`ESTTA429952
`ESTTA Tracking number:
`09/12/2011
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`91191947
`Plaintiff
`HLT Domestic IP LLC
`JESSICA E LEWIS
`ALSTON & BIRD LLP
`ONE ATLANTIC CENTER, 1201 W PEACHTREE STREET
`ATLANTA, GA 30309-3424
`UNITED STATES
`david.stewart@alston.com
`Opposition/Response to Motion
`David J. Stewart
`david.stewart@alston.com, jessica.lewis@alston.com
`/David J. Stewart/
`09/12/2011
`Response in Opposition to Applicant's Motion for Summary Judgment.pdf ( 85
`pages )(5447515 bytes )
`
`Proceeding
`Party
`
`Correspondence
`Address
`
`Submission
`Filer's Name
`Filer's e-mail
`Signature
`Date
`Attachments
`
`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`In the matter of U.S. Application Serial No. 77/633,434
`Mark: WOOFDORF—ASTORIA DOG HOTEL & DAY SPA
`
`Filing Date: December 15, 2008
`Published: March 17, 2009
`
`HLT Domestic IP LLC
`
`Opposer,
`
`v.
`
`ERIC MARCUS,
`
`Applicant.
`
`Opposition No. 91191947
`
`RESPONSE IN OPPOSITION TO
`
`APPLICANT’S MOTION FOR SUMMARY JUDGMENT
`
`Opposer HLT Domestic IP LLC (“Hilton”) submits this Response in Opposition to the
`
`Motion for Summary Judgment filed by Applicant Eric Marcus (“Applicant”), and, in support
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`hereof, shows the Board as follows:
`
`I.
`
`INTRODUCTION
`
`Hilton has opposed Applicant’s application to register the service mark WOOFDORF
`
`ASTORIA DOG HOTEL & DAY SPA on the grounds that the mark dilutes and infringes
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`Hilton’s famous WALDORF ASTORIA mark. Applicant moves for summary judgment on both
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`claims; however, Applicant cites no evidence in support of his motion and engages in no analysis
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`of the dilution factors under the Trademark Dilution Revision Act (“TDRA") or the likelihood of
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`confusion factors under In re EI. du Pom de Nemours & C0., 476 F.2d 1357 (C.C.P.A. 1973).
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`Application has thus failed to discharge his burden of establishing that no genuine issue of
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`material fact remains and that he is entitled to judgment as a matter law.
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`
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`Instead of engaging in the required factor analyses, Applicant bases his motion solely on
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`the claim that his mark is a parody of Hilton’s famous WALDORF ASTORIA mark.
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`Applicant’s mark is not a valid parody because it does not comment upon or criticize Hilton or
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`its services. Rather, Applicant concedes that he designed his mark so that consumers would
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`associate the mark with the Waldorf Astoria and thereby conclude that, like the Waldorf Astoria,
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`Applicant’s services are 5-star luxury services. Such free riding on the goodwill of Hilton’s
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`famous mark for Applicant’s profit does not constitute a protectable parody under the TDRA.
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`With regard to Hilton’s infringement claim, parody is not, as Applicant suggests, a
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`talisman that wards off infringement claims. If a mark is likely to cause consumer confusion, it
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`is not a defensible parody as a matter of law. Applicant must thus demonstrate through an
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`analysis of the dz: Pom factors that confusion is not likely as a matter of undisputed material fact
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`to prevail on his motion. Because he has not engaged in any analysis of these factors, Applicant
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`has failed to meet his heavy burden on this motion. Applicant’s motion should therefore be
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`denied in full.
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`II.
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`ARGUMENT & CITATION OF AUTHORITIES
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`A.
`
`Summag Judgment Standard
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`Summary judgment is appropriate only when there are no genuine issues of material fact
`
`in dispute, leaving the case to be resolved as a matter of law. Fed. R. Civ. P. 56(0). As the
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`movant, Applicant bears the burden of demonstrating the absence of any genuine issue of
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`material fact. Celolex Corp. v. Catrett, 477 U.S. 317, 322-37 (1986). A fact is genuinely in
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`dispute if the record evidence would permit a reasonable fact finder to return a verdict in favor of
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`the nonmoving party. See Ll0yd’s Food P//'0ds'., Inc. 12. Eli ’S Inc., 987 F.2d 766 (Fed. Cir. 1993).
`
`
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`To survive Applicant’s motion for summary judgment, Hilton need only show that a
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`reasonable fact finder could resolve the matter in its favor. See Opryland USA, Inc. v. Great Am.
