`ESTTA635677
`ESTTA Tracking number:
`10/29/2014
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`91205110
`Defendant
`GA GA Jeans Limited
`DAVID C BUXBAUM
`ANDERSON ANDERSON LLP
`110 WALL ST 11TH FL
`NEW YORK, NY 10005
`UNITED STATES
`anderson@anallp.com
`Motion for Summary Judgment
`David C. Buxbaum
`anderson.guangzhou@anallp.com
`David/C/Buxbaum
`10/29/2014
`img-X29213640.pdf(976817 bytes )
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`Proceeding
`Party
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`Correspondence
`Address
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`Submission
`Filer's Name
`Filer's e-mail
`Signature
`Date
`Attachments
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`In the Matter of Trademark Application
`Serial No. 85/456,166
`for the mark “GaGa Jeans”
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`_______________________________________________________________X
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`ATE MY HEART, Inc.,
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`Opposer,
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`against
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`GA GA JEANS LIMITED
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`Applicant.
`_______________________________________________________________X
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`Opposition No. 91205110
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`APPLICANT’S ANSWER IN OPPOSITION TO OPPOSER’S MOTION FOR
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`SUMMARY JUDGMENT
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`Pursuant to 37 C.F.R. 52.127 and Fed R. Civ. P. 56, Applicant Ga Ga Jeans Limited,
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`("Ga Ga Jeans" or "Applicant"), by its attorneys, Anderson & Anderson LLP, hereby
`answers Opposer’s Motion for Summary Judgment with regard to its attempt to stop the
`registration of Applicant’s pending application for the mark GAGA JEANS in Class 25
`(the "GAGA JEANS mark"), Serial No. 85/456,166 (the "Application"). In support of its
`opposition to Opposer’s Motion for Summary Judgment, Applicant relies on this
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`memorandum of law and the Exhibits attached hereto.
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`PRELIMINARY STATEMENT
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`The Opposer, Ate My Heart, Inc., is trying to prevent the registration of the trademark
`“Gaga Jeans”, based on its own registration of the trademark, “Lady Gaga”, despite the
`fact that in its registration, the Opposer did not include jeans as one of its products
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`covered by its registration. The Opposer tries to bootstrap its argument by alleging that
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`Applicant ‘.9 Answer in Opposition to Opposer ’s Motionfor Summary Judgment
`1
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`Gaga Jeans is a famous mark. Pursuant to the thirteen criteria of the DuPont case, it
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`seems clear that the answer to this case, namely whether there is a likelihood of confusion
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`between the marks, clearly does not favor the Opposer. Furthermore, there are too many
`disputes as to facts for Summary Judgment to be granted. Lady Gaga’s fame is limited,
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`particularly to the music field and her marks are barely known in any other industries.
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`Opposer’s mark for the purpose of this case is not a well—known mark.
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`STATEMENT OF DISPUTED FACTS
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`1. Lady Gaga’s Rise to Fame in the Music Industry
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`Lady Gaga has some fame in the music industry. However, this fame does not carry over
`to other fields of endeavor.
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`II. Use of LADY GAGA® Mark in Connection with Class 25 Goods
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`Lady Gaga is clearly not at all influential in the field of fashion, and particularly not
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`influential in field ofjeans.
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`Sales of her corporation in this field are paltry, and in the field ofjeans nonexistent.
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`III. Ogposer's U.S. Trademark Regstrations for the LADY GAGA® Mark
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`Opposer readily admits that its registration for the LADY GAGA, Reg. No. 3,695,129,
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`for Class 25 does not include jeans.
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`IV. AQQlicant’s GAGA Jeans Registration
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`As Opposer readily admits, “on October 25, 2011, Applicant filed an intent-to-use
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`application, Serial No. 85/456,166, to register the mark GAGA IEANS for use in
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`connection with Class 25 'jeans." Furthermore, Applicant owns the domain name “gaga-
`jeanscom”.
