Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`
`ESTTA Tracking number:
`
`ESTTA852108
`
`Filing date:
`
`10/13/2017
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Proceeding
`
`92064597
`
`Party
`
`Correspondence
`Address
`
`Defendant
`Globe Runner LLC
`
`MICHAEL B BRESSMAN
`VANDERBILT LEGAL CLINIC
`131 21ST AVENUE SOUTH
`NASHVILLE, TN 37203
`UNITED STATES
`Email: trademarks@vanderbilt.edu
`
`Submission
`
`Motion for Summary Judgment
`
`Filer's Name
`
`Filer's email
`
`Signature
`
`Date
`
`Attachments
`
`Yes, the Filer previously made its initial disclosures pursuant to Trademark Rule
`2.120(a); OR the motion for summary judgment is based on claim or issue pre-
`clusion, or lack of jurisdiction.
`
`The deadline for pretrial disclosures for the first testimony period as originally set
`or reset: 11/02/2017
`
`Michael B. Bressman
`
`trademarks@vanderbilt.edu
`
`/Michael B. Bressman/
`
`10/13/2017
`
`Globe Runner Cross-Motion for Summary Judgment 10-13-17 Fi-
`nal.pdf(2860397 bytes )
`Globe Runner Memo re Summary Judgment 10-13-17 Final.pdf(2507902 bytes )
`Germaine Ross Declaration 10-12-17 Final.pdf(5554920 bytes )
`Ross Declaration Exhibit 1 final.pdf(1068331 bytes )
`Ross Declaration Exhibit 2 final.pdf(4303740 bytes )
`Ross Declaration Exhibit 3 final.pdf(2375634 bytes )
`Adam Bello Declaration 10-13-17 Final.pdf(2832875 bytes )
`Bello Declaration Exhibit 1 FINAL.pdf(2573165 bytes )
`Bello Declaration Exhibit 2 part 1 FINAL.pdf(4546683 bytes )
`Bello Declaration Exhibit 2 part 2 FINAL.pdf(3531365 bytes )
`Bello Declaration Exhibit 3 FINAL.pdf(3836417 bytes )
`
`

`

`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`GLOBE INTERNATIONAL NOMINEES PTY, LTD.
`
`Petitioner,
`
`V.
`GLOBE RUNNER LLC,
`Registrant/Respondent.
`
`)
`
`)
`3
`i
`i
`
`Cancellation No. 92064597
`Registration No. 4971328
`
`GLOBE RUNNER LLC’S CROSS-MOTION FOR SUMMARY JUDGMENT
`
`
`Pursuant to TBMP § 528 and Fed. R. Civ. Pro. 56, Registrant/Respondent Globe Runner
`
`LLC (“Globe Runner”) respectfully moves the Trademark Trial and Appeal Board (“Board”) to
`
`grant summary judgment in favor of Globe Runner in this proceeding. Globe Runner is filing a
`
`Memorandum in Opposition to Petitioner’s Motion for Summary Judgment and in Support of
`
`Globe Runner LLC’s Cross-Motion for Summary Judgment along With this motion.
`
`Additionally, Globe Runner is filing Declarations of Germaine Ross and Adam J. Bello in
`
`support of its motion.
`
`There are no genuine issues of material fact to prevent the Board from granting summary
`
`judgment. Globe Runner asserts that there is no likelihood of confilsion between its registered
`
`GLOBE RUNNER composite design mark, Registration No. 4971328 (“GLOBE RUNNER
`
`Mark”), and Globe International Nominees Pty Ltd’s (“Petitioner”) marks, Registration Nos.
`
`1991488, 2601308, 2801746, 3500812, 3744809, and 4110786 (“Petitioner’s Marks”). When
`
`viewed in its entirety, the GLOBE RUNNER Mark is distinct in appearance, sound, connotation,
`
`

`

`and commercial impression from Petitioner’s Marks. Additionally, Petitioner’s Marks are not
`
`commercially strong. Furthermore, there is no evidence of actual confusion between the marks.
`
`Globe Runner contends that Petitioner has failed to meet its burden of proof to cancel the
`
`GLOBE RUNNER Mark. Therefore, Globe Runner requests that
`
`the Board grant Globe
`
`Runner’s cross-motion for summary judgment.
`
`Respectfully submitted,
`
`Michael B. Bressman, TMCP-VAN
`
`Harris H. Anthony, LT-4,990
`
`Adam J. Bello, LT-4,99l
`
`Vanderbilt Legal Clinic
`13 l 2 1 st Avenue South
`
`Nashville, Tennessee 37203
`
`Phone: (615) 322-4964
`
`Email:
`
`trademarks@vanderbilt.edu
`
`Attorneys for Globe Runner LLC
`
`Date: October 13, 2017
`
`