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`Music Show, Inc, 970 F.2d 847 (Fed. Cir. 1992); Olde Tyme Foods Inc. v. Round)/s Inc, 961
`
`F.2d 200 (Fed. Cir. 1992); see also Visa Int ’l Serv. Ass ’n v. Life-Code Sys, Inc., 220 U.S.P.Q.
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`740, 742 (T.T.A.B. 1983) (on a summary judgment motion, “[t]he nonrnoving party need only
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`show that there is a genuine issue as to a material fact and that, therefore, there is a need for a
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`trial”). The Board does not resolve issues of fact on summary judgment; it only determines
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`whether a genuine issue exists. Meyers v. Brooks Shoe Inc, 912 F.2d 1459, 1461 (Fed. Cir.
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`1990). As the nonmovant, the evidence should be viewed in a light most favorable to Hilton and
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`all justifiable inferences should be drawn in its favor. See Lloyd'5, 987 F.2d at 767 (Fed. Cir.
`
`1993).
`
`B.
`
`AQplicant’s Summary Judgment Motion Should Be Denied Because It Lacks
`Evidentiagy Support
`
`When a movant fails to submit evidence to support his motion for summary judgment, he
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`has “failed to carry [his] burden of establishing that no genuine issues of material fact exist.”
`
`Immzmes Corp. v. Applied Med. Research, Inc, No. 91153080, 2004 WL 1701270, *2 (T.T.A.B.
`
`July 12, 2004) (available at http://ttabvue.uspto.gov/ttabvue/v'?pno=91 l53080). Notably absent
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`from App1icant’s brief are any citations to any evidence of any kind, whether it be documents,
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`deposition testimony, or declarations. By failing to provide the Board with any evidence on
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`which to evaluate his motion or support the conclusory statements made therein, Applicant has
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`failed to satisfy his summary judgment burden. His motion should therefore be denied.
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`Id.
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`(“The Board finds that applicant, having submitted no evidence in support of its motion for
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`summary judgment, has failed to carry its burden of establishing that no genuine issues of
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`
`
`material fact exist”) Nevertheless, even if the Board were to consider the motion
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`notwithstanding this failing, the motion should be denied for the reasons set forth below.
`
`C.
`
`Applicant’s Motion for Summary Judgment as to Hilton’s Trademark Dilution
`Claim Should be Denied
`
`When evaluating a claim of dilution by blurring, the board looks to the factors set forth in
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`the text of the TDRA, namely, (1) whether the opposer’s mark is famous; (2) whether the
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`opposer’s mark became famous prior to the applicant’s use of its mark; and (3) whether the
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`applicant’s mark is likely to blur the distinctiveness of the opposer’s famous mark. See Nat’!
`
`Pork Ba’. & Nat ’l Pork Producers Council v. Supreme Lobster & Seafood Co., 96 U.S.P.Q.2d
`
`1479 (T.T.A.B. 2010); 15 U.S.C. § ll25(c). The parties agree that the WALDORF ASTORIA
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`mark is famous and acquired such fame prior to Applicant’s first use of his mark. Indeed,
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`Applicant admits that his mark is an “adaptation of opposer’s famous mark?” (Applicant’s
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`Motion at p. 3). However, Applicant does not address the remaining two factors of the dilution
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`analysis. By failing to do so, Applicant has failed to discharge his burden of demonstrating that
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`no genuine issues of material fact exist as to Hilton’s dilution claim?
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`Applicant’s apparent reason for failing to address the dilution factors is the belief that his
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`mark is a parody and therefore shielded from action under the TDRA pursuant to the parody
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`exclusion set forth in 15 U.S.C. § ll25(c)(3)(A). Applicant’s beliefis mistaken for two reasons:
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`(1) the WOOFDORF ASTORIA DOG HOTEL & DAY SPA mark does not constitute a parody,
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`and (2) even if it did, Applicant is using the mark in a manner that falls outside the scope of the
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`TDRA’s narrow parody exclusion.
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`Applicant’s parody argument depends upon a finding that the WALDORF ASTORIA mark is famous
`I
`because, if it is not famous and thus well known to Applicant’s customers, they could not understand that
`Applicant’s mark is allegedly a parody ofthe WALDORF ASTORIA mark.
`
`4
`
`
`
`I.
`
`Applicant’s Mark is Not (1 Legally Cognizable Parody of the WALDORF
`ASTORIA Mark
`
`Applicant fails to present any evidence that his mark is in fact a parody. Instead, he
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`offers only the conclusory statements that the WOOFDORF-ASTORIA mark is an “obvious
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`parody” or that it communicates an “obvious element of satire and amusement.” (Applicant’s
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`Motion at p. 3). These general statements do not satisfy his evidentiary burden on this motion.