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`V. Consumer Survey Evidence
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`Applicant ’s Answer in Opposition to Opposer ’s Motionfor Summary Judgment
`2
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`As noted in the Declaration of Ms. Rhonda Harper of September 23, 2013 (Exhibit “1”)
`Survey data for the Opposer’s expert Dr. Ford has “...been marginalized by the sample
`screening criteria, sample size, and response categories”. As Ms. Harper noted:
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`“The degree of care taken by consumers to select and purchase the product
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`or brand is an important element in determining the likelihood of confusion.
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`Research suggests that brand names are not an important determining
`factor in the jeans category. Consumers tend to rely more on intrinsic cues
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`such as physical quality and style to guide their judgment. A study
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`conducted in South Korea reported that consumers did not appear to use
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`brand name to evaluate the overall quality of a denim jacket. A similar
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`quantitative study performed in Canada among women evaluated nine
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`attributes in the purchase of jeans. Brand ranked eighth among the factors
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`with only country of origin being less important” (Source: Journal of
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`Textile and Apparel, Technology and Management, Volume 7, Issue 1,
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`Spring 2011).
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`As Ms. Harper pointed out, the relevant universe for sale of GAGA JEANS is not known
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`to Dr. Ford. He has not examined the Applicant’s products and does not know if they are
`fashion, embellished, western jeans, or others; nor their pricing or where they will be sold.
`None of which enters into his calculations. In addition, as Ms. Harper points out that:
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`“Dr. Ford’s sample does not seem to parallel general jean purchasers.
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`According to a research report by Mintel, a global research firm, 60% of
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`men and 46% of women wearjeans, which is different than Dr. Ford’s
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`sample of 47% and 53% respectively. His sample does not seem to
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`represent the relevant target audience of those individuals likely to
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`purchase Lady Gaga Jeans as her fan base is 32.8% male and 67.2% female
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`with more than 50%. between the ages of 19 and 23”, (Source: Music
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`Metric, 2010).
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`Applicam"s Answer in Opposition to Opposer ’s Motionfor Summary Judgment
`3
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`Furthermore Ms. Harper states that:
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`“Dr. Ford’s selection set for consumers within the likelihood of confusion
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`survey is limited, only providing four response categories: Lady Gaga,
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`GaGajeans, Other or Don’t Know. Only one name within the responses
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`provided, Lady Gaga, has high general market awareness within the set and
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`may have generated bias. Had survey responders been presented with
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`different response categories—such as a viable jean manufacturer with
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`high brand awareness (e.g. 7 for All Mankind or Levi’s) or another
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`celebrity with high brand awareness (e. g. Pink or Usher) — they may have
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`responded differently.”
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`As noted in the Gaga Jean’s survey of 480 persons, 73.33% indicated they were
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`purchasing jeans next year. When asked who do you believe is responsible for producing
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`‘Gaga Jeans’? 22.48% said Gaga Jeans Limited, the Applicant’s company. Only 2.13%
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`said Ate My Heart, lnc., the Opposer’s company. 59.37% said they did not know. 89.47%
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`said they never purchased any clothing made by Ate My Heart, Inc. 95.03 % were not
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`aware that Ate My Heart Inc. was affiliated with Stephanie Germanotta, professionally
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`known as Lady Gaga. More importantly, 95.03% of those surveyed said they had never
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`purchased clothing from Stephanie Gennanotta, the performer known as Lady Gaga and
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`only 4 persons said they ever purchased any clothing from Lady Gaga, none of which
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`were jeans.
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`When asked: “Do you associate the name Lady Gaga with music, clothing, or other some
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`other industry?” 99.09% of respondents stated music. 0.19% of the respondents said
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`clothing. Clearly Lady Gaga is not known in the clothing industry. Source: Survey
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`Monkey. (Exhibit “2”).
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`VI. ARGUMENT
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`Applicant ‘s Answer in Opposition to Opposer '5 Motionfor Summary Judgment
`4
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`As the Opposer stated, “Summary judgment is appropriate where ‘there is no genuine
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`issue as to any material fact and the movant is entitled to judgment as a matter of law.’
