Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`
`ESTTA Tracking number:
`
`ESTTA738481
`
`Filing date:
`
`04/06/2016
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Proceeding
`
`91218738
`
`Party
`
`Correspondence
`Address
`
`Plaintiff
`Abercrombie & Fitch Trading Co.
`
`SUSAN M KAYSER
`JONES DAY
`51 LOUISIANA AVENUE NW
`WASHINGTON, DC 20001-2113
`UNITED STATES
`ipdocketingwest@abercrombie.com, skayser@jonesday.com, jbrad-
`ley@jonesday.com, nytef@jonesday.com
`
`Submission
`
`Filer's Name
`
`Filer's e-mail
`
`Signature
`
`Date
`
`Attachments
`
`Brief on Merits for Plaintiff
`
`Jessica D. Bradley
`
`skayser@jonesday.com, jbradley@jonesday.com, nytef@jonesday.com, aprev-
`att@jonesday.com, kbaird@jonesday.com
`
`/Jessica D. Bradley/
`
`04/06/2016
`
`Trial Brief - Redacted.pdf(484226 bytes )
`Appendix 1 - Opposer's Evidentiary Objections.pdf(879759 bytes )
`Appendix 2 - Prevatt Declaration.pdf(2095321 bytes )
`
`

`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE
`TRADEMARK TRIAL AND APPEAL BOARD
`
`ABERCROMBIE AND FITCH TRADING CO.,
`Opposer,
`
`
`
`§
`§
`§
`§
`§
`§
`§
`§
`§
`§
`
`v.
`SCHNITTGER, ISABELLA ELISABETH,
`Applicant.
`
`Opposition No. 91218738
`
`
`
`
`
`OPPOSER’S TRIAL BRIEF
`
`Susan M. Kayser
`Jessica D. Bradley
`Allison Prevatt
`Jones Day
`51 Louisiana Avenue, N.W.
`Washington, D.C. 20001-2113
`Telephone: (202) 879-4694
`Facsimile: (202) 626-1700
`
`
`
`Counsel for Opposer,
`Abercrombie & Fitch Trading Co.
`
`
`
`
`
`
`
`
`
`
`
`

`
`TABLE OF CONTENTS
`
`PAGE
`
`I.
`
`II.
`
`III.
`
`IV.
`
`INTRODUCTION ............................................................................................................. 4
`
`DESCRIPTION OF THE RECORD ................................................................................. 5
`
`A.
`
`Opposer’s Evidence ............................................................................................... 5
`
`1.
`
`2.
`
`3.
`
`4.
`
`Testimony Affidavit of Reid M. Wilson .................................................... 6
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`Testimony Affidavit of Jessica D. Bradley ................................................ 6
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`Rebuttal Testimony Affidavit of Reid M. Wilson ..................................... 7
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`Rebuttal Testimony Affidavit of Jessica D. Bradley ................................. 7
`
`B.
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`Applicant’s Evidence ............................................................................................. 7
`
`STATEMENT OF THE PROCEEDINGS AND ISSUES ................................................ 8
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`STATEMENT OF FACTS ................................................................................................ 9
`
`A.
`
`B.
`
`C.
`
`D.
`
`E.
`
`F.
`
`G.
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`A&F’s U.S. Trademark Registrations For The A&F Mark ................................... 9
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`A& F’s Extensive Use And Sales For The A&F Mark ....................................... 11
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`A&F’s Promotion of Goods Bearing the A&F Mark .......................................... 13
`
`Unsolicited Third Party Recognition Of The A&F Mark .................................... 14
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`A&F’s Enforcement Of The A&F Mark ............................................................. 15
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`Ms. Schnittger’s Application for Applicant’s Mark ............................................ 16
`
`Ms. Schnittger’s Intended Use of Applicant’s Mark ........................................... 16
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`V.
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`ARGUMENT ................................................................................................................... 18
`
`A.
`
`B.
`
`C.
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`A&F Has Standing ............................................................................................... 18
`
`A&F Has Priority ................................................................................................. 18
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`Applicant’s Mark is Likely to Cause Confusion with A&F’s Mark .................... 19
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`1.
`
`The Similarity of the Marks Factor Favors Opposer ............................... 19
`
`a.
`
`b.
`
`c.
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`The Parties’ Marks Evoke The Same Commercial
`Impression .................................................................................... 20
`
`Applicant’s Design Is Dominant And Words Are
`Insufficient To Prevent Confusion ............................................... 22
`
`Lesser Similarity Sufficient To Establish Likely Confusion
`Due To Identity Of Goods And Fame Of A&F’s Mark .............. 24
`
`2.
`
`3.
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`Applicant’s Goods Are Identical to Opposer’s Goods ............................ 25
`
`Channels Of Trade And Customers Are Identical And Likelihood
`of Post-Purchase Confusion Is High ........................................................ 25
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`
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`2
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`

