Trademark Trial and Appeal Board Electronic Filing System. httgj/estta.usQto.gov
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`
`91204474
`
`Plaintiff
`
`Mycoskie, LLC
`JAMIE STOCKTON
`SKADDEN ARPS SLATE MEAGHER & FLOM LLP
`FOUR TIMES SQUARE
`NEW YORK, NY 10036-6522
`UNITED STATES
`
`bgo|dner@skadden.com, |imor.robinson@skadden.com,
`smarquez@skadden.com, kp|evan@skadden.com,
`jamie.stockton@skadden.com, kenneth.p|evan@skadden.com
`Rebuttal Brief
`
`Kenneth A. Plevan
`
`Kenneth.P|evan@Skadden.com, Jamie.Stockton@Skadden.com,
`Xiyin.Tang@Skadden.com, smarquez@skadden.com
`/Kenneth A. Plevanl
`
`1 1/14/2013
`
`91204474Rep|y Brief.pdf(930921 bytes )
`91204474Rep|y Brief Appendix A.pdf(2339358 bytes )
`91204474Rep|y Brief Exhibits.pdf(479203 bytes )
`
`Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA570982
`ESTTA Tracking number:
`11/14/2013
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`91204474
`Plaintiff
`Mycoskie, LLC
`JAMIE STOCKTON
`SKADDEN ARPS SLATE MEAGHER & FLOM LLP
`FOUR TIMES SQUARE
`NEW YORK, NY 10036-6522
`UNITED STATES
`bgoldner@skadden.com, limor.robinson@skadden.com,
`smarquez@skadden.com, kplevan@skadden.com,
`jamie.stockton@skadden.com, kenneth.plevan@skadden.com
`Rebuttal Brief
`Kenneth A. Plevan
`Kenneth.Plevan@Skadden.com, Jamie.Stockton@Skadden.com,
`Xiyin.Tang@Skadden.com, smarquez@skadden.com
`/Kenneth A. Plevan/
`11/14/2013
`91204474Reply Brief.pdf(930921 bytes )
`91204474Reply Brief Appendix A.pdf(2339358 bytes )
`91204474Reply Brief Exhibits.pdf(479203 bytes )
`
`Proceeding
`Party
`
`Correspondence
`Address
`
`Submission
`Filer's Name
`Filer's e-mail
`
`Signature
`Date
`Attachments
`
`

`
`THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`MYCOSKIE LLC,
`
`Opposer,
`
`:
`
`:
`
`Serial No. 85/258,577
`
`Opposition No. 91204474
`
`- against -
`
`MIIR,
`
`Applicant.
`
`REPLY BRIEF OF OPPOSER MYCOSKIE, LLC
`
`Kenneth A. Plevan
`
`Jamie Stockton
`
`SKADDEN, ARPS, SLATE,
`MEAGHER & FLOM LLP
`
`Four Times Square
`New York, New York 10036
`(212) 735-3000
`(212) 735-2000 (facsimile)
`
`Attorneys for Opposer
`Mycoskie, LLC
`
`

`
`TABLE OF CONTENTS
`
`TABLE OF AUTHORITIES ........................................................................................................ .. ii
`
`PRELIMINARY STATEMENT ................................................................................................... ..1
`
`ARGUMENT ................................................................................................................................. ..3
`
`THE OPPOSITION SHOULD BE SUSTAINED ......................................................................... ..3
`
`1.
`
`II.
`
`Factor 1: Similarity Of The Marks; Applicant Fails In Its Attempt To Minimize
`The Significance Of This Key Factor............................................................................... ..3
`
`Factor 5: Strength of the Mark; Opposer’s Mark Has Enormous Commercial
`Strength As Well As Inherent Strength ............................................................................ ..4
`
`A.
`
`B.
`
`Commercial Strength ~ Applicant Overlooks TOMS Shoes’ 3,000 Retail
`Outlets .................................................................................................................... ..5
`
`Inherent Strength — Applicant’s “Suggestiveness” Argument Fails ..................... ..7
`
`III.
`
`Factor 2: Similarity of the Goods; Applicant Fails In Its Effort to Show
`Dissimilarity ..................................................................................................................... ..8
`
`A.
`
`B.
`
`C.
`
`Zone of Expansion ................................................................................................. ..8
`
`Identical Marketing Themes .................................................................................. ..9
`
`The Cases Cited By Applicant Do Not Support Its Position ............................... ..l0
`
`IV.
`
`Factor 4: Degree of Care Exercised by Purchasers —— The Purchasers and
`Transactions Here Are Not Sophisticated ...................................................................... ..1l
`
`V.
`
`The Remaining Factors Favor Opposer Or Are Neutral ................................................ .. 12
`
`A.
`
`B.
`
`C.
`
`D.
`
`E.
`
`F.
`
`G.
`
`Factor 12: Extent of Potential Confusion............................................................ ..12
`
`Factors 7 and 8: Actual Confusion and “Concurrent Use” ................................. ..12
`
`Factor 9: Variety of Goods on Which a Mark is Used ....................................... ..l3
`
`Factor 11: The Right To Exclude Others ............................................................ ..l4
`
`Factor 3: Charmels of Trade ................................................................................ ..15
`
`Factor 6: Third-Party Uses of ONE FOR ONE for Similar Goods and
`Services ................................................................................................................ ..15
`
`Factor 10: Market Interface Between Applicant and the Owner of the
`Prior Mark ............................................................................................................ ..16
`
`VI.
`
`Applicant’s Evidentiary Objections ............................................................................... ..16
`
`CONCLUSION ............................................................................................................................ ..l8
`
`