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`Fed. R. Civ. P. 56(c)”. Clearly there are contested issues of fact in this case, which makes
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`the granting of summary judgment impossible. For example, a survey provided by the
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`Applicant makes it imminently clear that Lady Gaga is virtually unknown as a purveyor
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`of clothing items, let alone jeans. As such, Opposer cannot claim that her mark is well
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`known in the field of garments and/or jeans. The Opposer’s survey claims to show the
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`opposite. However, this would seem to indicate a dispute as to important facts, which
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`would bar summary judgment.
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`Furthermore, in 0pposer’s own application for protection for garments she excluded
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`protection from the category “jeans”. So it is clear that Opposer was not contemplating
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`covering jeans by her own mark.
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`The next issue is whether Applicant’s Gaga Jeans mark is likely to cause confusion with
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`Opposer’s Lady Gaga mark in the field of garments, and particularly in the area ofjeans.
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`Since Lady Gaga’s mark is not known in the garment field but is known in the music
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`field, we fail to understand how any confiision could arise. Consumers simply do not
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`know that Lady Gaga is trying to market garments, let alone jeans. The consumer survey
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`submitted by the Opposer was rigged, not really giving the persons surveyed an
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`opportunity to answer the questions properly since the choices given were intended not to
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`permit the participants in the survey to respond meaningfully. In any event, for reasons
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`mentioned above, Opposer’s survey is fatally flawed. To have a survey among persons
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`who do not recognize Lady Gaga as being known in the garment field or in the jeans
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`market and claim there is likely confusion with Gaga Jeans’s mark which is virtually not
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`known in the garment field lacks a rational basis.
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`Opposer tries to make the argument that because the Lady Gaga mark may be well
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`known in music, it should be allowed latitude in other fields. This would not include a
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`field where it is not known at all, which is virtually the case when it comes to garments,
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`and certainly the case when it comes to jeans. Would for example the Opposer argue that
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`Applicant is Answer in Opposirion to Opposer ’s Motion for Summary Judgment
`5
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`because of the degree of popularity in the music field, one could not use the “gaga” term
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`for intercontinental ballistic missiles?
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`There is a further frailty as mentioned above in Opposer’s argument. “Gaga” is an
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`English word, not easily appropriated, and indeed the registration “Lady Gaga” raises
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`some issues. While it is possible to convert a word usually used in the English language
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`to a protected mark, it certainly cannot easily be used to cover all fields of endeavor and
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`all classes of goods. Furthermore, as many cases have held, the use of ordinary English
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`words clearly carmot be afforded the same protection that can be afforded words that are
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`made up.
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`Is the Gaga Jeans mark similar to the Lady Gaga mark? Obviously they both have the
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`word “gaga” in them. Clearly “lady” and “jeans” are not protected words, but words they
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`are, with completely different meanings. “Jeans” are garments. A “lady” is a person. No
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`one can COI'lfi.1S6 persons and garments. They are fundamentally different.
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`As the Federal Circuit stated in the case ofPALM BA Y IMPORTS, WC. v. Veuve
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`Clicquot Ponsardin Jl/IAISONFONDEE EN 1 772, 396 F.3d 1369 at 1370; 2005 US. App.
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`LEJJS 2020; **,' 73 U.S.P.Q.2D (BNA) 1689, “Likelihood of confusion under the
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`Lanham Act, 15 US. C. § I052(d), is a legal determination based upon factual
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`underpinnings [citations omitted]. “ “This court determines the question on a case-
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`specific basis, applying the thirteen factors set forth in In re E1. Du Pont de Nemours &
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`C0., 476F.2d 1357, 136] (C. CPA1973)”.
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`The first Dupont criteria requires examination of: ‘The similarity or dissimilarity of the
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`marks in their entireties as to appearance, sound, connotation and commercial impression.”
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`Dupont, 476 F.2d at 1361. The question here would be the similarity of the marks when
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`compared in their entireties in terms of appearance, sound, and connotation. As to
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`appearance and sound, there are clear differences and similarities, but the differences are
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`greater than the similarities. The connotations are entirely different. Lady Gaga connotes
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`a feminine aura, perhaps a distinguished woman, and indeed might be a good name for a
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`Applicant ’s Answer in Opposition to 0pp0ser’s Motion for Summary Judgment
`6
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`perfume; while Gaga Jeans clearly connotes a garment. The connotations are clearly quite
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`different. As to the commercial impression, these again are different. Gaga Jeans is
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`clearly refening to a garment, and Lady Gaga could be referring to many things. In this
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`case, Lady Gaga manifests no close relationship to goods in question, namely jeans.
