Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA594064
`ESTTA Tracking number:
`03/22/2014
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`91206915
`Defendant
`Eric Lucas
`DAMON L WARD
`WARD LAW GROUP
`301 4TH AVE S STE 378N
`MINNEAPOLIS, MN 55415 1015
`UNITED STATES
`dward@wardlawgroup.com
`Opposition/Response to Motion
`Damon L. Ward
`dward@wardlawgroup.com
`/Damon L. Ward/
`03/22/2014
`TTAB Opposition Response Submission.pdf(4364061 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
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`In the matter of Application Serial No.: 85/597,114
`Published in the Official Gazette on August 28, 2012
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`Opposition No. 91206915
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`Memorandum in Opposition to Opposer’s
`Motion for Summary Judgment
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`MYBODY, L.L.C.,
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`
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` Opposer,
`vs.
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`ERIC LUCAS,
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` Applicant.
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`Applicant submits this memorandum in opposition to Opposer’s Motion for Summary Judgment.
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`INTRODUCTION
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`Opposer’s characterizations of the grounds on which it maintains it is entitled to summary
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`judgment are misleading and self-serving. Opposer seeks Summary Judgment that Applicant’s applied-
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`for mark (Serial No. 85/597,114) MY HERO for lotion is confusingly similar to Oppposer’s pink colored
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`logo “myHERO” for an anti-aging serum which Opposer deceptively (and solely for purposes of this
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`opposition) has now identified as a skin cream after the United States Patent and Trademark Office refused
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`registration of the logo and after Applicant applied for federal registration of his mark. Opposer’s Motion
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`must be denied because there are material issues of fact as to whether Opposer has established priority of
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`use, whether there is a likelihood of confusion between Applicant’s MYHERO mark and Opposer’s pink
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`colored myHERO logo, and whether Opposer’s anti-aging serum is really a medicinal treatment
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`according to FDA standards requiring it to be re-classified for purposes of determining the true market
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`differences between the products at issue, the actual target consumer, and the consumer sophistication.
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`Notably, Opposer’s memorandum of law fails to properly address, and in most cases, fails to address at all,
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`these material questions fact. Instead, Opposer has elected to set forth bald statements as evidence and in
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`doing so fails to carry its stringent burden on its motion.
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`1
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`

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`Indeed, throughout its memorandum, Opposer habitually ignores inconvenient facts, such as its
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`own conflicting arguments it raised in response to previous Office Actions, the nature of its medicinal
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`anti-aging serum (now curiously referred to as a skin cream), the self-described targeting of the anti-aging
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`serum to a limited marketing channel and consumer, and the readily-apparent difference in consumer
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`impression between the marks themselves. Given the multiple deficiencies in its arguments and the lack
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`of evidentiary proofs, it is clear that Opposer has not presented the clear and convincing evidence
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`required to overcome its evidentiary hurdle on summary judgment.
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`Applicant’s motion opposition, however, does not rest solely on the fact that Opposer has not
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`demonstrated the required lack of genuine issues of fact for trial. Applicant not only provides the
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`applicable standard (which Opposer failed to set forth or demonstrate), but also provides this tribunal with
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`information from Opposer’s own discovery responses as well as its own submissions to the USPTO from
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`its original failed attempt to register the logo that is more than sufficient to defeat summary judgment.
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`In light of Opposer’s deficient submissions and Applicant’s proofs, Opposer’s motion must be
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`denied.
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`BACKGROUND AND PROCEDURAL POSTURE
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`On April 13, 2012, Eric Lucas (“Applicant”), filed to register the mark “MYHERO” based upon a
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`bona fide intent to use the mark in commerce. Declaration of Damon L. Ward, Exhibit 1 (Application).
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`On August 8, 2012, Applicant received notice that the USPTO determined that Applicant’s mark
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`appeared entitled to registration. Ward Decl., Exhibit 2 (Notice of Publication).
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`On September 10, 2012, Opposer initiated this proceeding in an effort to prevent Applicant from
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`completing the trademark application process after the United States Patent and Trademark Office refused
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`registration of MYHERO for Opposer’s anti-aging serum and after Applicant received Publication
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`Confirmation in the Official Gazette subsequent to a determination that Applicant’s mark may be
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`registered. See Opposition, Exhibit 3 (Refusal re: Opposer’s serial # 85132776).
