Trademark Trial and Appeal Board Electronic Filing System. https://estta.uspto.gov
`ESTTA1244416
`10/27/2022
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`ESTTA Tracking number:
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`Filing date:
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`Proceeding no.
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`Party
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`Correspondence
`address
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`Submission
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`Filer's name
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`Filer's email
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`Signature
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`Date
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`91242213
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`Defendant
`Haas Outdoors, Inc.
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`W WHITAKER RAYNER
`JONES WALKER LLP
`190 EAST CAPITOL STREET
`SUITE 800
`JACKSON, MS 39201
`UNITED STATES
`Primary email: jwtrademarks@joneswalker.com
`Secondary email(s): wrayner@joneswalker.com, aharris@joneswalker.com
`601-949-4724
`Brief on Merits for Defendant
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`W. Whitaker Rayner
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`wrayner@joneswalker.com, jwtrademarks@joneswalker.com
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`/W.Whitaker Rayner/
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`10/27/2022
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`Attachments
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`Brief of Applicant Haas Outdoors Inc.pdf(5037555 bytes )
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`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
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`AUDEMARS PIGUET HOLDING, SA
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`OPPOSER
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`V.
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`OPPOSITION NO. 91242213;
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` OPPOSITION NO. 91242238
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`HAAS OUTDOORS, INC.
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`APPLICANT
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`BRIEF OF APPLICANT
`HAAS OUTDOORS, INC.
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`W. WHITAKER RAYNER (MSB No. 4666)
`190 East Capitol Street, Suite 80
`Jackson, MS 39205-0427
`Telephone: (601) 949-4724
`Facsimile: (601) 949-4804
`wrayner@joneswalker.com
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`Attorney for Applicant
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`Table of Contents
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`Page
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`I. OPPOSER FAILS TO ESTABLISH A LIKELIHOOD OF CONFUSION CLAIM ....................... 11
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`Similarity Of The Marks In Their Entireties As To Appearance, Sound, Connotation, And Commercial
`1.
`Impression ........................................................................................................................................................... 13
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`The Similarity Or Dissimilarity In Nature Of The Goods Or Services Described In An Application In
`2.
`Connection With Which A Prior Mark Is In Use .................................................................................................... 17
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`3.
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`The Similarity Or Dissimilarity Established, Likely-To-Continue Trade Channels ......................................... 18
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`The Conditions Under Which Buyers To Whom Sales Are Made (Impulse Vs. Careful, Sophisticated
`4.
`Purchasers) .......................................................................................................................................................... 20
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`5.
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`The Fame Of The Prior Mark ....................................................................................................................... 21
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`6.
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`The Number And Nature Of Similar Marks In Use On Similar Goods ........................................................... 35
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`Nature And Extent Of Any Actual Confusion/The Length Of Time During Which Conditions There Has Been
`7.
`Concurrent Use Without Evidence Of Actual Confusion ....................................................................................... 40
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`8.
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`The Variety Of Goods Of Which A Mark Is Or Is Not Used (cid:894)House Mark, (cid:862)Fa(cid:373)ily Mark(cid:863), Product Mark(cid:895) .... 42
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`9.
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`The Market Interface Between Applicant And Owner Of A Prior Mark ....................................................... 43
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`10. The Extent To Which Applicant Had The Right To Exclude Others To Use Its Mark On Its Goods ................ 44
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`11. The Extent Of Potential Confusion, Whether De Minimis Or Substantial .................................................... 44
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`II. OPPOSER’S CLAIMS OF VIOLATION OF THE FEDERAL TRADEMARK DILUTION ACT
`AND AMENDMENTS ARE MISGUIDED ........................................................................................... 44
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`1.
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`The mark must be famous across the entire U.S. public.............................................................................. 45
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`Opposer must introduce hard evidence of fame of the ROYAL OAK mark prior to the ti(cid:373)e of Applica(cid:374)t’s
`2.