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`Clearly the mark Lady Gaga is not a strong mark, consisting of two ordinary English
`words.
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`In the case of FROOTEE ICE for flavored ice bars, it was held not likely to cause
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`confusion with “...FROOT LOOPS for breakfast cereal and related products” Kellogg Co.
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`v. Pack’em Enters, Inc., 951 F.2d 330 (Fed. Cir. 1991). “PECAN SHORTIES is not
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`likely to cause confusion with PECAN SANDIES for cookies” Keebler Co.
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`12. Murray
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`Bakery Prods. Inc-., 866 F.2d 1386 (Fed. Cir. 1989). Even the use of the same mark,
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`RALLY, in one case for all-purpose detergent, by Horizon; and in another case in the
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`automotive after—n1arket by DuPont, was held to be not confusing. “We have no hesitancy
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`in holding, therefore, under the facts of this case, that confusion is not likely to stem from
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`concurrent use of RALLY by Horizon and DuPont on their respective goods under the
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`terms of their agreement”, E1. Du Pont‘ de Nemours & Co., 476 F.2d 1357, 1364 (US C.
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`CPA 1973)”.
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`In an article from Illuminor LLC 197, DuPont Factors it properly notes that:
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`“There are, however, many instances in which registered marks have
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`identical spelling, appearance and sound yet still co-exist on the Register
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`and in the marketplace because they are used on unrelated goods or
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`services [emphasis supplied]. For instance a quick search of the USPTO
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`database disclosed the following:
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`0 At least 10 federal registrations for Easy Link as a trademark including
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`Easy—Link (Reg. No. 3071182), EZLink (Reg. No. 3016879), Easylink
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`(Reg. No. 2913532), and EZ Link (Reg. No. 2711754). Furthermore, there
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`are additional registrations that contain Easy Link as a part of the
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`Applicant‘s Answer in Opposition to Opposer ’s Motionfor Summary Judgment
`7
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`trademark such as EasyLink Services (Reg. No. 2914819) or AT&T
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`Easylink Services (Reg. No. 1714196).
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`In
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`Similar examples of multiple registrations of trademarks that have the same
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`appearance, sound, connotation or commercial impression will be found for
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`trademarks such as Genesis, Quick Connect, Infoworld, iMagic, or Data
`Master”.
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`As noted in that article, where two marks have different connotations, even when they are
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`identical, there is not necessarily likelihood of confusion. In the case at bar there
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`essentially is no similarity in the nature of the party’s goods and services; one party is in
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`the entertainment industry and the other party produces and sells jeans, even where the
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`Opposer dabbles in the sale of garments. In this case, more significantly, the marks are
`different.
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`Coca-Cola, clearly a well-known mark was unable to block the registration of UNCOLA
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`even though it was in a similar industry and contained the word “cola” in its name, Coca-
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`Cola Co. v. Seven-Up Co., 497 F.2d 1351 (C.C.P.A. 1974).
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`The second DuPont criteria is: “The similarity or dissimilarity and nature of the goods or
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`services as described in an application or registration or in connection with which a prior
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`mark is in use”. In this regard, the nature of goods of Gaga Jeans are clearly jeans. As
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`previously pointed out, the Opposer does not include jeans in its registration and its mark
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`does not market jeans.
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`The third DuPont criteria is: “The similarity or dissimilarity of established, likely-to-
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`continue trade channels”. Gaga Jeans is aimed at a teenagers and young adults who will
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`add their skills and embellish the jeans they buy and add their own concepts to with
`various appliques and the like that can be attached to the jeans. They will be engaged in a
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`creative process, so as to help design the jeans to their own satisfaction. The age group
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`targeted by the Applicant is primarily young people in the 13 to 17 year old category.
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`Even to the extent that the Opposer may be selling garments, and of course not jeans, the
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`Applr'cant’s Answer in Opposition to Opposer ‘s Motionfor Summary Judgment
`8
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`
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`focus is on a more fashionable audience and not these youngsters, so that the trade
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`channels are quite different.