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`On February 20, 2014, Opposer brought its motion for summary judgment. In support of its
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`motion on the inextricably intertwined alleged grounds of priority and likelihood of confusion, however,
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`2
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`Opposer submits only the following broad and conclusory statements said to be supported by generalized
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`and non-specific discovery responses:
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`1.
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`2.
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`3.
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`4.
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`My Body LLC is an Arizona limited liability company with a business address at 5080
`North 40th Street, Suite 375, Phoenix, Arizona 85018 (“Opposer”), operates a business
`that develops and markets skin care and related products. . . .
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`As of January 28, 2011, Opposer adopted and has continually and extensively used the
`mark “MYHERO” in connection with the sale of its skin cream products since that date. .
`. .
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`Opposer has expended considerable time and resources to advertise and promote the skin
`cream producs offered under its “MYHERO” mark. . . .
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`Opposer has identified channels of trade where Opposer’s goods have been sold, are
`sold, and intend to be sold as: medical offices, spas, beauty spas, department stores,
`specialty stores, online retailers, consumer sales, and via its website . . . .
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`Opposer’s Statement of Material Facts, pp. 1-2.
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`However, Opposer fails to identify that (1) Opposer has never marketed, promoted, or sold its
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`product as a “skin cream;” rather only doing so as an anti-aging serum; Ward Decl., Exhibit 4
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`(Advertising) (2) Opposer has improperly identified the anti-aging serum in International Class 003 when,
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`as a medicinal product pursuant to FDA regulations, it should be classified in International Class 005 as a
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`drug Ward Decl., Exhibit 5 (Opposer’s application for anti-aging serum); (3) Opposer’s product contains
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`retinol and contains statements demonstrating it is a drug Ward Decl., Exhibit 6 (Ingredient Advertising);
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`Exhibit 7 (FDA Compliance & Regulatory Information), and Exhibit 8 (Warning Letters); (4) Opposer
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`represented to USPTO that the anti-aging serum was target marketed to the aging and mature women
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`Ward Decl., Exhibit 9 (Opposer’s Response to Office action); (5) Opposer has never used the myHERO
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`logo on any identified cosmetic skin creams, only its anti-aging serum, and only first claimed to be using
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`it for “skin creams” in Opposer’s most recent Application dated August 6, 2012--14 months after its anti-
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`aging serum application was refused registration and abandoned and four months after Applicant made its
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`application.
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`3
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`

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`ARGUMENT
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`I.
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`STANDARD FOR SUMMARY JUDGMENT
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`Summary judgment is proper if, drawing all reasonable inferences in favor of the nonmoving
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`party, there is no genuine issue of material fact and the moving party is entitled to judgment as a
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`matter of law. Fed. R. Civ. P. 56(a); Celotex Corp. v. Catrett, 477 U.S. 317, 322-23 (1986). The
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`moving party bears the burden of showing that the material facts in the case are undisputed. Id. at
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`322; Whisenhunt v. Sw. Bell Tel., 573 F.3d 565, 568 (8th Cir. 2009). The Board must view the
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`evidence, and the inferences that may be reasonably drawn from it, in the light most favorable to the
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`nonmoving party. Weitz Co., LLC v. Lloyd’s of London, 574 F.3d 885, 892 (8th Cir. 2009); Carraher
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`v.Target Corp., 503 F.3d 714, 716 (8th Cir. 2007); See Capital Speakers Inc. v. Capital Speakers Club of
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`Washington D.C. Inc., 41 U.S.P.Q.2d 1030, 1034 (TTAB 1996) (Board accepted nonmovant’s version of
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`the facts for purposes of deciding motion); Commodore Electronics Ltd., 26 U.S.P.Q.2d at 1505 (on
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`opposer's motion for summary judgment applicant's evidence of statement of use filed in connection with
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`another of its applications covering many of same goods as in opposed application created inference of
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`bona fide intent to use present mark despite absence of any documents regarding its intent to use present
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`mark). See also Opryland USA Inc. v. The Great American Music Show Inc., 23 U.S.P.Q.2d 1471, 1472
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`(Fed. Cir. 1992) (not required to present entire case but just sufficient evidence to show an evidentiary
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`conflict as to the material fact in dispute). A factual dispute is genuine if sufficient evidence is presented
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`such that a reasonable fact finder could decide the question in favor of the non-moving party. Sweats
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`Fashions Inc. v. Pannill Knitting Co., 4 U.S.P.Q.2d 1793, 1795 (Fed. Cir. 1987). The burden resting on
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`the non-moving party is to show that specific facts exist creating a genuine issue for trial. Anderson v.
