IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
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`CERTIFICATE OF MAILING:
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`EV 203567731 US
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`“Express Mail" Mailing Llahelzvo.
`Date Of Deposit:
`O
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`I hereby certify that this paper or fee is being deposited with
`the United States Postal Service “Express Mail Post Office
`to Addressee" service under 37 CFR 1.10 on the date
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`indicated above and is addressed to the Trademark
`'£'g22al):n§i5Agpeal Board, 2900 Crystal Drive, Arlington, VA
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`Typed Name:
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`ffrg J. Wiseman
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`Signature:
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`MR/\/\/\/\./\/\-/%%é MI
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`Cancellation No. 92042087
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`)
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`02-04-2004
`U.S. Patent & TMOfcITM Mail Rcpt D1. #22
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`In the rnatter of;
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`Trademark Registration No_ 2656974
`Registered: December 3’ 2002
`For: TIMS OUTDOOR
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`Cancellation No. 92042087
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`THE TIMBERLAND COMPANY, INC.,
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`Petitioner,
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`V.
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`THE SHOE SHOW, INC.,
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`Registrant.
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`BOX TTAB NO FEE
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`Trademark Trial and Appeal Board
`Assistant Commissioner for Trademarks
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`2900 Crystal Drive
`Arlington, VA 22202-3 5 13
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`REGISTRANT’S MEMORANDUM IN OPPOSITION TO PETITIONER’S
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`MOTION FOR SUMMARY JUDGMENT
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`NOW COMES Registrant The Shoe Show, Inc. (“Registrant”) and respectfiilly
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`submits the following Memorandum in Opposition to Petitioner’s Motion for Summary
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`Judgment.
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`PROCEDURAL AND FACTUAL BACKROUND
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`On June 8, 2000, Registrant applied for registration of the TIMS OUTDOOR
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`trademark with the United States Patent and Trademark Office (“PTO”). On June 12,
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`2001, the TIMS OUTDOOR mark was published for opposition. §;c_e PTO Registration
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`No. 2,656,974.‘ No opposition to the registration of the TIMS OUTDOOR mark was
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`filed with the PTO and on December 3, 2002, TIMS OUTDOOR was registered by the
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`PTO on the Principal Register. E.
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`On June 16, 2003, Petitioner instituted this Petition for Cancellation of the TIMS
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`OUTDOOR mark. E. On December 31, 2003, Petitioner filed its Motion for Summary
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`Judgment.
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`STANDARD OF REVIEW
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`The standard for granting summary judgment is well settled in Trademark Trial
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`and Appeal Board (“TTAB”) inter partes proceedings. The Federal Rules of Civil
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`Procedure generally govern inter partes proceedings before the TTAB. 37 C.F.R. §
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`2.1 16(a). Thus, the TTAB may grant summary judgment only if “the pleadings,
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`depositions, answers to interrogatories, and admissions on file, together with the
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`affidavits, if any, show that there is no genuine issue as to any material fact and that the
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`moving party is entitled to a judgment as a matter of law.’’ Fed. R. Civ. P. 56(c). “In
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`order to establish a factual dispute that is genuine, the nonmoving party ‘need only
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`present evidence from which a jury might return a verdict in [its] favor.”’ Olde Tme
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`Foods, Inc. v. Roundy’s Inc., 961 F.2d 200, 202, 22 U.S.P.Q.2d 1542 (Fed. Cir. 1992)
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`(quoting Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 257, 91 L. Ed. 202, 106 S. Ct.
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`2505 (1986)). “Since opposing factual inferences may arise from the same set of
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`1 Registration no. 2,656,974, the registration for the TIMS OUTDOOR mark, is automatically of record in
`this proceeding without any action by either party. 37 C.F.R. § 2. l22(a).
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`undisputed subsidiary facts, the [TTAB] must draw all reasonable inferences in favor of
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`the nonmovant.
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`Therefore, there need not be a conflict in the evidence of the
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`underlying facts to preclude summary judgment.” Id. (citations omitted).
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`ARGUMENT
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`A.
