Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA228546
`ESTTA Tracking number:
`08/05/2008
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`91179089
`Plaintiff
`Gecko Trading Company, Inc.
`Bruce B. Brunda
`Stetina Brunda Garred & Brucker
`75 Enterprise Ste 250
`Aliso Viejo, CA 92656
`UNITED STATES
`opposition@stetinalaw.com
`Opposition/Response to Motion
`Kit M. Stetina
`opposition@stetinalaw.com
`/Kit M. Stetina/
`08/05/2008
`OppMSJ.pdf ( 27 pages )(187779 bytes )
`Decl. BBB Opp. MSJ. Redacted.pdf ( 27 pages )(467851 bytes )
`GTC Decl. Exh Redacted.pdf ( 244 pages )(6750297 bytes )
`Decl. GTC Opp MSJ.pdf ( 6 pages )(140522 bytes )
`
`Proceeding
`Party
`
`Correspondence
`Address
`
`Submission
`Filer's Name
`Filer's e-mail
`Signature
`Date
`Attachments
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`

`
`Case: TBEAR—122M
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`IN RE SERIAL NO. 78/818,325
`
`Gecko Trading Company, Inc.
`
`) Opposition No. 91179089
`
`Opposer,
`
`Vs.
`
`Barking Penguins, LLC
`
`Applicant.
`
`)
`
`)
`
`)
`
`)
`
`APPLICANT’S MOTION FOR SUMMARY JUDGMENT ON OPPOSER’S CLAIMS OF
`DILUTION AND LIKELIHOOD OF CONFUSION
`
`OPPOSER’S OPPOSITION TO
`
`BOX TTAB — NO FEE
`
`Commissioner for Trademarks
`
`P.O. Box 1451
`
`Alexandria, VA 22313-1451
`
`

`
`TABLE OF CONTENTS
`
`INTRODUCTION .................................................................................................................. .. 1
`
`STATEMENT OF FACTS ..................................................................................................... .. 1
`
`III.
`
`IV.
`
`THE SUMMARY JUDGMENT STANDARD ...................................................................... .. 2
`
`APPLICANT’S ‘FROM THE GECKO’ MARK WILL LIKELY DILUTE
`OPPOSER’S GECKO TRADEMARKS ................................................................................ .. 3
`
`A.
`
`Opposer’s GECKO TRADEMARKS are Famous for Dilution ................................. .. 3
`
`1.
`
`2.
`
`3.
`
`4.
`
`5.
`
`The Standard of Fame for Dilution ................................................................. .. 3
`
`The Duration, Extent, and Geographic Reach of
`Advertising and Publicity All Establish that the GECKO
`TRADEMARKS are Famous ......................................................................... .. 3
`
`The Amount, Volume, and Geographic Extent of Sales of
`Goods and Services demonstrate that the GECKO
`TRADEMARKS are Famous ......................................................................... .. 4
`
`The Extent of Actual Recognition Supports the Fame of
`Opposer’s GECKO TRADEMARKS ............................................................. .. 4
`
`GECKO TRADEMARKS Have Been Registered ......................................... .. 5
`
`B.
`
`Applicant’s FROM THE GECKO Mark is Likely to Cause
`Dilution by Blurring .................................................................................................... .. 6
`
`1.
`
`2.
`
`3.
`
`4.
`
`5.
`
`6.
`
`The Standard for Dilution By Blurring ........................................................... .. 6
`
`The Degree of Similarity of the Marks is Very High ..................................... .. 6
`
`The Distinctiveness of the GECKO TRADEMARKS is
`
`Very Strong ..................................................................................................... .. 7
`
`The Extent to which Opposer is Engaging in Substantially
`Exclusive Use of the GECKO TRADEMARKS Clearly
`Supports Likelihood of Dilution ..................................................................... .. 8
`
`The Degree of Recognition Supports Likelihood of
`Dilution ......................................................................................................... .. 10
`
`Applicant’s Intention to Create Association with the
`GECKO TRADEMARKS, and Actual Association
`Between the Marks ....................................................................................... .. 11
`
`C.
`
`Applicant’s Purported “Undisputed Facts” are Largely
`Unsupported Assertions, Inferences, and Mischaracterizations that
`are Neither Undisputed nor Facts ............................................................................. .. 12
`
`D.
`
`Dilution Conclusion .................................................................................................. .. 14
`
`

