumptive service mark rights,
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`but must show that its mark is either inherently distinctive or has acquired distinctiveness as an
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`indication of source. Towers, 913 F. 2d at 945, 16 U.S.P.Q.2d at 1041; Otto Roth & Co., 640
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`F.2d 1317, 209 U.S.P.Q. 40.
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`Federated makes no overt claim to any level of distinctiveness and does not even attempt
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`to characterize the clearly descriptive term as inherently distinctive. Federated admits that the
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`“b” is shorthand for Bloomingdale’s. S.J. Brf. at 2; (as well as the first initial on countless other
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`businesses), and that “kids” refers to the children’s department in Bloomingdales. S.J. Brf. at 3
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`and 4. Banfl Ltd. v. Federated Dept. Stores, 638 F. Supp. 652, 652 (S.D.N.Y. 1986). The letter
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`“b” as Federated has in past admitted, is used by many parties for clothing and apparel.5 Id. at
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`654. The trademark register has many registrations for “B” covering both apparel and retail
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`services. Lesser Decl at 1] 9. “Kids” is clearly a generic term as applied to children’s clothing.
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`Federated also admits the combined term is only used descriptively in connection with
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`and directly joining its well known Bloomingdale’s mark,
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`to describe the location of the
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`children's department within its subsidiary Bloomingdale's store. Brf. at 1. Such a descriptive
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`use, with a house mark would not ordinarily give rise to separate trademark or service mark
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`rights. See Towers, 913 F.2d at 945, 16 U.S.P.Q.2d at 1041. Federated itself has conceded, in
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`similar circumstances that comparable signage for “b wear” directing customers to its junior
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`department was not an indication of source. See Banfif Ltd. v. Federated Dept. Stores, Inc., 841
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`F.2d 486, 487-88 (2d Cir. 1988).
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`Nothing in the record presented supports Federated’s contention that its use of “b kids”
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`is any different from its former use of the admittedly non-source indicating “b wear,” for signage
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`in the Bloomingdale’s junior department. While Bloomingdale’s may sell a substantial quantity
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`of children’s clothing, with such famous brands as Liz Claibome®, and Ralph Lauren® (Lesser
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`Decl. at j] 1] 7 and 8; Bailey Tr. at 74, Beckmarm at Tr. 9), and may rely on the fact that
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`Bloomingdale’s ® is a famous mark, there is no record evidence even suggesting that consumers
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`associate “b kids” with Federated or its Bloomingdale’s division —- ny more than with a number
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`of other retail stores having a prominent “B” in their names, such as Burdine’s, or Boscov’s, or
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`Bergdorfs, or Bolton’s. It is axiomatic that matter may not be protected as a mark unless it is
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`used "in a manner calculated to project to purchasers or potential purchasers a single source or
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`5 Federated withdrew from its Notice of Opposition a claim that it has a “b” family of marks.
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`origin for the goods in question." In re Remington Prods. Inc., 3 U.S.P.Q.2d 1714, 1715
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`(T.T.A.B. 1987). See, e.g., In re Melville Corp., 228 U.S.P.Q. 970, 970 n.2 (T.T.A.B. 1986); In
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`re Whataburger Sys., Inc., 209 U.S.P.Q. 429, 430 (T.T.A.B. 1980) Just so, no one would
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`contend that that the “gift wrap window” serves as a trademark or service mark for wrapping
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`paper, or gift wrapping services. Similarly, a “b kids” sign in a Burdine’s, or Boscov’s or
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`Bolton’s would likewise serve the purely functional purpose of directing consumers who already
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`know in what store they are where to find children’s clothing.
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`No evidence has been submitted that the “b kids” term serves as any indication of
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`source. No advertising figures are submitted, and as conceded by Federated, none exist. Lesser
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`Decl. at 1l7', Bailey Tr. at 32. From responses to discovery, it is clear that Federated does not even
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`track the use of the term:
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`the few signs that may exist are not used consistently, and there is no
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`oversight for placement in stores. Lesser Decl. at fi[7 ; Bailey Tr. at 54-56. There is no logo sheet
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`or style sheet to determine a unified image. Lesser Decl. at fl 7; Bailey Tr. at 94. At most the
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`signs are used in a handful of stores. Lesser Decl. at 1] 7; Bailey Tr. at 54-56. There is no internal
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`review of the “success” of “b kids” as an indication of source. Lesser Decl. at 1] 7; Bailey Tr. at
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`52; Lesser Decl. at 1] 7; Bailey Tr. at 52; 76-77. There is no tracking of advertising-either budget
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`or extent. Nor is there any evidence in the record that any “efforts” made to achieve secondary
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`meaning (if that is what they are) have been successful -- indeed, all evidence is to the contrary,
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`and weighs against a finding of acquired distinctiveness. Universal Foods Corp. v. Otto Roth &
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`Co., 215 U.S.P.Q. 1140, 1144 (T.T.A.B. 1982) (“The record contains no reliable evidence as to
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`the amount of advertising supporting ‘BRIE NOVEAU’, there being no breakdown of
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`advertising expenditures between the variety of different br