`

`CERTIFICATE OF TRANSMISSION
`
`I hereby certify that on October 13, 2017, a true and complete copy of the foregoing
`
`Globe Runner LLC’s Cross-Motion for Summary Judgment has been transmitted electronically
`
`to the Trademark Trial and Appeal Board of the United States Patent and Trademark Office
`
`through the ESTTA, http://estta.uspto. gov.
`
`Michael B. Bressman
`
`CERTIFICATE OF SERVICE
`
`I hereby certify that on October 13, 2017, a true and complete copy of the foregoing
`
`Globe Runner LLC’s Cross-Motion for Summary Judgment has been served electronically by
`
`email to:
`
`Stacey R. Halpem
`
`Knobbe, Martens, Olson & Bear LLP
`
`efiling@knobbe.com
`
`Michael B. Bressman
`
`

`

`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`
`Petitioner,
`
`
`
`Cancellation No. 92064597
`
`Registration No. 4971328
`
`
`GLOBE INTERNATIONAL NOMINEES PTY, LTD.
`
`
`
`v.
`
`GLOBE RUNNER LLC,
`
`
`
`Registrant/Respondent.
`
`)
`)
`)
`)
`)
`)
`)
`)
`)
`
`______________________________________________________________________________
`
`
`GLOBE RUNNER LLC’S MEMORANDUM IN OPPOSITION TO PETITIONER’S
`MOTION FOR SUMMARY JUDGMENT AND IN SUPPORT OF
`GLOBE RUNNER LLC’S CROSS-MOTION FOR SUMMARY JUDGMENT
`______________________________________________________________________________
`
`INTRODUCTION
`
`
`
`This is a trademark cancellation proceeding brought by Globe International Nominees Pty
`
`Ltd. (“Petitioner”) against Respondent/Registrant Globe Runner LLC (“Globe Runner”), seeking
`
`to cancel Globe Runner’s composite design mark, Registration No. 4971328 (“GLOBE RUNNER
`
`Mark”). Petitioner has moved for summary judgment on the issue of whether a likelihood of
`
`confusion exists between the GLOBE RUNNER Mark and Petitioner’s various marks when these
`
`marks are used in connection with certain clothing products.1 Globe Runner agrees with Petitioner
`
`that there are no genuine issues of material fact and that this matter is ripe for summary judgment.
`
`However, Globe Runner asserts that there is no likelihood of confusion between the GLOBE
`
`RUNNER Mark and Petitioner’s Marks based on the undisputed facts. Thus, the Trademark Trial
`
`
`1 Petitioner’s marks are U.S. Registration Nos. 1991488, 2601308, 2801746, 3500812, 3744809, and
`4110786 (“Petitioner’s Marks”). As discussed below, some of Petitioner’s Marks are used with unrelated
`goods and are not relevant to this proceeding.
`
`

`

`and Appeal Board (“Board”) should grant Globe Runner’s cross-motion for summary judgment
`
`and deny Petitioner’s motion for summary judgment.
`
`BACKGROUND
`
`
`
`Globe Runner is a Tennessee company that makes, sells, and markets its hats, shirts,
`
`sweatshirts, sweatpants, and t-shirts under its GLOBE RUNNER Mark. Germaine Ross, an avid
`
`traveler, founded Globe Runner after a trip around the world. Mr. Ross and several close friends
`
`had spent several months traveling worldwide in search of new business opportunities and thrilling
`
`life adventures; they were “running the globe having fun.” Declaration of Germaine Ross at ¶6
`
`(“Ross Decl.”). Upon returning home, Mr. Ross created a clothing line to commemorate their way
`
`of life – a clothing line that was comfortable, lightweight, and breathable, entrepreneurial and
`
`suitable for travel. Id.
`
`Mr. Ross named his clothing company “Globe Runner” and designed his trademark to
`
`reflect the spirit of his travels and to reflect his idea of success. The mark contains an image of the
`
`Earth surrounded by garlands or laurels, with the words “Globe Runner” in between the Earth and
`
`the laurels.2 Id. at ¶7. Mr. Ross specifically chose the laurels because they have historically
`
`symbolized champions and victors. The resulting design was meant to embody the spirit of the
`
`company, which is “born out of the heart and mind of a winner.” Id. The design was meant to be
`
`a symbol for “one who is a champion of the world and who ‘runs’ the world.” Id.
`
`Globe Runner has sold its goods since September 30, 2013, and in commerce since
`
`February 1, 2014. Id. at ¶2. On April 28, 2014, Globe Runner filed an application with the USPTO
`
`to register the GLOBE RUNNER Mark in class 25 for “Shirts; Sweatpants; Sweatshirts; T-shirts.”
`
`On June 7, 2016, the USPTO registered the GLOBE RUNNER Mark. Id. at ¶4. Globe Runner
`
`
`2 For simplicity, the garlands or laurels will be referred to as the “laurels” throughout the remainder of this
`memorandum.
`
`
`
`2
`
`

