Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA1091938
`10/28/2020
`
`ESTTA Tracking number:
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`Filing date:
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
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`Proceeding
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`91248336
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`Party
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`Correspondence
`Address
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`Plaintiff
`Jockey International, Inc.
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`ANDREA L CALVARUSO
`KELLEY DRYE & WARREN LLP
`101 PARK AVE
`NEW YORK, NY 10178
`UNITED STATES
`Primary Email: trademarks@kelleydrye.com
`212-808-7800
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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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`Attachments
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`Opposition/Response to Motion
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`Andrea L. Calvaruso
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`trademarks@kelleydrye.com
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`/Andrea L. Calvaruso/
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`10/28/2020
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`Memorandum ISO Motion for Summary Judgment.pdf(701201 bytes )
`Declaration of L. Lecigne ISO Motion for Summary Judgment with Exhibi
`ts.pdf(980580 bytes )
`Declaration of Anne Arbas.pdf(1868816 bytes )
`Declaration of Andrea L. Calvaruso ISO Motion for Summary Judgment.pd
`f(4088202 bytes )
`Declaration of Maureen Putlak ISO Motion for Summary Judgment.pdf(505881
`bytes )
`Exhibit A-1.pdf(6162945 bytes )
`Exhibit A-2.pdf(3676901 bytes )
`Exhibit B.pdf(190405 bytes )
`Exhibit C-1.pdf(2844883 bytes )
`Exhibit C-2.pdf(6161121 bytes )
`Exhibit D.pdf(3855812 bytes )
`Exhibit E.pdf(609352 bytes )
`Exhibit F.pdf(438318 bytes )
`Exhibit G.pdf(2207411 bytes )
`Exhibit H.pdf(1261677 bytes )
`Exhibit I.pdf(3114503 bytes )
`Exhibit J.pdf(4299807 bytes )
`Exhibit K.pdf(121870 bytes )
`Exhibit L.pdf(4413009 bytes )
`Exhibit M.pdf(3177193 bytes )
`Exhibit N.pdf(974504 bytes )
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`

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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
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`Opposition No. 91248336
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`JOCKEY’S OPPOSITION TO APPLICANT’S MOTION FOR SUMMARY JUDGMENT
`AND CROSS-MOTION FOR SUMMARY JUDGMENT
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`JOCKEY INTERNATIONAL, INC.,
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`v.
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`Opposer,
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`LAMONT D. COOPER,
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`Applicant.
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`Opposer Jockey International, Inc. (“Opposer” or “Jockey”) submits this memorandum, and the
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`declarations1 submitted herewith, in opposition to Applicant Lamont Cooper’s (“Applicant” or “Cooper”)
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`motion for summary judgment (Dkt. 33) (“Applicant’s MSJ” or “MSJ”) in his favor with respect to
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`Opposer’s claim for dilution and cross-moves2 the Trademark Trial and Appeal Board (the “Board”),
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`pursuant to Federal Rule of Civil Procedure 56 and 37 C.F.R. § 2.217, for an order granting summary
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`judgment in its favor on Opposer’s claim of priority and likelihood of confusion and denying registration
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`to U.S. Application Serial No. 87/863,113 (the “Application”). Opposer objects to Applicant’s MSJ to the
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`extent that it seeks summary judgment on unpled counterclaims for cancellation based on priority and
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`likelihood of confusion, abandonment and fraud. The Board should give no consideration to a motion for
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`summary judgment on unpled claims and Applicant’s MSJ with respect to such unpled claims should be
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`denied.
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`The Board has not granted Applicant’s motion to amend his pleading to assert counterclaims
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`(Dkt. 26) (“Applicant’s Motion to Amend”), which Opposer has opposed in its entirety. For the reasons
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`set forth by Opposer therein (Dkt. 33), Applicant’s request to add such counterclaims, which have no
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`support in the record, should be denied with prejudice. In the event that the Board grants Applicant’s
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`request to add the unpled counterclaims and considers Applicant’s MSJ with respect to such claims
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`despite Opposer’s objection, Applicant’s MSJ should be denied at the very least because there are genuine
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`issues of material fact that preclude judgment for Applicant on such claims.
