Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA946428
`01/09/2019
`
`ESTTA Tracking number:
`
`Filing date:
`
`Proceeding
`
`Party
`
`Correspondence
`Address
`
`Submission
`
`Filer's Name
`
`Filer's email
`
`Signature
`
`Date
`
`Attachments
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`91216585
`
`Defendant
`Thatch, LLC
`
`FRANK J GILBERT
`SCHWARTZ & CERA CA PC
`88 KEARNY STREET SUITE 1850
`SAN FRANCISCO, CA 94108
`UNITED STATES
`frank@schwartz-cera.com, ryg@cll.com, dks@cll.com, trademark@cll.com,
`jam@cll.com, doug@schwartz-cera.com, ken@schwartz-cera.com
`415-956-2600
`
`Brief on Merits for Defendant
`
`Joelle A. Milov
`
`jam@cll.com, dks@cll.com, jzk@cll.com, trademark@cll.com,
`doug@schwartz-cera.com, ken@schwartz-cera.com, frank@schwartz-cera.com
`
`/Joelle A. Milov/
`
`01/09/2019
`
`Part 1 of 2 - FINAL - REDACTED Applicants Trial Brief Filings.pdf(3557052
`bytes )
`Part 2 of 2 - FINAL - REDACTED Applicants Trial Brief Filings.pdf(3423179
`bytes )
`Applicants Trial Brief Certificate of Service.pdf(9652 bytes )
`
`

`

`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`In the matter of:
`Application Serial No. 85/932,097
`Mark: PATIO BY THE SPADES
`Published in the Official Gazette on April 29, 2014
`
`
`Kate Spade LLC,
`
` Opposer,
`
` v.
`
`Thatch, LLC
` Applicant.
`
`
`In the matter of:
`Application Serial No. 86/179,137
`Mark: THE SPADES
`Published in the Official Gazette on June 10, 2014
`
`
`Kate Spade LLC,
`
` Opposer,
`
` v.
`
`The Spades Trademark Company, LLC
`
` Applicant.
`
`
`
`
`
` Opposition No.: 91216585
` (PARENT)
`
`
`
`
`
`
`
` Opposition No.: 91217168
`
`
`
`
`
`PUBLIC REDACTED VERSION
`
`APPLICANTS’ BRIEF ON FINAL HEARING1
`
`
`
`COWAN, LIEBOWITZ & LATMAN, P.C.
`114 West 47th Street
`New York, New York 10036
`(212) 790-9200
`
`
`1 Redacted for confidential information pursuant to protective order. An unredacted version is
`being filed separately under seal.
`
`

`

`TABLE OF CONTENTS
`
`TABLE OF AUTHORITIES
`
`PRELIMINARY STATEMENT
`
`DESCRIPTION OF THE RECORD
`
`STATEMENT OF THE ISSUES
`
`STATEMENT OF FACTS
`
`A.
`
`B.
`
`C.
`
`PATIO BY THE SPADES and THE SPADES Applications
`
`Applicants THATCH and STC
`
`Opposer Kate Spade LLC
`
`D.
`
`Extensive Third Party Use of SPADE-Formative Marks
`
`ARGUMENT
`
`I.
`
`II.
`
`THE BOARD SHOULD DISREGARD OPPOSER'S EVIDENCE OF USE
`AND ALLEGED FAME OF THE KATE SPADE MARKS.
`
`THERE IS NO LIKELIHOOD OF CONFUSION BETWEEN APPLICANTS'
`AND OPPOSER'S MARKS
`
`A.
`
`The Parties' Marks Are Dissimilar in Sight, Sound and Meaning
`
`1.
`
`PATIO BY THE SPADES
`
`2.
`
`THE SPADES
`
`B.
`
`Market Interface: The 1999 Agreement Reflects The Parties' View that
`Applicants' Marks Will Not Cause Confusion
`
`C.
`
`Opposer Has Failed to Prove the Fame of Its Marks
`
`ii
`
`2
`
`5
`
`6
`
`6
`
`6
`
`9
`
`10
`
`20
`
`20
`
`23
`
`24
`
`25
`
`28
`
`31
`
`34
`
`2.
`
` 39
`
` 36
`
`D.
`
`E.
`
`F.
`
`G.
`
`Widespread Third-Party Use of SPADE-Formative Marks Further Weakens
`Opposer's KATE SPADE Marks
`
`The Expense of Opposer's Goods and the Sophistication of its Purchasers Weigh
`Against a Likelihood of Confusion
`
`Applicants Adopted their Marks in Good Faith
`
`Opposer Sells The Majority of Its Goods Through Its own Stores and Website
`
`H.
`
`The Balance of Factors Tips Against A Likelihood of Confusion
`
`III.
`
`THERE IS NO LIKELIHOOD OF DILUTION OF OPPOSER'S MARKS.
`
`CONCLUSION
`
`30857/000/2546327
`
`42
`
`43
`
`44
`
`45
`
`45
`
`46
`
`49
`
`