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`The fourth DuPont criteria is: “The conditions under which and buyers to whom sales are
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`made, i.e. ‘impulse’ vs. careful, sophisticated purchasing”. Differences here do exist.
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`Assuming there are any potential purchases for Lady Gaga’s venture out of the
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`entertainment industry into garments, they are more likely to be sophisticated purchasers,
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`and thus unlikely to be confused. The young teenagers who are the focus of the Applicant,
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`are more likely to be impulse buyers, however, at present the Applicant’s product mix is
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`somewhat unique in the jeans business and young teenagers may look to the Applicant’s
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`products as something they have contemplated and want.
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`The fifth DuPont criteria is: “The fame of the prior mark”. For the Opposer’s mark to be
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`considered well-known or famous, the relevant segment of the consuming public must be
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`aware of the mark. “Accordingly, this court holds that the proper legal standard for
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`evaluating the fame of a mark under the fifth DuPont factor is the class of customers and
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`potential customers of a product [396 F.3d 1969 at 1364].” As to purchases ofjeans, there
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`is no factual evidence of the fame or well—known aspects of the Opposer’s mark, and the
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`class of customers is clearly different as noted above.
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`In the Domino case the 5”‘ Circuit, while recognizing the Domino mark had “...wide
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`public recognition of the mark as a source of sugar products” and that the owner of the
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`mark had spent more than $54,000,000 since 1947 in advertising and promoting its
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`“Domino” products, nevertheless held the Domino's Pizza mark would not cause
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`confusion with Domino among the public. Neither the court nor the Defendant denied
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`that the Plaintiffs mark was a distinctive well-known mark for its sugar-related products.
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`Yet it also noted that the Plaintiff never used the “Domino” mark in connection with the
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`sale of fast-food delivered pizzas. In addition, Domino is the sumame and a common
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`English name for a game, a type of mask, and a theory of political expansion. As the 5”‘
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`Circuit said in its opinion of this case “Thus, “Domino” is not a coined word, is not
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`purely fanciful, and while its application to sugar may be arbitrary, it is still not to be
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`Applicant '5 Answer in Opposition to Opposer ’s Motion for Summary Judgment
`9
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`accorded the same degree of protection given such coined and fanciful terms as
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`‘Kodak’ or ‘Xerox’” [emphasis supplied]. Similarly, “gaga” is an actual word in English,
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`as is “lady”, so it is not to be accorded the same degree of protection as a fanciful term.
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`As in the case at bar, the 5"‘ Circuit held that “Dissimilarities between the retail outlets
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`for and the predominant consumers ofplaintiff’ s and defendants’ goods lessen the
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`possibility of confusion, mistake, or deception. The dissimilarities here are substantial”,
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`AMSTAR CORPORATION, sv. DOMINO’S PIZZA INC, et al. 615 F.2d 252 at 262 1980
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`US COA 5"’ Cir. In this case AppIicant’s products will be sold in retail outlets that
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`specialize in catering to young people purchasing jeans and other garments or products.
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`This is clearly not the same marketing channel as that of the Opposer, assuming the
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`Opposer is active in the garment business. While the Plaintiff in the Domino case
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`produced a survey by Dr. Russ Haley, professor of marketing at the University ofNew
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`Hampshire conducted in ten cities among female heads of household responsible for
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`making food purchases, where 71% of those asked what products other than pizza do you
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`think the company that Domino’s Pizza makes, said sugar.
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`“While the possible confusion level shown by the Haley study is high, there
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`are several defects in the survey which significantly reduce its probative value.
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`First, one of the most important factors in assessing the validity of an opinion
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`poll is the adequacy of the ‘survey universe,’ that is, the persons interviewed
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`must adequately represent the opinions which are relevant to the litigation.