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`I.
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`HISTORY OF PROCEEDINGS
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`Applicant filed the Application on April 4, 2018 seeking to register a design mark depicting a jockey
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`figure (the “Disputed Mark”). Opposer timely filed its Notice of Opposition in this proceeding on May 22,
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`2019, on the basis of, inter alia, priority and that the Disputed Mark is likely to confuse consumers and dilute
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`1 Opposer submits the supporting declarations of Maureen Putlak (“Putlak Dec.”), Laetitia Lecigne (“Lec. Dec.”),
`Anne Arbas (“Arbas Dec.”) and Andrea Calvaruso (“Cal. Dec.”). The publicly filed version of Ms. Arbas’
`declaration omits highly confidential information.
`2 A cross-motion is germane to the original motion and therefore timely when filed after the proceeding is
`suspended. Nestle Co. v. Joyva Corp., 227 USPQ 477, 478 n.4 (TTAB 1985). The Interlocutory Attorney confirmed
`this procedural point in an email to the parties on September 29, 2020. Cal. Dec., ¶8, Ex. E.
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`

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`the strength of Opposer’s famous Jockey Figure Marks (defined below). Applicant filed his Answer on June
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`28, 2019, denying Opposer’s allegations and asserting various affirmative defenses. Applicant did not assert
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`any counterclaims. Discovery closed in this proceeding on January 27, 2020.
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`On March 11 and 12, 2020, the parties filed cross-motions to compel supplemental discovery
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`responses and document productions. On July 31, 2020, the Board entered an order granting in part and
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`denying in part both parties’ motions and allowing the parties thirty days to serve revised discovery responses
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`and responsive documents in compliance with the order. Dkt. 23 (the “July 31 Order”). Applicant’s 30-day
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`deadline to comply with the July 31 Order was August 31, 2020.3 The July 31 Order also dismissed all of
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`Applicant’s defenses and allowed Applicant until August 31, 2020 “to submit . . . a sufficiently pleaded . . .
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`counterclaim(s) for abandonment, failing which the proceeding will move forward solely on Opposer’s claims
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`of likelihood of confusion, dilution, and claim preclusion.” Dkt. 23, at 11. On August 28, 2020, Applicant
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`filed his Motion to Amend. His proposed Amended Answer and Counterclaims purport to allege (1)
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`affirmative defenses of abandonment, equitable estoppel, fraud, and unclean hands, and (2) counterclaims for
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`likelihood of confusion, abandonment and fraud. Dkt. 26. On September 17, Jockey opposed Applicant’s
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`Motion to Amend in its entirety. Dkt. 31. Applicant’s Motion to Amend is pending before the Board.
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`On Friday, August 28, 2020, Applicant also served supplemental discovery responses and a
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`supplemental document production that purported to comply with the July 31 Order (the “August 28
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`Response”). Cal. Dec., ¶2. After a meet-and-confer letter from Opposer regarding deficiencies in the August
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`28 Response, Applicant served further supplemented discovery and documents on September 3, 2020 (the
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`“September 3 Response”). Id. ¶3. Based on remaining deficiencies in Applicant’s production after the
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`September 3 Response, Opposer moved the Board for discovery sanctions precluding Applicant from relying
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`at trial on any documents or information produced after August 31, 2020. Dkt. 28. Since the August 31
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`deadline set by the Board, Applicant has continued to disclose additional documents and witnesses he intends
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`to rely upon at trial that were responsive to discovery requests yet never produced during the discovery
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`3 On August 28, 2020, upon motion by Opposer showing good cause, the Board extended Opposer’s time to comply
`with the July 31 Order until September 14, 2020. Dkt. 25.
`2
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`period. Cal. Dec., ¶4. For the first time with his MSJ, Applicant disclosed even more new documents and
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`witnesses in support of his claims that were never before disclosed. Id. On September 14, 2020, Opposer
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`served supplemental discovery responses and a supplemental document production in compliance with the
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`July 31 Order.4 Id. ¶5. On September 28, 2020, Applicant filed his MSJ.
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`II.