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`Liberty Lobby, Inc., 477 U.S. 242, 256 (1986); Wingate v. Gage County Sch. Dist. No. 34, 528 F.3d
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`1074, 1078-79 (8th Cir. 2008).
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`Summary judgment is a drastic remedy and the Board is only to resolve any doubts as to the
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`existence of genuine issues of fact against the moving party. Enter. Bank v. Magna Bank of Mo.,
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`4
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`92 F.3d 743, 747 (8th Cir.1996). The Board's function is not to weigh the evidence and determine
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`the truth of the matter, but to determine whether there is a genuine issue for trial. See Anderson, 477
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`U.S. at 249. The Board does not resolve issues of fact on summary judgment. See Dyneer Corp. v.
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`Automotive Products plc, 37 U.S.P.Q. 1251, 1254 (TTAB 1995); Meyers v. Brooks Shoe Inc., 912
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`F.2d 1459, 1461, 16 U.S.P.Q.2d 1055, 1056 (Fed. Cir. 1990), overruled on other grounds by A.C.
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`Aukerman Co. v. R.L. Chaides Constr. Co., 960 F.2d 1020, 1038-39, 22 U.S.P.Q.2d 1321, 1333 (Fed.
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`Cir. 1992).
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`Indeed, the nonmoving party is entitled to the benefit of all reasonable inferences to be
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`drawn from the underlying facts in the record, and the Board must view the evidence and
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`those inferences in the light most favorable to the nonmoving party. See Lloyd's Food Prods. Inc. v.
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`Eli's Inc., 987 F.2d 766, 767, 25 U.S.P.Q.2d 2027, 2029 (Fed. Cir. 1993); Opryland USA Inc. v.
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`Great Am. Music Show Inc., 970 F.2d 847, 850, 23 U.S.P.Q.2d 1471, 1472 (Fed. Cir. 1992); Vette
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`Co. v. Aetna Casualty & Surety Co., 612 F.2d 1076, 1077 (8
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`th
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`Cir.1980); Enter. Bank v. Magna
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`Bank of Mo., 92 F.3d 743, 747 (8th Cir.1996). As long as there appears to be some support for the
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`disputed allegations such that “reasonable minds could differ as to the import of the evidence,” the
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`motion must be denied. Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 250 (1986).
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`Moreover, credibility of testimony cannot be resolved on a motion for summary judgment, as
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`credibility is an issue to be determined by the fact-finder. Tiemann v. Ind. School Dist. No. 740, 331
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`N.W.2d 250, 251 (Minn. 1983). Summary judgment should not be granted if reasonable persons might
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`reach different conclusions after reviewing the evidence. Basically, summary judgment is only
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`appropriate when “there is no dispute of fact and where there exists only one conclusion.” Crawford v.
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`Runyon, 37 F.3d 1338, 1341 (8th Cir.1994).
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`The Board employs a two-part test to determine whether there are genuine issues of
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`material fact. The materiality of a fact is determined from the substantive law governing the claim.
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`Only disputes over facts that impact the outcome of the case are considered material for purposes of
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`5
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`summary judgment. Anderson, 477 U.S. at 252; Planned Parenthood of Minnesota/South Dakota v
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`Rounds, 372 F.3d 969, 972 (8
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`th
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`Cir. 2004). The dispute over material facts must be genuine. A dispute
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`is genuine if the evidence is such that it could cause a reasonable fact-finder to return a determination for
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`either party. Id.