`

`also uses its mark to promote and market its goods via social media. Id. at ¶10. Globe Runner has
`
`sold its goods in commerce for more than three and half years without any instance of confusion
`
`with Petitioner’s goods. Id. at ¶¶2, 8.
`
`DISPUTED FACTS
`
`
`
`Globe Runner disputes the following facts contained in the Memorandum in Support of
`
`Petitioner’s Motion for Summary Judgment and Motion to Suspend the Close of the Discovery
`
`Period and the Opening of Its Testimony Period (“Petitioner’s Memorandum”):3
`
`1.
`
`Petitioner’s Undisputed Fact No. 18. Globe Runner does not operate or have any
`
`affiliation with the Twitter page located at https://twitter.com/globerunner. Id. at ¶10.
`
`2.
`
`Petitioner’s Undisputed Fact No. 18. Globe Runner does not target the
`
`skateboarding market and skateboarding is not “a highly relevant keyword for [Globe Runner’s]
`
`apparel items.” Id. at ¶¶3, 11.4
`
`3.
`
`Petitioner’s Undisputed Fact No. 19. Globe Runner does not use the mark GLOBE
`
`by itself. Id. at ¶5.
`
`4.
`
`Petitioner’s Undisputed Facts No. 17. Petitioner’s assertion in the second listed
`
`undisputed fact number 17 is not a fact but a legal conclusion. Globe Runner disputes this legal
`
`conclusion.
`
`
`3 Globe Runner does not believe that any of the disputed facts are material.
`4 Petitioner claims that the Twitter hashtag “#skatelife” is a “highly relevant keyword” for Globe Runner’s
`clothing products. Petitioner Mem. 5. Petitioner’s characterization is misleading. See Globe Runner’s
`Undisputed Facts Nos. 3-5, infra.
`
`
`
`
`3
`
`

`

`GLOBE RUNNER’S UNDISPUTED FACTS
`
`
`
`Globe Runner hereby incorporates all of the undisputed facts contained in Petitioner’s
`
`Memorandum, except for those above in the “Disputed Facts” section of this memorandum. Globe
`
`Runner asserts that the following additional facts are undisputed:
`
`1.
`
`There have been no instances of actual confusion between the GLOBE RUNNER
`
`Mark and Petitioner’s Marks. Id. at ¶8.
`
`2.
`
`Globe Runner operates the following social media accounts: Facebook
`
`(https://www.facebook.com/globerunnerapparel/),
`
`Instagram
`
`(https://www.instagram.com/globerunnerapparel/),
`
`and
`
`Twitter
`
`(https://twitter.com/globerunner8). Id. at ¶10, Ex. 3.
`
`3.
`
`Globe Runner has 127 posts, collectively, on Instagram and Twitter. The
`
`“#skatelife” hashtag has appeared in only five of these posts. These posts are dated November 6,
`
`2014, and November, 16, 2014. Id. at ¶11.
`
`4.
`
`Globe Runner used the “#skatelife” hashtag in only three of 114 total posts on the
`
`Instagram account. It is only one of dozens of hashtags used on the Instagram account. The
`
`hashtag is only one of twenty-two, twenty, and nineteen hashtags used in the three posts,
`
`respectively. Id.
`
`5.
`
` Globe Runner used the “#skatelife” hashtag in only two of thirteen total posts, or
`
`“tweets,” on the Twitter account. It is only one of twenty-one total hashtags used on the Twitter
`
`account. The hashtag is one of six and four hashtags used in the two posts, respectively. Id.
`
`6.
`
`Globe Runner sells only hats, t-shirts, crewneck Raglan t-shirts, hoodie sweatshirts,
`
`and crewneck sweatshirts. Globe Runner has never sold footwear nor does it ever intend to sell
`
`footwear. Globe Runner has never sold skatewear, skateboards, watches, or clocks nor does it ever
`
`
`
`4
`
`