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`COUNTER-STATEMENT OF UNDISPUTED MATERIAL FACTS
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`Applicant’s MSJ does not set forth a statement of undisputed materials facts and instead rehashes
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`irrelevant arguments that have now been litigated at length in the parties’ prior motions. Opposer does not
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`again address here Applicant’s unsubstantiated accusations that Opposer did not meet its discovery
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`obligations or Applicant’s mischaracterization of the July 31 Order granting him permission to pursue an
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`amended pleading. Instead, Opposer refers the Board to the parties’ fully briefed submissions in
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`connection with the foregoing disputes (see Dkt. 26, 31, 38 (Motion to Amend); Dkt. 28, 29, 32
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`(Oppposer’s Motion for Sanctions); Dkt. 30, 35, 36 (Applicant’s Motion for Sanctions)) and sets forth the
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`following statement of undisputed material facts.
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`A.
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`Opposer And Its Jockey Figure Marks
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`JOCKEY is one of the world’s most beloved and recognized brands. See, e.g., Putlak Dec., ¶2. It
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`exemplifies American ingenuity and endurance beginning with Opposer’s invention of the world’s first
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`men’s underwear brief in 1934. Id. ¶2. Since at least as early as 1934, Opposer and its predecessors-in-
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`interest have used the famous JOCKEY mark in U.S. commerce in connection with the promotion and
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`sale of undergarments, apparel items, and related goods and services. Id. ¶4.
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`In 1940, Opposer introduced its first jockey figure mark, a pictorial representation of the figure of
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`a jockey:
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` (the “1940 Full Boy”). Id. ¶5. Since then, Opposer has continued to use the 1940 Full
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`Boy as a brand identifier and has also adopted and used modernized iterations of this jockey figure mark
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`4 On September 17, 2020, Applicant’s counsel requested additional information in response to Interrogatory No. 1,
`which Opposer provided in its Second Amended Interrogatory Responses on September 21, 2020. Cal. Dec., ¶5.
`3
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`in U.S. commerce in connection with the promotion and sale of apparel, including underwear, shapewear,
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`and intimates; sleepwear; loungewear; athleisure wear; active wear; socks; and related goods and services
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`such as retail store services (collectively, “Opposer’s Products”). Id.
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`In 1960, Opposer began using a modernized version of the 1940 Full Boy mark that makes the
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`same commercial impression as the 1940 version, and is the subject of incontestable U.S. Registration
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`No. 0,768,840:
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` (the “1960 Full Boy”) and a cropped version of the same mark that is the subject
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`of incontestable U.S. Registration No. 0,711,570:
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` (the “1960 Half Boy,” together with the
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`1960 Full Boy mark referred to as the “1960 Jockey Boy Designs”). Id. ¶10, 23, Ex. Q. These
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`registrations are valid and subsisting. Id. Opposer has continuously used the 1960 Jockey Boy Designs
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`since their first use, including in connection with products, product packaging, hang tags, advertisements,
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`and office and store signage. Id. ¶11-15, Ex. G-L.
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`In or around 2010, Opposer decided to again refresh and modernize its iconic and well-known
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`jockey figure icon. Id. ¶16. Opposer worked with a design agency to create an updated version of the
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`1960 Full Boy, which is the subject of incontestable U.S. Registration Nos. 4,471,345:
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` (the “2011
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`Full Boy”) and 4,641,620:
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` (the “2011 Full Boy + JOCKEY Mark,” together with the
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`2011 Full Boy referred to hereinafter as the “2011 Jockey Boy Designs”). Id. ¶16, 23, Ex. Q. These
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`registrations are valid and subsisting. Id. The updated mark makes the same commercial impression as the
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`1960 Full Boy, yet incorporates smoother lines and design elements that also specifically evoke the
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`original 1940 Full Boy, including an off-center stance and downward-pointing riding crop. Id. ¶16. The
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`4
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`2011 Full Boy design was finalized in 2011 and first used in commerce in 2012, and the 2011 Full Boy +
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`JOCKEY Mark design was finalized in 2012 and first used in commerce in 2013. Id. ¶17. The 2011
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`Jockey Boy Designs have been used continuously since their first use until the present, including in
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`connection with products, product packaging, hang tags, marketing and advertising materials, and office
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`and store signage. Id. ¶17, 18.