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`Opposer, as the party moving for summary judgment, has the burden of demonstrating the
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`absence of any genuine issue of material fact. See Celotex Corp. v. Catrett, 477 U.S. at 322-37. To
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`prevail on its motion, Opposer must establish that there is no genuine issue of fact regarding the
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`issues at hand by clear and convincing evidence. See H. Marvin Ginn Corp. v. Int’l Ass'n of Fire
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`Chiefs, Inc., 782 F.2d 987, 989-90, 228 U.S.P.Q. 528, 530 (Fed. Cir. 1986). O p p o s e r is held to a
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`“stringent standard,” for summary judgment. Summary judgment is “not a substitute for the trial
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`of disputed issues of fact.” Walters Gardens, Inc. v. Pride Of Place Plants, Inc., Opp’n No. 91153755,
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`2004 WL 1149499, at *6 (T.T.A.B. May 4, 2004) (nonprecedential). Moreover, “[a]ll doubts as to
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`whether or not particular factual issues are genuinely in dispute must be resolved against the moving
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`party.” Flately v. Trump, 11 USPQ2d 1284, 1287 (TTAB 1989).
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`For his part, in order to have the opportunity to submit proofs at trial, Applicant need only
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`show that, on the evidence of record, a reasonable fact finder could resolve the matter in his favor. See
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`Opryland USA Inc. v. Great Am. Music Show Inc., 970 F.2d 847, 850, 23 U.S.P.Q.2d 1471, 1472-73
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`(Fed. Cir. 1992); Olde Tyme Foods Inc. v. Roundy’s Inc., 961 F.2d 200, 202, 22 U.S.P.Q.2d 1542,
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`1544 (Fed. Cir. 1992); see also Visa Int’l Serv. Ass’n v. Life-Code Sys., Inc., 220 U.S.P.Q. 740,
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`742 (T.T.A.B. 1983) (on a summary judgment motion, “nonmoving party is not required to adduce
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`evidence sufficient to prove its case . . . ”; it need only show “that there is a genuine issue as to a
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`material fact and that, therefore, there is a need for a trial”).
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`In the light most favorable to Applicant as the nonmoving party, Opposer’s assertions must
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`fail and its motion must be denied in its entirety.
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`6
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`STATEMENT OF DISPUTED FACTUAL ISSUES FOR TRIAL
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`A.
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`B.
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`C.
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`Whether Opposer Has Established Priority of Use.
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`Whether Opposer Has Established Priority of Nationwide Use Beyond Its
`Geographic Location Sufficient to Prevent Federal Registration.
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`Whether There Is A Likelihood Of Confusion In View Of (1) The Dissimilarity of
`The MY HERO Mark And Opposer’s myHERO Logo; (2) The Dissimilarity Of
`Product Between Applicant’s Lotion and Opposer’s Anti-Aging Serum; (3)
`Opposer’s Targeted Marketing of Aging/Wrinkled Adult Women; (4) The Differing
`Commercial Impression Between Opposer’s “myHERO” Logo And Applicant’s
`“MY HERO” Mark; and (4) The Sophistication of The Targeted Consumer for
`Personal Anti-Aging Serums.
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`D.
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`Whether Opposer’s Product, More Properly Classified as a Medication Pursuant to
`the Food and Drug Administration Standards, was Misclassified in Opposer’s 2010
`Trademark Application and Opposer’s 2012 Application.
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`While Opposer has presented its side of the disputed issues, its attempt to carry its burden of
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`II.
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`establishing that no genuine issues exist for trial falls substantially short of clear and convincing evidence
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`of no genuine issue of material fact. Indeed, Opposer’s own marketing conduct and previous filings with
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`the USPTO contradict and undermine its woefully deficient argument. Genuine issues of material fact
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`remain extant and should proceed to trial.