`
`THERE IS A STRONG LIKELIHOOD OF CONFUSION AS
`MEASURED BY THE DU PONT FACTORS BETWEEN THE
`OPPOSER’S ‘GECKO TRADEMARKS’ AND APPLICANT’S ‘FROM
`THE GECKO’ MARK .......................................................................................................... .. 15
`
`A.
`
`B.
`
`C.
`
`D.
`
`E.
`
`F.
`
`G.
`
`H.
`
`I.
`
`J.
`
`K.
`
`L.
`
`The Similarity or Dissimilarity of the Marks in their Entireties as
`to Appearance, Sound, Connotation and Commercial Impression ........................... .. 15
`
`Similarity or Dissimilarity and Nature of the Goods or Services as
`Described in an Application or Registration or in Connection with
`which a Prior Mark is in Use .................................................................................... .. 15
`
`The Similarity or Dissimilarity of Established, Likely—to—Continue
`Trade Channels ......................................................................................................... .. 16
`
`The Conditions Under which and Buyers to Whom, Sales are
`Made, i.e. “Impulse” vs. Careful, Sophisticated Purchasing .................................... .. 17
`
`The Fame of the Prior Mark (Sales, Advertising, Length of Use) ............................ .. 17
`
`The Number and Nature of Similar Marks in Use on Similar
`Goods ........................................................................................................................ .. 18
`
`The Nature and Extent of Any Actual Confusion ..................................................... .. 19
`
`The Length of Time During and Conditions Under which there has
`been Concurrent Use without Evidence of Actual Confusion .................................. .. 19
`
`The Variety of Goods on which a Mark is or is not Used ........................................ .. 19
`
`The Market Interface between Applicant and the Owner of a Prior
`Mark .......................................................................................................................... .. 20
`
`The Extent to Which Applicant has a Right to Exclude Others from
`Use of its Mark on its Goods .................................................................................... .. 20
`
`The Extent of Potential Confusion i.e. whether De Minimis or
`Substantial ................................................................................................................. .. 20
`
`VI.
`
`CONCLUSION ..................................................................................................................... .. 21
`
`_ii_
`
`

`
`TABLE OF AUTHORITIES
`
`Cases
`
`A.C. Legg Packing Co. v. Olde Plantation Spice Co.,
`61 F.Supp.2d 426 (D.Md. 1999) ....................................................................................... .. 7
`
`Anderson v. Liberty Lobby, Inc.,
`477 U.S. 242 (1986) .......................................................................................................... .. 2
`
`CBS Inc. v. Parkville Imports, Inc.,
`223 USPQ 1143 (TTAB 1984) ........................................................................... .. 15, 16, 19
`
`Celotex Corp v. Catrett,
`477 U.S. 317 (1986) .......................................................................................................... .. 3
`
`Fort Howard Paper Company v. Marcal Paper Mills, Inc.,
`189 USPQ 305 (TTAB 1975) ......................................................................................... .. 16
`
`Herbaceuticals Inc. v. Xel Herbaceuticals Inc.,
`86 U.S.P.Q.2d 1572 (T.T.A.B. 2008) ......................................................................... .. 2, 12
`
`In re I st USA Realty Professionals Inc.,
`84 USPQ2d 1581 (TTAB 2007) ..................................................................................... .. 17
`
`In re E. I. Dupont de Nemours & Co.,
`476 F.2d 1357 (C.C.P.A. 1973) ...................................................................................... .. 15
`
`Mashantucket Pequot Tribe v. Redican,
`403 F.Supp.2d 184 (D Conn. 2005) .................................................................................. .. 4
`
`Mayer/Berkshire Corp. v. Berkshire Fashions Inc.,
`76 U.S.P.Q.2d 1310 (Fed. Cir. 2005) ................................................................................ .. 2
`
`Mosely v. Secret Catalogue, Inc.,
`537 U.S. 418 (2003) .................................................................................................. .. 4, 7, 9
`
`Nike, Inc. v. Nikepal International, Inc.,
`2007 WL 2782030, *7 (E.D.Ca1. 2007) ........................................................................... .. 9
`
`Old Tyme Foods Inc. v. Roundy’s Inc.,
`22 U.S.P.Q.2d 1542 (Fed. Cir. 1992) .......................................................................... .. 2, 12
`
`Playboy Enterprises Inc. v. Netscape Communications Corp.,
`69 USPQ2d 1417 (9th Cir. 2004) ................................................................................... .. 10
`
`Savin Corp. v. Savin Group,
`73 USPQ2d 1273 (2d Cir. 2004) ................................................................................. .. 7, 14
`
`Sweats Fashions Inc. v. Pannill Knitting Co. Inc.,
`4 U.S.P.Q.2d (Fed. Cir. 1987) ........................................................................................... .. 3
`
`Tuxedo Monopoly, Inc. v. General Mills Fun Group,
`209 USPQ 986 (C.C.P.A. 1981) ..................................................................................... .. 16
`
`—iii—
`
`