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`The Jockey Seal:
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` is the subject of valid and subsisting U.S. Registration No.
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`5,984,914. Id. ¶20, 23, Ex. Q. It is an update of a prior version of the seal that incorporated the 2011 Full
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`Boy Mark:
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`. In 2017, it was redesigned as part of a refresh of Opposer’s packaging and
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`marketing for certain JOCKEY branded products. Id. The Jockey Seal was inspired by and based upon
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`Jockey’s heritage and historical branding, with the goal of highlighting Jockey’s branding roots in a
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`refreshed manner for new generations of customers. Id. The Jockey Seal incorporates a cropped version
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`of the 1940 Full Boy into a circular motif that was inspired by Jockey’s iconic “Man on the Bag”
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`marketing image
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` used by Opposer in the 1900s. Id. The Jockey Seal was first used in
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`commerce in 2018 and has been used continuously since then, including in connection with product
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`packaging, hang tags, and marketing and advertising materials. Id. ¶21. The 1940 Full Boy, 1960 Jockey
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`Boy Designs, 2011 Jockey Boy Designs, and the Jockey Seal are collectively referred to herein as the
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`“Jockey Figure Marks.”
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`Opposer has achieved significant U.S. sales of Opposer’s Products promoted or sold in
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`connection with its Jockey Figure Marks. Arbas Dec., ¶3. Opposer’s Products are sold throughout the
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`U.S., at Opposer’s own JOCKEY branded retail stores, its online e-commerce site located at
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`5
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`www.jockey.com, its direct-to-consumer catalog, as well as a variety of third-party retailers from
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`department stores such as Nordstrom, Macy’s, Kohl’s, JC Penney, QVC, Dillard’s, Von Maur, Belk, Fred
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`Meyer, and Century 21, to big box stores such as Walmart and Target, as well as other brick-and-mortar
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`and online retail stores that sell apparel. Putlak Dec, ¶24.
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`Opposer has invested substantial sums over the years to promote Opposer’s Products. Arbas Dec,
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`¶7. Opposer has extensively promoted Opposer’s Products through advertising that reaches nearly every
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`segment of U.S. consumer, including through Internet websites, digital ads, social media sites including
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`Facebook, Twitter, Instagram, YouTube, and Pinterest, regional and national print publications, and
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`catalogs. Putlak Dec., ¶26. Jockey’s advertising and promotional activities predominantly feature the
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`Jockey Figure Marks. Id. The Jockey Figure Marks have been used over the years in advertising featuring
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`athletes, actors and pop-culture personalities, including Olympic gold medalists, baseball legend Jim
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`Palmer, Babe Ruth, Buzz Aldrin, General Patton, James Dean, and Will Ferrell, to name a few. Id. ¶27.
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`As a result of Jockey’s extensive use and promotion of the Jockey Figure Marks in the U.S. for
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`nearly 80 years in connection with its production of high quality goods that generate substantial sales, and
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`extensive promotion and unsolicited media attention associated with the JOCKEY brand and related
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`goods and services in the U.S., Opposer’s Jockey Figure Marks have received national and worldwide
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`notoriety and have become associated exclusively with Opposer (or an unidentified single source) by the
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`general consuming public. Id. ¶25, 28, 29. The longstanding history of the JOCKEY brand, including the
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`Jockey Figure Marks, are of great interest to the consuming public and have often been the subject of
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`public interest articles. Id. ¶29. The Jockey Figure Marks are so recognizable and well-known to the U.S.
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`consumer that a resale market exists for collectibles such as vintage statues of certain Jockey Figure
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`Marks, and historical JOCKEY advertising. These items are often offered for sale and purchased in the
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`U.S. by individual resellers, collectors, and enthusiasts through third party online retailers such as
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`www.ebay.com, www.icollector.com, www.antiqueadvertising.com, and www.liveauctioners.com. Id.