`

`TABLE OF AUTHORITIES
`
`Cases
`
`Ahold Licensing SA v. Premium Nutritional Products, Inc.,
`Opp. No. 91180170, at *12-13 (TTAB Nov. 7, 2011)
`
`Page(s)
`
`40
`
`Bell South Intellectual Property Corporation v. VCS Technologies Inc.,
`Opp. No. 91119656 (TTAB June 30, 2004) 22
`
`Bose Corp. v. QSC Audio Prods.,
`293 F.3d 1367, 63 USPQ2d 1303 (Fed. Cir. 2002)
`
`Boston Red Sox Baseball Club LP v. Sherman,
`88 USPQ2d 1581 (TTAB 2008)
`
`Burton-Dixie Corp. v. Restonic Corp.,
`43 CCPA 950, 110 USPQ 272 (CCPA 1956)
`
`Carefirst of Maryland, Inc. v. FirstHealth of the Carolinas, Inc.,
`77 USPQ2d 1492 (TTAB 2005)
`
`Champagne Louis Roederer, S.A. v. Delicato Vineyards,
`148 F.3d 1373, 47 USPQ2d 1459 (Fed. Cir. 1998)
`
`Citigroup Inc. v. Capital City Bank Group, Inc.,
`94 USPQ2d 1645 (TTAB 2010), aff'd on other grounds, 637 F.3d 1344 (Fed. Cir.
`2011)
`
`Coach Servs. v. Triumph Learning LLC,
`668 F.3d 1356, 101 USPQ2d 1713 (Fed. Cir. 2012)
`
`Conde Nast Publs., Inc. v. Miss Quality, Inc.,
`184 USPQ 422 (CCPA 1975)
`
`Edison Bros. Stores v. Cosmair, Inc.,
`651 F. Supp. 1547, 2 USPQ2d 1013 (S.D.N.Y. 1987)
`
`Fisher Radio Corp. v. Bird Electronic Corp.,
`162 USPQ 265
`
`Fossil, Inc. v. The Fossil Grp.,
`49 USPQ2d 1451 (TTAB 1998)
`
`Franklin Mint Corp. v. Master Mfg. Co.,
`667 F.2d 1005, 212 USPQ 233 (CCPA 1981)
`
`H-D Michigan, Inc. v. Hog Cream Enterprises, Inc
`Opp. No. 91152998 (TTAB Mar. 5, 2001)
`
`Houlihan v. Parliament Imp. Co
`921 F.2d 1258, 1262, 17 USPQ2d 1208, 1212 (Fed. Cir. 1990) .
`
`I.C.E. Mktg. Corp. v. Neutrogena Corp., Cancellation No. 92043193 (TTAB June 16,
`2009)
`
`36
`
`26
`
`45
`
`40, 41
`
`24
`
`41
`
`passim
`
`29
`
`35, 39
`
`26
`
`38
`
`24
`
`38
`
`32
`
`22
`
`In re Allen Street Owner LLC,
`Ser. No. 87138386 (TTAB Oct. 26, 2018) 28
`
`ii
`
`30857/000/2546327
`
`

`

`In re Covalinski,
`113 USPQ2d 1166 (TTAB 2014)
`
`In re Dietrich,
`91 USPQ2d 1622 (TTAB 2009)
`
`In re E.I. Du Pont de Nemours & Co.,
`476 F.2d 1357, 177 USPQ 563 (CCPA 1973)
`
`In re Etablissements Darty et Fils,
`759 F.2d 15, 25 USPQ 652 (Fed. Cir. 1985)
`
`In re Four Seasons Hotels Ltd.,
`987 F.2d 1565, 26 USPQ2d 1071 (Fed. Cir. 1993)
`
`23
`
`26
`
`23, 24, 31, 32
`
`26
`
`32
`
`In re Hall Wines, LLC,
`Ser. No. 78926151 (TTAB Feb. 10, 2009) 28
`
`In re Hearst Corp.,
`982 F.2d 493, 25 USPQ2d 1238 (Fed. Cir. 1992)
`
`In re Highlights for Children, Inc.,
`118 USPQ2d 1268 (TTAB 2016)
`
`In re Isabella Fiore LLC,
`75 USPQ2d 1564 (TTAB 2005)
`
`In re Monotype Corp.,
`14 USPQ2d 1070 (TTAB 1989)
`
`Institut Nat'l Des Appellations D'Origine v. Vinters Int'l Co.,
`958 F.2d 1574, 22 USPQ2d 1190 (Fed. Cir. 1992)
`
`In re Reebok International Limited,
`Ser. No. 78271326 (TTAB Oct. 26, 2005)
`
`In re Tokutake Industry Co.,
`87 USPQ2d 1697 (TTAB 2008)
`
`In re Trendsettah, Inc.,
`Ser. No. 85623619, at *4 (TTAB Aug. 17, 2018)
`
`In re United Distillers plc,
`56 USPQ2d 1220 (TTAB 2000)
`
`In re Vrana,
`Ser. No. 86716357 (TTAB June 26, 2018)
`
`In re White Jasmine LLC,
`106 USPQ2d 1385 (TTAB 2013)
`
`INTS It Is Not The Same, GmbH v. Disidual Clothing, LLC,
`Opp. No. 91212768 (TTAB Sept. 28, 2017)
`
`JA Apparel Corp. v. Abboud,
`568 F.3d 390, 91 USPQ2d 1095 (2d Cir. 2009)
`
`Jack Wolfskin Ausrustung Fur Draussen GmbH & Co. KGaA v. New Millennium Sports,
`S.L.U., 797 F.3d 1363, 116 USPQ2d 1129 (Fed. Cir. 2015)
`
`30857/000/2546327
`
`iii
`
`29
`
`28
`
`27
`
`27
`
`42, 43
`
`27
`
`28
`
`25
`
`27
`
`25
`
`26
`
`37
`
` 33
`
`42
`
`