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`4.
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`5.
`
`6.
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`7.
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`8.
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`9.
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`Lower Degree of Care Among Purchasers of Ordinary Goods ............... 28
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`The Fame of the Prior Mark Factor Favors Opposer ............................... 29
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`There Are No Similar Marks In Use on Similar Goods........................... 35
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`The Use on a Variety of Goods Factor Favors Opposer .......................... 36
`
`The Actual Confusion and Concurrent Use Without Actual
`Confusion Factors Are Neutral Or Not Relevant ..................................... 38
`
`The Extent of Potential Confusion Factor Weighs Heavily in Favor
`of Opposer ................................................................................................ 38
`
`D.
`
`Applicant’s Mark Is Likely To Dilute Opposer’s Famous Mark ......................... 39
`
`1.
`
`Dilution by Blurring ................................................................................. 39
`
`a.
`
`The A&F Mark Is Famous And Distinctive ................................ 40
`
`(1)
`
`(2)
`
`(3)
`
`(4)
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`Duration, Extent And Geographic Reach Of
`Advertising And Publicity Is Substantial And
`Nationwide ....................................................................... 40
`
`The Amount, Volume, And Geographic Extent Of
`Sales Of Goods Or Services Offered Under The
`A&F Mark Are Substantial And Nationwide .................. 42
`
`Substantial Actual Recognition Of The A&F Mark ........ 43
`
`A&F Owns Registrations On The Principal Register ...... 43
`
`Applicant’s Mark Will Be Used In Commerce............................ 44
`
`Applicant’s Use of Her Mark Began After A&F’s Mark
`Achieved Fame ............................................................................ 44
`
`b.
`
`c.
`
`d.
`
`Applicant’s Mark Is Likely to Cause Dilution by Blurring ......... 45
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`2.
`
`Dilution by Tarnishment .......................................................................... 48
`
`VI.
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`CONCLUSION ................................................................................................................ 50
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`
`
`
`
`
`
`3
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`

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`I. INTRODUCTION
`
`
`
`Opposer Abercrombie and Fitch Trading Co. (hereinafter, “Opposer” or “A&F”) is one of
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`the largest manufacturers, wholesalers and retailers of high quality, casual apparel and
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`accessories for men, women and children with an active, youthful lifestyle in the United States,
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`and has offered clothing and other accessories for over one hundred years. In February 2002,
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`A&F started offering clothing under an arbitrary moose design mark (“A&F Mark” 1), and has
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`expanded its use over time such that today the A&F Mark has become one of the most iconic and
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`famous logos in the United States and is a core branding element for A&F’s Abercrombie &
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`Fitch and abercrombie kids brands. Opposer’s Mark is depicted below in solid and outline form:
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`
`
`
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`Over ten years after A&F started using its A&F Mark in connection with clothing and
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`enjoyed billions of sales of clothing and related goods bearing the A&F Mark, and unsolicited
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`media attention underscoring the ubiquity of the A&F Mark and associating said mark with A&F,
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`Applicant Ms. Isabella Elisabeth Schnittger (hereinafter “Applicant” or “Ms. Schnittger”) filed
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`an intent-to-use trademark application for Applicant’s Mark 2 which primarily consists of the
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`profile of a full-bodied, four legged animal with antlers in silhouette form as depicted below:
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`
`1 As used herein, the terms “Opposer’s Mark” and “A&F Mark” shall mean the marks that are
`the subject of U.S. Trademark Registration Nos. U.S. Registration Nos. 3,065,016; 4,551,991;
`3,964,371; 4,168,384; 3,212,644; and 3,574,198.
`2 As used herein, the term “Applicant’s Mark” shall mean the mark that is the subject of U.S.
`Trademark Application No. 86/152,857.
`
`
`
`4
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`

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`
`
`
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`A&F opposes registration of Ms. Schnittger’s Mark on the grounds of likelihood of
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`confusion and dilution, and respectfully submits that the evidence of record before the Board
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`warrants judgment in favor of A&F refusing registration of Applicant’s Mark. Applicant seeks
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`to register a highly similar mark to A&F’s famous Opposer’s Mark for use on identical goods
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`sold in the same trade channels to the same class of customers.
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`II. DESCRIPTION OF THE RECORD
`
`
`
`Pursuant to the parties’ Joint Stipulation Regarding Testimony and Trial Procedures (11
`
`TTABVUE), which was made of record by the Board’s September 4, 2015 Order (12
`
`TTABVUE), the record for this opposition consists of the parties’ Joint Stipulation of Facts (13
`
`TTABVUE) (“Joint Stip.”), testimonial affidavits submitted by the parties during their respective
`
`testimony periods, Applicant’s Application No. 86/152,857, and Opposer’s Registration Nos.
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`3,065,016 , 4,551,991, 3,964,371, 4,168,384, 3,212,644, and 3,574,198.
`
`A. Opposer’s Evidence
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`
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`During its opening testimony period Opposer filed (i) public and confidential versions of
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`the Testimony Affidavit of Mr. Reid M. Wilson dated November 19, 2015, and Exhibits 1-31 (16
`
`TTABVUE; 17 TTABVUE, 18 TTABVUE); and (ii) the Testimony Affidavit of Ms. Jessica
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`Bradley dated November 19, 2015, and Exhibits A-C (“Bradley Affidavit”). (15 TTABVUE.)
`
`During its rebuttal testimony period Opposer filed (iii) the Rebuttal Testimony Affidavit of Mr.
`
`Reid M. Wilson, dated January 15, 2016, and Exhibits 32-37 (“Wilson Rebuttal”) (22
`
`TTABVUE); and (iv) Rebuttal Testimony Affidavit of Ms. Jessica Bradley, dated January 15,
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`5
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`