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`Petitioner Is Not Entitled To Summary Judgment Because There Are
`Genuine Issues Of Material Fact As To Whether Petitioner Has Trademark
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`Rights In The Word “Tims.”
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`Petitioner seeks, pursuant to Section 2(d) of the Lanharn Act, to cancel
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`Registrant’s TIMS OUTDOOR mark on the grounds that the mark is likely to cause
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`C01’1fi1Sl0I1 with trademark rights of the Petitioner. Particularly, Petitioner claims
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`trademark rights in the word “Tims” and bases its summary judgment motion on the
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`claim that, by virtue of a segment of the consuming public’s use of the word “Tims” as an
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`abbreviation for the TIMBERLAND mark, Petitioner (1) has trademark rights in the
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`word “Tims” and (2) Registrant’s TIMS OUTDOOR mark is confusingly similar thereto.
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`“In an opposition founded on section 2(d) [of the Lanham Act], the opposer must
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`establish its Own proprietary rights in the same or a confusingly similar designation in
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`order to defeat the application.” T.A.B. Systems v. Pactel Teletrac, 77 F.3d 1372, 1375,
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`37 USPQ2s 1879 (Fed. Cir. 1996). Furthermore, “[w]hen a nickname has attained
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`secondary meaning so that the purchasing public associates it with the source of the
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`product or with the business, and its use by another would be likely to cause confiision, it
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`becomes protectible under the law of unfair competition in the same manner as a
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`trademark.” JEROME GILSON, TRADEMARK PROTECTION AND PRACTICE (hereinafter
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`“Gi1son”) § 2.06 (2003) (emphasis added).
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`Because the Petitioner is asserting trademark rights in the word “Tims,” the
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`Petitioner has the burden of proving that it has proprietary rights in the word, or put
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`another way, that the word has acquired secondary meaning. , L1 § 2.09[2]
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`(2003) (“The burden of proving secondary meaning is on the party asserting it, whether it
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`is the plaintiff in an infringement action or the applicant for federal trademark
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`registration”). Additionally, “[p]roof of secondary meaning is often difficult, inasmuch
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`as there are no precise guidelines and no single factor which is determinative. Each case
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`is decided on the facts relating to the impact the term has had on the public
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`consciousness.” Gilson § 2.09[5] (2003).
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`Sales and advertising figures may generally support a showing of secondary
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`meaning. See, e.g., Gilson § 2.09[5] (2003) (“Substantial sales volume of the product
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`measure the effort to create secondary meaning, but do not determine its success.”).
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`While the Sales and advertising figures cited by Petitioner may be relevant to whether the
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`TIMBERLAND mark has secondary meaning, which is not at issue in these proceedings,
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`they are not relevant to whether the word “Tims” has acquired secondary meaning.
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`Petitioner does not use, nor has it ever used, the word “Tims” as a mark. (Affidavit of
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`Jay Marming, hereinafter “Marming Aff.” 1] 9, attached hereto as Exhibit A) Therefore,
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`not a single product sold nor a single advertisement by Petitioner has ever contained the
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`word “Tims” as a trademark.
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`So what does the Petitioner rely on as its sole support for its claim that there is no
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`material issue of fact whether the word “Tims,” in the minds of the relevant consuming
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`public, has acquired distinctiveness and become associated with the Petitioner’s
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`products? Petitioner merely presents numerous “Intemet documents and newspaper and
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`magazine articles” in which the word “Tims” is used as a reference to Petitioner’s
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`products. (Petitioner’s Brief in Support of its Motion for Summary Judgment, hereinafter
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`“Pet. Brief’ pp.3-9) The evidence presented by Petitioner at best demonstrates that some
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`portion of the public may associate the word “Tims” with the TIMBERLAND mark, but
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`hardly qualifies as the type of unequivocal evidence necessary to entitle Petitioner to
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`summary judgment.
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`Whether a mark has acquired secondary meaning is a question of fact. flfi
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`Malcolm Nicol & Co. v. Witco. Corp, 881 F.2d 1063 (Fed. Cir. 1989). Several factors
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`cut against Petitioner’s claim of acquired distinctiveness in the word “Tims” and which
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`raise genuine and material issues of fact.