`

`Juice Generation, Inc. v. GS Enters. LLC,
`794 F.3d 1334, 115 USPQ2d 1671 (Fed. Cir. 2015)
`
`Kate Spade LLC v. Saturdays Surf LLC,
`950 F. Supp. 2d 639 (S.D.N.Y. 2013)
`
`Keebler Co. v. Murray Bakery Prods.,
`866 F.2d 1386, 9 USPQ2d 1736 (Fed. Cir. 1989)
`
`Kellogg Co. v. Pack'Em Enters.,
`951 F.2d 330, 21 USPQ2d 1142 (Fed. Cir. 1991)
`
`L. J. Mueller Furnace Co. v. United Conditioning Corp.,
`106 USPQ 112 (CCPA 1955)
`
`Leading Jewelers Guild, Inc. v. LJOW Holdings, LLC,
`82 USPQ2d 1901 (TTAB 2007)
`
`Levitt Corp. v. Levitt,
`593 F.2d 463, 201 USPQ 513 (2d Cir. 1979)
`
`McGregor-Doniger Inc. v. Drizzle Inc.,
`599 F.2d 1126 (2d Cir. 1979)
`
`Miguel Torres, S.A. v. Bodegas Muga, S.A.,
`176 Fed. Appx. 124 (Fed. Cir. 2006)
`
`Nautica Apparel, Inc. v. Palmerton,
`Cancellation No. 92056754, at *22 (TTAB October 21, 2015)
`
`Nina Ricci, S.A.R.L. v. E.T.F. Enterprises,
`889 F.2d 1070 (Fed. Cir. 1989)
`
`Noble House Home Furnishings, LLC v. Floorco Enterprises, LLC,
`118 USPQ2d 1413 (TTAB 2016)
`
`Oakley Inc. v. JMM Lee Properties, LLC,
`Opp. No. 91231865 (TTAB Dec. 14, 2018)
`
`Oakville Hills Cellar, Inc. v. Georgallis Holdings, LLC,
`826 F.3d 1376, 119 USPQ2d 1286 (Fed. Cir. 2016)
`
`Odom's Tenn. Pride Sausage, Inc. v. FF Acquisition, L.L.C.,
`600 F.3d 1343 (Fed. Cir. 2010)
`
`Paco Sport, Ltd. v. Paco Rabanne Perfumes,
`2000 U.S. App. LEXIS 29570 (2d Cir. 2000)
`
`Presto Prods. Inc. v. Nice-Pak Prods., Inc.,
`9 USPQ2d 1895 (TTAB 1988)
`
`Primrose Retirement Communities, LLC v. Edward Rose Senior Living, LLC,
`122 USPQ2d 1030 (TTAB 2016)
`
`Sally Gee, Inc. v. Myra Hogan, Inc.,
`699 F.2d 621, 217 USPQ 658 (2d Cir. 1983)
`
`Simon Prop. Group, L.P. v. mySimon, Inc.,
`2000 U.S. Dist. LEXIS 12227 (S.D. Ind. August 4, 2000)
`
`30857/000/2546327
`
`iv
`
`42
`
`41, 44
`
`45
`
`24
`
`44
`
`25, 35
`
`33
`
`43, 44
`
`30
`
`34, 46
`
`29
`
`21
`
`36
`
`45
`
`24
`
`39
`
`25
`
` 42
`
`44
`
`47
`
`

`

`Smith Int'l. Inc. v. Olin Corp.,
`209 USPQ 1033 (TTAB 1981)
`
`Source Servs. Corp. v. Source Telecomputing Corp.,
`635 F. Supp. 600, 230 USPQ 290 (N.D. Ill. 1986)
`
`Starbucks Corp. v. Wolfe's Borough Coffee, Inc.,
`588 F.3d 97, 92 USPQ2d 1769 (2d Cir. 2009)
`
`Sweats Fashions, Inc. v. Pannill Knitting Co.,
`833 F.2d 1560, 4 USPQ 1793 (Fed. Cir. 1987)
`
`21
`
`36
`
`44
`
`44
`
`The Chamberlain Group, Inc. v. Lynx Industries, Inc.,
`Opp. No. 91160673 (TTAB Dec. 14, 2007) 40, 41
`
`The Chamberlain Group, Inc. v. Lynx Industries, Inc.,
`Opp. No. 91174249, *32 (TTAB May 14, 2012)
`
`The Dille Family Tr. v. The Nowlan Family Tr.,
`276 F. Supp. 3d 412 (E.D. Pa. 2017)
`
`The North Face Apparel Corp. v. Sanyang Industry Co., Ltd.,
`116 USPQ2d 1217 (TTAB 2015)
`
`The Topps Company, Inc. v. Panini America, Inc.,
`113 USPQ2d 1808 (TTAB 2015)
`
`Top Tobacco, L.P. v. N. Atlantic Operating Co., Inc.,
`101 USPQ2d 1163 (TTAB 2011)
`
`Trump v. Spoonjack LLC,
`Opp. No. 91203345 (TTAB Sept. 5, 2014)
`
`41
`
`47
`
`38
`
`37
`
`24
`
`27
`
`U.S. Marine Corps. v. Healy
`Opp. No. 91215087 (TTAB Apr. 25, 2017) 35, 38
`
`Univ. of Notre Dame Du Lac v. J. C. Gourmet Food Imports Co., Inc.,
`703 F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983)
`
`Wolverine World Wide, Inc. v. Happy Puppies Athleticwear, Inc.,
`Opp. No. 91219409 (TTAB Oct. 11, 2017)
`
`Statutes
`
`15 U.S.C. §1055
`
`15 U.S.C. §1125(c)(1)
`
`15 U.S.C. § 1125(c)(2)(A)
`
`15 U.S.C. §1125(c)(2)(B)
`
`35
`
`40
`
`21
`
`46
`
`46
`
`48
`
`15 U.S.C. § 1125(c)(2)(B)(iii) 48
`
`Other Authorities
`
`J. THOMAS MCCARTHY, 2 MCCARTHY ON TRADEMARKS AND UNFAIR COMPETITION §
`1 1:83 (5th ed. 2018)
`
`35, 36,43, 44
`
`"Patio," Merriam-Webster Online Dictionary
`https://www.merriam-webster.com/dictionary/patio 26
`
`30857/000/2546327
`
`V
`
`