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`2016 (“Bradley Rebuttal”). (21 TTABVUE.) The evidence and testimony contained within
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`these affidavits are summarized below.
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`1. Testimony Affidavit of Reid M. Wilson
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`Mr. Wilson testified in his opening affidavit (16 TTABVUE; 17 TTABVUE, 18
`
`TTABVUE) regarding:
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`• His qualifications to testify and about A&F (¶¶ 1-2);
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`• A&F’s extensive, longstanding and consistent use of the A&F Mark each retail
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`season since 2002 including use of the A&F Mark on products offered in A&F’s
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`retail stores and on its websites (¶¶ 3-5, 7-12, Exs. 1-16);
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`• A&F’s significant annual sales of goods bearing the A&F Mark (¶ 6);
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`• A&F’s significant investment in marketing and promotion of A&F’s Mark including
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`in promotional e-mails subscribed to by its customers, on social media, on a variety of
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`supplies, in catalogs, and on speakers displayed in A&F’s retail stores (¶¶ 13-18, Exs.
`
`17-21);
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`• Third party recognition of the A&F Mark including coverage in magazines and
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`newspapers (¶¶ 19-20, Exs. 22-26); and
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`• A&F’s successful enforcement against third party uses of marks similar to A&F Mark
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`(¶ 21, Exs. 27-31).
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`2. Testimony Affidavit of Jessica D. Bradley
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`
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`Ms. Bradley testified in her opening affidavit (15 TTABVUE) regarding:
`
`• Her qualifications to testify (¶ 1);
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`• Documents produced by Applicant during discovery showing use of Applicant’s
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`Mark (¶ 2, Ex. A); and
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`6
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`

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`• Updates to Applicant’s website showing other uses of Applicant’s Mark (¶¶ 3-4, Exs.
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`B-C).
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`3. Rebuttal Testimony Affidavit of Reid M. Wilson
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`
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`Mr. Wilson testified in rebuttal to Applicant’s alleged evidence responding that (i) the
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`A&F Mark is not limited to any one color and is used in connection with a variety of colors,
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`including red (22 TTABVUE 2 ¶ 2, Ex. 32 at 6-22 (A&F Mark in variety of colors), Ex. 33 at
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`23-41 (A&F Mark in red)); (ii) the website www.aftshirt.com is a counterfeit website which
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`A&F has sued, and a court has enjoined (22 TTABVUE 3, ¶¶ 3-4, Exs. 34-36 at 42-100); and (iii)
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`A&F has not started using a “Red Dear” or “Red Deer” word mark or logo (22 TTABVUE 4 ¶ 5,
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`Ex. 373 at 101-113.)
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`4. Rebuttal Testimony Affidavit of Jessica D. Bradley
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`
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`Ms. Bradley testified in rebuttal to Applicant’s alleged testimony responding that she has
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`not provided any legal advice to Ms. Schnittger, and in particular that she has not provided
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`advice regarding Applicant’s use of Applicant’s Mark. (21 TTABVUE 2 ¶ 2.)
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`B. Applicant’s Evidence
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`
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`During her testimony period, Applicant filed the Testimony Affidavit of Ms. Isabella
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`Schnittger, unsigned, on December 4, 2015, and Exhibits A-D (“Applicant’s Original
`
`Testimony”). (19 TTABVUE.) As addressed in A&F’s Motion to Strike (20 TTABVUE, 24
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`TTABVUE), and in A&F’s evidentiary objections being filed herewith, much of Applicant’s
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`Original Testimony is inadmissible.
`
`
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`The topics covered in Applicant’s Original Testimony (most of which are irrelevant) are:
`
`
`3 A corrected copy of Exhibit 37 to the Wilson Rebuttal Testimony is attached hereto in
`Appendix B. The version at 22 TTABVUE 101-113 did not upload correctly in the ESTTA
`system, and did not display the full content of the pdf correctly. (Appendix B, Declaration of
`Allison E. Prevatt ¶¶ 1-2, Ex. A.)
`
`
`
`7
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`