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`1.
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`There is not adequate proofofan association in the mind ofthe relevant
`consuming public between the word “Tims ” and Petitioner ’s products to
`justifii summaryjudgmentfor Petitioner.
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`Petitioner cites National Cable Television Ass’n Inc. v. American Cinema
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`Editors Inc., 937 F.2d 1572, 1578, 19 USPQ2d 1424 (Fed. Cir. 1991) as authority for the
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`proposition that the public’s use of the word “Tims” as an abbreviation for Petitioner’s
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`products confers upon Petitioner trademark rights in the word “Tims.” However, a
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`cancellation proceeding based on this type of “analogous use” can only succeed “where
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`the analogous use is of such a nature and extent as to create public identification of the
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`target term [“Tims” in this case] with the opposer’s product or service.” T.A.B. Systems,
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`77 F.3d at 1375 (citing National Cable Television Ass’n Inc., 937 F.3d at 1578).
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`Furthermore, “activities claimed to constitute analogous use must have substantial impact
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`on the purchasing public
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`and [must be] ‘of such a nature and extent that the tenn or
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`slogan has become popularized in the public mind.”’ E. at 1376 (quoting Malcom Nicol
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`& Co., 881 F.2d at 1065). The Court in T.A.B. Systems recognized the different
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`language for what apparently is the same query, and stated:
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`[I]n National Cable Television we spoke of ‘prior public identification,’
`and in Malcolm Nicol & Co. ‘creating in the minds of people the
`necessary association.’
`Regardless of the particular verbal formulation,
`however, it is clear that the test is one and the same, and is directed at the
`actual perception of the potential customers of the service, not some
`hypothetical person or the intent of the marketer. Thus, under any and all
`of the articulations of the test, it is actual public perception that is
`required.
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`The T.A.B. Systems court filrther elaborated on this test:
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`Nor can there be any doubt that purchaser perception must involve more
`than an insubstantial number ofpotential customers. ... [W]hat is required
`is ‘public exposure of a mark that would be expected to have any
`significant impact on the purchasing public.
`That is not to say that a
`fixed percentage, like 20%, much less 51%, of the potential customers
`must have formed in their mind the required ‘prior public identification.’
`[I]t simply requires ‘more than a negligible portion of the relevant
`market.’
`Thus, the user must prove that the ‘necessary association’
`was created among more than an insubstantial number of potential
`customers. Otherwise, he cannot show ‘significant impact on the
`purchasing public.’
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`E. at 1377 (citations omitted) (emphasis added).
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`This test for “secondary meaning” or “necessary association,” or whatever label is
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`given, is broken down into two key elements. First, Petitioner must show that the
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`“necessary association” between the word “Tims” and Petitioner’s products is made by
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`the consuming public. See id. Second, there must be “more than an insubstantial number
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`2 While the Gilson treatise articulated this showing as one of “secondary meaning,” the query is essentially
`the same — the trademark owner claiming that the consuming public is likely to be confused by the other
`party’s use of a word which has been adapted by the public as a nickname for the trademark owner’s mark,
`must show that enough consumers actually associate the nickname with the trademark owner’s products to
`confer upon it trademark rights over that word. Gilson, § 2.06 (2003) (“When a nickname has attained
`secondary meaning so that the purchasing public associates it with the source of the product or with the
`business, and its use by another would be likely to cause confusion, it becomes protectible under the law of
`unfair competition in the same manner as a trademark”) (emphasis added).
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`of potential customers” making this “association.” See id. Otherwise, Petitioner will not
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`be able to demonstrate the requisite “significant impact on the purchasing public.” fig
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`Q. As demonstrated below, there are material issues of fact as to both of these elements.
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`(a).
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`Petitioner ’s profleredproofleaves open material issues offact
`whether an insubstantial number ofpotential customersfrom the
`relevant consuming public has made the necessary association
`between the word “Tims ” and Petitioner ’s products.