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`American Basketball Ass’n v. AMF Voit, Inc., 358 F. Supp. 291, 986
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`(S.D.N.Y.), affd, 487 F.2d 1393 (2d Cir. 1973), cert. denied, 416 U.S. 986,
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`94 S. Ct. 2389, 40 L. Ed. 2d 763 (1974); Hawley Products Co. V. United
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`States Truk Co., 259 F. 2d 69, 77 (1st Cir. 1958). The appropriate universe
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`should include a fair sample of those purchasers most likely to partake of the
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`alleged infringer’s goods or services. American Basketball, supra; Hawley
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`Products, supra”. 615 F.2d 252 at 264.
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`Similarly in this case, the Opposer’s survey barely touched the persons most likely to
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`purchase Gaga Jeans, namely teenagers between the ages of 13 and 17, which constitute 8%
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`Applicanfs Answer in Opposition to Opposer ’s Motion for Summary Judgment
`10
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`of less of those surveyed by the Opposer. The court further stated “Of additional concern,
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`plaintiffs survey was a ‘word association’ test participants in the survey were confronted
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`with the ‘Domino’s Pizza’ mark, and more or less asked if it brought anything else to
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`mind. We have previously held that such a procedure degenerates ‘into a mere word-
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`association test entitled to little weight.’ Holiday Inns, Inc. V. Holiday Out in America,
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`481 F.2d 445, 448 (Sm Cir. 1973). We do not believe the Haley survey presents any
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`meaningful evidence of likelihood of confusion”. 615 F.2d 252 at 264. Similarly,
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`Plaintiffs survey used a word association test, which is clearly entitled to little weight.
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`Despite the fact that Domino’s is a well-known mark, heavily advertised, but like the
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`mark in this case an actual word, the court found that the widely—known mark Domino
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`should not be extended to the pizza field. Similarly in this case, it should not be extended
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`to the jeans field.
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`Lady Gaga is not a famous mark. As noted in the Coach Services case, the Coach brands
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`for luxury products, including hand bags, and the like which sales exceeded ten billion
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`dollars in the relevant time frame, was still not held to be a famous brand, Coach Services
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`Inc. v. Triumph Learning LLC, 2012 WL 540069 (Fed. Cir.).; see also Lisa Tittemore,
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`Sunstein Kann Murphy & Timbers LLP, Hot Topics in Trademark Law: Trademark
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`Rights in Global Economy — Protection and Enforcement of Wei!-Known and Famous
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`Marks, ABA IP Law CLE June 8, 2012. If Coach is not a famous mark, then clearly Lady
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`Gaga is not a famous mark. “The Federal circuit noted that ‘we find substantial evidence
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`supports that Board’s determination that Triumph’s COACH mark, when applied to
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`educational materials, brings to mind someone who instructs students, while CSI’s
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`COACH mark, when used in connection with luxury leather goods, including handbags,
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`suitcases, and other travel items, brings to mind traveling by carriage”, Coach Services
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`Inc. v. Triumph Learning LLC, 2012 WL 540069 (Fed. Cir.).
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`Similarly here, as in the Coach case, when Lady Gaga is applied to jeans, it is not either
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`we1l—known, nor does it imply the product involved, and yet Gaga Jeans does.
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`Appiieanfs Answer in Opposition to Opposer ’s Motionfor Summary Judgment
`1 1
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`As to we11—known marks: “Implementation of the well—known marks doctrine in the
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`United States has been inconsistent, and how the law will eventually unfold in this area is
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`somewhat unclear. Most recently, in ITC Ltd v. Punchgini, the Second Circuit Court of
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`Appeals refused to recognize the doctrine, thereby creating a split with the Ninth Circuit,
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`which had earlier explicitly recognized the doctrine in Grupo Gigante S.A. De C. V. v.
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`Dailo & Co., 391 F. 3d 1088 (9th Cir. 2004)”; See Tittemore, Hot Topics in Trademark
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`Law, Page 9. “In declining to follow the Ninth Circuit’s lead the Second Circuit expressly
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`declined to grant judicial recognition to the well-known marks doctrine absent express
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`Congressional recognition. [TC Ltd v. Punchgini, Inc., 482 F.3d 135, 165 (2d Cir. 2007)
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`(‘we conclude that Congress has not yet incorporated that doctrine into federal trademark
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`law.’); See Tittemore, Hot Topics in Trademark Law, page 9.