`
`See Sfokely-Van Camp, Inc. v. William Wooten, Opposition No. 91183146, # 18 at *4 (T.T.A.B.
`
`Mar. 24, 2009) (available at http://ttabvueuspto.gov/ttabvue/v‘?pno=91 183146) (non-
`
`precedential opinion, attached hereto as Exhibit A) (applicant’s statement that its mark was a
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`“blatant parody” did not establish that the mark was a parody in the absence of any evidence that
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`consumers understood the mark to be a parody).
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`Even if Applicant had submitted some evidence to support his defense, it would not save
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`his motion because his mark does not qualify as a parody under the undisputed facts of record.
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`Using someone else’s mark to be humorous does not render the mark a legally protectable
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`parody under the Lanham Act. Rather, a mark qualifies as a parody only it if serves to hold up
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`the trademark owner or its services to “comment or ridicule.” See Elvis Presley Enterprises Inc.
`
`V. Capece, 141 F.3d 188, 46 U.S.P.Q.2d 1737, 1745 (Sm Cir. 1998); see also Campbell v. Acz.{/,7-
`
`Rose Music, Inc., 510 U.S. 569 (1994) (distinguishing parody and satire in the analogous context
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`of copyright infringement).
`
`In this case, Applicant concedes that he is not using his mark to comment upon or
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`criticize Hilton or its services in any way. (Deposition of Eric Marcus, April 20, 2011, attached
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`as Exhibit B hereto (“Marcus Dep.”), at 43:5-12). Rather, he admits that he intends his mark to
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`For the reasons set forth in Hilton’s cross motion for summary judgment, Hilton is entitled to summary
`2
`judgment on its dilution claim. At a minimum, Hilton submits that the evidence and arguments submitted in
`connection with its cross motion establish that genuine issues ofmaterial fact exist on the claim.
`
`5
`
`
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`be a humorous reference to Hilton’s WALDORF ASTORIA mark that also communicates to
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`prospective consumers that, just as the Waldorf Astoria offers 5-star luxury services, so too does
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`he offer “5-star luxury quality of service” under his mark. (Marcus Dep., 1 12:20-24; Applicant’s
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`lnterrogatory Responses, Exhibit C hereto, at 4). Such free—riding on his “mark’s association
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`with [a] famous mark for economic gain” is not protectable as a parody under the TDRA. See
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`Nike, Inc. v. Maher, Opposition No. 91188789, # 32 at *l6 (T.T.A.B. Aug. 9, 2011) (available at
`
`http://ttabvueuspto.gov/ttabvue/v?qt=adv&procstatus=All&33no=91 18878) (“Here, applicants
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`are not intending to use their mark to parody or to make any type of social commentary
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`regarding opposer, opposer's famous mark or opposer's goods. Instead, they are seeking to use
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`their mark for religious social commentary, and attempt to take a ‘free ride’ on the mark's
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`association with the famous mark for economic gain. This is not protectable parody”)
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`Applicant’s claim ofparody therefore offers no legitimate defense to Hilton’s claim under the
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`TDRA.
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`2.
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`The TDRA ’s Parody Exclusion Does Not Apply to Applicant’s Mark
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`Even if Applicant’s mark did comment upon or criticize Hilton or its services, his use still
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`would not give rise to a valid defense under the TDRA. Section 43(c)(3)(A) of the TDRA limits
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`the fair use exclusion for parodies to uses “other than a designation of source for the person’s
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`own goods or services.” 15 U.S.C. § 1125(c)(3)(A). Because Applicant’s use is in connection
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`with the sale of his own goods and services, the parody defense is unavailable to his use as a
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`matter of law. See Am. Express Mkig. & Dev. Corp. v. Gilaa’ Dev. Corp, 94 U.S.P.Q.2d 1294
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`(T.T.A.B. 2010) Starbucks Corp. v. Wolfe ’s Borough Coflee, Inc, 588 F.3d 97, 107 (2d Cir.
`
`2009). Applicant’s motion as to Hilton’s dilution claim should therefore be denied.
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`
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`D.
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`AQplieant’s Motion for Summary Judgment as to Hilton’s Trademark Infringement
`Claim Should be Denied
`
`Parody is not a defense if two marks would otherwise be considered confusingly similar.