`first use of the MOSSY OAK mark in 1986 ............................................................................................................ 46
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`III. OPPOSER HAS FAILED TO PRODUCE EVIDENCE OF DILUTION BY BLURRING ........ 48
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`IV. OPPOSER HAS FAILED TO PRODUCE EVIDENCE OF DILUTION BY TARNISHMENT 51
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`V. APPENDIX…..……………………………………………………………………………………………………………
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`2
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`
`
`Federal Cases
`
`TABLE OF AUTHORITIES
`
`
`
`Page(s)
`
`7-Eleven, Inc. v. Wechsler,
`83 U.S.P.Q.2D (BNA) 1715 (TTAB 2007) .................................................................32, 36, 48
`
`Aegis Software, Inc. v. 22nd Dist. Agric. Ass’n,
`255 F. Supp. 3d 1005, 1011 (S.D. Cal. 2017) (“niche market theory was
`expressly repudiated by 2006 TDRA) .....................................................................................47
`
`Alcatraz Media, Inc. v. Chesapeake Marine Tours, Inc.,
`107 U.S.P.Q.2D (BNA) 1750 (Trademark Trial & App. Bd. July 2, 2013) ............................29
`
`Anthony’s Pasta Pizza Holding,
`95 U.S.P.Q.2D.1271 (TTAB. 2009) ........................................................................................38
`
`In re Application of Ferrero,
`479 178 U.S.P.Q. (BNA) 167 (C.C.P.A. 1973) .......................................................................17
`
`AutoZone Inc. v. TND Corp.,
`71 U.S.P.Q.2D (BNA) 1385 (Fed. Cir. 2004)..........................................................................17
`
`Becton,
`54 U.S.P.Q.2D 1894 (Fed. Cir. 2000) ......................................................................................16
`
`Citigroup Inc. v. Capital City Bank Group, Inc.,
`94 U.S.P.Q.2D 1645 (TTAB 2010), aff’d 98 U.S.P.Q.2D (BNA) 1253 (Fed.
`Circuit 2011) ......................................................................................................................40, 41
`
`Coach Services, Inc. v. Triumph Learning LLC
`101 U.S.P.Q.2D (BNA) 1713 (Fed. Cir. 2012)........................................................................47
`
`Delta Air Lines, Inc. v. Influence Direct, LLC,
`117 U.S.P.Q.2D (BNA) 1652 (M.D. Tenn. 2016) ...................................................................33
`
`In re E.I. Du Pont de Nemours & Co.,
`177 U.S.P.Q. (BNA) 563 (C.C.P.A. 1973) ................................................13, 14, 17, 18, 19, 54
`
`In re Electrolyte Labratories, Inc.,
`16 U.S.P.Q.2D 1239 (Fed. Cir. 1990) ......................................................................................16
`
`The Gap, Inc.
`42 U.S.P.Q.2D 1228 (Fed. Cir. 1997) ......................................................................................12
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`3
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`Global Brand Holdings, LLC v. Church & Dwight Co.,
`2017 WL 6515419 (U.S. Dist. 2017) .................................................................................25, 46
`
`Idaho Golf Partners, Inc. v. Timberstone Mgmt., Inc.,
`2017 WL 3531481. (D. Idaho 2017) ............................................................................30, 32, 49
`
`International Silver co. v. American Silver, Co.
`37 F.2d 622 (C.C.P.A. 1930) ...................................................................................................21
`
`Jacobs v. International Multi Foods Corp.,
`212 U.S.P.Q. (BNA) 641 (C.C.P.A. 1982) ..............................................................................17
`
`Joy Technologies Inc. v. North American Rebuild Co., Inc.,
`2012 U.S. App. LEXIS 2438 (W.D.P.A. Feb. 6, 2012) .....................................................18, 20
`
`Kohler Co. v. Honda Giken Kogyo K.K.,
`125 U.S.P.Q.2D 1468 (TTAB Dec. 20, 2017; precedential) .............................................29, 60
`
`In Re Lamson Oil Company,
`6 U.S.P.Q.2D 1041 (TTAB 1987) ...........................................................................................14
`
`Lion Capital, LLP,
`110 U.S.P.Q.2D (BNA) 1157 (Fed. Cir. 2014)........................................................................14
`
`Magniflux Corp. v. Sonoflux Corp.