`

`"Spade," Merriam-Webster Online Dictionary
`https://www.merriam-webster.com/dictionary/spade 27
`
`TBMP § 704.06(a)
`
`TBMP § 1208.04
`
` 10
`
`26, 28
`
`30857/000/2546327
`
`vi
`
`

`

`PRELIMINARY STATEMENT
`
`Opposer Kate Spade, LLC ("Opposer") predicates nearly its entire oppositions on the purported
`
`fame of its KATE SPADE marks ("Opposer's Marks"). Beyond cursory discussion of other confusion
`
`and dilution factors, its trial brief is a disquisition on the supposed breadth of its commercial renown and
`
`the broad protection its marks allegedly enjoy. But there are two fatal defects with that approach. First,
`
`Opposer's evidence of fame is both irrelevant, because it relates to a different company, and insufficient,
`
`because it fails to prove fame for the relevant product categories or the United States, is burdened by
`
`extensive third party use, and shows limited consumer recognition. Second and more important, Opposer
`
`all but ignores other critical factors that undermine its oppositions. In particular, it engages in no
`
`meaningful comparison of the parties' marks, which are dissimilar in sight, sound and meaning. For these
`
`and other reasons set forth below, its oppositions should be dismissed.
`
`As a threshold matter, Opposer's evidence of fame is legally without effect. Opposer is an
`
`intellectual property holding company and subsidiary of a parent operating company that is a stranger to
`
`this proceeding. Opposer's evidence of the use, advertising and purported success of its marks all relates
`
`to that parent company, and yet it offers no evidence that it licenses or controls the activities of its parent.
`
`Under binding TTAB precedent, Opposer can claim no rights flowing from the activities of its parent
`
`company and thus has shown neither the fame nor even use of its marks. Moreover, even if attributed to
`
`Opposer, the evidence of the supposed strength of its marks
`
`and is
`
`circumscribed by extensive third party use of SPADE-formative marks on competitive products.
`
`Aside from issues of fame and strength, these opposition proceedings should be dismissed for
`
`more fundamental reasons. The KATE SPADE marks are too dissimilar from Applicants' PATIO BY
`
`THE SPADES and THE SPADES marks to make confusion or dilution likely. The marks are facially
`
`different in appearance, structure, and sound, with different beginnings and phonetics. Opposer's Marks
`
`unmistakably represent a woman's personal name, whereas Applicants' marks convey the common
`
`English meaning of the word SPADES as a garden implement, in contrast to that term's exceedingly rare
`
`30857/000/2546327
`
`

`

`status as a surname. In simply announcing that the shared use of the term SPADE makes the marks
`
`similar, Opposer engages in none of this analysis, which so undermines its case.
`
`Opposer further ignores its own acknowledgment, both
`
`and by its own conduct,
`
`that use of other SPADES-formative marks without the important KATE element does not cause
`
`confusion.
`
`because when Applicants thereafter sold apparel items under the
`
`name PARTNERS & SPADE, Opposer registered no objection, just as it has permitted so many other
`
`third parties to use SPADE or SPADES on competing goods. This course of conduct, which bears on the
`
`market interface between the parties, reflects the parties' historical understanding that neither confusion
`
`nor dilution would result from the circumstances presented by this opposition. It also completely
`
`undermines Opposer's repeated accusations of bad faith.
`
`Opposer seems to believe that its aggrandized view of the strength of its KATE SPADE marks
`
`empowers it to oppose registration of any mark that uses the term SPADES, no matter how different. But
`
`likelihood of confusion and dilution are not simply a contest about sales figures or compilations of
`
`articles. Rather, where the marks are so different, where Opposer's rights are so circumscribed, and
`
`where the parties have behaved for years in a fashion so inconsistent with the position Opposer now takes,
`
`there can be no plausible claim that Applicants' marks will be confused with or dilute Opposer's Marks.
`
`DESCRIPTION OF THE RECORD1
`
`Applicants Applicants submitted the following trial testimony and evidence:
`
`1. Trial Testimony of Elyce Arons on March 8, 2018 ("Arons Tr.") with Applicants'
`
`Trial Exhibits 1, 34-35, 46-51, and Opposer's Trial Exhibits 34-35.2 (Confidential — 84 TTABVUE;
`
`The opposition proceedings have been consolidated under Opp. No. 91216585, and all
`references to the record are to TTABVUE docket entries under that consolidated opposition number.
`2 Citations to "App. Ex." refer to Applicants' Trial Exhibits. Citations to "Opp. Ex." refer to
`Opposer's Trial Exhibits.
`
`2
`
`30857/000/2546327
`
`