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`See Starbucks US. Brands, LLC v. Ruben, 78 U.S.P.Q.2d 1741, 1754 (T.T.A.B. 2006); Sr0kely-
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`Van Camp, Opposition No. 91 183146, #18 at * 11 (“even if the [the Board] assumes that
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`applicant’s HATER-AID mark parodies opposer’s GATORADE mark, that is not enough to
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`prevent likelihood of confusion in this case.”). Thus, “[t] he right of the public to use words in
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`the English language in a humorous and parodic manner does not extend to use of such words as
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`trademarks if such use conflicts with the prior use and/or registration of the substantially same
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`mark by another.” Nike, Opposition No. 91 188789at *5 (citing Columbia Pictures Indus. Inc., v
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`Miller, 211 U.S.P.Q. 816, 820 (T.T.A.B. 1981)). As the court stated in Dr. Seuss Enters. L.P. v.
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`Penguin Books USA, Inc, 109 F.3d 1394, 1405 (9th Cir. 1997), “[s]ome parodies will constitute
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`an infringement, some will not. But the cry of ‘parody!’ does not magically fend off otherwise
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`legitimate claims of trademark infringement or dilution.”
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`Here, Applicant makes no attempt to analyze the du Pom‘ factors or show that there is no
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`genuine issue of material fact as to these factors in this case. Instead, he relies solely on a
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`defense that parody “obviates any potential confusion.” (Applicant’s Motion at p. 3). Applicant
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`cites a number of cases that examine one of the factors considered in the likelihood of confusion
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`analysis, the fame of the opposer’s trademark, and suggests that the fame of the WALDORF
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`ASTORIA mark diminishes the likelihood of confusion.
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`Id. at 2-3. Although Hilton agrees with
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`Applicant that the WALDORF ASTORIA mark is famous, Applicant’s evaluation of this factor
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`alone, rather than in the context of a full likelihood of confusion analysis, does not establish that
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`Applicant°s use of his mark is not likely to cause confusion with Hilton’s WALDORF
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`ASTORIA mark as a matter of undisputed fact. Indeed, by failing to evaluate the remainder of
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`
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`the likelihood of confusion factors, Applicant has given the Board no basis for determining that
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`confusion is not likely. Applicant has thus failed to discharge his burden on this motion.
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`The evidence of record further demonstrates that there are genuine issues of material fact
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`on Hilton’s infringement claim The Board should consider all dz: Pant factors for which there is
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`evidence of record, “but may focus. . .on dispositive factors, such as similarity of the marks and
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`relatedness of the goods.” Han Beauty, Inc. v. Alberlo-Culver Ca, 236 F.3d 1333, 1336 (Fed.
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`Cir. 2001) (quoting In re Dixie Rests, Inc. 105 F.3d 1405, 1406-07 (Fed. Cir. 1997)).
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`In this
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`case, a consideration of just the similarities of the parties’ marks and services and the strength of
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`Hilton’s mark demonstrates that general issues of material fact exist on Hilton’s claim.
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`Applicant concedes that the parties’ marks are similar. Indeed, it is this similarity that
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`prompted him to adopt his mark and thereby communicate that, like the Waldorf Astoria,
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`Applicant sells high quality luxury services. (Marcus Dep., 112220-24). The similarity of the
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`marks factor therefore weighs in Hilton’s favor.
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`With regard to the relatedness of the parties’ goods and services, Applicant states,
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`without evidentiary support, that “there is no genuine issue of material fact [] regarding the
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`services offered by applicant and those offered by opposer.” (Applicant’s Motion at p. 1).
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`Applicant’s statement is incorrect. Hilton offers its guests a wide variety of pet related goods
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`and services that are identical to or overlap with Applicant’s services, including the following:
`
`0
`
`0
`
`0
`
`Many WALDORF ASTORIA properties are pet—friendly hotels that both permit
`and encourage guests to bring their pets with them during their stay. (Declaration
`of Barbara Arnold, attached as Exhibit D at W 6-8.)
`
`The WALDORF ASTORIA in New York City offers pet-friendly amenities
`including, dog walking, grooming, shopping, spa and feeding services.
`(Id. at
`it 9).
`
`The Waldorf Towers in New York City has offered guests a “Fido Friendly
`Package” which includes a pet bed, pet amenities, complimentary pet walking and
`
`
`
`concierge services to assist with any pet needs such as grooming, shopping or spa
`services.
`(Id. at ‘ll 12).
`
`0
`
`0
`
`0
`
`Certain WALDORF ASTORIA properties provide pets with a special bed for the
`duration of their stay.
`(See Id at ‘W l0, l2).