`
`TABLE OF AUTHORITIES
`
`Cases
`
`In re Aladdin's Eatery, Inc.,
`Serial No. 76020517, 2006 WL 402558 (T.T.A.B. Feb. 7, 2006) ................................... ..14
`
`America Centlry Services, Corp. V. Vista Investment Advisors LLC,
`Opp'n No. 123,203, 2002 WL 2022691 (T.T.A.B. Sept. 4, 2002) ................................... ..14
`
`In re Azteca Restaurant Enterprises,
`50 U.S.P.Q.2d 1209 (T.T.A.B. 1999) .............................................................................. ..12
`
`CAE, Inc. V. Clean Air Engineering, Inc.,
`60 U.S.P.Q.2d 1449, 267 F.3d 660 (7th Cir. 2001) ........................................................ ..12
`
`Coach Services, Inc. V. Triumph Learning LLC,
`96 U.S.P.Q.2d 1600 (T.T.A.B. 2010) .............................................................................. ..10
`
`In Re Davey Products Pty Ltd., ................................................................................................... .. 14
`92 U.S.P.Q.2d 1198 (T.T.A.B. Aug. 7, 2009)
`
`
`H.D. Lee Co. V. Maidenform Inc.,
`87 U.S.P.Q.2d 1715 (T.T.A.B. 2008) ............................................................................... ..8
`
`Harjo v. Pro-Football Inc.,
`45 U.S.P.Q.2d 1789 (T.T.A.B. 1998) .............................................................................. ..16
`
`In re Kathryn A. De Court,
`Serial No. 77479384, 2010 WL 4036047 (T.T.A.B. Sept. 30,2010) .............................. ..15
`
`Kenner Parker Toys Inc. v. Rose Art Industries, Inc.,
`22 U.S.P.Q.2d 1453, 963 F.2d 350 (Fed. Cir. 1992) ........................................................ ..4
`
`L.C. Licensing, Inc. V. Berman,
`86 U.S.P.Q.2d 1883 (T.T.A.B. 2008) .......................................................................... ..9, 10
`
`In re Majestic Distilling Co.,
`65 U.S.P.Q.2d 1201, 315 F.3d 1311 (Fed. Cir. 2003) ..................................................... ..11
`
`
`In re Mars Inc.,
`222 U.S.P.Q. 938, 741 F.2d 395 (Fed. Cir. 1984) ........................................................... ..10
`
`Marshall Field & Co. v. Mrs. Fields Cookies,
`25 U.S.P.Q.2d 1321 (T.T.A.B. 1992) .............................................................................. ..17
`
`
`Michael Stars Inc. v. Michael Starr,
`Opp'n No. 91164989, 2008 WL 3274130 (T.T.A.B. Aug. 1, 2008) ................................ ..14
`
`