`

`Redacted - 85 TTABVUE).
`
`2.
`
`Applicants' First Notice of Reliance Pursuant to Trademark Rule 2.122(e) — Third
`
`party Applications and Registrations, print publications and Internet materials for use and registration of
`
`marks containing SPADE, SPADES and/or Spade Design (74, 75 and 76 TTABVUE) ("App. lst NOR").
`
`3.
`
`Applicants' Second Notice of Reliance Pursuant to Trademark Rule 2.122(e) —
`
`Internet materials and print publications for definitions of SPADE (77 TTABVUE) ("App. 2d NOR").
`
`4. Applicants' Third Notice of Reliance Pursuant to Trademark Rule 2.122(e) —
`
`Official publication -Answer to Petition to Cancel filed by Narkonteks Tekstil Ihracat Ithalat Sanayi Ve
`
`Ticaret Anonim Siketi concerning its use of BLACKSPADE. (78 TTABVUE) ("App. 3rd NOR").
`
`5.
`
`Applicants' Fourth Notice of Reliance Pursuant to Trademark Rule 2.120(k) —
`
`Portions of deposition of Andy Spade taken on November 12, 2015 (Confidential 79 TTABVUE;
`
`Redacted — 80 TTABVUE ("App. 4th NOR").
`
`6.
`
`Applicants' Fifth Notice of Reliance Pursuant to Trademark Rule 2.120(k) —
`
`Portions of depositions of Mary Beech ("Beech"), Executive VP and Chief Marketing Officer of Kate
`
`Spade & Co. (dated February 11, 2016) and Geri Lynn Elias ("Elias"), then VP and IP Counsel of Kate
`
`Spade & Co. (dated February 11, 2016) (Confidential 81 TTABVUE; Redacted — 82 TTABVUE) ("App.
`
`th
`5
`
`NOR").
`
`7. Trial Testimony via Declaration of Nart-anong Chinda dated April 10, 2017 ("Chinda
`
`Decl.") with App. Exs. 3, 7-9, 19-20, 23, 25, 28-29, 33, 37, 41-43 and Chinda Trial Exhibits ("App. Ex.
`
`Chinda") A-S (83 TTABVUE).
`
`8. Trial Testimony via Declaration of Gabriel Mann dated March 20, 2017 ("Mann
`
`Decl."), Principal of Mannco Apparel LLC, successor to Four Jack Brothers, Inc. a/k/a Jack of Spades
`
`Enterprises and Director of Jack of Spades Enterprises Inc., dated March 20, 2017, with App. Exs.2-5,
`
`Applicants' Trial Exhibits Mann ("App. Ex. Mann") A-E (Confidential — 86 TTABVUE; Redacted - 87
`
`TTABVUE); Cross and Redirect Examination of Mann on April 17, 2018 ("Mann Tr."), with Opp.
`
`Ex. Mann 1-5 (Confidential — 139 TTABVUE; Redacted - 140 TTABVUE).
`
`3
`
`30857/000/2546327
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`