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`III. OPPOSER IS NOT ENTITLED TO SUMMARY JUDGMENT ON THE ISSUE OF
`PRIORITY
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`Contrary to the severely limited pleading submission of Opposer, much more is required of the
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`logo holder to establish priority of trademark rights sufficient to prevent the federal registration of
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`Applicant’s mark. Because neither Applicant’s mark nor Opposer’s logo has yet been federally
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`registered, the issue is whether priority has been established by Opposer under common law to support
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`its bid for summary judgment. Despite Opposer’s talismanic conclusion that Opposer has “indisputable
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`prior proprietary rights in the mark,” its conclusion and absolute anemic discussion of the law is simply
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`oversimplified and wrong.
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`A.
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`Opposer Has Not Established Priority of Use.
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`Contrary to Opposer’s gossamer thin explanation of its thoughts on priority, to establish priority,
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`7
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`Opposer must d o m o r e t h a n j u s t show a proprietary interest in the mark. Opposer must
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`demonstrate “ p r o p r i e t a r y rights in the mark that produce a likelihood of confusion.” Herbko, Int’l,
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`Int’l. Inc. v. Kappa Books Inc., 308 F.3d 1156 (Fed Cir. 2002), citing, Otto Roth & Co. v. Universal
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`Foods Corp., 640 F.2d 1317, 1320, 209 USPQ 40, 43 (CCPA 1981). Before a prior use becomes an
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`analogous use sufficient to create proprietary rights, Opposer must show prior use sufficient to create an
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`association in the minds of the purchasing public between the mark and Opposer’s goods. Malcolm
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`Nicol & Co. v.Witco Corp., 881 F.2d 1063, 1065, 11 USPQ2d 1638, 1639 (Fed. Cir. 1989). The activities
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`claimed to create such an association must reasonably be expected to have a substantial impact on
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`the purchasing public before a later user acquires proprietary rights in a mark. Id.
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`Moreover, to establish that it has proprietary rights in the mark, Opposer must establish that
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`MYHERO “is distinctive of its so-called skin cream either inherently or through the acquisition of
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`secondary meaning.” Hoover Co. v. Royal Appliance Manufacturing Co., 238 F.3d 1357, 57 USPQ2d
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`1720, 1721 (Fed. Cir. 2001); Otto Roth & Co., Inc. v. Universal Foods Corp., 640 F.2d 1317, 209 USPQ
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`40, 44 (CCPA 1981) (discussing requirements of inherent distinctiveness).
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`Notwithstanding this precedent, conspicuously absent from Opposer’s memorandum of law are
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`both the proper legal standard to establish priority and any cogent evidence sufficiently establishing its
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`so-called “indisputable” prior proprietary rights. Not only has Opposer utterly failed to provide any
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`analysis of what is necessary to establish an association in the minds of the purchasing public, it has
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`failed to supply any evidence of prior use sufficient to create an association in the minds of the
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`purchasing public between the mark and Opposer’s goods. Therefore, Opposer has failed to carry its
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`burden on this motion, and its request for summary judgment must fail.
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`Assuming arguendo that Opposer had or could produce some semblance of evidence tending to
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`show some association in the minds of the purchasing public (which Applicant does not concede), genuine
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`issues of material fact still remain regarding both the alleged existence of any association, and the
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`sufficiency thereof, if any association existed.
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`Indeed, Opposer is fully aware that such an association does not exist. It was determined by the
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`8
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`USPTO in its Office Action of June 13, 2011 refusing registration of Opposer’s mark for the anti-aging
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`serum it now conveniently refers to as a “skin cream” that, in fact, consumers would be reminded of another
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`registrant that held the mark “HERO.” Ward Decl., Exhibit 9. The examining attorney further provided
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`evidence supporting the refusal including, but not limited to:
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`• Evidence from www.amazon.com offering “Swisa Dead Sea Mineral Skin Care Men's
`Moisturizing After Shave Balm and Skin Balancing Serum” which shows that after shave and
`serum are sold together and by the same entity
`• Evidence showing that the manufacturer “ilike organic skin care” offers both after shave as well
`as anti-aging serum
`• Evidence from Beauty Orchid demonstrating that anti-aging serum products and cologne travel in
`the same channels of trade
`• Evidence from Kiehl's offering entire categories of anti-aging products and shaving products
`• Evidence from http://www.neutrogena.com/ showing that anti-aging serum products and cologne
`and after shave originate from the same source under the same name.
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`Id.