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`Thus, depending on the jurisdiction we are dealing with, well-known marks may not even
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`be recognized by many courts in the United States.
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`“ROLEX is widely recognized by the general public as a trademark identifying
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`opposer’s timepieces. The mark has been in continuous use and consistently
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`maintained and registered in the United States for over 100 years. As noted
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`earlier, for over twenty-five years, opposer’s annual U.S. sales of its ROLEX
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`brand timepieces have been in the hundreds of millions of dollars and annual
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`U.S. advertising expenditures have been in the tens of millions of dollars. In
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`addition, as discussed earlier, ROLEX has been consistently named as one of
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`the top 100 brands in the world since 2001 by Business Week. The degree of
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`recognition is high and therefore favors opposer”, Rolex Watch USA. Inc. v.
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`AFP Imaging Corporation USPNT, Op. N0. 91 188993, December 5, 201 1
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`The administrative trademark judge held that despite the fact that 40% of the respondents
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`saw the ROLL-X mark on certain x—ray tables and equipment said what came to their
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`mind was Rolex/Watch, clearly a famous mark. This figure was insufficient to prove a
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`likelihood of dilution. While the criteria for lack of dilution is higher than for confusion,
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`nevertheless, the dismissal of the survey results is instructive. The administrative judge
`
`Applicant ’s Answer in Opposition to Opposer ’s Motion for Summary Judgment
`12
`
`
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`also cited Gap Inc. v. G.A.P. Adventures Inc., 100 USPQ 2"d 147, 1431 (S.D.N.Y. 2011),
`also dismissing the survey results. The administrative judge fiuther said: “In balancing
`the factors, we find that the degree of dissimilarity between the marks, the conflicting
`results obtained from the Johnson survey, and lack of evidence that applicant intended to
`create an association with opposer’s mark outweigh the recognition, distinctiveness and
`substantially exclusive use of opposer’s ROLEX trademark,” Rolex Watch U.S.A. Inc. v.
`AFP Imaging Corporation, Page 23.
`
`Despite the numerous exhibits Opposer attaches to its Motion for Summary Judgment,
`and even assuming these undocumented files, exhibits, and affirmations are true, “Lady
`Gaga” is still two ordinary English words, not entitled to substantial protection, not
`nearly as well-known as Coach, Rolex, or Coca-Cola, and certainly not a well—kuown
`mark in the jeans industry. Adding large amounts ofpaper to a flawed application for
`Summary Judgment does nothing to enhance the application.
`
`The sixth DuPont criteria is: “The number and nature of similar marks in use on similar
`goods”. To the best of the Applicant’s knowledge there are no similar marks on similar
`goods as the mark Gaga Jeans. As for Lady Gaga, while it is apparently applied to some
`garments, as far as can be determined, there is nothing distinctive about such applications.
`
`As to DuPont criteria number seven, “The nature and extent of any actual confusion”, to
`date there has of course been no confusion. As to the surveys done by the parties, they
`differ in results, but they do not deal with actual confusion but just potential confiision.
`
`In the Gaga Jeans survey done by the Applicant, 73.33% of the respondents indicated
`they were likely to purchase jeans within the next year. When the persons surveyed were
`asked who do you believe is responsible for producing Gaga Jeans, 22.48% said Gaga
`Jeans Limited, 5.19% said Levi Strauss, and 59.37% said they did not know. When asked
`if they were aware that Ate My Heart, Inc. is affiliated with Stephanie Gennanotta,
`professionally known as Lady Gaga 95.03% said they were not aware of that fact. More
`importantly, when asked: “have you ever purchased clothing from Stephanie Germanotta,
`
`Applicant 13' Answer in Opposition to Opposer ’s Motionfor Summary Judgment
`1 3
`
`
`
`the performer known as Lady Gaga?” 95.03% said no. Of the 0.88% that said yes, when
`
`asked: “what type of clothing did you purchase from Lady Gaga?” the response to jeans
`
`was zero. When further asked: “Did you associate the name Lady Gaga with music,
`
`clothing, or some other industry?” 99.99% said music.
`
`The above is clear evidence that Lady Gaga name or mark is not known in the clothing
`
`industry, and certainly not known in the jean industry.