`
`VSecret Catalogue, Inc. v. Moseley,
`87 USPQ2d 1240 (W.D. Ky. 2008) .............................................................................. .. 6, 7
`
`Weiss Associates Inc. v. HRL Associates Inc.,
`14 USPQ2d 1840 (Fed. Cir. 1990) .................................................................................. .. 17
`
`Yasutomot & Co. v. Commercial Ball Pen Co., Inc.,
`184 USPQ 60 (TTAB 1974) ........................................................................................... .. 15
`
`Statutes
`
`15 U.S.C. §1125(c)(2)(a) ........................................................................................................ .. 3
`
`15 U.S.C. §1125(c)(2)(b) ........................................................................................................ .. 6
`
`37 C.F.R. §2.116(a) ................................................................................................................. .. 2
`
`Fed. R. Civ. P. 56(f) ................................................................................................................ .. 3
`
`Fed. R. Civ. P. 56(c) ............................................................................................................... .. 2
`
`_iV_
`
`

`
`I.
`
`INTRODUCTION
`
`Opposer Gecko Trading Company, Inc. (hereinafter “Opposer”) hereby submits this
`
`opposition to the Motion for Summary Judgment filed by Barking Penguins, LLC (hereinafter
`
`“Applicant”). Opposer has for many years (since at least as early as April, 1982) been engaged
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`in the extensive development, advertising, licensing and marketing of a variety of products under
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`the marks GECKO, MAUI GECKO, GECKO HAWAII, GEKKO and ART GEKKO
`
`(hereinafter collectively referred to as the GECKO TRADEMARKS).
`
`(Fein Decl. EX. 1) As a
`
`result of these efforts, Opposer’s GECKO TRADEMARKS have become famous marks.
`
`Applicant’s FROM THE GECKO mark is confusingly similar
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`to Opposer’s GECKO
`
`TRADEMARKS and its registration and use by Applicant on the goods claimed in the subject
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`application is likely to cause consumer confusion, deception or mistake. Further, Applicant’s
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`FROM THE GECKO mark, use of which began long after Opposer’s GECKO TRADEMARKS
`
`became famous, causes dilution of the distinctive quality of Opposer’s famous GECKO
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`TRADEMARKS.
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`II. STATEMENT OF FACTS
`
`Opposer and its
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`licensees have for many years been engaged in the extensive
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`development, advertising, licensing and marketing of a variety of products including various
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`types of clothing, giftwear, hats, glassware, ashtrays, sporting goods, confectionaries, toys, bags,
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`footwear, towels, decorative loudspeaker covers, acoustic sound generators, skin care products,
`
`and many others. (Fein Decl. ‘][‘][4, 5, 9, 10; EXs. 9-12.)
`
`In connection therewith, Opposer has licensed used, and/or filed federal applications with
`
`an intent
`
`to use,
`
`in interstate commerce,
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`fifteen (15) GECKO TRADEMARKS for the
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`aforementioned goods since long prior to Applicant’s filing date of the application of Serial No.
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`78/818,325 for the mark FROM THE GECKO.
`
`(Fein Decl. EX. 1.) Since at least as early as
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`