`

`9.
`
`Trial Testimony via Declaration of Mehdi Neyestanki dated March 15, 2017 ("Ney
`
`Decl."), Chairman and CEO of Spade Skin Care and More with Applicants' Trial Exhibits Neyestanki
`
`("App. Exs. Ney") A-F and Opp. Exs. 15-16 (Confidential — 88 TTABVUE; Redacted — 89-91
`
`TTABVUE); Cross and Redirect Examination of Neyestanki on April 24, 2018 ("Ney Tr."), with
`
`Opp. Exs. Ney 1-8 (Confidential — 146 TTABVUE; Redacted - 145 TTABVUE).
`
`Opposer Opposer submitted the following trial testimony and evidence:
`
`1.
`
`Trial Testimony of Elias on January 26, 2017 ("Elias Tr.") with Opp. Ex. 1-16 and
`
`App. Ex. 1-40 (Confidential Transcript - 95 TTABVUE; Redacted Transcript — 94 TTABVUE).
`
`2.
`
`Trial Testimony of Mary Beech on January 27, 2017 ("Beech Tr.") with Opp. Ex. 17-33
`
`and App. Ex. 41-45 (Confidential Transcript - 95 TTABVUE; Redacted Transcript — 94 TTABVUE;
`
`Confidential Exhibits 99 TTABVUE; Redacted Exhibits 96-98 TTABVUE).
`
`3. Opposer's First Notice of Reliance Pursuant to Trademark Rule 2.122(d) -
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`Opposer's trademark registrations (46 TTABVUE) ("Opp. rt NOR").
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`4. Opposer's Second Notice of Reliance Pursuant to Trademark Rule 2.122(e) — Filings
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`with the Trademark Trial and Appeal Board, federal courts and WIPO. (47 TTABVUE) ("Opp. 2d
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`NOR").
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`5.
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`Opposer's Third Notice of Reliance Pursuant to Trademark Rule 2.122(e) —
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`periodicals (48 TTABVUE) ("Opp. 3d NOR").
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`6. Opposer's Fourth Notice of Reliance Pursuant to Trademark Rule 2.122(e) —
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`periodicals (49 TTABVUE) ("Opp. 4th NOR").
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`7.
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`Opposer's Fifth Notice of Reliance Pursuant to Trademark Rule 2.120(k) -
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`5th
`Applicants' responses to Opposer's Interrogatories Nos. 1, 6, 8, 9, 11 and 12 (50 TTABVUE) ("Opp.
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`NOR").
`
`8.
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`Opposer's Sixth Notice of Reliance Pursuant to Trademark Rule 2.122(e) —
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`periodicals (51 TTABVUE) ("Opp. 6th NOR").
`
`9.
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`Opposer's Seventh Notice of Reliance Pursuant to Pursuant to Trademark Rule
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`2.122(e) — Internet materials (93 TTABVUE) ("Opp. 7th NOR").
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`10.
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`Opposer's Eighth Notice of Reliance Pursuant to Trademark Rule 2.122 (e)—
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`periodicals (52 TTABVUE) ("Opp. 8th NOR").
`
`11.
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`Opposer's Ninth Notice of Reliance Pursuant to Trademark Rule 2.120(k) —
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`deposition of Andy Spade, dated November 12, 2015 (Confidential — 69 TTABVUE; Redacted - 68
`
`th
`TTABVUE) ("Opp. 9
` NOR").
`
`12.
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`Opposer's Tenth Notice of Reliance Pursuant to Trademark Rule 2.122(e) (Rebuttal)
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`— Internet materials (120-23 TTABVUE) ("Opp. 10th NOR).
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`13.
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`Opposer's Eleventh Notice of Reliance Pursuant to Trademark Rule 2.120(k)
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`(Rebuttal) — deposition of Andy Spade, dated November 12, 2015 (Confidential — 125 TTABVUE;
`
`Redacted - 124 TTABVUE) ("Opp. 11th NOR).
`
`14.
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`Opposer's Twelfth Notice of Reliance Pursuant to Trademark Rule 2.122(e)
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`(Rebuttal) — Official records (126-30 TTABVUE) ("Opp. 12th NOR").
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`14.
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`Trial Testimony via Declaration of Orrin Falby ("Falby Decl.") with Opposer's
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`Rebuttal Exs. ("Opp. Reb. Ex.") 3-4, 6 and 12 (119 TTABVUE); Cross and Redirect Examination of
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`Falby on August 8, 2018 ("Falby Tr."), with Opp. Ex. Falby 1-17 and App. Ex. Falby 1-2 (119 and
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`138 TTABVUE).
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`STATEMENT OF THE ISSUES
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`1.
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`Whether Applicant Thatch, LLC's PATIO BY THE SPADES mark so resembles
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`Opposer's KATE SPADE marks, as to be likely, when applied to the applied-for goods, to cause
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`confusion, mistake or deception under Section 2(d) of the Lanham Act?
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`2.
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`Whether Applicant The Spades Trademark Company, LLC's THE SPADES mark so
`
`resembles Opposer's KATE SPADE marks, as to be likely, when applied to the applied-for goods, to
`
`cause confusion, mistake or deception under Section 2(d) of the Lanham Act?
`
`3.
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`Whether Applicant Thatch, LLC's application for its PATIO BY THE SPADES mark is
`
`likely to dilute any distinctiveness of Opposer's KATE SPADE marks when applied to the applied-for
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`goods under Section 43(c) of the Lanham Act?
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`4.
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`Whether Applicant The Spades Trademark Company LLC's application for its THE
`
`SPADES mark is likely to dilute any distinctiveness of Opposer's KATE SPADE marks when applied to
`
`the applied-for goods under Section 43(c) of the Lanham Act?
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`STATEMENT OF FACTS
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`A. PATIO BY THE SPADES and THE SPADES Applications
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`PATIO BY THE SPADES. On May 14, 2013, Applicant Thatch, LLC ("Thatch") filed intent to use