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`The Board has previously held that Opposer’s 1960 Jockey Boy Designs are famous trademarks
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`within the field of clothing. See Jockey Int’l, Inc. v. Butler, 3 USPQ2d 1607, 1611-12 (TTAB 1987)
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`6
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`(concluding that “JOCKEY word and design marks” including Reg. No. 0711570 and Reg. No. 0768840
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`are “arbitrary in nature” and “famous trademarks in the field of clothing.”). Opposer’s continued use and
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`promotion of these marks since then has surely only bolstered the fame of the mark.
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`B.
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`Applicant And Applicant’s Purported Marks
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`On April 4, 2018, long after Opposer’s first use of the Jockey Figure Marks, Applicant filed his
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`Application to register the Disputed Mark:
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` in connection with hats, hoodies, jackets, long-
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`sleeved shirts, shoes and t-shirts in Class 25 based upon an alleged use of the mark since August 1, 2006
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`that is not supported by the record evidence. Applicant’s MSJ seeks judgment in his favor with respect to
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`additional designs based upon alleged common law rights in marks which have not been pled and which
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`were never the subject of discovery in this proceeding.5 Opposer objects to the Board’s consideration of
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`Applicant’s MSJ with respect to these unpled designs:
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` (the “Stars Marks”)
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`and:
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` (“Applicant’s Black Jockey Mark,” referred to together with the Disputed Mark and the
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`Stars Marks as “Applicant’s Purported Marks”).
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`Opposer has no business relationship with Applicant and has never authorized or otherwise
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`granted Applicant permission to use the Jockey Figure Marks or any similar mark. Putlak Dec., ¶30.
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`5 This position is particularly egregious because Applicant resisted Opposer’s Discovery Requests seeking
`information regarding any trademarks he claimed to own in addition to the Disputed Mark, and the Board denied
`Opposer’s motion to compel such information. July 31 Order at 40-41.
`7
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`III.
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`ARGUMENT
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`Summary judgment is appropriate where “no genuine issue of material fact remains and more
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`evidence than is already available in connection with the summary judgment motion could not reasonably
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`be expected to change the result.” John W. Carson Found. v. Toilets.com, Inc., 94 USPQ2d 1942, 1945
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`(TTAB 2010). To defeat the motion, the nonmoving party may not rely on “mere allegations of its
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`pleadings and assertions of counsel, but must designate specific portions of the record or produce
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`additional evidence showing the existence of a genuine issue of material fact for trial.” Id. “To establish
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`[a genuine] factual dispute, the nonmoving party need only present evidence from which a jury might
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`return a verdict in its favor.” Olde Tyme Foods, Inc. v. Roundy’s, Inc., 961 F.2d 200 (Fed. Cir. 1992).
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`Here, the evidence in the record on the pled claims demonstrates as a matter of law that Opposer
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`has priority of rights and is therefore entitled to summary judgment on its claim for priority and likelihood
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`of confusion. The record evidence also shows that at least there remain genuine issues of material fact that
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`preclude dismissal of Opposer’s claim for dilution.
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`Opposer objects to Applicant’s MSJ with respect to counterclaims to cancel Opposer’s
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`registrations because Applicant has not pled any counterclaims. Such unpled claims are not properly
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`subject to a motion for summary judgment. Omega SA (Omega AG) (Omega Ltd.) v. Alpha Phi Omega,
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`118 USPQ2d 1289, 1291 n.2 (TTAB 2016) (refusing to consider unpled defense raised on motion for
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`summary judgment). Opposer has opposed Applicant’s Motion to Amend, which is pending before the
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`Board. For all of the reasons set forth by Opposer therein, including futility, Applicant should not be
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`allowed to add counterclaims or new defenses. Applicant’s MSJ on any counterclaim in his proposed
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`amended pleading is improper, moot and/or premature and should be denied. Should the Board allow
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`Applicant to add counterclaims for likelihood of confusion, abandonment and/or fraud, and thereafter
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`consider Applicant’s MSJ with respect to such claims despite Opposer’s objection, the record evidence
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`demonstrates there are at least genuine issues of material fact precluding judgment for Applicant.
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`8
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`A.