`
`In re Mighty Leaf Tea, ................................................................................................................. ..15
`94 U.S.P.Q.2d 1257, 1259, 601 F.3d 1342 (Fed. Cir. 2010)
`
`Milwaukee Nut Co. V. Brewster Food Service,
`125 U.S.P.Q. 399, 277 F.2d 190 (C.C.P.A. 1960) ............................................................. ..7
`
`Nina Ricci, S.A.R.L. V. E.T.F. Enterprises,
`12 U.S.P.Q.2d 1901, 889 F.2d 1070 (Fed. Cir. 1989) ................................................. ..4, 12
`
`Palm Bay Imports, Inc. V. Veuve C1icguotPonsardin Maison Fondee En 1772,
`73 U.S.P.Q.2d 1689, 396 F.3d 1369 (Fed. Cir. 2005) ................................................. ..3, 11
`
`Pass & Seymour, Inc. V. Syrelec,
`224 U.S.P.Q. 845 (T.T.A.B. 1984) .................................................................................. ..17
`
`In re Pearce & Pearce,
`Serial No. 78769245, 2007 WL 4135840 (T.T.A.B. Nov. 7, 2007) ................................ ..13
`
`
`Societe Des Produits Nestle S.A. V. Midwestern Pet Foods Inc.,
`Opp'n No. 91163853, 2011 WL 1495460 (T.T.A.B. Mar. 31, 2011),
`gfi, 103 U.S.P.Q.2d 1435 (Fed. Cir. 2012) ................................................................... ..15
`
`Sure-Fit Products Co. V. Saltzon Drapery Co.,
`117 U.S.P.Q. 295, 254 F.2d 158 (C.C.P.A. 1958) ............................................................. ..7
`
`
`In re Thor Tech Inc.,
`90 U.S.P.Q.2d 1634 (T.T.A.B. 2009) ................................................................................ ..8
`
`Top Tobacco, L.P. V. North Atlantic Operating Co.,
`101 U.S.P.Q.2d 1163 (T.T.A.B. 2011) .............................................................................. ..4
`
`Other Authorities
`
`J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition (4th ed. West
`2013) .............................................................................................................................. ..4, 7
`
`U.S. Patent & Trademark Office, Trademark Trial and Appeal Board Manual of
`Procedure (3rd ed. 2011) ........................................................................................ ..6, 16, 17
`
`iii
`
`

`
`Mycoskie, LLC (“Opposer”) respectfully submits this reply brief in support of its
`
`opposition to the registration of the mark ONE4ONE, shown in U.S. Trademark Application
`
`Serial No. 85/258,577 (the “Application”), filed by MiiR.
`
`PRELIMINARY STATEMENT
`
`Applicant opens its “Trial Brief of Applicant Bryan Papé” (“App. Br.”, Docket
`
`No. 37)1 by accusing Opposer of being a “trademark bully”—an ad hominem that Applicant fails
`
`to back up with any legal support, i.e., any TTAB opposition proceeding in which the Board
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`considered it appropriate to reject an opposition because the Opposer was a “bully.” That
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`Applicant spends its entire Introduction on this theme is a sure sign that none of its arguments
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`have merit, and indeed they don’t.
`
`As this Board well knows, trademark owners have an obligation to police their
`
`marks. Policing is not “bullying,” nor does the duty to police make a trademark holder a
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`“monopolist,” another irrelevant ad hominem Applicant is particularly fond of.
`
`(S_ee_,£g,, App.
`
`Br. at 11, 12 (twice), 22.)
`
`Nor is prosecuting an opposition proceeding at the TTAB morally equivalent to
`
`“the scourge of patent trolls.” (Li. at 6.) It is true that Opposer uses its ONE FOR ONE
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`trademark in connection with the extremely well-known and highly successful business TOMS
`
`Shoes Inc. (“TOMS” or “TOMS Shoes”), an affiliate and licensee of Opposer. Market success,
`
`however, does not make Opposer a “bully” or a “troll,” nor does the fact that Applicant’s
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`business is apparently “modest” by comparison.2
`
`Curiously, on the cover page of its trial brief, and again on page 6, Applicant MiiR refers to
`itself as “Bryan Papé.” In fact, the Applicant herein is MiiR — Mr. Papé is the owner of MiiR
`and the applicant in a related opposition, Opposition No. 91207974, which also seeks to
`register the mark “ONE4ONE,”
`
`2 Applicant’s business is so modest that Applicant did not put in any evidence of its total sales.
`
`l0808S9-NYCSROIA - MSW
`
`