`109 U.S.P.Q. (BNA) 313 (C.C.P.A. 1956) ..............................................................................21
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`Mini Melts, Inc. v. Reckitt Ben Kiser LLC,
`118 U.S.P.Q.2D 1464 (TTAB 2016) .......................................................................................39
`
`Monster Energy Co. v. Beast Up, LLC,
`2019 U.S.P.Q.2D (BNA) 301364 (E.D. CA. 2019) ...........................................................23, 47
`
`In re National Data Corp.,
`753 F.2d 1056, 224 U.S. ..........................................................................................................16
`
`New Colt Holding Corp. v. RJG Holdings of Florida, Inc.,
`2003 U.S. Dist. LEXIS 25309 (D. Conn. 2003) ......................................................................29
`
`Omega Sa (Omega Ag) (Omega Ltd.) v. Alpha Phi Omega,
`118 U.S.P.Q.2D 1289 (TTAB 2016) .......................................................................................47
`
`Palm Bay Imports Inc. v. Veuve Clicquot Ponfardin Maison Fonde En
`1772, 73 U.S.P.Q.2D (BNA) 1689 (Fed. Cir. 2005)................................................................40
`
`Primrose Retirement Communities, LLC v. Edward Rose Senior Living, LLC
`122 U.S.P.Q.2D 1030 (TTAB 2016) .......................................................................................40
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`Progressive Distribution Services, Inc. v. United Parcel Services, Inc.,
`856 F.3d 416,432-33 (Fed. Circuit 2017) ................................................................................17
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`Springboards to Education, Inc. v. Scholastic Book Fairs, Inc.,
`2018 WL 1806500 p. 11-12 (U.S. Dist. 2018).........................................................................23
`
`Standard Knitting, LTD. Vs. Toyota Jidosha Kabushiki Kaisha,
`77 U.S.P.Q.2D (BNA) 1917 (Fed. Cir. 2006)..........................................................................20
`
`Starbucks Corp. v. Wolfe’s Borough Coffee, Inc.,
`92 U.S.P.Q.2D (BNA) 1769 (Fed. Cir. 2009)..........................................................................33
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`Stars Restaurant Corp,
`35 U.S.P.Q.2D 1125 (TTAB 1995) .........................................................................................39
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`Tiffany and Company v. Costco Wholesale Corporation, Inc.,
`2020 U.S.P.Q.2D (BNA) 10942 (Fed. Cir. 2020)..............................................................21, 22
`
`Toro Company v. Toro Head Inc,
`61 U.S.P.Q.2D 1164 (TTAB. 2001) ........................................................................................27
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`TPI Holdings, Inc. v. TrailerTrader.com, LLC
`126 U.S.P.Q.2D 1409 (TTAB 2018) .......................................................................................42
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`Trouble v. Wet Seal, Inc.,
`179 F. Supp. 2d 291, 69 U.S.P.Q.2D (BNA) 1603 (S.D. N.Y. 2001) .....................................29
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`Board of Regents ex rel. University of Texas v. KST Electric, Ltd.,
`550 F. Supp. 2d 657 (W.D. Tex. 2008)....................................................................................47
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`Federal Statutes
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`15 U.S.C. § 1125 (c) ......................................................................................................................45
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`15 U.S. C. § 1125(c)(2)(A) ............................................................................................................46
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`15 U.S.C. § 1125(c)(2)(B) .............................................................................................................50
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`15 U.S.C. § 1125(c)(2)(C) .............................................................................................................52
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`Rules
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`F.R.C.P. 26(e) ..........................................................................................................................42, 50
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`F.R.E. 801 ......................................................................................................................................58
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`DESCRIPTION OF RECORD
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`The evidence of record consists of:
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` Applicant’s application files – 87,821,623; 87,821,622
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` These opposition files, 91, 242, 213 consolidated with 91, 242, 238
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` Opposer’s Registration – 965,112 & 2,885,834
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` Opposer’s of Notices of Reliance – 1-7
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` Defendant’s Notice of Reliance – 1-3
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` Testimonial Declaration of Sarah Morrellon
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` Testimonial Depositions of William Rohr and Stephen Pulivernt
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` Testimonial Declaration of Cindy Reed
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` Testimonial Declaration of Ben Maki
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` Testimonial Declaration of Applicant’s expert, John McKie
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` Cross-Examination of Cindy Reed
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` Cross-Examination Deposition of Ben Maki
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` Cross-Examination Deposition of John McKie
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` Rebuttal Depositions of Rohr and Pulvirent
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`STATEMENT OF ISSUES
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`1. Has Opposer met its burden of proof in establishing a likelihood of confusion
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`between Opposer’s ROYAL OAK marks and Applicant’s MOSSY OAK marks,
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`especially where the marks have co-existed for twenty years without evidence of
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`confusion?