`
`April, 1982, Opposer has made use of its GECKO TRADEMARKS throughout the United States
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`in interstate commerce. (Fein Decl. ‘][4—6.)
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`The GECKO TRADEMARKS have been advertised in leading newspapers around the
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`country, such as the Los Angeles Times, for many years in circulars placed by leading national
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`retailers, such as J .C. Penney’s, Mervyns, Sears and others. (Fein Decl. ‘][‘][16, 20. EX. 4.).
`
`Moreover, Opposer has zealously protected the distinctiveness of
`
`the GECKO
`
`TRADEMARKS, filing at least fifty—one (51) oppositions to applications for marks that would
`
`cause confusion and/or dilute the GECKO TRADEMARKS, with a consistent record of
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`resolution in Opposer’s favor and settlement to Opposer’s satisfaction, e.g. acknowledging
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`Opposer’s trademark rights and limiting use of the opposed marks. (Fein Decl. ‘][13, EX. 6.)
`
`III. THE SUMMARY JUDGMENT STANDARD
`
`The Trademark Trial & Appeal Board (“TTAB”) has adopted the Federal Rules for inter
`
`partes proceedings. See Mayer/Berkshire Corp. v. Berkshire Fashions Inc., 76 U.S.P.Q.2d 1310,
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`1312 (Fed. Cir. 2005) (citing 37 C.F.R. §2.116(a) (2005)). Therefore, in order to grant a motion
`
`for summary judgment, the pleadings and record of evidence must “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). To establish that a factual dispute is genuine, the nonmoving party
`
`“need only present evidence from which a jury might return a verdict in [its] favor.” Anderson v.
`
`Liberty Lobby, Inc., 477 U.S. 242, 257 (1986).
`
`In deciding a motion for summary judgment, the TTAB “must view the evidence in the
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`light most favorable to the nonmovant, and must draw all reasonable inferences from underlying
`
`facts in favor of the nonmovant.”
`
`See Herbaceuticals Inc. v. Xel Herbaceuticals Inc., 86
`
`U.S.P.Q.2d 1572, 1575 (T.T.A.B. 2008) (citing Old Tyme Foods Inc. v. Roundy’s Inc., 22
`
`U.S.P.Q.2d 1542, 1544 (Fed. Cir. 1992)).
`
`“A party moving for summary judgment has the
`
`

`
`burden of demonstrating the absence of any genuine issue of material fact, and that is entitled to
`
`entry of judgment as a matter of law.” Herbaceuticals, 86 U.S.P.Q.2d at 1575 (citing Celotex
`
`Corp v. Catrett, 477 U.S. 317 (1986) and Sweats Fashions Inc. v. Pannill Knitting Co. Inc., 4
`
`U.S.P.Q.2d (Fed. Cir. 1987)).
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`Additionally, summary judgment may be denied when there are still
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`facts to be
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`discovered that are essential to justifying opposition, and the inability of the Opposer to present
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`these facts for specified reasons is shown by affidavit. Fed . R. Civ. P. 56(f).
`
`IV.APPLICANT’S ‘FROM THE GECKO’ MARK WILL LIKELY DILUTE
`
`OPPOSER’S GECKO TRADEMARKS
`
`A. Opposer’s GECKO TRADEMARKS are Famous for Dilution
`
`1. The Standard of Fame for Dilution
`
`A famous mark that is distinctive,
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`inherently or through acquired distinctiveness,
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`is
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`entitled to protection against dilution by blurring or tarnishment. A determination of whether or
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`not a mark is sufficiently famous (widely recognized by the general consuming public of the
`
`U.S. as a designation of source of the goods or services of the mark’s owner) to be accorded
`
`protection under a dilution claimed is based upon consideration of, inter alia, the following
`
`factors: (i) the duration, extent, and geographic reach of advertising and publicity of the mark,
`
`whether advertised or publicized by the owner or third parties; (ii) the amount, volume, and
`
`geographic extent of sales of goods or services offered under the mark; (iii) the extent of actual
`
`recognition of the mark; and (iv) whether the mark was registered under the Act of March 3,
`
`1881, or the Act of February 20, 1905, or on the principal register. 15 U.S.C. §1125(c)(2)(a).
`
`2. The Duration, Extent, and Geographic Reach of Advertising and
`Publicity All Establish that the GECKO TRADEMARKS are Famous
`
`Opposer has used its GECKO marks for over twenty—five (25) years. (Fein Decl. ‘][4; Fein
`
`Decl. Ex. 1.) Opposer’s marks have been advertised in leading national publications, such as the
`
`