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`Petitioner presents several intemet site references and magazine and newspaper
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`articles to assert that there are no genuine issues of material fact whether the “necessary
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`association” between the word “Tims” and the Petitioner’s products is made among
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`“more than an insubstantial number of potential customers.” However, this proffered
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`evidence leaves open an issue of fact whether “more than an insubstantial number of
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`potential customers” make this association of the word “Tims” with Petitioner’s products.
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`Petitioner’s own brief states that since 1973 (or 1993)3, it has sold more than nine billion
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`dollars worth of footwear and apparel bearing the TIMBERLAND mark. (Compl. p. 19 {l
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`2) Based on this huge volume of sales, it is logical to presume Petitioner has a huge
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`consumer base. Therefore, considering Petitioner’s huge consumer base, this proffered
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`evidence, which amounts to “direct consumer testimony” and, as explained in the Gilson
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`treatise, has several problems:
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`[T]his type of proof has a number of practical problems. If the purchasing
`public numbers in the thousands or millions, it is physically impossible for
`more than an extremely small percentage to testify. Those who can are
`ordinarily selected carefully by the opposing parties, and they are unlikely
`to be representative of the entire purchasing public.
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`Gilson § 2.o9[5] (2003).
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`3 However, the subheading to number 5 on p. 19 in Petitioner’s Brief states that Petitioner made over
`“$9,000,000 in worldwide sales since 1993, ....” Registrant is without sufficient information to know
`whether 1993 or 1973 is correct.
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`Therefore, Petitioner’s handful of articles and intemet references only stand as
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`proof that some portion of this concededly huge consumer base makes the “necessary
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`association” of “Tims” with Petitioner’s products. A close examination of the evidence
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`proffered by Petitioner reveals that this association of “Tims” with the Petitioner is only
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`made among a small cross-section of this consumer base. According to the references
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`cited by Petitioner, this “association” is predominantly made among some members of
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`the teenage urban-hip-hop consumer base. (Sg,£g,, TIMB00053-TIMBO0056, “Get the
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`look: Tims (Timberland boots for the un hip-hop initiated.)”; TIMBOO132-TIMB001333,
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`“Even his ‘Tims,’ or Timberland boots, were not regulation rap star because they were far
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`from mint condition. But so what?”; TIMB00l45-TIMBOOI48, “’Tims’ have ‘mad
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`flavor.’”; TIMBO0228-TIMBOO23 0, “. .. Give me the mike and some hype and my
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`Timber boots[;] It’s a part of my ghetto roots[;] Rolling hard with my Timberlands.”).
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`What the Petitioner fails to mention is that its products are not marketed solely, or
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`even primarily, to urban hip-hop teenagers, but are actually a genre of “work boots” and
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`“hiking boots” marketed for being durable and rugged and for people “who work outside
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`and for outdoor sportsmen.” (Manning Aff. Dec]. 1] 8). Petitioner’s own website,
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`timberland. com, reveals no attempt by Petitioner to specifically target this cross-section
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`of its huge consumer base.
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`(_S;c_e printout from Petitioner’s website, timberland. com,
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`attached hereto as Exhibit B) It is logical to presume that the number of consumers who
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`are actually targeted by Petitioner’s marketing, the consumer looking for rugged work or
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`hiking boots, would make up the larger portion of the consumer base. This at least raises
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`a question of fact as to whether this urban hip-hop teenage cross-section of the consumer
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`base is “more than an insubstantial number of potential customers,” to justify Petitioner’s
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`claim to trademark rights in the word “Tims.”
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`Furthermore, Petitioner presents no consumer survey, an evidentiary device
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`universally accepted as the better method to demonstrate secondary meaning. See, .e.g.,
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`Gilson, § 2.09[5] (2003) (“A properly conducted survey of the relevant purchasing public
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`may be the best direct evidence on the question of secondary meaning”). The Federal
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`Circuit routinely recognizes the necessity of survey evidence to prove secondary
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`meaning. , Colony Foods, Inc. v. Sagemark, Ltd., 222 U.S.P.Q. 185, 186 (Fed.
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`Cir. 1984) (citing the lack of a consumer survey as a key reason not to give trademark
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`rights to a claimed family of HOBO marks and affirming a TTAB decision to dismiss a
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`cancellation petition).