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`• Her alleged creation of Applicant’s Mark (¶¶ 1-2);
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`• Documents submitted by A&F from Applicant’s website (¶ 2);
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`• Applicant’s Mark (¶ 3);
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`• Biological distinctions between the moose and deer animals in general (¶¶ 4-6, Exs.
`
`A-C);
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`• Content from the website www.aftshirt.com (¶ 7, Ex. D); and
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`• Google search results of “red deer” or “red dear” (¶ 8).
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`
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`In response to A&F’s Motion To Strike, Applicant submitted a revised Testimony
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`Affidavit of Ms. Isabella Schnittger, dated January 8, 2016, which included Revised Exhibits A-
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`D therein (23 TTABVUE) filed outside of her testimony period. On March 7, 2016, the Board
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`granted A&F Motion To Strike in part, and ordered Applicant’s Revised Exhibits A-D (23
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`TTABVUE 26-74) stricken from the record. (25 TTABVUE 3-4.)
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`III. STATEMENT OF THE PROCEEDINGS AND ISSUES
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`On October 8, 2014, A&F timely opposed Ms. Schnittger’s Application No. 86/152,857
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`covering Applicant’s Mark in International Class 25 based on A&F’s prior registrations and use
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`of the A&F Mark asserting that (i) A&F has priority and that Applicant’s Mark is likely to be
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`confused with the A&F Mark under Section 2(d) of the Lanham Act and (ii) that Applicant’s
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`Mark is likely to dilute the famous A&F Mark under Section 43(c) of the Lanham Act. The
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`Board instituted the proceeding as Opposition No. 91218738. Applicant timely answered the
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`Notice of Opposition on October 9, 2014. On September 2, 2015, the parties stipulated to the
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`procedures to be used for their testimony and trial periods (11 TTABVUE), and such stipulation
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`was approved and entered by the Board on September 4, 2015. (12 TTABVUE.) Pursuant to the
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`8
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`

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`stipulated procedures the parties filed a Joint Stipulation of Facts on October 9, 2015 (13
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`TTABVUE) which was entered by the Board on November 13, 2015. (14 TTABVUE.)
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`On December 30, 2015, A&F filed a motion to strike portions of Applicant’s Original
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`Testimony (19 TTABVUE) based on procedural deficiencies. (20 TTABVUE.) A&F filed a
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`reply in support of its Motion to Strike on January 28, 2016 based on continued procedural
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`deficiencies as well as new inadmissible material filed by Applicant. (24 TTABVUE.) The
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`Board granted A&F’s Motion To Strike in part, and deferred consideration of the remainder of
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`A&F’s objections until the trial brief. (25 TTABVUE.) A&F has maintained its objections in its
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`statement of objections filed concurrently herewith.
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`IV. STATEMENT OF FACTS
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`As demonstrated by the parties’ Joint Stipulation of Facts discussed below in conjunction
`
`with Opposer’s and Applicant’s evidence, the core facts demonstrating likely confusion and
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`dilution are not disputed between the parties.
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`A. A&F’s U.S. Trademark Registrations For The A&F Mark
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`
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`A&F is the owner of the following U.S. trademark registrations for Opposer’s Mark
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`which are valid, subsisting and have never been abandoned:
`
`Mark
`
`Reg. No.
`
`Reg.
`Date
`
`Filing
`Date
`
`First
`Use
`
`Goods
`
`3,065,016
`
`3/7/06
`
`9/12/03
`
`2/2002 Cl. 25: clothing, namely, shirts
`and sweaters
`
`4,551,991
`
`6/7/14
`
`10/31/05
`
`2/2002 Cl. 25: Clothing, namely, beach
`cover-ups, bras, camisoles, halter
`tops and night shirts
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`
`
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`9
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`