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`2. Whether Opposer has met its burden in establishing that its ROYAL OAK mark is
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`famous?
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`3. Whether Opposer has met its burden of establishing dilution by blurring.
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`4. Whether Opposer has met its burden in establishing dilution by tarnishment.
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`RECITATION OF THE FACTS
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`Applicant Haas Outdoors has used the MOSSY OAK mark continuously since 1986 for a
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`wide-variety of camouflage and outdoor lifestyle products. 78 TTABVUE 8. It has numerous
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`active federal registrations for MOSSY OAK and other marks that include MOSSY OAK. See
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`Maki Decl. Ex. D (99 TTABVUE 12-170). Its watches retail for under One Hundred Dollars. See
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`Reed Decl. p. 2 ¶ 1 (101 TTABVUE 5). Applicant licenses its camouflage patterns and marks to
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`over 700 licensees for a wide-variety of products. See Id. p.1 at ¶ 2 (101 TTABVUE 4).
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`Opposer is a Swiss-Manufacturer of luxury watches under models including the ROYAL
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`OAK, retailing for prices between $20,000 and $100,000 +. See Rohr Dep. 62:8 (92 TTABVUE
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`65); Pulvirent Dep. 84:7-12 (94 TTABVUE 86). Over approximately the past twenty years,
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`watches and jewelry manufactured by Opposer and Applicant have co-existed without any
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`evidence of confusion. See Applicant’s 1st Not. of Rel. Int. Resp. 8 p. 13 (105 TTABVUE 17);
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`Opposer’s 3rd Not. of Rel. Int. Resp. 23 p. 9 (78 TTABVUE 13).
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`Applicant commissioned a survey of consumer brand awareness of three marks – DELTA,
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`STARBUCKS, ROYAL OAK. 86% of those surveyed identified STARBUCKS with coffee or
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`related products. 84% of those surveyed identified DELTA with airlines and related services.
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`Only 4% of those surveyed identified ROYAL OAK with watches and/jewelry, while 16%
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`identified ROYAL OAK with charcoal and related products, and 48% of those surveyed could not
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`identify ROYAL OAK with any products. See McKie Decl. Expert Report (96 TTABVUE 4-17).
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`The term “royal” is a portion of 18 registered trademarks for jewelry and/or watches, not
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`including Opposer’s registrations. See Reed Decl. (101 TTABVUE 4-95). Trademark office
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`records indicate over 3000 records for marks containing the term “oak” across all goods and
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`services. See Applicant’s 1st Not. of Rel. Ex. D (104 TTABVUE 147-159). Furthermore,
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`Trademark office records indicate over 8000 records for marks containing the term “royal” across
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`all goods and services and over 300 records for “royal” in class 14. Apart from registrations owned
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`by Opposer, there exists approximately 25 other records for ROYAL OAK marks for goods and
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`services other than watches and jewelry.
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`INTRODUCTION
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`This briefing is the culmination of four years of an opposition proceeding instigated against
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`the Applicant, Haas Outdoors, Inc., by Audemars Piguet Holding, S.A., a Swiss watch
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`manufacturer who apparently claims to have a monopoly on use of the word “oak” with respect to
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`watches and/or jewelry.