`
`As of the date of this reply brief, Opposer owns four U.S. trademark registrations
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`for the mark ONE FOR ONE.3 Applicant admits that it does not in any way dispute Opposer’s
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`trademark rights in ONE FOR ONE. (See App. Br. at 10-11.) Nevertheless, if Applicant were to
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`prevail and its application mature into a registration, this would seriously undermine Opposer’s
`
`enormous goodwill in its mark in three principal ways.
`
`First, Applicant would have freely transferable, nationwide rights in a trademark
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`that is functionally identical to Opposer’s mark. “Freely transferrable” is always highly relevant,
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`but particularly here where, it is not disputed, Applicant tried to “cash in” on its purported
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`trademark rights by selling them to Opposer. (E Pape Tr. at 40:5-42:13; Opp. Ex. 43.)
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`Second, granting Applicant these rights would put Opposer’s goodwill in
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`jeopardy, because if Applicant failed to follow through on its ONE4ONE charitable commitment
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`to its customers, and that became a matter of public record, it would irreparably harm Opposer
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`by severely tarnishing its ONE FOR ONE mark. What consumer of TOMS Shoes would not feel
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`let down if word spread that the ONE FOR ONE/ONE4ONE brand pocketed the money intended
`
`for charity?
`
`Third, if selling reusable water bottles with a gift-to-charity commitment is so
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`distinct from Opposer’s lines of consumer products and comparable charitable commitment4 to
`
`justify market co-existence, then one can easily imagine numerous other entrepreneurs seizing
`
`other consumer goods niches to exploit the same strategy, perhaps with identical marks, or
`
`3
`
`(i) U.S. Reg. No. 4,204,485, registered September 11, 2012 (NOR Ex. 530); (ii)
`These are:
`U.S. Reg. No. 4,170,419, registered July 10, 2012 (NOR Ex. 529); (iii) U.S. Reg. No.
`4,307,523, registered March 26, 2013; and (iv) U.S. Reg. No. 4,208,986, registered
`September 18, 2012 (NOR Ex. 531.)
`
`Applicant concedes that Opposer currently brands eleven lines of product with the ONE FOR
`ONE mark.
`(§§_e_ App. Br. at 9.)
`
`

`
`perhaps with ONE-FOUR-ONE, ONE IV ONE, or UNO POR UNO or UNO CUATRO UNO in
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`Spanish markets. It is self-evident that any such result would be untenable and completely
`
`inconsistent with well-established principles of trademark law.
`
`ARGUMENT
`
`THE OPPOSITION SHOULD BE SUSTAINED
`
`I.
`
`Factor 1: Similarity Of The Marks; Applicant Fails In Its
`Attempt To Minimize The Significance Of This Key Factor
`
`Applicant attempts to pass quickly over the similarity factor, acknowledging that
`
`“Applicant’s mark and Opposer’s mark are similar in sound and connotation.” (App. Br. at 10,
`
`emphasis added.) In fact, however, the two marks are identical in sound, and identical in
`
`connotation. (Opp. Br. at 10-11; g Pape Tr. at 31:21-25; see alfi NOR Exs. 551, 554.) Given
`
`that the similarity factor is one of the pivotal factors in the DuPont analysis, the difference
`
`between similar and identical is not so lightly dismissed.
`
`Even in appearance, the marks are functionally identical: ONE FOR ONE and
`
`ONE4ONE. In the era of Twitter and texting, the difference between “4” and “for” is
`
`nonexistent in the minds of the technological generation.
`
`Notably, in a further effort to downplay the identity in commercial impression,5
`
`Applicant does not once mention its charitable services in its trial brief, despite Mr. Pape’s
`
`testimony that such charitable services are precisely what Applicant’s mark is intended to
`
`convey. (Pape Tr. at 31 :21-25.) While Applicant abandoned the charitable services portion of
`
`its application after the commencement of this opposition proceeding (Docket No. 16), that
`
`5 While “commercial impression” is a distinct factor, it is “occasionally used as a proxy for the
`ultimate conclusion of similarity or dissimilarity of marks resulting from a comparison of
`their appearance, sound, and meaning.” Palm Bay Imports, Inc. v. Veuve Clicguot Ponsardin
`Maison Fondee En 1772, 73 U.S.P.Q.2d 1689, 1692, 396 F.3d 1369 (Fed. Cir. 2005).
`
`