`
`The Arizona Biltmore offers a “Preferred Pet Pals Program” which provides pet
`guests with a room service menu, a welcome treat, commemorative bowl and
`placemat as well as maps detailing suggested pet walks around the resort.
`(Id. at
`1111).
`
`Hilton sells a number of pet-related products on its Distinctly Waldorf website in
`a section of products titled “Waldorf Pooch,” including dog beds, collars and
`leashes.
`(Id. atfil 13).
`
`Based on the foregoing, consumers who encounter Applicant’s mark and services are
`
`likely to believe, mistakenly, that Applicant and its services are associated or affiliated with, or
`
`sponsored or endorsed by, Hilton.
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`With regard to the strength of Hilton’s mark, Applicant concedes that the mark is famous,
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`and he has presented no evidence of any third party marks that weaken the strength or
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`distinctiveness of the mark. Based on the foregoing, genuine issues of material fact exist on
`
`Hilton’s infringement claim, precluding an award of summary judgment to Applicant.
`
`
`
`III.
`
`CONCLUSION
`
`For the foregoing reasons, Hilton respectfully submits that the Board should deny
`
`App1icant’s Motion for Summary Judgment in full.
`
`Dated: September 12, 201 1.
`
`57 //
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`
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`.2.
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`Davidi‘J‘;”“S”tew -rt/
`
`Georgia Bar No. 681149
`Laura Kees
`
`Georgia Bar No. 217754
`Jessica Lewis
`
`Georgia Bar No. 142490
`ALSTON & BIRD LLP
`
`1201 West Peachtree Street
`
`Atlanta, GA 30309-3424
`
`Telephone: (404) 881-7000
`Facsimile: (404) 881-7777
`
`Counselfor Opposer HLTD0mesIz'c [P LLC
`
`10
`
`
`
`CERTIFICATE OF SERVICE
`
`This is to certify that I have this day served a copy of the foregoing Response in
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`Opposition to Applicant’s Motion for Szmmmry Judgment via First Class Mail on the following
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`counsel of record:
`
`Gary A. Essniann
`Andrus, Sceales, Starke & Sawall LLP
`
`lO0 E. Wisconsin Avenue, Suite llO0
`
`Milwaukee, Wisconsin 53202
`
`Dated: September l2, 201 l.
`
`ll
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`
`
`EXHIBIT A
`
`
`
`I UNWEDSTATESPATENTANDTRADEMARKOFHCE
`
`Trademark Trial and Appeal Board
`P.O. Box 1451
`Alexandria, VA 22313-1451
`
`THIS OPWION IS NOT A
`PRECEDENT OF THE TTAB
`
`Baxley
`
`Mailed: March 24, 2009
`
`Opposition No. 91183146
`
`Stokely—Van Camp,
`
`Inc.
`
`v.
`
`William Wooten
`
`Before Holtzman, Cataldo, and Ritchie,
`Administrative Trademark Judges.
`
`By the Board:
`
`William Wooten ("applicant") filed an application to
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`register HATER—AID in standard character form for "Aerated
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`water; Mineral water; Sparkling water; Colas; Concentrates,
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`syrups or powders used in the preparation of soft drinks;
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`Fruit—flavored drinks; Isotonic drinks; Pop; Powders used in
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`the preparation of isotonic sports drinks and sports
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`beverages; Soft drinks; Sports drinks; Syrups for making
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`soft drinks; Energy drinks; Fruit drinks; Fruit flavored
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`soft drinks" in International Class 32.1
`
`Stokely—Van Camp,
`
`Inc.
`
`("opposer") filed a notice of
`
`opposition to registration of applicant's mark on grounds of
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`likelihood of confusion with its previously registered marks
`
`1 Application Serial No. 77210492, filed June 20, 2007, based on
`an assertion of a bona fide intent to use the mark in commerce
`under Trademark Act Section 1(b), 15 U.S.C. Section 1051(1)).
`
`
`
`Opposition No. 91183146
`
`which include the word GATORADE for beverage and food
`
`products,
`
`including sports energy drinks and soft drinks,
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`and for dilution of those marks.2
`
`Applicant,
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`in his answer, admitted, among other things,
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`that opposer has prior use of its pleaded marks "in
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`connection with beverage and food products,
`
`including sports
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`energy drinks and soft drinks;” that opposer has registered
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`its GATORADE mark and is the owner of thirteen registrations
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`for marks which include the word GATORADE for beverage
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`products;
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`that, since prior to the filing of his
`
`application, opposer's GATORADE mark has been both
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`distinctive and famous; and that applicant adopted his
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`involved mark with the knowledge of opposer’s GATORADE marks
`
`and products.