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`Opposer’s strong-arm tactics are evident from the thirteen separate proceedings it identifies
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`in which it has been involved concerning attempted “enforcement” of its rights to the ROYAL
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`OAK mark. See Applicant’s 2nd Not. of Rel. Int. Resp. 10 at p. 13 (105 TTABVUE 17). In most
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`all such instances, rather than being faced with the bullying of aggressive and improper tactics1
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`that Opposer is accustomed to inflicting upon applicants who attempt to register “oak” marks for
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`watches or jewelry, the applicants have instead merely withdrawn their applications. Now, Haas
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`1 These improper tactics set out by the interlocutory attorney in awarding sanctions against
`Opposer found that “the record of these proceedings shows that Opposer, through its counsel, has
`overly burdened Applicant’s counsel and misused the Board’s resources by: 1) requiring
`Applicant’s counsel to inspect documents in Switzerland: which required Applicant to file a
`motion to compel to obtain documents, 2) failing to coordinate with Applicant’s counsel regarding
`the scheduling of a third-party witnesses’ discovery depositions after Applicant’s counsel informed
`Opposer’s counsel that he preferred to be consulted prior to service of these notices or deposition.
`3) Seeking and/or serving subpoenas to third-party witnesses for conducting an out of state in
`person deposition during a pandemic, 4) filing an unnecessary second motion to compel about a
`single issue, which unnecessarily suspended the forward progress of the cases, and 5) making Ex-
`Parte contact with Applicant’s expert witness and requesting consultation regarding
`electronically-stored information under the guise Opposer’s counsel is allowed to do so …
`potentially in violation of Patent and Trademark Office Rule 11.402 (a).” See Order on Motions
`(57 TTABVUE 19-22). The interlocutory attorney characterizes Opposer’s conduct as “a willful
`pattern of harassment of Applicant during discovery, which has consumed unnecessarily
`Applicant’s resource and negatively impacted those of the Board.” Id. at 10. This conduct was
`described by the interlocutory attorney as inexorable and bad faith conduct. The above language,
`was cited by the Commissioner for Trademarks in affirming the sanctions. The Commissioner’s
`order blamed delay “largely due to contentious, unnecessary and apparently tactical discovery
`disputes instigated by Opposer and related motion practice focused on scheduling and procedure.
`The result is not only delay, but also acrimony and undue burden on the Board reminiscent of other
`cases in which Opposer has engaged in similar conduct and maneuverings.” Decision of
`Commissioner (73 TTABVUE 1-2) (emphasis added)
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`Outdoors, Applicant of the MOSSY OAK mark here, has refused to succumb to this harassment
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`and proceeded to point out the obvious fact that the emperor is simply wearing no clothes and
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`Opposer’s claims are threadbare. Simply put, Opposer does not have a monopoly on the word
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`“oak”. The Opposer presents no compelling evidence of likelihood of confusion, fame of
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`Opposer’s ROYAL OAK mark, or dilution either by blurring or tarnishment. Accordingly, the
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`opposition should be rejected.
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`I. OPPOSER FAILS TO ESTABLISH A LIKELIHOOD OF CONFUSION CLAIM
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`The Opposer’s first ground for opposition is that the Applicant Haas Outdoors’ MOSSY
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`OAK mark is likely to cause confusion with Audemars Piguet’s ROYAL OAK mark. At the
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`outset, it is important to remember that the burden of proving a likelihood of confusion rests with
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`the party in position of the Plaintiff. See KP Permanent Make-Up, Inc. vs. Lasting Impression I,
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`Inc., 543 US 111,122 (2004). In establishing a likelihood of confusion, the Opposer must show
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`that confusion is “probable.” It is not sufficient to simply show the possibility of confusion. See
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`McCARTHY ON TRADEMARKS AND UNFAIR COMPETITION § 23:3 (5th ed. 2017); American
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`Steele Foundries vs. Robertson, 269 US 372 (1926); Estee Lauder Inc. vs. The Gap, Inc. 42
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`U.S.P.Q.2D 1228 (Fed. Cir. 1997). In general, there are at least three routes of proof of likelihood
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`of confusion: (1) survey evidence, (2) evidence of actual confusion, and (3) argument based on a
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`clear inference arising from comparison of the conflicting marks and the context of their use. See
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`McCARTHY ON TRADEMARKS AND UNFAIR COMPETITION § 23:63 (5th ed. 2017).