`
`procedural tactic does not change the fact that its applied—for mark inherently conveys a “we give
`
`to charity message,” as its owner has conceded. Thus, the commercial impressions are also
`
`identical.
`
`Finally, Applicant tries to diminish the significance of the similarity factor by
`
`devoting most of its effort to discussing anything but similarity. Thus, while Applicant
`
`nominally allocates two pages of its trial brief to the similarity factor (App. Br. at 10-11), in fact
`
`only the first paragraph (2 sentences) addresses this factor — the other five paragraphs in this
`
`section of Applicant’s trial brief address other topics (and those out—of-place arguments are dealt
`
`with below).
`
`of Opposer.
`
`In sum, the first DuPont factor, similarity of the marks, weighs strongly in favor
`
`II.
`
`Factor 5: Strength of the Mark; Opp0ser’s Mark Has
`Enormous Commercial Strength As Well As Inherent Strength
`
`It is well-established that “strong marks enjoy a wide latitude of legal protection.”
`
`Kenner Parker Toys Inc. V. Rose Art Indus., Inc., 22 U.S.P.Q.2d 1453, 1456, 963 F.2d 350 (Fed.
`
`
`Cir. 1992) (emphasis added); see also Nina Ricci S.A.R.L. v. E.T.F. Enters., 12 U.S.P.Q.2d
`
`1901, 1903, 889 F.2d 1070 (Fed. Cir. 1989). There are, of course, two types of strength, inherent
`
`and commercial. Top Tobacco, L.P. V. N. Atl. Operating Co., 101 U.S.P.Q.2d 1163, 1171-72
`
`(T.T.A.B. 2011); 2 J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition §
`
`11:83 (4th Ed.West 2013).
`
`Applicant’s arguments on mark strength are scattered throughout its trial brief.
`
`For example, under a heading addressing the similarity of the goods, Applicant has a subheading
`
`that is labeled “Opposer’s mark is highly suggestive and inherently weak.” (App. Br. at 13.)
`
`The “highly suggestive” argument is also dealt with under mark similarity.
`
`(I_d. at 10.) In a third
`
`

`
`location, Applicant addresses the alleged “Lack of Fame” of Opposer’s ONE FOR ONE mark.
`
`(Li. at 15.)
`
`A.
`
`Commercial Strength —- Applicant Overlooks
`TOMS Shoes’ 3,000 Retail Outlets
`
`The significant commercial strength of Opposer’s mark was detailed at length in
`
`Opposer’s Trial Brief (Opp. Br. at 13-15), and will not be repeated here. To identify the glaring
`
`weakness in Applicant’s argument on alleged lack of commercial strength, one need only
`
`consider a single factor — while TOMS did not even exist prior to 2006, today its products, along
`
`with signage prominently displaying the ONE FOR ONE mark, appear in approximately ;,QQQ
`
`retail outlets across the United States.
`
`(§_C_6 Dilorio Tr. at 1023-14; Mycoskie Tr. at 20:18-22:5;
`
`Opp. Ex. 84.) These outlets include, for example: Neiman Marcus, Nordstrom, Journeys, Whole
`
`Foods, Billabong, Ron Jon Surf Shop, Roxy, Urban Outfitters, and Zumiez. (Opp. Ex. 84.)
`
`It is reasonable to infer that in a typical, or average, shopping day, literally
`
`hundreds of consumers will walk by and see the ONE FOR ONE display in each of these retail
`
`outlets. But even a conservative estimate ofjust one hundred consumer impressions per day, 6
`
`days a week, across 3,000 outlets, yields well more than 90 million impressions per year. This
`
`alone is sufficient to conclusively prove the significant strength of Opposer’s mark.6 No wonder
`
`Applicant did not even comment in the body of its trial brief on the 3,000 TOMS Shoes retail
`
`outlets.
`
`Applicant does “nit-pick” other significant evidence of the commercial strength of
`
`ONE FOR ONE. For example, Applicant spends two full pages discussing at length the
`
`purported inadequacies of a handful of news articles cherry-picked from the press packets
`
`6 And, this does not even begin to account for the impact, for example, of email blasts.
`(Dilorio Tr. at 10:24-12:24; Piwinski Tr. at 14:15-18:2.)
`
`

`
`submitted by Opposer. (S53 App. Br. at 16-17.) This overlooks that Opposer submitted only a
`
`very few representative samples of its press packs. As the TTAB specifically cautions, it does
`
`not encourage voluminous exhibits. E U.S. Patent & Trademark Office, Trial & Appeal Bd.
`
`Manual of Proc. (“TBMP”) § 702.05 (3rd ed. 2011) (disfavoring “papering” the Board).
`
`Applicant also asserts that publications for tourists and entrepreneurs are not
`
`directed to “consumers of casual shoes and sunglasses.” (_S_e_e_ App. Br. at 17.) This is baseless —
`
`does Applicant really want the Board to accept the assertion that tourists don’t shop for stylish
`
`casual shoes and sunglasses?
`
`Next, Applicant’s argument on pages 18-19 of its trial brief, which tries to
`
`undermine Ms. DiIorio’s testimony that the ONE FOR ONE mark is, in Applicant’s Version of
`
`events, “absolutely always,” used next to the word TOMS, is completely overblown. First, in the
`
`testimony cited by Applicant, Ms. Dilorio did not use the phrase “absolutely always.” Rather,
`
`she merely stated that she does not approve email blasts unless they have both “the TOMS logo
`
`on it and One For One.” (See Dilorio Tr. at 12:13-24.) Second, all of the exhibits Applicant
`
`cites to support its argument do in fact have both “the TOMS logo on it and One For One” (@
`
`Opp. Exs. 66-70, 79-81, 98),7 so it is difficult to see what point Applicant is trying to make.
`
`Finally, numerous of Applicant’s nit-picks are addressed and refuted in Appendix
`
`A hereto, which deals with the numerous (29) meritless evidentiary objections interposed by
`
`Applicant.
`
`7
`
`The one exception is Opp. Ex. 81, where the absence of ONE FOR ONE appears to be the
`result of a printing error when preparing the exhibit.
`
`