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`Mark
`
`Reg. No.
`
`Reg.
`Date
`
`Filing
`Date
`
`First
`Use
`
`Goods
`
`3,964,371 5/24/11 10/31/05 12/31/03 Cl. 25: Clothing, namely, polo
`shirts, blouses, sweaters, t-shirts,
`knit shirts, knit tops, sweatshirts,
`sweatpants, sweat suits, pants,
`jogging suits, jeans, shorts, skirts,
`caps, hats, scarves, jackets, coats,
`sandals, flip flops, socks, belts,
`tank tops, underwear, boxer
`shorts, swim suits, pajamas,
`sleepwear and thongs
`
`4,168,384
`
`7/3/12
`
`10/31/05
`
`3,212,644 2/27/07
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`11/3/05
`
`3,574,198 2/10/09
`
`11/3/05
`
`Cl. 35: Retail store services, mail
`order catalog services and on-line
`retail store services featuring
`clothing, footwear, accessories,
`fragrances and jewelry
`
`11/02 Cl. 25: Clothing, namely,
`beachwear, belts, blazers, dresses,
`footwear, gloves, knee highs,
`loungewear, mittens, tights and
`vests
`
`11/1/04 Cl. 25: Clothing, namely, polo
`shirts, sweaters, t-shirts, shirts,
`knit tops, woven tops, sweatshirts,
`sweatpants, pants, shorts, caps,
`hats, scarves, jackets, coats,
`sandals, flip flops, belts, tank
`tops, underwear, boxer shorts,
`swim suits, pajamas, sleepwear
`
`11/2004
`
`
`Cl. 25: Clothing, namely,
`footwear
`
`4/2007
`
`
`Cl. 14: Jewelry, namely,
`necklaces and bracelets
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`
`
`
`
`
`
`
`
`
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`(13 TTABVUE 2-4, Joint Stipulation of Facts (“Joint Stip.”) ¶ 1.) A&F’s Registration Nos.
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`3,065,016, 3,212,644, and 3,574,198 are incontestable. (13 TTABVUE 4, Joint Stip. ¶ 2.) All of
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`A&F’s trademark registrations for Opposer’s Mark were filed, issued, and the marks were used
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`
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`10
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`

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`prior to the filing date of Applicant’s Trademark Application No. 86/152,857 for Applicant’s
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`Mark. (13 TTABVUE 5, Joint Stip. ¶¶ 7-8.)
`
`A&F’s trademark registrations for Opposer’s Mark do not contain any restrictions on
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`channels of trade or classes of consumers. (13 TTABVUE 7, Joint Stip. ¶ 28.) Additionally,
`
`A&F’s trademark registrations for Opposer’s Mark are not limited to any particular color. (22
`
`TTABVUE 2, Wilson Rebuttal ¶ 2.)
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`B. A& F’s Extensive Use And Sales For The A&F Mark
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`For more than fourteen years, A&F has used the A&F Mark in commerce on apparel and
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`accessories in connection with its Abercrombie and abercrombie kids brands in the United States.
`
`(13 TTABVUE 2-4, Joint Stip. ¶¶ 1,3; 17 TTABVUE 4-6, Wilson Affidavit ¶¶ 3, 7-8, Exs. 1-14
`
`at 13-264.) A&F has been using the A&F Mark in solid form (Reg. Nos. 3,065,016, 4,551,991,
`
`and 4,168,384) in commerce in connection with clothing since at least as early as February 2002,
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`and in outline form (Reg. No. 3,212,644) since as early as November 1, 2004. (13 TTABVUE 4,
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`Joint Stip. ¶¶ 3-4.) A&F has also used the A&F Mark in solid form in connection with retail
`
`store services and on-line retail store services featuring clothing, footwear, accessories,
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`fragrances and jewelry, since at least as early as December 31, 2003. (17 TTABVUE 3, Wilson
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`Affidavit ¶ 4.) A&F has further used the A&F Mark in outline form in connection with jewelry
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`since at least as early as April 2007. (17 TTABVUE 3, Wilson Affidavit ¶ 5.)
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`A&F currently sells goods bearing Opposer’s Mark through its retail stores and Internet
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`websites at www.abercrombie.com and www.abercrombiekids.com. (13 TTABVUE 6, Joint
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`Stip. ¶ 18.) Apparel and accessories bearing the A&F Mark are prominently displayed and
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`offered for sale in A&F’s over 370 retail store locations across the United States, including over
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`240 Abercrombie & Fitch retail store locations and over 120 abercrombie kids retail store
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`locations. (13 TTABVUE 6, Joint Stip. ¶ 19; 17 TTABVUE 6, Wilson Affidavit ¶ 11.) A&F
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`
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`11
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`