`
`In the answer, applicant denied only that
`
`2 Opposer’s pleaded registrations include:
`Registration No. 848245 for the mark GATORADE in typed form for
`"fruit flavored soft drink and powder for making the same” in
`International Class 32,
`issued April 30, 1968,
`renewed twice;
`Registration No. 1410822 for the mark GATORADE THIRST QUENCHER
`and design in the following form
`
`
`
`for "thirst quenching soft drink and powder for making the same”
`in International Class 32,
`issued September 23, 1986,
`renewed;
`the wording THIRST QUENCHER is disclaimed; and
`Registration No. 2637355 for the mark GATORADE PERFORMANCE
`SERIES in typed form for ”non—alcoholic, non—Carbonated sports
`drinks” in International Class 32,
`issued October 15, 2002,
`Section 8 affidavit accepted, Section 15 affidavit acknowledged;
`the wording PERFORMANCE SERIES is disclaimed.
`
`
`
`Opposition No. 91183146
`
`there is a likelihood of confusion between the marks and
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`that use of applicant's mark is likely to dilute the
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`distinctive quality of opposer's GATORADE mark.
`
`In
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`addition, applicant asserted affirmative defenses,
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`including
`
`that "the intended use of the mark is to parody Opposer's
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`mark" and that "applicant takes care not to use any portion
`
`of Opposer's mark or design in [an] effort to ensure that
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`the marks are distinctive from one another so as not to run
`
`the risk of diluting Opposer's mark.”
`
`This case now comes up for consideration of opposer's
`
`motion (filed December 8, 2008)
`
`for summary judgment on its
`
`pleaded grounds of priority/likelihood of confusion and
`
`dilution.
`
`The motion has been fully briefed.
`
`Summary judgment is an appropriate method of disposing
`
`of cases in which there are no genuine issues of material
`
`fact in dispute,
`
`thus leaving the case to be resolved as a
`
`matter of law.
`
`See Fed. R. Civ. P. 56(0).
`
`The party moving
`
`for summary judgment has the initial burden of demonstrating
`
`that there is no genuine issue of material fact remaining
`
`for trial and that it is entitled to judgment as a matter of
`
`law.
`
`See Celotex Corp. V. Catrett, 477 U.S. 317 (1987);
`
`Sweats Fashions Inc. V. Pannill Knitting Co. Inc., 833 F.2d
`
`1560,
`
`4 USPQ2d 1793 (Fed. Cir. 1987).
`
`The nonmoving party
`
`must be given the benefit of all reasonable doubt as to
`
`whether genuine issues of material fact exist, and the
`
`
`
`Opposition No. 91183146
`
`evidentiary record on summary judgment, and all inferences
`
`to be drawn from the undisputed facts, must be viewed in the
`
`light most favorable to the nonmoving party.
`
`See Opryland
`
`USA,
`
`Inc. V. Great American Music Show,
`
`Inc , 970 F. 2d 847,
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`23 USPQ2d l47l
`
`(Fed. Cir.
`
`l992).
`
`As a party moving for summary judgment
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`in its favor on
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`a Section 2(d) claim, opposer must establish that there is
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`no genuine dispute that
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`(1) it has standing to maintain this
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`proceeding;
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`(2)
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`that it is the prior user of its pleaded
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`marks; and (3)
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`that contemporaneous use of the parties’
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`respective marks on their respective goods would be likely
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`to cause confusion, mistake or to deceive consumers.
`
`See
`
`Hornblower & Weeks,
`
`Inc. V. Hornblower & Weeks,
`
`Inc., 60
`
`USPQ2d l733,
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`l735 (TTAB 2001).
`
`With regard to whether opposer has standing to maintain
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`this proceeding, applicant has not challenged opposer's
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`standing to cancel
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`the involved registration.
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`In any event,
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`the copies of opposer's registrations for marks including
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`the word GATORADE that were obtained from the USPTO's
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`Trademark Applications and Registrations Retrieval
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`(TARR)
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`database that were submitted as exhibits to opposer's notice
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`of opposition and which show that the registrations are
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`valid and subsisting and owned by opposer are sufficient to
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`establish opposer’s standing in this case.
`
`See Trademark
`
`Rule 2.122(d)(1); Cunningham v. Laser Golf Corp., 222 F.3d
`
`
`
`Opposition No. 91183146
`
`943, 55 USPQ2d 1842, 1844 (Fed. Cir. 2000).