`

`intend to sell these goods. Globe Runner is not and has never been a skateboarding, surfing, or
`
`snowboarding brand. Globe Runner is not an athletic clothing brand. Id. at ¶¶2, 3.
`
`SUMMARY OF THE ARGUMENT
`
`The differences between the parties’ marks in appearance, sound, meaning, and
`
`commercial impression are alone sufficient to find no likelihood of confusion. Consumers will
`
`immediately recognize the GLOBE RUNNER Mark – a drawing of the Earth surrounded by
`
`laurels, with the words “Globe Runner” embedded between the laurels and the Earth – as distinct
`
`from Petitioner’s Marks, which in most instances consist of one word, “Globe,” and no
`
`accompanying design. The marks must be compared in their entireties, meaning that the GLOBE
`
`RUNNER Mark must not be dissected to ignore the image of a globe, the surrounding laurels, or
`
`the word “Runner.” Rather, the inclusion of the design elements and the word “Runner” in the
`
`GLOBE RUNNER Mark creates a mark with an entirely different overall commercial impression
`
`and meaning than Petitioner’s Marks.
`
`Even if the dissimilarity of the marks is not dispositive, other factors favor a finding of no
`
`likelihood of confusion between the GLOBE RUNNER Mark and Petitioner’s Marks. First,
`
`Petitioner’s Marks are not commercially strong. Its clothing brand is not highly ranked or well
`
`known by the general consuming public. Second, the USPTO has registered other “Globe” marks
`
`for use with clothing, showing that third parties currently use “Globe” with the sale of clothing.
`
`Third, there is no evidence of actual confusion between the marks. Finally, although there is some
`
`overlap in the goods offered by each of the parties, Petitioner’s goods appear to be aimed at the
`
`skateboarding, surfing, and snowboarding markets. Declaration of Matthew Hill at ¶4 (“Hill
`
`Decl.”). Petitioner’s catalogs, social media, annual reports, and other marketing highlight this
`
`connection. By contrast, Globe Runner does not target these groups. Consequently, there is little
`
`
`
`5
`
`

`

`likelihood that the GLOBE RUNNER Mark and Petitioner’s Marks will be confused with each
`
`other. Petitioner, thus, has not met its burden of proving a likelihood of confusion. The Board,
`
`therefore, should grant Globe Runner’s cross-motion for summary judgment and deny Petitioner’s
`
`motion for summary judgment.
`
`STANDARD OF REVIEW
`
`A party moving for summary judgment has the burden of demonstrating the absence of any
`
`genuine issue of material fact and that it is entitled to summary judgment as a matter of law. TBMP
`
`§ 528.01; Fed. R. Civ. P. 56. The nonmoving party must be given the benefit of all reasonable
`
`doubt as to whether genuine issues of material fact exist, and the evidentiary record on summary
`
`judgment, and all inferences to be drawn from the undisputed facts, must be viewed in the light
`
`most favorable to the nonmoving party. See Opryland USA, Inc. v. Great Am. Music Show, Inc.,
`
`970 F.2d 847, 850, 23 U.S.P.Q.2d 1471, 1472 (Fed. Cir. 1992). Moreover, even if there are no
`
`genuine issues of material fact, the Board may deny a movant’s motion for summary judgment
`
`and, instead, grant summary judgment in favor of the nonmoving party. See TBMP § 528.08.
`
`Globe Runner’s registered mark is presumed to be valid. 15 U.S.C. §1057(b). Petitioner
`
`bears the burden of persuasion in this cancellation proceeding. Petitioner may overcome this
`
`presumption of validity only by a preponderance of the evidence. See Cold War Museum. Inc. v.
`
`Cold War Air Museum, Inc., 586 F.3d 1352, 1356, 92 U.S.P.Q.2d 1626, 1628 (Fed. Cir. 2009).
`
`ARGUMENT
`
`In determining whether a likelihood of confusion exists, the Board considers evidence
`
`relating to the factors set forth in In re E.I. DuPont DeNemours & Co., 476 F.2d 1357, 1361, 177
`
`U.S.P.Q. 563, 567 (C.C.P.A. 1973). The Board need not consider each and every DuPont factor.
`
`M2 Software, Inc. v. M2 Commc’ns, Inc., 450 F.3d 1378, 1382, 78 U.S.P.Q.2d 1944, 1947 (Fed.
`
`
`
`6
`
`