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`Applicant Is Not Entitled To Summary Judgment On Opposer’s Claim for Dilution
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`Applicant’s MSJ on Opposer’s dilution claim should be denied at the least because the evidence
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`in the record demonstrates a genuine question of material fact regarding the claim. In order to prevail on a
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`dilution claim, a party must show that: (1) it owns a famous mark that is distinctive; (2) defendant is using
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`the mark in commerce; (3) defendant’s use of its mark began after the plaintiff’s mark became famous;
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`and (4) defendant’s use of its mark is likely to cause dilution by blurring or by tarnishment. Coach Servs.,
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`Inc. v. Triumph Learning LLC, 101 USPQ2d 1713, 1723-24 (Fed. Cir. 2012). Here, the record shows that
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`Jockey has met its burden or, at worst, that there remains a genuine dispute as to the fame of Opposer’s
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`Jockey Figure Marks and the likelihood of dilution. Thus, Applicant’s MSJ must be denied.
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`In the case of a use-based application, like the one at issue here, an owner of an allegedly famous
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`mark “must establish that its mark became famous prior to any established, continuous use of the
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`defendant’s involved mark as a trademark or trade name.” Omega, 118 USPQ2d at 1295-96. Thus, to
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`prevail on its dilution claim, Opposer must establish that any of its Jockey Figure Marks “became famous
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`prior to Applicant’s first use in commerce” of the Disputed Mark. Id. at 1295. The record evidence
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`demonstrates that the Jockey Figure Marks were used in the United States for decades prior to the earliest
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`alleged first use date of the Disputed Mark by Applicant. Indeed, prior to Applicant’s earliest alleged first
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`use date in 2006, Opposer had generated substantial sales of Opposer’s Products and expended substantial
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`sums in advertising and promotional expenditures, further increasing consumer recognition of the Jockey
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`Figure Marks. Putlak Dec., ¶25, 28; Arbas Dec., ¶4-5, 7. Ex. B. Prior to Applicant’s alleged first use date,
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`Opposer’s Products that were promoted and sold in connection with the Jockey Figure Marks received
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`widespread media attention, Opposer promoted and sold a wide variety of goods branded with the Jockey
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`Figure Marks nationwide, and the Jockey Figure Marks had been recognized as a famous and well-known
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`brand by the media and this Board. Putlak Dec., ¶29; Jockey, 3 USPQ2d at 1611-12.
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`This evidence of fame is commensurate with the evidence that has supported findings of fame for
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`purposes of dilution in cases decided by the Board. See, e.g., N.Y. Yankees P’ship v. IET Prods. & Servs.,
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`Inc., 114 USPQ2d 1497 (TTAB 2015) (New York Yankees logo famous for dilution purposes where
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`9
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`there was “substantial evidence relating to the . . . duration, extent, and geographic reach of advertising
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`and publicity of the mark, and the amount, volume and geographic extent of sales and goods or services
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`offered under the mark”); Nike, Inc. v. Maher, 100 USPQ2d 1018 (TTAB 2011) (JUST DO IT mark
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`famous where there was extensive third party recognition of the mark, significant advertising spend, and
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`sales of a variety of products).
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`Applicant’s argument that the 1960 Half Boy has acquired only “niche fame,” which is
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`insufficient to support fame for dilution purposes, is misguided. MSJ at 5. Applicant alleges that
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`Opposer’s deletion of particular goods from its trademark registration for the 1960 Half Boy demonstrates
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`that any fame of the mark is only with respect to the “niche” of men’s and boys’ underwear. Id. This
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`argument completely misstates the concept of “niche fame” in the dilution analysis. As is evident from
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`the cases cited by Applicant, “niche fame” does not stand for the proposition that fame is not possible
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`when a mark is used only for particular categories of goods, but rather that fame only within “a specific
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`geographic area or among a particular subset of consumers” is not sufficient for a dilution claim. Dille
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`Family Tr. v. Nowlan Family Tr., 276 F.Supp.3d 412, 435 (E.D. Pa. 2017); Water Pik, Inc. v. Med-
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`Systems, Inc., 848 F. Supp. 2d 1262, 1282 (D. Colo. 2012) (niche fame in sinus irrigation market not
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`sufficient). Indeed the legal concept of dilution recognizes that the strength of a famous mark may be
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`diluted by use of a similar mark for goods that are not competitive with the trademark owner’s goods. 4
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`McCarthy on Trademarks & Unfair Competition § 24:69 (5th ed.) (hereinafter, “McCarthy”).