`
`Los Angeles Times, for many years.
`
`(Fein Decl. ‘H 16, 20, Ex. 4.) Leading national retailers,
`
`such as J .C. Penney’s, Mervyns, Sears and others have advertised Opposer’s products in
`
`circulars placed in leading newspapers around the country. (Id.)
`
`3. The Amount, Volume, and Geographic Extent of Sales of Goods and
`Services demonstrate that the GECKO TRADEMARKS are Famous
`
`As stated above, Opposer has used its mark for over twenty—five (25) years. Opposer has
`
`used its mark in relation to a wide variety of goods and services, as identified in its Federal
`
`Registrations, and confirmed by testimony in this case. (Fein Decl. ‘][‘][6, 10, Ex. 1.) Numerous
`
`companies have licensed Opposer’s use of the mark, acknowledging Opposer’s exclusive rights
`
`in the mark and paying royalties on such use for approximately twenty (20) years. (Fein Decl.
`
`‘][‘][6, 10, 18, 24, Ex. 8.) Sales of Opposer’s products have been in the range of tens of millions of
`
`dollars. (Fein Decl. Exs. 2, 3.) Opposer’s products have been sold through national retail chains,
`
`such as J .C. Penney’s, Mervyns, Sears and others, as well as through boutiques, surf shops,
`
`airport gift stores and other locations throughout the United States. (Fein Decl. ‘][‘][6, 8, Exs. 2, 3,
`
`10, 12.)
`
`4. The Extent of Actual Recognition Supports the Fame of Opposer’s
`GECKO TRADEMARKS
`
`Opposer has not yet taken surveys to provide direct evidence of the mark’s recognition.1
`
`However, the mark’s recognition is evidenced by the broad use of Opposer’s GECKO marks,
`
`over a wide area, over a long period, and broad advertising of products marketed under
`
`Opposer’s marks.
`
`(Fein Decl. ‘][‘][4—6, 8, 20, Exs. 2-4.) Other evidence of the mark’s recognition
`
`arises from numerous licensing agreements with companies that have acknowledged the need for
`
`Direct evidence of dilution, such as consumer surveys, are not necessary where dilution can reliably be
`proven through circumstantial evidence — the obvious case is one where the junior and senior marks are
`identical. Mosely v. Secret Catalogue, Inc., 537 U.S. 418, 65 U.S.P.Q.2d 1801 (2003); Mashantucket
`Pequot Tribe v. Redican, 403 F.Supp.2d 184 (D Conn. 2005) (actual dilution may be established by
`circumstantial evidence such as surveys or an identicality of the marks in issue).
`
`_4_
`
`

`
`Opposer’s authorization to use the mark in relation to a wide range of goods and services. (Fein
`
`Decl. ‘][‘][6, 10, 18, 24, EX. 8.) Still further, numerous third parties have acknowledged the strength
`
`and recognition of Opposer’s mark by agreeing to terminate competitive use of GECKO
`
`derivative marks. (Fein Decl. ‘][13, Exs. 5-7; Brunda Decl. EX. 3.) Additionally, this Board and
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`various courts have further acknowledged the strength of Opposer’s mark in consistently
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`sustaining Opposer’s claims of exclusive rights in litigation and opposition proceedings. (Fein
`
`Decl. EX. 5, 6.) To date Opposer has filed at least 51 oppositions, a number of which are still
`
`pending and the remainder of which have been determined or settled in Opposer’s favor, e.g.
`
`acknowledging Opposer’s trademark rights and limiting use of the opposed marks.
`
`(Fein Decl.
`
`EX. 6.)
`
`5. GECKO TRADEMARKS Have Been Registered
`
`Opposer has registered many GECKO and GECKO derivative marks for a wide variety
`
`of goods and services. Opposer has obtained U.S. Trademark Registration Numbers: 1,510,173
`
`(reg. Oct. 25, 1988) for the mark GECKO for clothing, namely shirts, dresses, sweatsuits, hats,
`
`shorts, skirts, and shoes; 1,512,691 (reg. Nov. 15, 1988) for the mark GECKO for textile tote
`
`bags and duffle bags; 1,514,657, (reg. Nov. 29, 1988) for the mark MAUI GECKO for clothing,
`
`namely shirts, dresses, sweatsuits, hats, shorts, skirts and shoes; 1,786,819, (reg. Aug. 10, 1993)
`
`for the mark GECKO HAWAII for clothing, namely shirts, dresses, sweatsuits, hats, shorts,
`
`skirts and shoes; 1,943,766 (reg. Dec. 26, 1995) for the mark GECKO for Retail and wholesale
`
`stores featuring apparel, beach products, stuffed dolls and novelty items; 2,049,055 (reg. April 1,
`
`1997) for the mark GECKO for skin cleansing soaps and gels, bubble bath, cosmetics, namely,
`
`body lotions, skin moisturizers, after—sun lotions, hair products, namely, hair lotions, hair
`
`shampoos, hair conditioners, and essential oils for personal use; 2,260,689 (reg. July 13, 1999)
`
`for the mark GECKO for sunglasses, eyeglasses, eyeglass cases, and eyeglass straps to attach to
`
`