`
`The problem with the survey undertaken by the Opposer’s expert Dr. Gerald L. Ford,
`
`have in part been previously discussed. Clearly, the juxtaposition of Zaza Jeans and Gaga
`
`Jeans is absurd and meaningless. Furthermore, as noted above, Dr. Ford’s selection as a
`
`set for consumers included only Lady Gaga, Gaga Jeans, Other, or Don’t Know. He did
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`not use any well-known jean manufacturer with high brand awareness such as Levi’s, 7
`
`For All Mankind, or another celebrity like Pink or Usher. Furthermore, as expert Rhonda
`
`Harper pointed out in her September 30, 2013 critique, Dr. Ford’s survey deliberately
`
`personalized Lady Gaga by only using the subject pronoun “whoever”, instead of
`
`something more business-oriented and the only response to who or whoever in his list is
`
`Lady Gaga, since Gaga Jeans is not a who but a what. Therefore there was a deliberate
`
`inducement to response “Lady Gaga” since she was the only who in his list. Expert
`
`Rhonda Harper also explained that: “the sample size of Dr. Ford’s survey responders
`
`does not meet the commonly used threshold for a statistical sample size.. .”.
`
`Further, as noted above, Dr. Ford’s sample has no idea of the target audience for Gaga
`
`Jeans. This sample not only does not represent the relevant universe for Gaga Jeans, since
`
`a very important part of its target audience are young girls and boys from the ages of 13
`
`to 17, which is only 8% of Dr. Ford’s responders. It is not only that the relevant universe
`
`for Gaga Jeans, renders the survey highly questionable. Lady Gaga’s fanbase, as Rhonda
`
`Harper pointed out, are largely between the ages of 19 and 23. But Gaga Jeans is aiming
`
`at a younger age group, of the ages between 13 and 17.
`
`Applicant ’s Answer in Opposition to Opposeris Motion for Summary Judgment
`14
`
`
`
`Finally, Ms. Harper points out that in a survey taken in Canada “Brand ranked eight
`
`among the factors with only country of origin being less important. . .and the purchase of
`
`jeansfi
`
`The eight DuPont criteria is: “The length of time during and conditions under which there
`
`has been concurrent use without evidence of actual confusion”. While the overlap
`
`existences of the two marks have not been lengthy in terms of their overlap, nevertheless,
`
`there is no evidence of confusion to date.
`
`The ninth DuPont criteria is: “The variety of goods on which a mark is or is not used”. As
`
`to Gaga Jeans it is only used on jeans and perhaps on the box which the jeans are
`
`presented for sale, including the appliques in the box. It is not used on goods which are
`
`unrelated to jeans. As for Lady Gaga, clearly it is overwhelming usage is in connection
`
`with Lady Gaga’s singing and entertaining and secondarily in some other products Lady
`
`Gaga may have recently involved herself in, including garments.
`
`The tenth DuPont criteria is: “The market interface between an applicant and the owner
`
`or a prior mar ”. There is no interface between Ate Your Heart Inc. and Gaga Jeans
`
`Limited. The Applicant is solely in the jeans business in regard to the use of the mark
`
`Gaga Jeans.
`
`The eleventh DuPont criteria is: “The extent to which applicant has a right to exclude
`
`others from use of its mark on its goods”. The Applicant, clearly has the right to exclude
`
`others from use of its marks on its good, since it has applied for registration and used its
`
`mark already. Obviously extensive use of its mark is difficult while these proceedings are
`
`pending.
`
`The twelfth DuPont criteria is: “The extent of potential confusion, i.e., whether to de
`
`minimis or substantial”. Since the two marks are disparate, and the Opposer’s mark has
`
`nothing to do with jeans, and Opposer is not in the jeans business, while the Applicant is
`
`Applicant ’s Answer in Opposition to Opposer’s Motion for Summary Judgment
`1 5
`
`
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`substantially in the jeans business and uses its mark almost exclusively for the jeans
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`business, the extent of potential confusion is de minimis.
`
`The thirteenth DuPont criteria is: “Any other established fact probative of the effect of
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`use”. It is difficult to imagine that
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