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`Here, the record demonstrates that the Jockey Figure Marks are “widely recognized by the
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`general consuming public of the United States as a designation of source of the goods or services of the
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`mark’s owner,” and are therefore famous as a matter of law. 15 U.S.C. § 1125(c)(2)(A). See Putlak Dec.,
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`¶2-3. A comparison of the Disputed Mark with the 1940 Full Boy, 1960 Full Boy and 2011 Full Boy
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`marks (see infra, p. 12) demonstrates that it is so similar that unauthorized use by Applicant is likely to
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`dilute the strength of Opposer’s Jockey Figure Marks. In fact, Applicant admits that the 2011 Full Boy
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`makes the same commercial impression as the Disputed Mark. MSJ at 9. At the very least, there remain
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`genuine issues of material fact as to Opposer’s dilution claim.
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`10
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`B.
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`Opposer Should be Granted Summary Judgment a Matter of Law
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`The uncontroverted facts in the record establish that Opposer is entitled to summary judgment
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`because there is a likelihood that Applicant’s use and registration of the Disputed Mark is likely to cause
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`consumer confusion given Opposer’s prior use and registration of the Jockey Figure Marks.
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`1. Opposer Has Standing and Priority as a Matter of Law
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`Opposer unquestionably has standing in this proceeding because it has a “real interest” in the
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`proceeding and a “reasonable basis” for its belief that it would suffer damage if the Disputed Mark is
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`registered. Opposer has asserted, inter alia, likelihood of confusion with its well-pleaded registered
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`Jockey Figure Marks and submitted printouts from the USPTO’s TSDR electronic database for its
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`pleaded registrations. See Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1844 (Fed.
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`Cir. 2000); Putlak Dec. ¶23, Ex. Q.
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`It is undisputed that Opposer owns valid and subsisting registrations for the 1960 Jockey Boy
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`Designs, 2011 Jockey Boy Designs, and the Jockey Seal (collectively, “Opposer’s Registered Marks”).
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`Opposer has pled and proven its ownership of these valid and subsisting trademark registrations for
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`purposes of this cross-motion for summary judgment via submission of printouts from the TSDR
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`database. Id. Applicant has pled no counterclaims to cancel these well-pled registrations,6 which each
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`unquestionably have a priority date that precedes the date that Applicant filed his Application. Under the
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`circumstances, priority is not at issue for the pled claims and Opposer has priority as a matter of law. 37
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`CFR § 2.106(3); Fort James Operating Co. v. Royal Paper Converting, Inc., 83 USPQ2d 1624, 1626 n.1
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`(TTAB 2007); L’Oreal S.A. v. Marcon, 102 USPQ2d 1434, 1436 n.7 (TTAB 2012).
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`2. The Record Demonstrates a Likelihood of Confusion as a Matter of Law
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`As priority is not at issue with respect to the well pled claims in the record, the Board need only
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`determine whether the Disputed Mark so resembles any of Opposer’s registered Jockey Figure Marks that
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`6 For the reasons set forth in Opposer’s opposition to Applicant’s Motion to Amend, Applicant’s motion to add
`counterclaims should be denied as futile and prejudicial. Dkt. 31, at 6-19.