`
`No genuine
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`issue of material fact exists on this issue.
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`Furthermore, because opposer’s valid and subsisting
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`registrations are of record, priority is not
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`in issue.
`
`King Candy Co.,
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`Inc. V. Eunice King's Kitchen, Inc., 496
`
`F.2d 1400, 182 USPQ 108 (CCPA 1974).
`
`We also note that in
`
`his answer, applicant responded to paragraph 2 of the notice
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`of opposition, wherein opposer alleged that, "[s]ince long
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`prior to the filing date of the application opposed herein,
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`opposer has used the mark GATORADE and other GATORADE marks
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`in connection with beverage and food products,
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`including
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`sports energy drinks and soft drinks," and paragraph 3 of
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`the notice of opposition, wherein opposer alleged that it
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`has registered the GATORADE mark and owns thirteen
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`registrations for marks which include the word GATORADE for
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`"beverage products," with admissions of such allegations.
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`These admissions of fact are conclusive as to the issue of
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`priority.
`
`See Brown Company v. American Stencil
`
`Manufacturing Company,
`
`Inc , 180 USPQ 344, 345 n.
`
`5
`
`(TTAB
`
`1973)
`
`(admission during pleading results in estoppel
`
`precluding ability to prove anything to the contrary).
`
`In determining the issue of likelihood of confusion
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`and,
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`in this case, whether there is any genuine issue of
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`material fact relating thereto, we take under consideration
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`all of the du Pont factors which are relevant under the
`
`
`
`Opposition No. 91183146
`
`present circumstances and for which there is evidence of
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`record.
`
`See E.I. du Pont de Nemours & Co., 476 F.2d 1357,
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`177 USPQ 563 (CCPA 1973).
`
`We note initially that,
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`in his answer, applicant
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`responded to paragraph 6 of the notice of opposition,
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`wherein opposer alleged that its pleaded "GATORADE mark is a
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`famous mark and has been a famous mark since prior to the
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`filing date of the application opposed herein" with an
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`admission thereof. This admission of fact is conclusive as
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`to the issue of fame of the GATORADE mark.
`
`See Brown
`
`Company v. American Stencil Manufacturing Company, Inc.,
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`supra.
`
`As noted by our principal reviewing court
`
`in Kenner
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`Parker Toys Inc. V. Rose Art Industries Inc., 963 F.2d 350,
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`22 USPQ2d 1453, 1456 (Fed. Cir. 1992), cert. denied, 506
`
`U.S. 862, 113 S Ct. 181 (1992), "the fifth duPont factor,
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`fame of the prior mark, plays a dominant role in cases
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`featuring a famous or strong mark.
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`Famous or strong marks
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`enjoy a wide latitude of legal protection."
`
`The Federal
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`Circuit reiterated these principles in Recot Inc. V. M.C.
`
`Becton, 214 F.3d 1322, 54 USPQ2d 1894, 1897 (Fed. Cir.
`
`2000), stating that "the fifth DuPont factor,
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`fame of the
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`prior mark, when present, plays a ‘dominant’ role in the
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`process of balancing the DuPont factors," citing,
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`inter
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`alia, Kenner Parker Toys, 22 USPQ2d at 1456, and reaffirmed
`
`
`
`Opposition No. 91183146
`
`that ”[f]amous marks thus enjoy a wide latitude of legal
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`protection " This broader protection is accorded because
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`the marks are more likely to be remembered and associated in
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`the public mind than a weaker mark. Recot at 54 USPQ2d
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`1897. Under this reasoning, opposer's GATORADE mark
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`is accorded this broad scope of protection, and applicant's
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`assertion that confusion is unlikely because of the fame of
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`opposer's GATORADE mark is contrary to established precedent
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`and unpersuasive.
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`Thus, we find no genuine issue that
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`opposer's pleaded marks are famous.
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`Considering next
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`the goods and services involved, we
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`note that the goods identified in applicant's application
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`and some of opposer's pleaded registrations are overlapping.
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`For example, applicant's application includes “powders used
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`in the preparation of soft drinks” and "[f]ruit flavored
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`soft drinks" in the identification of goods, while the
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`identification of goods in opposer's oldest pleaded
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`registration, Registration No. 848245 for the mark GATORADE
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`in typed form,
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`is "fruit flavored soft drink and powder for
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`making same." Thus,
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`there is no genuine issue that the
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`goods are identical in part.