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`Therefore, there are genuine issues of material fact whether “more than an
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`insubstantial number of potential customers” associate the word “Tims” with Petitioner’s
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`products.
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`(b).
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`Even ifthere is a segment ofthe consuming public that abbreviates the
`TIMBERLAND mark, that consuming public abbreviates the
`TIMBERLAND mark to “Timbs ” as well as “Tims, ” further lessening the
`number ofconsumers that actually identifiz the word “Tims ” with the
`TIMBERLAND mark.
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`Another factor that cuts against Petitioner’s argument that it is entitled to .
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`trademark rights in the word “Tims” by virtue of the public’s claimed use of the word as
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`an abbreviation for Petitioner’s products, is the fact that this same cross section of the
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`consumer base which Petitioner relies upon, the urban hip-hop teenager, may actually
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`abbreviate Petitioner’s mark to “Timbs” rather than “Tims.” Representative documents
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`which demonstrate this use are attached hereto as Exhibit C.4 The shear volume of
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`documents exhibiting this use and pagination length limitss preclude a substantive
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`discussion of each and every document which supports this use by the public of the word
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`“Timbs.” However, representative samples attached as Exhibit C include several articles6
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`from in which the word “Timbs” is used as a reference to Petitioner’s products, gig,
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`Eva Friede, Kids ’ Styles that Make the Grade, THE VANCOUVER SUN, Sept. 2, 2003
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`(“Nicole, in a tiny fluttery top,
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`and pink ‘Timbs,’ — Timberland boots ....”); Erin
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`Chan, Slim Shady, Watch It: Asian Rappers Got It, NEW YORK TIMES, Aug. 12, 2003
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`(late ed.) (“’Check your Timbs ...’ referring to Timberland shoes ....”); A. Tacuma
`Reeback, School for the Uncool, THE TENNESSEAN, July 3, 2003 (“[Y]ou’1l trade your
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`penny loafers for some Timbs (Timberland shoes) ....”), as well as several intemet
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`documents which demonstrate this use by a portion of the public. Samples of these
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`intemet documents include a definition of “timbs” from urbandicti0nary.c0m defining
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`“timbs” as the “shortened version of the shoe, timberland,” and several websites listing
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`“Timbs” for sale as a reference to Petitioner’s products.
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`The use by this portion of the consuming public is relevant for two reasons. First,
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`this cuts into the number of “potential customers” that Petitioner claims make the
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`“necessary association” of the word “Tims” with Petitioner’s products. Even if there is a
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`cross section of Petitioner’s consumer base that abbreviates the TIMBERLAND mark,
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`the actual number that use “Tims” is further lessened by the fact that many may actually
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`4 These referenced documents include intemet documents and articles from periodicals printed fiom
`NEXIS. Pursuant to TBMP § 528.06(e), the intemet documents have been authenticated by the Affidavit
`of Lee Elliott Cames, attached hereto as Exhibit E. Also pursuant to TBMP § 528.05(e), the printouts fiom
`the periodicals do not need to be authenticated.
`5 37 C.F.F. § 2.127(a) (limiting brief length to twenty five pages).
`6 These documents, printed after a LEXISNEXIS search, do not need authenticated by affidavit like the
`intemet documents. SQ TBMP § 528.06(e).
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`use the word “Timbs” rather than “Tims,” The less number of “potential customers” who
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`actually make this “necessary association,” the less chance that a “significant impact is
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`made on the purchasing public” regarding the word “Tims,” and the less likely it is that
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`Petitioner can successfully claim trademark rights in the word “Tims.” See T.A.B.
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`Systems, 77 F.3d at 1377 (citing National Cable Television Ass’n Inc., 937 F.3d at
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`1 578).
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`Second, this is relevant because this cuts into whether the requisite “necessary
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`association” is even made. Petitioner claims that this cross section of its consumer base
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`uses “Tims” to refer to its products, but if a portion of this cross section actually uses
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`“Timbs” rather than “Tims,” or if the cross-section uses the words interchangeably, the
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`necessary association between the word “Tims” and Petitioner’s products is never made.