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`sells, with Opposer’s Mark, all of the goods that are covered by Applicant’s Application No.
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`86/152,857. (13 TTABVUE 5-6, Joint Stip. ¶¶ 5, 17.)
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`A&F has sold apparel and other items featuring the A&F Mark in every retail season
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`from 2002 to 2015, and its use of the A&F Mark has been significant including some seasons
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`with over 4,000 unique items bearing the A&F Mark. (17 TTABVUE 4-5, Wilson Affidavit ¶¶
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`7-8, Exs. 1-14 at 13-264.) In particular, the annual totals of unique products offered for sale
`
`bearing the A&F mark since 2002 equaled: 2002 (149 items); 2003 (602 items); 2004 (2,752
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`items); 2005 (3,183 items); 2006 (4,750 items); 2007 (4,236 items); 2008 (5,066 items); and
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`Spring and Summer 2009 (1,464 items). (17 TTABVUE 4-5, Wilson Affidavit ¶ 7, Exs. 1-8 at
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`12-191.)
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`On many of A&F’s products, the A&F Mark is the only visible trademark when worn by
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`a customer. (17 TTABVUE 6, Wilson Affidavit ¶ 12, Ex. 2 at 40-41, 43-46, 48, 50-51.) A&F
`
`uses its A&F Mark in a variety of colors including the color red. (22 TTABVUE 2, Wilson
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`Rebuttal Affidavit ¶ 2, Exs. 32-33 at 7-41.) A&F has also used its A&F Mark in connection with
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`a variety of words. (17 TTABVUE 4, Wilson Affidavit ¶ 7, Ex. 1 at 14, 30, Ex. 4 at 89, 102; 18
`
`TTABVUE 64, Ex. 20 at 64.) A&F has further used its A&F Mark in both a left and right facing
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`position. (17 TTABVUE 4, Wilson Affidavit ¶ 7, Ex. 1 at 14 (right), 18 (left), 30 (left and right);
`
`18 TTABVUE 30, Ex. 20 at 30 (left) 31 (right), 32 (left and right).)
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`A&F’s websites www.abercrombie.com and www.abercrombiekids.com prominently
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`display and offer for sale apparel bearing the A&F Mark. (17 TTABVUE 5-6, Wilson Affidavit
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`¶¶ 8-10, Exs. 15-18 at 267-355.) These websites receive tens of millions of visits each year from
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`A&F’s customers. (16 TTABVUE 5-6, Wilson Affidavit ¶¶ 9-10.) Specifically, from 2006
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`through June 7, 2015, the website www.abercrombie.com received over
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` visits, and
`
`
`
`12
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`

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`from 2007 through June 7, 2015 the website www.abercrombiekids.com received over
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` visits. (16 TTABVUE 5-6, Wilson Affidavit ¶¶ 9-10.)
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`All together A&F has sold over
`
` in products bearing the A&F Mark in
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`the United States through its retail stores and e-commerce websites since it first began using the
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`mark in 2002. (16 TTABVUE 3, Wilson Affidavit ¶ 6.)
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`C. A&F’s Promotion of Goods Bearing the A&F Mark
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`A&F promotes Opposer’s Mark on its websites at www.abercrombie.com and
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`www.abercrombiekids.com, its Facebook page, in catalogs, in its retail store locations through
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`use on items such as in-store speakers and product stickers and tags, and through promotional
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`emails. (13 TTABVUE 7, Joint Stip. ¶ 30; 16 TTABVUE 4-8, Wilson Affidavit ¶¶ 8-18.) A&F
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`has invested substantial sums in this marketing and promotion of products bearing the A&F
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`Mark. (16 TTABVUE 6, Wilson Affidavit ¶ 13.) The total monetary amounts spent for
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`marketing and promotion of the Abercrombie & Fitch brand in the United States since 2002,
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`which includes products bearing the A&F Mark, exceeded
`
`. (16 TTABVUE
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`6-7, Wilson Affidavit ¶ 13.) Included in this overall amount is A&F’s investment of
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` in connection with supplies for its retail stores that prominently bear the A&F
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`Mark including tissue paper, boxes, gift card holders, multiple size stickers, and fitting room
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`number tags. (16 TTABVUE 7, Wilson Affidavit ¶ 16; 18 TTABVUE 3, Ex. 19 at 3-10.) A&F
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`has also invested
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` in connection with speakers displayed in A&F’s retail stores that
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`feature the A&F Mark. (16 TTABVUE 8, Wilson Affidavit ¶ 18; 18 TTABVUE 111, Ex. 21 at
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`111.)
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`From 2001-2006, A&F released and distributed catalogs displaying and offering for sale
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`clothing bearing Opposer’s Mark, with a total U.S. circulation of over 10.3 million copies (13
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`TTABVUE 7, Joint Stip. ¶ 31.) A&F devoted
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` to the promotion of the A&F
`
`
`
`13
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`