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`Interestingly, Opposer has not even attempted to prove a likelihood of confusion through the first
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`two elements-- it has produced no survey evidence and it has admitted in interrogatory responses
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`that it has no evidence of actual confusion despite many years of concurrent use. See Applicant’s
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`Int. Resp. 8 (105 TTABVUE 17).2
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`While Professor McCarthy breaks evidence of a likelihood of confusion into the above
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`three categories, the embodiment of these categories is laid out in the standard recognized by the
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`Trademark Trial Appeal Board in its identification of factors. See In re E.I. Du Pont de Nemours
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`& Co., 177 U.S.P.Q. (BNA) 563 (C.C.P.A. 1973). The elements to be considered under the Du
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`Pont test include the following:
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`(1) the similarity or dissimilarity of the marks in their
`entireties as to appearance, sound, connotation, and
`commercial impression;
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`(2) the similarity or dissimilarity in nature of the
`goods or services as described in an application or
`registration in connection with which a prior mark is
`in use;
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`(3) the similarity or dissimilarity of established,
`likely-to-continue trade channels;
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`(4) the conditions under which and buyers to whom
`sales are made,
`i.e. “impulse” vs careful,
`sophisticated purchasing;
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`(5) the fame of the prior mark;
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`(6) the number and nature of similar marks in use on
`similar goods;
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`(7) the nature and extent of any actual confusion;
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`(8) the length of time during and conditions under
`which there has been concurrent use without
`evidence of actual confusion;
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`2 Similarly, Opposer introduces Applicant’s interrogatory responses where Applicant
`likewise stated that it was aware of no instances of actual confusion. See Applicant’s Int. Resp.
`23, (78 TTABVUE 13).
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`(9) the variety of goods on which a mark is or is not
`used;
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`(10) the market interface between applicant and the
`owner of the prior mark;
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`(11) the extent to which applicant has a right to
`exclude others for use of its mark on its goods;
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`(12) the extent of potential confusion, i.e., whether
`de minimis or substantial; and
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`(13) any other established fact probative of the effect
`of use.
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`The Applicant will, in turn, address these Du Pont factors as they pertain to the instant opposition.
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`1.
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`Similarity Of The Marks In Their Entireties As To Appearance, Sound,
`Connotation, And Commercial Impression
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`According to the Federal Circuit, the similarity of the marks at issue is determined by
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`focusing on “the marks in their entireties as to appearance, sound, connotation and commercial
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`impression.” See Stone Lion Capital Partners, L.P. vs. Lion Capital, LLP, 110 U.S.P.Q.2D (BNA)
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`1157 (Fed. Cir. 2014).3
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`The commercial impression of the two marks could not be more different. The only
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`similarity between the marks is the common term “oak.” The adjective accompanying each mark
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`3 On page 9 of its brief, Opposer intimates that similarity as to any one of the elements
`(appearance, sound, connation, and commercial impression) is sufficient to support a finding of
`confusing similarity. While the two marks at issue are not similar in appearance, sound,
`connotation, or commercial impression, even if they were, the TTAB’s position as to the
`controlling nature of any one element, is not so cut and dry. In In Re Lamson Oil Company, 6
`U.S.P.Q.2D 1041 (TTAB 1987), the TTAB clarified its position: “It should be noted that similarity
`of the marks in one respect--sight, sound or meaning--will not automatically result in a result of
`finding likelihood of confusion even if the goods are identical or closely related. Rather the rule
`is taking into account all of the factors of a particular case, similarity as to one factor (sight, sound
`or meaning) alone ‘may be sufficient to support a holding that the marks are confusingly
`similar.’[citation omitted] To the extent that the above cited statements [citation omitted] suggest
`that a finding of similarity as to sight, sound or meaning automatically results in a finding of
`likelihood of confusion when the goods are identical or closely related, said statements are hereby
`clarified.”[underlining in original, bold added] Id. note 4.