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`Moreover, in the absence of inherent distinctiveness, Opposer bears the burden of proving acquired
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`distinctiveness, i.e., “secondary meaning,” by a preponderance of the evidence. Tone Brothers Inc. v.
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`Sysco Corp., 28 F.3d 1192, 31 USPQ2d 1321, 1327 (Fed. Cir. 1994) citing Yamaha Int’l Corp., 840
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`F.2d 1572, 6 USPQ2d at 1006, and must establish acquired distinctiveness before the date on which
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`Applicant can establish their rights. Threshold.TV, 96 USPQ2d at 1036 and Herbko, 308 F.3d 1162, 64
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`USPQ2d at 1378.
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`Acquired distinctiveness can be shown by direct evidence such as actual testimony,
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`declarations or surveys of consumers as to their state of mind; and/or circumstantial evidence from
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`which consumer association might be inferred. In re Steelbuilding.com, 415 F.3d 1293, 1300, 75
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`USPQ2d 1420, 1424 (Fed. Cir. 2005); Threshold.TV, 96 USPQ2d at 1038; In re Brouwerij
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`Bosteels, 96 USPQ2d 1414, 1424 (TTAB 2010). The amount and character of evidence required to
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`establish acquired distinctiveness depends on the facts of the case and particularly on the nature of the
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`mark sought to be registered or protected. See Roux Laboratories, Inc. v. Clairol Inc., 427 F.2d 823,
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`829, 166 USPQ 34, 39 (CCPA 1970). Finally, Opposer must show that the mark has acquired
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`distinctiveness independent and separate from any other indicia on the products bearing the mark.
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`9
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`Here again, Opposer has provided no evidence showing consumer association. Moreover,
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`Opposer has failed to demonstrate in any manner whatsoever that the myHERO logo creates a
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`commercial impression distinct from any accompanying packaging or design. In failing to do so,
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`Opposer’s motion must fail. Conversely, Applicant submits that any commercial impression, if any,
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`arises from Opposer’s use of the combined pink heart/mybody design and mark (serial # 85210784
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`attached to Opposer’s Statement of Facts, Exh. A) with the myHERO logo on its packaging and
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`advertising. In v iew of the lack of evidence regarding commercial impression or consumer association
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`and recognition of the significant role of its own company identifying indicia, the Board must conclude
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`that to the extent any association at all exists, it is predicated upon the impression conveyed by
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`Opposer’s company name and design indicia appearing thereon rather than by any distinctive character
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`or use of the myHERO logo.
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`Finally, even if Opposer properly argued the legal standard and proffered evidence of some sort of
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`association in the minds of the purchasing public or distinctiveness (which Applicant does not concede),
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`determination of the sufficiency of the evidence is a fact question for the fact-finder. The Board’s
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`function is not to weigh the evidence and determine the truth of the matter, but only to determine
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`whether there is a genuine issue for trial. See Anderson, 477 U.S. at 249. The Board cannot resolve
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`this issue of fact on summary judgment. See Dyneer Corp. v. Automotive Products plc, 37 U.S.P.Q.
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`1251, 1254 (TTAB 1995); Meyers v. Brooks Shoe Inc., 912 F.2d 1459, 1461, 16 U.S.P.Q.2d 1055,
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`1056 (Fed. Cir. 1990), overruled on other grounds by A.C. Aukerman Co. v. R.L. Chaides Constr.
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`Co., 960 F.2d 1020, 1038-39, 22 U.S.P.Q.2d 1321, 1333 (Fed. Cir. 1992).
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`Accordingly, in the absence of both the legal authority and any supportable facts applied to the
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`applicable standard, Opposer’s motion must fail.
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`B.
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`Even Assuming Arguendo Opposer Has Priority of Use of its myHERO Logo,
`Opposer Has not Established Nationwide Priority of Use Sufficient to Prohibit
`Applicant’s Registration of MY HERO.