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`Mark in the A&F catalogs. (16 TTABVUE 8, Wilson Affidavit ¶ 17 (figure calculated on
`
`number of pages of catalogs including merchandise featuring the A&F Mark).) The A&F Mark
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`is highlighted throughout the catalogs including on some of the front and back covers. (18
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`TTABVUE 15, Wilson Affidavit Ex. 20 at 15, 19, 21, 25, 29, 47, 54, 57, 61, 72-73, 76, 88, 92,
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`100.)
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`A&F periodically sends promotional e-mails regarding products, including products
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`bearing Opposer’s Mark, to customers who have registered for A&F’s e-mail distribution list (13
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`TTABVUE 8, Joint Stip. ¶ 32; 17 TTABVUE 7, Wilson Affidavit ¶ 14, Ex. 17 at 301-341.) The
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`A&F Mark is prominently featured throughout the promotional e-mails. (17 TTABVUE 302,
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`Wilson Affidavit Ex. 17 at 302, 309, 319, 321) As of June 2015 over
`
` individuals
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`subscribe to the Abercrombie & Fitch e-mail distribution list, and over
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` individuals
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`subscribe to the abercrombie kids e-mail distribution list. (16 TTABVUE 7, Wilson Affidavit
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`¶ 14.) A&F also actively promotes the A&F Mark through social media accounts including
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`Facebook and Twitter. (17 TTABVUE 7, Wilson Affidavit ¶ 15.) As of June 2015 posts from
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`the A&F Facebook page had received 8,724,087 “likes” from Facebook users, and a number of
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`these posts prominently feature clothing with the A&F Mark. (17 TTABVUE 7, Wilson
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`Affidavit ¶ 15, Ex. 18 at 343 (home page with 8,724,087 “likes”), 344, 350, 311 (sampling of
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`posts prominently featuring the A&F Mark).)
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`D. Unsolicited Third Party Recognition Of The A&F Mark
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`The A&F Mark is instantly recognizable as A&F’s trademark, symbolizing and
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`signifying A&F’s high quality image, style and goodwill, and confirming the strong public
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`recognition of the A&F Mark as an indicator of a single designer brand source, namely A&F.
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`(17 TTABVUE 8, Wilson Affidavit ¶ 19.) The A&F Mark has received extensive unsolicited
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`third party coverage and recognition in both the media and elsewhere. (13 TTABVUE 8-9, Joint
`
`
`
`14
`
`

`
`Stip. ¶¶ 33-39; 17 TTABVUE 8-9, Wilson Affidavit ¶¶ 19-20, 18 TTABVUE 112, Exs. 22-26 at
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`112-170.) Polo shirts bearing Opposer’s Mark were featured and recognized during an episode
`
`of the television show Glee which aired nationwide on Fox, and on an episode of the television
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`show Will & Grace which aired nationwide on NBC. (13 TTABVUE 8, Joint Stip. ¶¶ 33-34; 17
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`TTABVUE 9, Wilson Affidavit ¶ 20; 18 TTABVUE 144, Ex. 26 at 144-150.) Clothing bearing
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`Opposer’s Mark has been featured in various magazines with nationwide circulation including
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`FHM, Teen Vogue, GQ, Jane, Details, CosmoGirl, and Men’s Fitness. (13 TTABVUE 8, Joint
`
`Stip. ¶ 37; 17 TTABVUE 8, Wilson Affidavit ¶ 19; 18 TTABVUE 112, Ex. 22 at 112-133.)
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`Newspapers including The New York Times, The Chicago Tribune, and The Washington Post
`
`have published articles regarding Opposer’s Mark. (13 TTABVUE 8, Joint Stip. ¶ 38; 17
`
`TTABVUE 8-9, Wilson Affidavit ¶ 19; 18 TTABVUE 134, Exs. 23-25 at 134-142.) Even a
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`book of essays recognized the fame of A&F’s mark, stating that: “We know who we are by our
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`symbols . . . Abercrombie & Fitch has a moose . . . .” (13 TTABVUE 8-9, Joint Stip. ¶ 39.)
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`Moreover,
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`third–party websites
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`such as www.coolspotters.com, www.iheartthat.com,
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`www.theceleblife.com, and www.seenon.com have published photographs identifying and
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`recognizing celebrities such as Jennifer Anniston, David Beckham, and Jessica Simpson (among
`
`others) as wearing clothing bearing Opposer’s Mark. (13 TTABVUE 8, Joint Stip. ¶¶ 35-36; 17
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`TTABVUE 9, Wilson Affidavit ¶ 20; 18 TTABVUE 143, Ex. 26 at 143-170.)
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`E. A&F’s Enforcement Of The A&F Mark
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`A&F has enforced its rights in Opposer’s Mark against many third parties for uses of
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`marks similar to Opposer’s Mark including Michel Design USA, Inc., JJ Basics, Inc., The Wet
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`Seal, Inc., Jake Wear, Moose Creek, Inc., The Idaho Club, LLC, Paul R. Lopes, GoGo Sports,
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`Inc., and Fairview Import Corporation, resulting in these companies agreeing to cease use of
`
`similar marks and also abandoning applications for similar marks where filed. (13 TTABVUE 9,
`
`
`
`15
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`