`
`eyeglasses; 2,287,612 (reg. Oct. 19, 1999) for the mark GECKO HAWAII for towels; 2,308,720,
`
`registered Jan. 18, 2000, for the mark GECKO for towels; 2,347,417, (reg. May 2, 2000) for the
`
`mark GECKO for sporting goods, namely, snowboards, surfboards, skateboards and in—line
`
`skates; 2,446,676 (reg. April 24, 2001) for the mark GECKO for jewelry and watches; 2,453,448
`
`(reg. May 22, 2001) for the mark GECKO for beverage glassware, mugs and plates; 2,463,090
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`(reg. June 26, 2001) for the mark GECKO for toys, namely, stuffed animals and flying disks;
`
`1,903,602 (reg. July 4, 1995) for the mark GECKO for clothing, namely, pajamas; and
`
`2,482,688, (reg. Aug. 28, 2001) for the mark GECKO for smoking accessories, namely, cigarette
`
`and cigar lighters not of precious metal, and cigar cutters. (Fein Decl. EX. 1)
`
`B. Applicant’s FROM THE GECKO Mark is Likely to Cause Dilution by Blurring
`
`1. The Standard for Dilution By Blurring
`
`Dilution by blurring is association arising from the similarity between a mark or trade
`
`name and a famous mark that impairs the distinctiveness of the famous mark. Determination of
`
`whether or not a mark is likely to cause dilution by blurring is based upon consideration of, inter
`
`alia, the following factors: (i) the degree of similarity between the mark or trade name and the
`
`famous mark; (ii) the degree of inherent or acquired distinctiveness of the famous mark; (iii) the
`
`extent to which the owner of the famous mark is engaging in substantially exclusive use of the
`
`mark; (iv) the degree of recognition of the famous mark; (v) whether the user of the mark or
`
`trade name intended to create an association with the famous mark; and (vi) any actual
`
`association between the mark or trade name and the famous mark. 15 U.S.C. §1125(c)(2)(b).
`
`2. The Degree of Similarity of the Marks is Very High
`
`Similarity between the marks encompasses marks that are identical, nearly identical, or
`
`substantially similar. V Secret Catalogue, Inc. v. Moseley, 87 USPQ2d 1240, 1249 (W.D. Ky.
`
`2008). Moreover, it is the identity of the marks themselves that is germane in the dilution
`
`