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`Like all its other arguments, Opposer has failed to argue, establish, or provide evidence
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`supporting nationwide priority of use. The matter does not involve a dispute over two federally
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`10
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`

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`registered marks or between one registered mark and one un-registered mark. This proceeding involves
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`Applicant’s prosecution of his mark MY HERO and Opposer’s unregistered logo. Thus, common law
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`principles regarding geographic concurrent use govern determination of the scope of any priority (which
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`Applicant does not concede exists) of Opposer’s unregistered logo. See Hanover Star Milling Co. v.
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`Metcalf, 240 U.S. 403 (1916).
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` The U.S. Supreme Court, in Hanover Star Milling Co. v. Metcalf, outlined the common law
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`doctrine of geographic concurrent use that is still the basis for common law concurrent use rights in
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`trademarks. In that case, the Court refused to enjoin a junior user of the “Tea Rose” mark, rejecting a
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`common law “first in time” property right for trademarks that would have accorded exclusive
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`nationwide rights in a mark to the first user anywhere in the nation. Hanover Star Milling Co., 240 U.S.
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`at 415 (distinguishing prior case language that suggested exclusive nationwide rights in a mark accrued
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`to the first user nationally). The concept of geographic concurrent use contemplates that multiple parties
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`have rights to use the same or confusingly similar marks in separate territories when such use in the
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`same territory would otherwise constitute infringement. The test for infringement asks whether multiple
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`parties using similar marks on goods or services in the same area would likely confuse reasonably
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`prudent consumers as to the source, sponsorship, connection, or affiliation of the goods or services
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`associated with the marks.1 In determining each party’s geographic territory of exclusive use rights, a
`
`
`1 The quintessential manner of confusion is confusion as to the source of the goods or services (i.e.,
`confusion as to who supplies the goods or services). However, it is well established that infringement also
`contemplates consumer confusion as to a mark owner’s sponsorship of, connection to, or affiliation with
`the infringing goods or services. See 15 U.S.C. §1114(1)(a) (2000) (describing an infringement as being,
`inter alia, any unauthorized use of a registered mark in relation to goods or services when such use “is
`likely to cause confusion, or to cause mistake, or to deceive”) (emphasis added); 15 U.S.C §
`1125(a)(2000) (codifying these infringement concepts for Lanham Act § 43(a) actions); Comment, The
`Scope of Territorial Protection of Trademarks, 65 NW. U. L. REV. 781, 783–84 (1970)(discussing the
`broadening of the consumer confusion standard to include confusion resulting from consumers
`mistakenly inferring a mark owner’s sponsorship of an infringing good or service); MCCARTHY, supra
`note 7, § 23:6 (discussing initial interest confusion, a species of confusion recognized by most courts
`wherein a consumer mistakenly affiliates a good or service with a mark’s owner, even though the
`consumer actually knows the mark’s owner does not make or sponsor the good or service);
`MCCARTHY, supra note 7, § 23:76 (maintaining that the foregoing likelihood of confusion concepts are
`applied by courts in determining infringement of registered marks under the Lanham Act).
`
`
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`11
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`

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`court asks whether a likelihood of confusion exists in a particular area,2 and if so, grants injunctive relief
`
`to the party with the superior rights—the senior user or good-faith remote junior user.3 In determining
`
`which party has superior rights, a tribunal initially makes the factual determination of the senior user’s
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`geographic area of rights at the time the junior user adopted the mark.
`
`Opposer’s oversimplified assumption that the Board would consider “the Web” to be a single
`
`market and presume a nationwide reputation from its activities (assuming some evidence of such was
`
`submitted by Opposer) via the Web should be avoided. With respect to the Internet, merely placing a
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`mark on the Web does not accord a party a nationwide reputation. A reputation is rooted in consumer
`
`recognition, and the mere act of making a mark available nationally via the Web is a separate question
`
`from whether consumers have actually accessed the party’s mark or recognize it. Opposer’s
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`memorandum and record before the Board is simply devoid of any evidence or proper analysis on these
`
`critical issues. As such, its motion should be denied.
`
`Notwithstanding the dearth to absence of any analysis or evidence on these issues from Opposer,
`
`the determination of a party’s market, zone of goodwill, market penetration, and consumer association
`
`and recognition via the Internet or otherwise will necessarily be a fact-driven analysis; not one suited for
`
`or permitted on summary judgment.