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`Therefore, the materials cited which demonstrate some members of this cross section of
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`Petitioner’s consumer base use “Timbs” as an abbreviation to the TIMBERLAND mark
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`demonstrates that there is a material issue of fact whether the necessary association is
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`even made between the “Tims” word and Petitioner’s products. These materials further
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`demonstrate that there is a material issue of fact regarding whether “more than an
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`insubstantial number of potential customers” make this “necessary association.”
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`(c).
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`There is evidence that consumers use the word “Tims ” as a generic
`reference to boots, and not specifically as a reference to Petitioner ’s
`products.
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`Another factor that mitigates against Petitioner’s assumption that it is entitled to
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`trademark rights in the word “Tims,” and which also raises a genuine issue of material
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`fact, is that “Tims” and “Timbs” may actually be used by this teenage urban hip-hop
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`consumer base cross section as a generic reference to boots in general — not just to
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`Petitioner’s products. Representative documents which demonstrate this use are attached
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`hereto as Exhibit D.7 These samples include listings for boots referred to as “Manolo
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`Tims,” listings for TIMGIRL shoes and boots, a listing for “Sexy Stiletto Timb Boots,”
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`and a listing for “DC Shoes manteca timbs color.” None of these boots or shoes are
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`Petitioner’s products, yet all are referenced as “tims” or “timbs.” E Exhibit D.
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`Thus, Petitioner claims that there are no material issues of fact whether “more
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`than an insubstantial number of potential customers” make the “necessary association”
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`between the word “Tims” and Petitioner’s products, despite the fact that: (1) Petitioner
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`only provides a handful of carefully selected intemet references as proof; (2) these
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`references are specific to a very small cross-section of the relevant consuming public (a
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`group to which Petitioner does not even specifically market its products); (3) Petitioner
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`cites no consumer survey; (4) a portion of this cited cross section of Petitioner’s
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`consuming public may actually use “Timbs” rather than “Tims,” and (5) a portion of this
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`cited cross section of Petitioner’s consuming public may actually use “Tims” or “Timbs”
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`as a generic reference to boots in general — not just as a reference to Petitioner’s products.
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`Therefore, there are several material issues of fact as to both elements of the test
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`Petitioner must pass in order to obtain trademark rights in the word “Tims.” Particularly,
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`there are material issues of fact whether the “necessary association” is made between the
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`word “Tims” and Petitoner’s products and whether “more than an insubstantial number of
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`potential customers” make this “necessary association.” Because there are material
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`issues of fact regarding both prongs of this test, Petitioner is not entitled to summary
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`judgment.
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`7 These referenced documents are intemet documents. Pursuant to TBMP § 528.06(e), the intemet
`documents have been authenticated by the Affidavit of Lee Elliott Cames, attached hereto as Exhibit E.
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`B.
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`Petitioner Is Not Entitled To Summary Judgment Because There Are
`Genuine Issues Of Material Facts Whether There Is A Likelihood Of
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`Confusion Between Petitioner’s TIMBERLAND Mark and Registrant’s
`TIMS OUTDOOR Mark.
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`In order to obtain summary judgment for a likelihood of confusion claim,
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`Petitioner must first show that it has trademark rights in the word “Tims” and that there
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`are no material issues of fact as to this requirement. Presuming that Petitioner can make
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`such a showing, which it cannot, Petitioner is still not entitled to summary judgment
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`because there are material issues of fact whether there is a likelihood of confusion
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`between the “Tims” word and Registrant’s TIMS OUTDOOR mark.
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`To defeat a summary judgment motion, the issue must be a genuine issue of
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`“material fact.” See id. What is “material” is determined by applicable substantive law.
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`Sg Anderson v. Liberty Lobby, Inc., 477 U.S. 424, 257, 91 L. Ed.2d 202, 106 S. Ct.