`
`Joint Stip. ¶ 40; 17 TTABVUE 9-10, Wilson Affidavit ¶ 21; 18 TTABVUE 171, Exs. 27-31 at
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`171-242.) In particular, A&F won a jury trial against Moose Creek Inc. after which the court
`
`entered a consent permanent injunction enjoining Moose Creek Inc.’s use of marks similar to the
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`A&F Mark. (17 TTABVUE 9-10, Wilson Affidavit ¶ 21; 18 TTABVUE 171-183, Ex. 27 at
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`175.) The consent permanent injunction also recognized that “A&F has the exclusive right to
`
`use the [A&F Mark] in connection with apparel in the State of California and interstate
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`commerce.” (18 TTABVUE 171-183, Wilson Affidavit Ex. 27 at 173 ¶¶ 3, 5, 7.)
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`F. Ms. Schnittger’s Application for Applicant’s Mark
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`
`
`Applicant filed U.S. Application No. 86/152,857 on December 26, 2013 for Applicant’s
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`Mark covering “caps; hats; hooded sweatshirts; jackets; long-sleeved shirts; socks; sweatshirts; t-
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`shirts; underwear” in International Class 25 and claimed an intent to use filing basis. (13
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`TTABVUE 5, Joint Stip. ¶ 5.) Prior to the filing of her Application for Applicant’s Mark on
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`December 26, 2013, Applicant and members of her immediate family shopped at or visited an
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`Abercrombie & Fitch retail store. (13 TTABVUE 5, 7, Joint Stip. ¶¶ 5, 26.) Applicant has
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`stipulated that both “Applicant’s Mark and Opposer’s Mark include profiles of full-bodied, four-
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`legged animals with antlers in silhouette form.” (13 TTABVUE 6, Joint Stip. ¶ 12.) Color is not
`
`claimed as a feature of Applicant’s Mark. (13 TTABVUE 6, Joint Stip. ¶ 13). Applicant’s
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`Application No. 86/152,857 covers identical items of clothing to the clothing items covered by
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`A&F’s Registration Nos. 3,065,016, 3,964,371, 3,212,644, and 4,551,991. (13 TTABVUE 6,
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`Joint Stip. ¶¶ 14-16.) There is no restriction on channels of trade or classes of consumers in
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`Applicant’s Application No. 86/152,857 for Applicant’s Mark. (13 TTABVUE 7, Joint Stip. ¶
`
`27.)
`
`
`
`G. Ms. Schnittger’s Intended Use of Applicant’s Mark
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`Applicant did not use Applicant’s Mark or sell or offer to sell any products or services
`
`16
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`

`
`bearing Applicant’s Mark prior to the December 26, 2013 filing date of her application. (13
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`TTABVUE 5, Joint Stip. ¶¶ 5, 10-11). Applicant intends to sell sport and outdoor clothing and
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`accessories, and intends to license Applicant’s Mark to manufacturers and marketers of sport and
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`outdoor clothing made in the U.S.A., and/or to an athletic team in the U.S.A.. (13 TTABVUE 6
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`Joint Stip. ¶¶ 23-24.) Applicant believes that Applicant’s Mark will appeal to young and old
`
`alike, and Applicant’s Mark is not aimed at a specific income demographic. (13 TTABVUE 6,
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`Joint Stip. ¶ 25.) Applicant has further stipulated that “[c]onsumers of products bearing
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`Opposer’s Mark could also be consumers of products bearing the Applicant’s Mark.” (13
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`TTABVUE 7, Joint Stip. ¶ 29.)
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`Applicant intends to sell clothing bearing Applicant’s Mark on the Internet. (13
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`TTABVUE 5, Joint. Stip. ¶ 20.) Applicant has not yet sold any goods with Applicant’s Mark,
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`but has posted pictures of
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`t-shirts bearing Applicant’s Mark on her website at
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`www.myreddear.com. (13 TTABVUE 6, Joint. Stip. ¶¶ 21-22.) The t-shirts on Applicant’s
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`website are not yet available for sale. (13 TTABVUE 6, Joint. Stip. ¶ 22.) Applicant uses the
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`silhouette design in Applicant’s Mark on her website and on proposed t-shirt designs without the
`
`words “Red Dear.” (15 TTABVUE 2,8-9,11,15-16,21-22,24,27, Bradley Affidavit ¶¶ 2-4, Exs.
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`A-B.) Additionally, even when Applicant does use the words “Red Dear” with its silhouette
`
`antlered-animal design, the words are often barely visible or legible. (15 TTABVUE 2, Bradley
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`Affidavit ¶¶ 2-3, Ex. A at 13,17, Ex. B at 19, 23, Ex. C at 30-32.) Other t-shirt designs bearing
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`Applicant’s Mark on her website include phrases such as “BETTER RED THAN DEAD,” “PRO
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`REDNECK,” and “GO SOUTH,” with the design portion of Applicant’s Mark printed over a
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`U.S. Confederate Flag emblem. (15 TTABVUE 2, Bradley Affidavit ¶ 2, Ex. A at 8, 9, 11, 14.)
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`Applicant’s website also features a proposed t-shirt design bearing the phrase “There’s plenty of
`
`
`
`17
`
`

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`room for all God’s creatures, but not in ‘the South’” with a depiction of a full-bodied antlered
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`animal similar