`
`context, and the modifying of the mark by adding one or more generic descriptors will not
`
`necessarily defeat a showing that the marks themselves are identical in specific contexts. Savin
`
`Corp. v. Savin Group, 73 USPQ2d 1273, 1281 (2d Cir. 2004) (emphasizing that adding one or
`
`more generic descriptors to the mark in a website address does not make the marks non—identical
`
`and citing A.C. Legg Packing Co. v. Olde Plantation Spice Co., 61 F.Supp.2d 426, 430-31
`
`(D.Md. 1999) for the example that OLDE PLANTATION SPICE is nearly identical in sound and
`
`connotation to OLD PLANTATION). FROM THE GECKO is nearly identical to GECKO. The
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`GECKO TRADEMARKS and FROM THE GECKO share the same dominant word,
`
`i.e.
`
`GECKO. The only difference is the generic descriptor of origin “from the,” which, if anything,
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`actually emphasizes that a FROM THE GECKO marked product has an originates in GECKO.
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`3. The Distinctiveness of the GECKO TRADEMARKS is Very Strong
`
`Opposer’s GECKO TRADEMARKS use the arbitrary term GECKO in relation to the
`
`goods or services for which it is used. A mark that evokes no association with human experience
`
`that relate intrinsically to the product represents the strongest and most highly distinctive marks.
`
`Moseley, 87 USPQ2d at 1249-50 (adopting the analysis of V Secret Catalogue, Inc. v. Moseley,
`
`59 USPQ2d 1650 (6th Cir. 2001), rev’d on other grounds, 123 S.Ct. 1115 (2003)). There are
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`more than a thousand species of geckos found in warm climates around the world, and there is
`
`nothing to connect them to any of Opposer’s goods other than Opposer’s use of its GECKO
`
`TRADEMARKS. cf id. at 1251 (stating that for Victoria’s Secret, although the word “secret”
`
`may provoke some intrinsic association with prurient interest, it is not automatically linked in the
`
`normal human experience with lingerie, nor is it particularly descriptive of bras an hosiery, nor
`
`does it in combination of “secret” with “Victoria’s” conjure thoughts of women’s underwear
`
`except
`
`in the context of the marks
`
`line of products).
`
`As
`
`such, Opposer’s GECKO
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`TRADEMARKS are inherently strong marks deserving of a high level of trademark protection.
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`

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`4. The Extent to which Opposer is Engaging in Substantially Exclusive Use
`of the GECKO TRADEMARKS Clearly Supports Likelihood of Dilution
`
`As noted above, Opposer has consistently and successfully policed its rights in GECKO
`
`derivative marks against numerous third parties.
`
`In support of the present motion Applicant apparently scoured the intemet for any third
`
`party use of GECKO derivative marks, resulting in identification of thirty—nine (39) different
`
`websites. (Applicant’s Mot. Summ. J. EX. K.) No evidence has been presented that any of those
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`websites have actually sold any products under any GECKO derivative marks. Moreover, of the
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`39 websites identified by Applicant, only a very few appear to be marketing related products,
`
`using GECKO derivative marks in a non—descriptive manner, in the United States.
`
`Table 1: Analysis of Applicant’s Cited “Evidence” of Third Party Use
`Uncertain Descriptive
`
`Descriptive
`Use
`
`
`
`Located within the
`United States
`Location Uncertain
`
`(Price marked “$”)
`Location Unknown
`
`Location Outside
`the United States
`
`a. Only three (3) are arguably related to Opposer’s goods — the fourth, GECKO GLASS, is for colored
`glass panels. Dancing Gecko Hawaii purports to sell sarongs, dresses, tops, skirts and related goods.
`Pacific Sunwear of California, Inc. purports to sell a “gecko bag” by Billabong.
`“From the Gecko
`Boutique” advertises a clothing boutique and style consultations in St. Croix in the U.S. Virgin Islands.
`b. Located in Australia, the United Kingdom (3), and Thailand.
`c. Websites that do not appear to offer products or services for sale.
`
`Use of the term GECKO in relation to a product bearing the illustration of a gecko, e.g.
`
`shirt bearing an illustration of a gecko, evidences only a descriptive use of the term GECKO, e. g.
`
`a “GECKO” shirt, which does not constitute a third party usage of GECKO as a trademark.
`
`Websites evidencing use of the term GECKO in relation to unrelated products, e.g. stained glass
`
`supply, also have no bearing on third party usage of GECKO derivative marks for competitive or
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`