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`it is likely to cause confusion as to the source of those goods, or imply an affiliation with Opposer.7 A
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`comparison of the Disputed Mark with Opposer’s Registered Marks demonstrates that they are
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`confusingly similar in overall appearance and commercial impression. Den-Mat Corp. v. Block Drug Co.,
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`Inc., 17 USPQ2d 1318, 1318-19 (Fed. Cir. 1990). The Disputed Mark is strikingly similar in appearance
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`and commercial impression to Opposer’s 1960 Full Boy and 2011 Full Boy, which are the subject of well
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`pled and valid registrations owned by Opposer, as well as the original unregistered 1940 Full Boy (from
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`which these marks are derived, and which remains associated with the JOCKEY brand):
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`Disputed Mark
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`1940 Full Boy
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`1960 Full Boy
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`2011 Full Boy
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`This is particularly true when the marks are considered, as they must be, “in their entireties, and that the
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`commercial impression is derived from the mark as a whole, and not from their elements separated and
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`considered in detail.” H. Sichel Sohne, GmbH v. Michel Monzain Selected Wines, Inc., 202 USPQ 62, 65
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`(TTAB 1979). “[M]arks must be considered in light of the fallibility of memory and not on the basis of
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`side-by-side comparison.” In re St. Helena Hosp., 774 F.3d 747, 751 (Fed. Cir. 2014). See also Coach
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`Servs., 668 F.3d at 1368. Applicant seeks to register the Disputed Mark for apparel items which are the
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`same or related to the apparel items that are the subject of Opposer’s Registered Marks, including the
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`registrations for the 1960 Full Boy and 2011 Full Boy. The goods need not be identical or even
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`7 The test to determine whether a likelihood of confusion exists has been set forth in In re E.I. Du Pont, 177 USPQ
`563 (CCPA 1973). The Du Pont decision set forth thirteen factors to be considered when relevant. The factors most
`relevant to the Board’s determination in the instant case are: (i) the similarity or dissimilarity of the marks in their
`entireties as to appearance, sound, connotation and commercial impression; (ii) the similarity or dissimilarity and
`nature of the goods or services as described in an application or registration or in connection with which a prior
`mark is in use; (iii) the similarity or dissimilarity of established, likely-to-continue trade channels; (iv) the fame of
`the prior mark; (v) the variety of goods on which a mark is used or is not used; and (vi) other established facts
`probative of effect of use. Id. at 567. The Board need not consider each and every Du Pont factor. See Han Beauty,
`Inc. v. Alberto-Culver Co., 57 USPQ2d 1557, 1559 (Fed. Cir. 2001).
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`competitive to support a finding of likelihood of confusion. See In re Melville Corp., 18 USPQ2d 1386
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`(TTAB 1991). It is sufficient for a likelihood of confusion that goods are related in some manner. Id. See
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`also, e.g., In re Ithaca Indus., Inc., 230 USPQ 702 (TTAB 1986) (men’s and boys’ undergarments are
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`closely related to various clothing items). Neither the Application nor the registrations for Opposer’s
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`Registered Marks limit the channels of trade or customers. It must therefore be presumed that Applicant
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`and Opposer may provide their products or services to all types of consumers without limitation,
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`particularly where the goods are in the same category. See Den-Mat, 17 USPQ at 1319-20; CBS, Inc. v.
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`Morrow, 218 USPQ 198, 199 (Fed. Cir. 1983). Accordingly, the channels of trade should be considered
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`the same for purposes of the likelihood of confusion analysis.
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`In addition to the foregoing factors, a bad faith adoption of senior user’s trademark “with the
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`intention of capitalizing on plaintiff’s reputation and goodwill” “raises the presumption of likelihood of
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`confusion.” Gucci Am. v. Gucci, 2009 WL 8531026, at *19 (SDNY 2009). “Bad faith can be
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`demonstrated through a showing of actual or constructive knowledge of the prior user’s mark.” Id.
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`Opposer’s registrations for the Jockey Figure Marks on the Principal Register constitute constructive
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`notice to Applicant long prior to Applicant’s alleged adoption of the Disputed Mark. 15 U.S.C. § 1072.
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`Moreover, given the fame and extensive use of the Jockey Figure Marks in the United States, it is simply
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`not credible that Applicant was not aware of the Jockey Figure Marks prior to the time that Jockey first
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`opposed his use of a prior jockey figure mark.
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`In fact, Applicant concedes that Jockey’s 2011 Full Boy, which is the legal equivalent of the 1960
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`Full Boy and is the subject of a registration that cannot be cancelled on the basis of priority and likelihood
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`of confusion (see infra, p. 14), creates the same commercial impression when applied to clothing. MSJ at
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`9. For all of the foregoing reasons, Opposer is entitled to judgment as a matter of law that the Disputed
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`Mark is likely to cause confusion with one or m