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`renders totally different impressions: ROYAL OAK evokes a regal, expensive, crisp, stately and
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`elaborate atmosphere. MOSSY OAK, on the other hand, evokes an outdoorsy, swampy
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`atmosphere. Thus, the commercial impression and connotation are indeed dissimilar.4
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`Opposer would have the TTAB believe that the mere use of the common term “oak”, is
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`dominant, and sufficient for Opposer to prevent any other party from using the term for watches
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`or jewelry. But rules of comparison for respective trademarks provide that with respect to
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`composite marks, they are to be compared by looking at them as a whole, rather than breaking the
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`marks up into component parts for comparison. The reason for this “anti-dissection” rule is that
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`the commercial impression of a composite mark by an ordinary buyer is created by the mark as a
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`whole, not by its component parts. See McCARTHY ON TRADEMARKS AND UNFAIR
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`COMPETITION § 23:41 (5th ed. 2017); In re National Data Corp., 753 F.2d 1056, 224 U.S.P.Q.
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`(BAN) 749 (Fed. Cir. 1985) (“Likelihood of confusion cannot be predicated on dissection of a
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`mark, that is, on only part of a mark”); Recot, Inc. vs. Becton, 54 U.S.P.Q.2D 1894 (Fed. Cir. 2000)
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`(reversing Board for improperly dissecting conflicting marks to determine if commercial
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`impressions were confusing). As the Supreme Court held in Estate of P.B. Beckwith, Inc. vs.
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`Commissioner of Patents, “It is incorrect to compare marks by eliminating portions thereof and
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`then simply comparing the residue.” 252 U.S. 538, 545-46 (1920).
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`Because of the common nature of oak referring to a tree, the terms “royal” and “mossy”
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`are likely the strongest features of the respective marks. Opposer itself points out the
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`distinguishable features of the respective marks when it provides that “mossy-ness is a common
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`characteristic of trees including oak trees.” See Opposer’s Brief at ¶ 1, (129 TTABVUE 10). That
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`4 It is interesting to note that during examination of Applicant’s application, the examining
`attorney failed to refuse registration, or even point out, any confusing similarity between the
`Applicant’s mark and Opposer’s mark.
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`14
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`image and commercial impression is not present in Opposer’s mark. Indeed, carrying Opposer’s
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`argument further, “royal-ness” is a common characteristic of royalty and regalness, and is not a
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`characteristic of oak trees.
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`Opposer also argues that the unique design feature of Applicant’s ‘238 Application does
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`not serve to distinguish its mark from Opposer’s word mark or stylized mark (neither of which
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`contain a tree). While a word portion of a mark maybe accorded a greater weight in determining
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`a likelihood of confusion, the design portion of the mark cannot be ignored. See In re Electrolyte
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`Labratories, Inc., 16 U.S.P.Q.2D 1239 (Fed. Cir. 1990) (“We conclude that the TTAB erred in its
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`dominant focus on the K+ in both marks, to the substantial exclusion of other elements of both
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`marks.”)
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` Furthermore, Opposer’s claim of use of a tree image in the face of a very limited-series
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`watch, for which Opposer provides no evidence of number of sales, cannot, and should not be
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`considered. Opposer’s “design” was not cited as a mark in opposition to Applicant’s applications
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`nor is there any evidence that the mark was ever used by Opposer as a trademark or anything other
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`than an ornamental feature of the watch face.
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`Additionally, as set forth in the testimony of Ben Maki, see Maki Testimony Decl. (97
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`TTABVUE 4-5), and as illustrated by numerous exhibits including the 2010 Corporate Brochure,
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`see Maki Decl. Ex. A (98 TTABVUE 2-31); and the 2017 Corporate Brochure, see Maki Decl.