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`application Ser. No. 85932097 for PATIO BY THE SPADES for "handbags, all purpose carrying bags,
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`tote bags, traveling bags, backpacks, wallets and cosmetic bags sold empty" in Class 18, and "clothing,
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`namely dresses, pants, tops, shirts, blouses, sweaters, sleepwear, pajamas, beach cover ups, scarves,
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`gloves, jackets, hats and caps; footwear, namely shoes, sandals and boots" in Class 25. During
`
`examination, the Examining Attorney cited only one third party registration pursuant to Section 2(d):
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`Reg. No. 3647470 for THE SPADES (Stylized), owned by Jac Spade, LLC, registered on June 30, 2009
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`without opposition, and covering numerous clothing items in Class 25. Opp. Ex. 7, 96 TTABVUE 9.
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`The registrant sold apparel and other items under THE SPADES. Arons 25, 85 TTABVUE 28.
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`Applicant Thatch purchased the registration, and the assignment was recorded at Reel 5160 / Frame 0723
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`of the Assignment Branch of the U.S.P.T.O. Arons 24-26, 85 TTABVUE 27-29; Opp. Ex. 51, 134-38
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`THE SPADES: On January 29, 2014, Applicant The Spades Trademark Company, LLC
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`("STC") filed an intent to use application Ser. No. 86179137 for "Fragrance" in Class 3. The application
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`was examined and passed to publication without issuance of an office action.
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`B. Applicants THATCH and STC
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`At the time of trial, Thatch was owned by three individuals, Andy Spade ("Andy Spade"), Kate
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`Brosnahan ("Brosnahan")3 and Elyce Arons ("Arons"), and the second applicant STC was owned by Andy
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`Spade and Brosnahan. Arons Tr. 5; 85 TTABVUE 8. These three individuals were in 1993 among the
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`original founders of a handbag business called KA 1'E SPADE, which combined Andy Spade's last name
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`3 Ms. Brosnahan passed away in 2018 after the completion of Applicants' trial testimony period.
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`with Brosnahan's first name. See Arons Tr. 7; 84 TTABVUE 10. The business was formally incorporated in
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`1994 as Alex Noel Inc. doing business as Kate Spade. Id.
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`In 1999, the group sold a 56% interest in the company to Neiman Marcus Group. Arons 9; 85
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`TTABVUE 12. As part of the transaction,
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`TTABVUE 207, 99 TTABVUE, 441-56.
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`App. Ex. 1, 97
`
`App. Ex. 1, Ex. B, 97 TTABVUE 207, 99 TTABVUE
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`App. Ex. 1 at SP18, 97 TTABVUE 207, 99 TTABVUE 444.
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`. App. Ex. 1, 97 TTABVUE 207, 99 TTABVUE
`
`454.
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`441-56.
`
`Id.
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`Andy Spade, Brosnahan and Arons remained at the company after the sale of their interests. Arons
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`Tr. 9-13, 85 TTABVUE 12-16. They left the company in 2007 after selling the rest of the business to
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`Neiman Marcus, which in turn resold it to Liz Claiborne Group. Arons Tr. 10-13, 85 TTABVUE 13-16.
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`Andy Spade went on to form Partners & Spade, a branding company for fashion companies like J. Crew and
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`Warby Parker and retail store operator in New York. Arons Tr. 13-14, 85 TTABVUE at 16-17. Opening in
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`2008, the Partners & Spade retail store sold a variety of products, some branded with the trade name and
`
`mark PARTNERS & SPADE. App. 1 St NOR, Ex. 2B-2C, 2F, 2T, 2U, 74 TTABVUE 248-55, 260-61,
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`465-69; Arons 55-57, 85 TTABVUE 58-60; App. Ex. 34, 85 TTABVUE 82; Opp. Ex. 35, 85 TTABVUE
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`164-65. In addition to the store, Partners & Spade operated a website selling PARTNERS & SPADE
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`branded products. Arons 31-33, 85 TTABVUE 34-36; App. Ex. 35, 85 TTABVUE 83-111.
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`Applicants' chief witness Arons — Thatch's managing partner and a close friend and business
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`colleague of Andy Spade and Brosnahan — attended launch parties at the PARTNERS & SPADE store.
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`Arons Tr. 28-30; 85 TTABVUE 31-33. She saw many people from the fashion and art world, including high
`
`level employees from the Kate Spade business. Arons Tr. 29-30; 85 TTABVUE 32-33. She recalled seeing
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`Kate Spade's head of licensing and members of the creative department. Arons Tr. 30, 85 TTABVUE 33.
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`The branded PARTNERS & SPADE merchandise for sale in the store included sneakers, ties and books.
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`Arons Tr. 31-33, 85 TTABVUE 34-36; App. Ex. 35, 85 TTABVUE 83-111.
`
`Despite this awareness, Opposer never complained about Andy Spade's use of PARTNERS &
`
`SPADE for clothing, retail stores and a marketing business. Arons 30-31, 85 TTABVUE 33-34.
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`TTABVUE 568, 95 TTABVUE 562.
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`Elias Tr. 276, 94 TTABVUE 573, 95 TTABVUE 567.
`
`Elias Tr. 271, 94
`
`Beech Tr. 242-44, 94 TTABVUE 254-56, 95 TTABVUE 247-49; Opp. Ex. 17, 96
`
`TTABVUE 44.
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`Beech Tr. 244-45, 94 TTABVUE 256-57, 95 TTABVUE 249-50.
`
`While still at PARTNERS & SPADE, Andy Spade met with Brosnahan, Arons and a third person in
`
`2010 about starting a new business using THE SPADES mark. Arons Tr. 16-17, 85 TTABVUE 19-20. They