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`related goods. Further, websites located outside of the United States, or which the location is not
`
`clearly specified, provide no evidence of competitive usage of GECKO derivative marks for the
`
`sale of any goods or services in this country.
`
`In short, of the millions of websites throughout the world, only 39 websites are identified
`
`as evidencing third party usage of GECKO derivative marks. Of those 39 websites, only 3
`
`appear to relate to use of GECKO derivative marks, for related goods, in the United States, or its
`
`territories, i.e. Dancing Gecko, Pacific Sunwear and From the Gecko Boutique. None of these
`
`uses appear to be significant but rather appear to be isolated cases, and/or in remote areas.
`
`(Applicant’s Exs. K2, K10, and K15.) None of these three have been demonstrated to actually
`
`have sold products under GECKO derivative marks. Even so, the law does not require use of a
`
`famous mark to be absolutely exclusive, but merely ‘substantively exclusive.’ Moseley, 87
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`USPQ2d at 1250 (citing Nike,
`
`Inc. v. Nikepal International,
`
`Inc., 2007 WL 2782030, *7
`
`(E.D.Cal. 2007)).
`
`Further, Applicant’s “evidence” was blatantly padded with websites that cannot possibly
`
`by considered to represent third party usage (let alone usage in the United States) by any
`
`reasonable person. Examples include an Australian website under construction (Applicant’s Ex.
`
`K4), a website describing an individual’s self—built kayak with a gecko pattern paint—job
`
`(Applicant’s Ex. K12), a website displaying picture of a gecko design that is labeled personal
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`project (Applicant’s Ex. K18), a website offering information on a public festival revolving
`
`around geckos (Applicant’s Ex. K19), and a website describing a future online retail system for
`
`simulating trying on sunglasses on a computer before purchasing, (Applicant’s Ex.’s K20).
`
`Similarly, of the millions of trademark registrations issued or applied for, Applicant has
`
`identified only three instances of third—party registrations for GECKO derivative marks as
`
`applied to allegedly related goods. SarGECKO is merely for a stuffed toy animal made to
`
`

`
`resemble a gecko lizard, and as such appears to represent a descriptive, or at least highly
`
`suggestive, use of GECKO. GECKO GLASS, which peculiarly Applicant already referred to in
`
`the 39 websites, is for colored glass panels and does not appear to be related to Opposer’s goods.
`
`Only GECKO GREASE for a lip balm is even arguably related to Opposer’s goods.
`
`Such a showing does not demonstrate any significant third party registration or use of
`
`GECKO derivative marks that would mitigate the strength of Opposer’s GECKO marks. See
`
`Playboy Enterprises Inc. v. Netscape Communications Corp., 69 USPQ2d 1417, 1425 (9th Cir.
`
`2004)
`
`(finding that although defendants introduced evidence of more than 40 third—party
`
`trademark registrations for the marks as well as evidence that hundreds of companies use the
`
`terms within their company names, plaintiff’s counter evidence showing that many of the cited
`
`companies were active infringers whom plaintiff was diligently pursuing, others other were
`
`merely companies who had applied for similar marks but not received them, still others were
`
`listed multiple times, and the remainder were asserted to be in different fields or in localized
`
`areas was sufficient to establish a dispute of material fact).
`
`Indeed, such a paltry of third party use and registration more clearly evidences the
`
`strength and exclusivity of Opposer’s GECKO TRADEMARKS. The only inference that can be
`
`drawn with respect to the Applicant’s purported evidence of third party usage is that no valid
`
`evidence of actual third part usage of marks with “gecko” exists.
`
`5. The Degree of Recognition Supports Likelihood of Dilution
`
`At this point it is apparent that Opposer’s GECKO marks are well recognized by mass
`
`market retailers such as J .C. Penney’s, Sears, Mervyns, Kohl’s and others, who have advertised
`
`and retailed GECKO products across the country.
`
`_]_0_
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`

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`It is also reasonable at this point to infer that retail customers of those stores, and those
`
`who read advertising circulars distributed by those stores, in leading newspapers throughout the
`
`country, are also likely to be familiar with Opposer’s Gecko Products.
`
`Moreover, the diversity of goods marketed by Applicant and its licensees, the geographic
`
`scope of those sales, the willingness of numerous licensees to enter into agreements for the use
`
`of Opposer’s GECKO marks and other factors support the conclusion that Opposer’s GECKO
`
`marks are widely recognized and acknowledged.
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`Further evidence concerning specifics sales volumes of GECKO goods sold by retailers,
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`specific advertising expenses incurred by retailers and other factors is yet to be evaluated, but are
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`likely to only further demonstrate the obvious inferences that Opposer’s GECKO marks have
`
`become famous from a period well before the earliest adoption or use of Applicant’s Mark.
`
`Opposer requires more time to develop evidence of the degree of recognition of the
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`GECKO TRADEMARKS, which exemplifies why Applicant’s motion for summary judgment is
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`premature and should not be granted.
`
`Intentio