`
`B.
`
`Inherent Strength — Applicant’s
`“Suggestiveness” Argument Fails
`
`The inherent strength of Opposer’s mark is evidenced by the fact that it was not
`
`previously used before Opposer’s founder coined the term in connection with the early
`
`conception of his proposed new business. (E Mycoskie Tr. at 12:1 1-13 :8; §£als_o Section V-F
`
`below.) Applicant has not submitted any evidence whatsoever that might show that Opposer’s
`
`mark, or one confusingly similar thereto, was ever used by anyone else to market consumer
`
`goods, prior to the founding of TOMS. Nor does it have any evidence undercutting Opposer’s
`
`exclusive use thereafter.
`
`Applicant tries to undercut that clear evidence of inherent strength by arguing
`
`(repeatedly) that ONE FOR ONE is “highly suggestive” (referred to no fewer than 16 times on
`
`pages 9, 10, 11, 13, 14, 20, 22, and 24 of Applicant’s trial brief). Applicant, however, is
`
`apparently conflating two distinct trademark concepts by using the terms “descriptive” and
`
`“suggestive” interchangeably. (& App. Br. at 14.) Suggestive marks are, of course, afforded a
`
`broader scope of protection than descriptive marks (which require a showing of secondary
`
`meaning).
`
`_S_e_e McCarthy § 11:62. For example, whereas “you buy one/we give one to charity”
`
`might be a descriptive slogan, ONE FOR ONE, as Applicant repeatedly concedes, is without
`
`doubt suggestive (_s£§ App. Br. at 9, 10, 11, 13, 14, 20, 22, and 24), and therefore conceptually
`
`stig, not weak.
`
`Second, all three cases Applicant cites to support its “suggestive means weak”
`
`argument (App. Br. at 13-14) are plainly inapposite, because in all three cases the applicant’s
`
`mark was dissimilar to the opposer’s mark. E Milwaukee Nut Co. V. Brewster Food Serv., 125
`
`U.S.P.Q. 399, 401, 277 F.2d 190 (C.C.P.A. 1960) (Schnaps Nuts vs. Beer Nuts); Sure-Fit Prods.
`
`Co. v. Saltzon Drapery Co., 17 U.S.P.Q. 295, 296, 254 F.2d 158 (C.C.P.A. 1958) (Rite—Fit vs.
`
`

`
`
`Sure-Fit); H.D. Lee Co. V. Maidenform Inc., 87 U.S.P.Q.2d 1715, 1728 (T.T.A.B. 2008) (One
`
`Fab Fit vs. One True Fit).
`
`Nor does the fact that a “nine-year old kid can understand One for One” (App. Br.
`
`at 10) show any inherent weakness of the mark. The examples of strong trademarks understood
`
`by nine-year olds are seemingly endless (e.g., Disney World, Hershey’s Chocolate, Toys-R-Us).
`
`That children can readily identify with TOMS because of its charitable efforts only makes the
`
`ONE FOR ONE mark even stronger.
`
`Therefore, the fifth DuPont factor tips decidedly in favor of Opposer.
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`III.
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`Factor 2: Similarity of the Goods; Applicant
`Fails In Its Effort to Show Dissimilarifl
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`Applicant argues throughout its brief — regardless of which D;1£_o_rg factor it is
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`discussing — that its reusable bottles are not literally the same product as the eleven categories of
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`products offered by Opposer. But Q_1;l_’o_r1t factor 2 is concerned with “similar” goods, not just
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`“identical” goods. And, where, as here, the marks are extremely similar, the required degree of
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`similarity of the goods or services provided is reduced. $3 In re Thor Tech Inc., 90 U.S.P.Q.2d
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`1634, 1636 (T.T.A.B. 2009).
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`A.
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`Zone of Expansion
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`Opposer has clearly demonstrated that reusable bottles are within Opposer’s
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`“zone of natural expansion.” (Opp. Br. at 11-13.) For example, in May 2010, after months of
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`discussions, Opposer began donating to an organization called “Charity:Water” (Opp. Exs. 74,
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`77), which helps provide people in need with clean drinking water. TOMS also created and sold
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`a special Water Project Shoe beginning in May 2010, and a portion of the proceeds went toward
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`supporting Charity:Water. (Opp. Exs. 74-81; NOR Exs. 507-508; Mycoskie Tr. at 24:4-25:6.)
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`Indeed, Opposer began considering a water charity-related consumer business as early as 2008,
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`