`
`considered also using PATIO BY THE SPADES, and Andy Spade had meetings with Target in 2013 for a
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`joint collaboration to develop goods under both marks. Arons Tr. 17-20, 85 TTABVUE 20-23; Opp. Ex. 47,
`
`85 TTABVUE 115-17. Around this time, Applicants filed the PATIO BY THE SPADES Application and
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`THE SPADES Application. Opp. Ex. 49-50, 85 TTABVUE 125-33.
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`C.
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`Opposer Kate Spade LLC
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`Opposer identified itself in the notice of opposition as a Delaware limited liability company that
`
`owns U.S. federal registrations for the mark KATE SPADE and sells KATE SPADE branded merchandise.
`
`1 TTABVUE. However, evidence at trial showed only that Opposer is the listed owner of some U.S. federal
`
`registrations, not that it has sold KATE SPADE branded merchandise or performed services under that mark.
`
`In fact, it is Opposer's parent company, Kate Spade & Company, formerly known as Fifth & Pacific
`
`Companies, Inc. ("Kate Spade & Co."), which is not a party to this proceeding, that apparently has used the
`
`mark in the U.S. Opposer produced no evidence of any agreement between Opposer as subsidiary and Kate
`
`Spade & Co. as parent to allow the parent to use the mark and to control such use.
`
`Elias Dep Tr. 4, App. 5th NOR, 81 TTABVUE 26, 82 TTABVUE 7.
`
`Opposer's chief commercial witness for use of the mark, Beech (CMO of the parent Kate Spade & Co.), did
`
`not even know the relationship between her employer Kate Spade & Co., the parent, and Opposer. Beech Tr.
`
`8-9, 94 TTABVUE 18-19. Neither witness explained how, if at all, Opposer itself has used the mark or
`
`licensed it to others. Beech Tr. 9, 94 TTABVUE 19. Notably, Opposer offered annual reports from 2013-15
`
`only for Kate Spade & Co. (formerly Fifth & Pacific Companies, Inc.), and they made no reference to
`
`Opposer (other than an unrelated litigation in which Opposer was a plaintiff). Opp. Exs. 21-23; 96
`
`TTABVUE 102-536. Accordingly, the only evidence submitted by Opposer to support its own rights in the
`
`KATE SPADE marks were certain U.S. registrations, all of which incorporated the full name "Kate Spade,"
`
`not "Spade" alone or any other "Spade" mark4 and some evidence of claim letters and other proceedings. No
`
`evidence of actual use by Opposer, as opposed to its parent, was offered into evidence.
`
`4 Opposer referenced 32 registrations in its Notice of Opposition but at trial attempted to add additional
`registrations for other marks, including Jack Spade, and/or goods and services. See Applicants'
`Appendix: Statement of Objections & Response to Opposer's Objection ("App'x"),
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`Beech Tr. 147, 94 TTABVUE 158, 95 TTABVUE 150.
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`D. Extensive Third Party Use of SPADE-Formative Marks
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`For many years, Opposer has coexisted with competitive marks that incorporate SPADE or SPADES
`
`(words and designs) in the marketplace and on the federal register. Opposer's original founder Arons
`
`explained that the company did not enforce the KATE SPADE mark against uses of SPADE or SPADES
`
`without KATE. Arons Tr. 39-40, 85 TTABVUE 42-43. Such uses were not confusing, because her
`
`company's mark was the full name KATE SPADE. Arons Tr. 39-40, 85 TTABVUE 42-43. As head of legal
`
`and other affairs, Arons knew of many third party SPADES marks, including ACE OF SPADE, QUEEN OF
`
`SPADES, and JACK OF SPADES. Arons Tr. 40, 85 TTABVUE 40. Indeed, Opposer itself was aware
`
`years ago of third party uses and registrations for SPADE and SPADES word and design marks.
`
`Opp. Ex. 11 at KSLLC0017129-32, 96 TTABVUE 22, 99 TTABVUE 71-74.
`
`15
`
`Opposer's Elias testified that Opposer
`
`employed an outside agency, Mark Monitor, to look for infringements, but Opposer submitted no evidence of
`
`what infringing marks the company pursued or what results it achieved. Elias Tr. 19-20, 94 TTABVUE 315-
`
`16. In fact, what became clear at trial was that Elias must have disregarded watch notices for SPADE marks,
`
`5 Opposer cited to a 2002 Cancellation Action against the registered mark SPADE (Canc. No. 92041528)
`filed by Opposer. Opp. 2d NOR, Ex. 85; 47 TTABVUE 192-200. Notably, Opposer did not object to this
`application proceeding to registration, and the cancellation similarly did not assert a likelihood of
`confusion but only abandonment. Registrant defaulted. Additionally, Opposer submitted documents
`concerning cybersquatting and counterfeiting claims, but such actions have no bearing on this proceeding.
`Opp. 2d NOR, Exs. 88-92, 94-99 (47 TTABVUE 217-47, 269-378). Opposer also submitted a number of
`its pleadings in various cases with its Second Notice of Reliance. Opp. 2nd NOR, Exs. 74-80, 82-89,
`91;47 TTABVUE 20-28, 37-43, 52-58, 67-74, 83-91, 102-10, 120-26, 142-51, 158-63, 173-90, 195-96,
`204-07, 213-15, 218-38, 304-17. However, "[s]tatements made in pleadings cannot be considered as
`evidence on behalf of the party making them; such statements must be established by competent evidence
`during the time for taking testimony." TBMP § 704.06(a). Accordingly, these documents are of no
`probative value.
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`including by way of example, SPADE SKIN CARE & MORE, BLACK SPADE and many others, as
`
`applications registered for similar goods and services over the years.
`
`Applicants took the testimony of two key third party use witnesses — Gabriel Mann, of Mannco
`
`Apparel, which has used JACK OF SPADES for clothing for years, and Mehdi Neyestanki, who continues to
`
`use SPADE SKIN CARE & MORE for spa services
`
`Mann Decl., 86-87 TTABVUE; Ney Decl.
`
`88 TTABVUE 6-9, 89 TTABVUE 4-7. Applicants also purchased multiple competitive products bearing
`
`SPADE, SPADES or a spade design, and submitted into evidence third party registrations and evidence of
`
`use of those marks online. Chinda Decl. and App. Tr. Exs. 3, 7-9, 19-20, 23, 25, 28-29, 33, 37, 41-43 and
`
`App. Ex. Chinda A-S (83 TTABVUE). These third party uses included the following:
`
`1. JACK OF SPADES for Clothing. Gabriel Mann, of Mannco Apparel and related entities
`
`("Mannco"), testified via declaration that his company and its predecessors have sold JACK OF SPADES
`
`clothing throughout the country since 2011. Mann Decl. TIE 1-4, 87 TTABVUE 5-6. Mannco purchased
`
`the mark and federal registration in 2011 from another company that had been selling JACK OF SPADES
`
`clothing since prior to the purchase.6 Mann Decl. 1 2, 87 TTABVUE 6. As of March 201