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`2505 (1986). The TTAB generally considers the thirteen enumerated factors from In re
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`E.I. duPont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973) as the
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`benchmark factors to consider in a “likelihood of confusion” analysis. Therefore, in a
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`summary judgment analysis as to whether there is a likelihood of confusion between two
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`marks, all thirteen of these factors are considered “material.” E Olde Tyme Foods, Inc.,
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`961 F.2d at 202. More importantly, any single factor may be dispositive in a “likelihood
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`of confusion” analysis. S§,£.g,, Kellogg Co. v. Pack’em Enterprises, Inc., 951 F.2d
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`330, 333, 21 USPQ 2d 1142 (Fed. Cir. 1991) (“We know ofno reason why, in a
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`particular case, a single DuPont factor may not be dispositive”). Therefore, because any
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`single DuPont factor can be dispositive, Registrant need only show one DuPont factor in
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`which there is a genuine issue of fact to defeat the Petitioner’s motion for summary
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`judgment. See id. Not only is there is a single DuPont factor in which there is a genuine
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`issue of fact which could support a verdict in Registrant’s favor, there are actually six
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`such DuPont factors.
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`1.
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`There is a genuine issue ofmaterialfact regarding whether the word
`“Tims, ” as a mark, is similar in appearance, sound, connotation and
`commercial impression.
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`The first D_11Pgt factor that should be considered in a likelihood OfCOl’lf11Sl0I‘l
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`analysis is the “similarity or dissimilarity of the marks in their entireties as to appearance,
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`sound, connotation and commercial impression.” In re E.I. duPont de Nemours & Co.,
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`476 F.2d at 1361. There is a genuine issue of material fact as to whether Registrant’s
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`mark, TIMS OUTDOOR, is so “similar in appearance, sound, connotation and
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`commercial impression” as to cause a likelihood of C0nfuSl01'l with the word “Tims.”
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`This is considered an important grit factor in the likelihood of confusion
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`analysis and the Federal Circuit has actually granted summary judgment against an
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`opposer based on this factor alone. Kellogg Co. v. Pack’em Enterprises, Inc., 951 F.2d
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`330, 21 USPQ2d 1142 (Fed. Cir. 1991). In Kellog Co. V. Pack’em Enteggrises, Inc., the
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`applicant sought to register the mark FROOTEE ICE and the mark was opposed on the
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`grounds that it was confusingly similar to the opposer’s FROOT LOOPS mark. E. The
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`TTAB granted summary judgment for the applicant based on this first lint factor
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`alone, and the Federal Circuit affirrned.
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`I_d.
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`For purposes of determining likelihood of confusion, trademarks must be
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`compared in their entireties and not dissected into their component parts. , Ini
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`Bed & Breakfast Registg, 791 F.2d 157, 158, 229 U.S.P.Q. 818, 819 (Fed. Cir. 1986)
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`(“[M]arks must be considered in their entireties.”). However, Petitioner’s likelihood of
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`confusion argument completely ignores this long held rule and asserts that there is no
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`issue of material fact because Registrant’s TIMS OUTDOOR mark contains the word
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`“Tims.” In other words, Petitioner asserts that the two marks are confusingly similar
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`after comparison of a component part of Registrant’s mark, the TIMS part, with
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`Petitioner’s claimed mark, “Tims.” Petitioner hopes that the TTAB will ignore the fact
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`that Registrant’s mark is TIMS OUTDOOR and that TIMS is only a “component part.”
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`In fact, Petitioner’s Brief does not cite a single case which would allow summary
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`judgment on this basis.
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`To sidestep this hole in its argument, Petitioner downplays the presence of the
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`“OUTDOOR” part of the TIMS OUTDOOR mark by asserting that this part is “less
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`important in sound and appearance than the TIMS component.” (Pet. Brief. p. 18 1[ 1)
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`Petitioner’s attempt to circumvent the long held rule that the mark is to be considered in
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`its entirety by arguing that one component part is more important than another, does not
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`withstand summary judgment scrutiny and has been rejected by case law.