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`Ex. C (99 TTABVUE 4-11), MOSSY OAK is a house mark for the Applicant, Haas Outdoors’
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`full line of camouflage and outdoor products. Indeed, as reflected by the testimony of Mr. Maki
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`and the Shooter Survey of one of the premier industry researchers, Southwick Associates, See
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`Maki Decl. Ex. B (99 TTABVUE 2-3 (public version)) and (100 TTABVUE (confidential
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`information)), the MOSSY OAK line is among the most widely recognized brands of outdoor
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`15
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`camouflage, clothing and accessories. That the product line is extended into the watch and jewelry
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`fields for registration purposes, is not likely to lead to any association or affiliation between
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`Applicant and Opposer. Courts often use evidence of the junior user’s well-known house mark as
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`evidence which diminishes the “similarity of the marks” factor in the Du Pont test. See, e.g.,
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`AutoZone Inc. v. TND Corp., 71 U.S.P.Q.2D (BNA) 1385 (Fed. Cir. 2004); Progressive
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`Distribution Services, Inc. v. United Parcel Services, Inc., 856 F.3d 416,432-33 (Fed. Circuit
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`2017).
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`Even if Applicant’s mark did call to mind Opposer’s mark among the consuming public
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`(which it steadfastly does not), merely calling to mind another entity’s goods does not constitute
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`creation of consumer confusion. To this point, the Appellate Court in In re Application of Ferrero,
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`479 178 U.S.P.Q. (BNA) 167 (C.C.P.A. 1973), held that:
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`The very fact of calling to mind may indicate that the
`mind is distinguishing rather than being confused by
`the two marks. … Seeing the yellow traffic light
`immediately “calls to mind” the green that has gone
`and the red that is to come, or vice versa; that does
`not mean that confusion is being caused. As we are
`conditioned, it means exactly the opposite.
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`Similarly, in Jacobs v. International Multi Foods Corp., 212 U.S.P.Q. (BNA) 641 (C.C.P.A.
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`1982), the Federal Circuit held that “the fact that one mark may bring another to mind does not in
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`itself establish likelihood of confusion as to source.” (finding BOSTON SEA PARTY not
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`confusingly similar to BOSTON TEA PARTY).
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`For each of these reasons, the common inclusion of the word “oak” is not sufficient to
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`instill confusion in the minds of the public to generate the same commercial impression, and to
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`give Opposer superiority to preempt the entire watch and jewelry industry from using the term.
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`2.
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`The Similarity Or Dissimilarity In Nature Of The Goods Or Services
`Described In An Application In Connection With Which A Prior Mark Is In
`Use
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`At first glance, it would appear that both the Applicant and Opposer’s goods or services
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`are similar. Nonetheless, the Opposer itself has identified two entirely different characteristics
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`which distinguish the parties’ goods from one another and demonstrates that they travel in different
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`markets. The Opposer is proud of the fact that its ROYAL OAK mark is only used in connection
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`with luxury, high-quality goods. See Opposer’s Brief at ¶ 1 (129 TTABVUE 43) and at ¶ 2 (129
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`TTABVUE 48). Indeed it wants the TTAB to consider the luxury nature and reputation for quality
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`as a factor “proving” its dilution claim. Id. at 43. In the same breath, the Opposer argues that Haas
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`Outdoors watches and jewelry sold under its MOSSY OAK brand are of inferior quality when
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`compared to the ROYAL OAK watch with a $20,000+ price tag.5 Thus, the actual similarity of
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`the parties’ watches as confirmed by usage over 20 years in the case of Applicant and 30 years in
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`the case of the Opposer, demonstrate that the products differ so much in price that they are, in fact,
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`different goods for the purposes of a Du Pont comparison. Opposer, now argues that the TTAB
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`should only consider “the goods and services stated in the Applications and registrations at issue,
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`not on extrinsic evidence of actual use.” See Opposer’s Brief at ¶ 1 (129 TTABVUE 11). Such
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`reliance on diametrically opposed principles are improper and therefore Opposer’s argument
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`should be barred by the doctrine of estoppel by pleading. See Joy Technologies Inc. v. North
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`American Rebuild Co., Inc., 2012 U.S. App. LEXIS 2438, 13 (W.D.P.A. Feb. 6, 2012) (doctrine
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`exists “to protect the integrity of