`
`IV. OPPOSER IS NOT ENTITLED TO SUMMARY JUDGMENT ON THE QUESTION OF
`LIKELIHOOD OF CONFUSION
`
`
`
`Under In re E. I. du Pont de Nemours & Co., in testing for likelihood of confusion, the following,
`
`when of record, must be considered:
`
`1.
`
`The similarity or dissimilarity of the marks in their entireties as to appearance, sound,
`connotation and commercial impression.
`
`2 See generally William Jay Gross, The Territorial Scope of Trademark Rights, 44 U. MIAMI L. REV.
`1075, 1077 (1990); MCCARTHY, supra note 7, § 26:27 (“[Since] the territorial scope of trademark rights
`must be defined in terms of customer perception[, t]he touchstone of the determination of a trade area is
`likelihood of confusion.”).
`
` 3
`
` Gross, supra note 64, at 1078; see also MCCARTHY, supra note 7, § 30:1 (“A prevailing plaintiff in a
`case of trademark infringement or false advertising is ordinarily entitled to injunctive relief of some
`kind.”) (quoting RESTATEMENT (THIRD) OF UNFAIR COMPETITION § 35cmt. b (Tentative Draft
`No. 3, 1991)).
`
`
`
`12
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`

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`2.
`
`3.
`4.
`
`5.
`6.
`7.
`8.
`
`9.
`
`10.
`
`11.
`
`12.
`13.
`
`The similarity or dissimilarity of and nature of the goods or services as described in an
`application or registration or in connection with which a prior mark is in use.
`The similarity or dissimilarity of established, likely-to-continue trade channels.
`The conditions under which and buyers to whom sales are made, i.e. "impulse" vs.
`careful, sophisticated purchasing.
`The fame of the prior mark (sales, advertising, length of use).
`The number and nature of similar marks in use on similar goods.
`The nature and extent of any actual confusion.
`The length of time during and conditions under which there has been concurrent use
`without evidence of actual confusion.
`The variety of goods on which a mark is or is not used (house mark, "family" mark,
`product mark).
`The market interface between applicant and the owner of a prior mark:
`a)
`a mere "consent" to register or use.
`b)
`agreement provisions designed to preclude confusion, i.e. limitations on continued
`use of the marks by each party.
`assignment of mark, application, registration and good will of the related business.
`laches and estoppel attributable to owner of prior mark and indicative of lack of
`confusion.
`The extent to which applicant has a right to exclude others from use of its mark on its
`goods.
`The extent of potential confusion, i.e., whether de minimis or substantial.
`Any other established fact probative of the effect of use.
`
`c)
`d)
`
`In re E.I. du Pont de Nemours & Co., 476 F.2d 1357 (C.C.P.A. 1973). Contrary to Opposer’s partial
`
`analysis of the In re E.I. du Pont de Nemours & Co. factors, there has been no articulation that the two
`
`factors mentioned by Opposer are more important than these others.4 In fact, the In re E.I. du Pont de
`
`Nemours & Co. case expressly states:
`
`“[t[he evidentiary elements are not listed above in order of merit. Each may from case to
`case play a dominant role. In Schenley Distillers, Inc. v. General Cigar Co., Inc., 427
`F.2d 783, 57 CCPA 1213 (1970), and in McKesson & Robbins, Inc. v. P. Lorillard Co.,
`120 USPQ 306 (TTAB 1959), element (9) led to a finding that confusion was unlikely
`when the same mark was used on a beverage and a tobacco product. In John Walker &
`Sons, Limited v. Tampa Cigar Company, Inc., 124 F. Supp. 254 (S.D. Fla. 1954), aff'd,
`222 F.2d 460 (5th Cir. 1955) element (5) made confusion likely when the same mark was
`used on beverages and tobacco. See, also, Carling Brewing Company, Inc. v. Phillip
`Morris, Inc., 277 F. Supp. 326 (N.D. Ga. 1967) and Geo. A. Dickel Co. v. Stephano
`Brothers, 155 USPQ 744 (TTAB 1967) (involving beverages and tobacco).
`
`
`
`4 Notably, the case Opposer cites in support of its errant propositio