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`The Federal Circuit’s decision in Colony Foods, Inc. v. Sagemark, Ltd., 735 F. 2d
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`1336, 222 U.S.P.Q.2d 185 (Fed. Cir. 1984) is illustrative. In Colony Foods, Inc., the
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`petitioner sought to cancel the HUNGRY HOBO mark on the basis that it was
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`confusingly similar to petitioner’s HOBO JOE’S mark and its claimed family of HOBO
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`marks. 735 F.2d at 1338-39, 222 U.S.P.Q. at 186. The petitioner sought cancellation
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`because the two marks shared the word “hobo.” E. at 1338-39, 186. The Federal
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`Circuit, quoting from the TTAB decision, recognized that the HOBO component part of
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`the mark “p1ay[ed] an important and it may be said, a dominant role.” I41. Nonetheless,
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`the TTAB analyzed the two marks by comparing them in their “entireties” and stated,
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`“resolution of the matter hinges on what, if any, distinction is afforded by the additional
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`matter found in each mark.” Iii. The Federal Circuit affirrned the TTAB’s decision to
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`dismiss the cancellation petition on the grounds that the marks were not confiisingly
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`similar. kl. at 1340, 187.
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`Petitioner would have this Board skip the important step of considering the marks
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`in their “entireties” and find as a matter of law that the TIMS OUTDOOR mark is
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`confusingly similar to Petitioner’s alleged trademark rights in the word “Tims” on the
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`basis of the similarity of only a portion of the mark. Petitioner’s argument regarding the
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`importance of the OUTDOOR portion of Registrant’s mark is not supported by any
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`evidence and amounts to “speculative assumption, an inadequate basis for the legal
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`conclusion” sought by the Petitioner. In re Bed & Breakfast Registg, 229 U.S.P.Q. 818,
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`820 (Fed. Cir. 1986).
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`Therefore, Petitioner has failed to demonstrate that there is no genuine issue of
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`material fact as to this first DuPont factor and thus, its summary judgment motion should
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`be denied.
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`2.
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`There is a genuine issue ofmaterialfact regarding whether consumers are
`likely to be confused between the TIMS OUTDOOR mark and Petitioner ’s
`products because Petitioner ’s products are expensive to purchase, and
`thus its consumers are likely to be more discriminating purchasers and to
`exercise more care in the purchasing decision.
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`As the Gilson treatise explains:
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`[W]here the cost of the defendant’s trademarked product is high, the
`courts assume that purchasers are likely to be more discriminating and
`source conscious than they otherwise might be. The assumption is that
`where a purchaser is buying an expensive product, he is likely to be
`deliberate in his product selection and therefore in his differentiation
`between trademarks. He is normally thought to take greater time in
`purchasing, to investigate all of the facts, to shop for competing products,
`and to spend his money only when he is convinced that a particular
`trademarked product is precisely what he wants. These purchasing habits,
`to be contrasted sharply with ‘impulse’ purchases made on the spur of the
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`moment, are generally thought to reduce the likelihood that the purchaser
`will be confused.
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`Gilson, § 5.08[3] (2003) (citing, inter alia, Weiss Associates Inc. v. HRL Associates
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`Inc., 902 F.2d 1546, 14 U.S.P.Q.2d 1840 (Fed. Cir. 1990)).
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`Products sold by Registrant under the TIMS OUTDOOR mark, which are outdoor
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`boots and sandals, sell “in a price range between $19.99 to $39.99 per pair.” (Marming
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`Aff. 1] 4) Products sold by Petitioner under its claimed trademark “Tims,” also outdoor
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`boots and sandals, sell “in a price range between $89.99 to $109.99 per pair.” (Marming
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`Aff. 1] 4) There can be no serious dispute that the purchasers of these items are
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`“discriminating purchasers.” Products in the price range of these outdoor boots and
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`sandals are generally not considered “impulse items.” , E § 5.08[3][a]-[b]
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`(2003) (citing cases in which “impulse items” are generally lower priced items such as
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`food products or magazines). In fact, many of the customers who come into Registrant’s
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`stores looking for one of the Petitioner’s products, already know exactly which Petitioner
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`product they are looking for. (Manning Aff. 1] 4) This is hardly an “impulse buyer.”
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`Therefore, because purchasers of Petitioner’s and Registrant’s products are
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`“discriminating purchasers” and are therefore less likely to be confused by trademarks
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`that may share common elements, ther