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`as evidenced by its trademark applications for the terms WINE FOR WATER and WINE INTO
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`WATER. (NOR Exs. 522-525.)
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`Opposer also showed that there are as many as ten companies that (i) sell
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`footwear and apparel, and (ii) alg sell reusable bottles: REI, The North Face, Nike, Under
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`Armour, Lulu Lemon, Reebok, Zobha Products, New Balance, Asics, and Life is Good. (E
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`Opp. Br. at 12; Piwinski Tr. at 19:21-21:2; NOR Exs. 512-521, 533-536.) Applicant’s response
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`is to try to belittle this evidence by arguing that Opposer is engaging in “wishful thinking” by
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`equating TOMS Shoes with Nike. (App. Br. at 11.) All this shows is that Applicant has
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`completely missed the point — that if footwear and apparel on the one hand, and reusable water
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`bottles on the other,8 share the same branding, consumers will assume that these products all
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`emanate from the same source. % L.C. Licensing, Inc. v. Berman, 86 U.S.P.Q.2d 1883, 1889-
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`90 (T.T.A.B. Mar. 28, 2008) (that Eddie Bauer and L.L. Bean marks were used on both clothing
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`and automobiles was supporting evidence that consumers associate urban lifestyle clothing with
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`automobile accessories).
`
`B.
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`Identical Marketing Themes
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`The ONE FOR ONE mark, by its very nature, conveys to consumers that a
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`purchase of TOMS Shoes merchandise, fly merchandise, will trigger a gift to charity, and
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`Applicant’s mark conveys the same message. This is a striking, and indeed determinative,
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`similarity that Applicant tries to ignore.
`
`(As noted, Applicant tried to push this issue under the
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`rug by abandoning the charitable services portion of its application, see Docket No. 16.)
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`8
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`If Applicant thinks that only those individuals engaged in strenuous athletic endeavors are
`environmentally conscious, they have shown no support for this counter-intuitive position.
`TOMS, moreover, put out a shoe designed specifically for bicycling in connection with its
`ONE FOR ONE mark. (E Opp. Ex. 99.)
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`

`
`In L.C. Licensing, Inc. V. Berrnan, 86 U.S.P.Q.2d 1883 (T.T.A.B. Mar. 28, 2008),
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`the Board found that although apparel and custom automotive accessories were different goods,
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`“it is enough that [the] goods or services are related in some manner or that some circumstances
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`surrounding their marketing are such that they would be likely to be seen by the same persons
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`under circumstances which could give rise, because of the marks used or intended to be used
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`therewith, to a mistaken belief that they originate from or are in some way associated with the
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`same producer or that there is an association between the producers of each parties’ goods or
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`services.” Li. at 1899. As Mr. Mycoskie, TOMS’ founder put it, ONE FOR ONE applies to all
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`current and future TOMS Shoes’ products, even “soccer balls.” (Mycoskie Tr. at 30:20.)
`
`C.
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`The Cases Cited By Applicant Do Not Support Its Position
`
`Finally, Opposer notes that Applicant cited two cases in its mark similarity
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`section (App. Br. at 10) that actually dealt with product similarity, but neither support its
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`dissimilarity position. In In re Mars Inc., 222 U.S.P.Q. 938, 741 F.2d 395 (Fed. Cir. 1984), the
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`court clearly stated that the underlying TTAB action was an g p3_rt_e proceeding in which no
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`evidence was submitted.
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`Igl_. at 938. Further, the court expressly distinguished @ from a prior
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`TTAB decision involving an opposer that submitted evidence supporting its assertion that there
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`would be a likelihood of confusion.
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`I_d_. It also bears mention that candy bars and fresh citrus
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`fruits are on opposite ends of the nutritional spectrum, and would not be presumed to be
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`marketed under the same brand.
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`Nor is Applicant’s citation to Coach Services, Inc. v. Triumph Learning LLC, 96
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`U.S.P.Q.2d 1600 (T.T.A.B. 2010), instructive. In Coach, the applicant used the extremely
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`common word “coach” as a descriptive mark for educational services (i.e., to coach or tutor),
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`whereas opposer used its COACH mark suggestively or arbitrarily for handbags and luggage
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`10
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`