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`Furthermore,
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`there are no restrictions regarding trade
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`channels in the identifications of goods of applicant's
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`application or opposer's pleaded registrations. Because
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`there are no such limitations, we must presume that the
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`
`
`Opposition No. 91183146
`
`goods of each would be offered in all the normal channels of
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`trade for goods of this nature and to the normal classes of
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`purchasers.
`
`See Canadian Imperial Bank v. Wells Fargo Bank,
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`811 F.2d 1490,
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`1 USPQ2d 1813 (Fed. Cir. 1987).
`
`Thus, and
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`further because the goods are identical in part, we find no
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`genuine issue that the recited goods will be provided in the
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`same channels of trade to the same class of purchasers.
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`Considering now the similarity or dissimilarity of the
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`respective marks, we note that in cases where the
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`plaintiff's mark is famous and the goods and services are in
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`part identical,
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`the degree of similarity between the marks
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`necessary to support a finding of likelihood of confusion
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`declines.
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`See, e g., Nina Ricci, S.A.R.L. V. E.F.T.
`
`Enterprises, Inc., 889 F.2d 1070 (Fed. Cir. 1989),
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`12 USPQ2d
`
`1901 (Fed. Cir. 1989); Century 21 Real Estate Corp. v.
`
`Century Life of America, 970 F.2d 874, 877, 23 USPQ2d 1698,
`
`1701 (Fed. Cir. 1992), cert denied, 506 U.S. 1034 (1992).
`
`Herein, we find that the pronunciations of opposer's
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`GATORADE mark and applicant's HATER—AID mark are identical
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`in sound, except for the first letter of each mark. While
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`we acknowledge differences in the connotation and commercial
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`impressions of the marks at issue,
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`the nearly identical
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`sounds of the respective marks is sufficient to give those
`
`marks a strong similarity.
`
`See Krim—Ko Corp. v. The Coca-
`
`
`
`Opposition No. 91183146
`
`Cola Co., 156 USPQ 523 (CCPA 1968)
`
`(BEEP found confusingly
`
`similar to VEEP).
`
`Keeping in mind that famous marks, such as opposer's
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`GATORADE mark are accorded a wide latitude of protection, we
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`do not find the distinctions between the marks sufficient to
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`obviate the strong similarity between them.
`
`See Recot Inc.
`
`v. M.C. Becton, supra (Board must consider the similarity or
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`dissimilarity of the marks in their entireties with respect
`
`to appearance,
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`sound and connotation, not simply difference
`
`in connotation between FIDO LAY and FRITOLAY). As a result,
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`we find no genuine issue that applicant's HATER—AID mark is
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`highly similar to opposer’s GATORADE marks.
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`In short, every du Pont factor that we have considered
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`supports a finding of likelihood of confusion. Moreover,
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`applicant,
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`in his answer, admitted in response to paragraph
`
`9 of the notice of opposition that he adopted the HATER~AID
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`mark with knowledge of opposer’s GATORADE marks and
`
`products. As stated by the Court
`
`in Kenner Parker Toys,
`
`Inc. V. Rose Art Industries,
`
`Inc , supra at 1456 (citations
`
`omitted), "there is no excuse for even approaching the well—
`
`known trademark of a competitor...."
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`Applicant has asserted parody as a defense herein.
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`In
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`particular, applicant contends that his HATER—AID mark is a
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`"blatant parody” of opposer’s GATORADE mark and that his
`
`mark is "intended to illustrate the rivalry between” the
`
`
`
`Opposition No. 91183146
`
`University of Florida Gators,
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`for whom the GATORADE beverage
`
`was first invented, and the University of Tennessee
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`Volunteers and “to parody a product that has become famous
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`for supporting the Gators." Applicant's brief at 3.
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`However, applicant has volunteered no evidence of the extent
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`to which the relevant purchasing public,
`
`i e., purchasers in
`
`all the normal channels of trade for goods of this nature,
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`are aware either of the origins of opposer's GATORADE mark,
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`or the rivalry between the University of Florida and
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`University of Tennessee.3 Although applicant relies upon
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`one of his product labels to show the intended parody and
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`the context
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`in which his mark is used, we must determine
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`likelihood of confusion based solely on the marks at issue
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`without regard to additional matter with which those marks
`
`are used.
`
`See Interstate Brands Corp. V. McKee Foods Corp.,
`
`53 USPQ2d 1910,
`
`l9l4—l5 (TTAB 2000).
`
`3 Applicant submitted as exhibits in support of his brief in
`opposition line~saved excerpts, as opposed to actual printouts,
`from the internet websites www.gatorade.com and www.sfgate.com
`that are intended to show the origins of opposer's GATORADE mark.
`However,
`