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`(i.e., suggesting the travel-related meaning of the word coach). Li. at 1609. These connotations
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`were clearly dissimilar, as were the products. Q
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`Thus, this factor weighs in favor of Opposer.
`
`IV.
`
`Factor 4: Degree of Care Exercised by Purchasers — The
`Purchasers and Transactions Here Are Not Sophisticated
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`Applicant argues that anyone who seeks out charitable causes is “selective” (i.e,
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`sophisticated and discerning). (App. Br. at 20.) This argument is close to insulting to the mass
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`of ordinary Americans that cannot take advantage of the itemized charitable deduction on their
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`income tax returns and look for other ways to donate. And, purchasing a pair of casual footwear
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`that sells for $40-$60 is certainly n_o‘t a sophisticated transaction.
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`Even if, however, the relevant consumers were considered selective, it is
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`Opposer’s mark (ONE FOR ONE) that they are selecting, and it is Applicant’s second-comer
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`virtually identical mark (ONE4ONE) that will cause a likelihood of confusion. _E_,g,, Ii
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`Majestic Distilling Co., 65 U.S.P.Q.2d 1201, 1205, 315 F.3d 1311 (Fed. Cir. 2003) (holding that
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`a consumer of RED BULL malt liquor could be led to purchase RED BULL tequila in the
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`mistaken belief that the two are manufactured by the same entity); Palm Bay Imps, 73
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`U.S.P.Q.2d at 1695 (holding that sophisticated consumers could believe that VEUVE ROYALE
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`was Veuve Clicquot’s sparkling wine). Applicant certainly provided no evidence that socially-
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`minded consumers, anxious to help those in need, are less susceptible to consumer confusion
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`than less charitably-minded consumers.
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`Thus, this factor also weighs in favor of Opposer.
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`ll
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`

`
`V.
`
`The Remaining Factors Favor Opposer Or Are Neutral
`
`A.
`
`Factor 12: Extent of Potential Confusion
`
`The only argument Applicant makes with respect to DuPont factor 12 is that “the
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`highly suggestive nature of Opposer’s mark makes it a weak mark, and precludes potential future
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`confusion with Applicant’s use of One40ne to identify bottles.” (App. Br. at 20.)
`
`Not only is this argument specious, as demonstrated above, it completely ignores
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`Opposer’s showing that the risk of damage to the goodwill of Opposer here is very significant.
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`As noted, if Applicant fails to honor its charitable commitments, and this becomes a matter of
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`public record, then such publicity would have serious negative consequences for Opposer’s
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`goodwill. (Mycoskie Tr. at 29:3-31 :16.)
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`Accordingly, the twelfth DuPont factor decidedly favors Opposer.
`
`B.
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`Factors 7 and 8: Actual Confusion and “Concurrent Use”
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`First, Opposer did Q91, as Applicant contends (App. Br. at 20), admit the lack of
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`any actual confusion. Rather, it stated that there is a lack of evidence of actual COI1fL1SlO1’l. (E
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`Opp. Br. at 17.) This is a subtle but important distinction.
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`It is, moreover, well settled that evidence of actual confusion is not required to
`
`prove that a likelihood of confusion exists. fi,_e,g,, Nina Ricci, 12 U.S.P.Q.2d at 1903
`
`(“absence of any showing of actual confusion is of very little, if any, probative value”). And,
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`courts have recognized that because “instances of actual confusion may be difficult to discover,
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`the most that the absence of evidence of actual confusion can be said to indicate is that the record
`
`
`does not contain any evidence of actual confusion known to the parties.” CAE Inc. v. Clean Air
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`Eng’g, Inc., 60 U.S.P.Q.2d 1449, 1467, 267 F.3d 660 (7th Cir. 2001) (25 years of coexistence);
`
`see also In re Azteca Rest. Enters., 50 U.S.P.Q.2d 1209, 1212 (T.T.A.B. 1999) (approximately
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`20 years of concurrent use).
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`12
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`Moreove