`

`Cir. 2006). Indeed, the Federal Circuit has explained that “a single DuPont factor may be
`
`dispositive in a likelihood of confusion analysis, especially when that single factor is the
`
`dissimilarity of the marks.” Oakville Hills Cellar, Inc. v. Georgallis Holdings, LLC, 826 F.3d
`
`1376, 1381–82, 119 U.S.P.Q.2d 1286, 1289–90 (Fed. Cir. 2016). Moreover, marks that share
`
`similar words may coexist when the marks are sufficiently dissimilar to prevent a likelihood of
`
`confusion. See Champagne Louis Roederer, S.A. v. Delicato Vineyards, 148 F.3d 1373, 1375, 47
`
`U.S.P.Q.2d 1459, 1460–61 (Fed. Cir. 1998) (finding no likelihood of confusion between
`
`CRYSTAL CREEK for wine and CRISTAL for champagne based on dissimilarities between
`
`marks with respect to appearance, sound, and commercial impression).
`
`I.
`
`The differences between the GLOBE RUNNER Mark and Petitioner’s Marks in
`overall appearance, sound, meaning, and commercial impression are alone sufficient
`to preclude a likelihood of confusion.
`
`In this case, the first DuPont factor, similarity of the marks, weighs against a likelihood of
`
`confusion, and the Board may decide this matter solely on the basis of that factor. See, e.g.,
`
`Kellogg Co. v. Pack’Em Enters., Inc., 14 U.S.P.Q.2d 1545, 1550 (T.T.A.B. 1990) (finding that
`
`substantial differences in appearance, sound, connotation and commercial impression between
`
`FROOTEE ICE with elephant design and FROOT LOOPS outweighed all other pertinent factors).
`
`When viewed in their entireties, the GLOBE RUNNER Mark and Petitioner’s Marks do not look
`
`or sound the same nor do they convey the same commercial impression. Globe Runner’s Mark is:
`
`
`
`
`
`7
`
`

`

`Petitioner’s Marks are solely the word GLOBE in standard characters and, in one case, the
`
`following mark (“Petitioner’s Australia Mark”):5
`
`
`
`
`
`Globe Runner uses its mark with shirts, sweatpants, sweatshirts, and t-shirts. Petitioner uses its
`
`relevant marks with clothing, including shirts, t-shirts, sweatshirts, and pants.
`
`Essentially, Petitioner contends that the mere fact that the parties’ marks share the word
`
`“Globe” when used with these goods is sufficient to create a likelihood of confusion. However,
`
`when the marks are properly viewed in their entireties, the presence of this one word in common
`
`is insufficient to find a likelihood of confusion between the marks. Simply put, the differences
`
`between the marks outweigh the presence of one common word.
`
`To evaluate a mark, the Board must consider it as a whole, including its words and design,
`
`to determine its commercial impression. See In re Oppedahl & Larson LLP, 373 F.3d 1171, 1174,
`
`71 U.S.P.Q.2d 1370, 1372 (Fed. Cir. 2004) (“The law requires that a mark be ‘considered in its
`
`entirety.’”). The evaluation of its overall commercial impression is based on the mark’s
`
`“appearance, sound, and meaning.” Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison
`
`
`5 Petitioner asserts that the GLOBE RUNNER Mark is likely to be confused with six of its registrations.
`Two of those – Registration Nos. 3500812 (GLOBE in class 28 for goods such as skateboards) and 4110786
`(GLOBE UNITED BY FATE in class 14 for watches and clocks) – are irrelevant to this proceeding, as
`these goods are unrelated to Globe Runner’s clothing goods. Two other registrations contain goods or
`services that also differ from Globe Runner’s goods. Petitioner’s Australia Mark, Registration No.
`2601308, is solely for footwear. Globe Runner does not sell footwear nor does it intend to do so. Ross
`Decl. at ¶3. Petitioner’s Registration No. 3744809 covers “on-line retail store services” featuring various
`goods, only one of which is clothing. Again, Globe Runner sells only certain types of apparel goods.
`
`
`
`
`8
`
`

`

`Fondee En 1772, 396 F.3d 1369, 1372, 73 U.S.P.Q.2d 1689, 1692 (Fed. Cir. 2005). “There is no
`
`general rule as to whether letters or design will dominate in composite marks.” In re Electrolyte
`
`Labs., Inc., 929 F.2d 645, 647, 16 U.S.P.Q.2d 1239, 1240 (Fed. Cir. 1990); see J. Thomas
`
`McCarthy, 4 McCarthy on Trademarks and Unfair Competition § 23:47 (2017), at 23-254
`
`(describing the “[assumption] that words have more impact than designs” as “a dubious
`
`generalization”). And, words are not necessarily accorded greater weight in composite marks
`
`consisting of design elements that are more than ordinary geometric shapes. Cf. In re Benetton
`
`Group S.p.A., 48 U.S.P.Q.2d 1214, 1215 (T.T.A.B. 1998). Even if a design element does not
`
`predominate, the USPTO must still consider its impact on the mark’s commercial impression. See
`
`Electrolyte Labs., Inc., 929 F.2d at 647, 16 U.S.P.Q.2d at 1240 (“No element of a mark is ignored
`
`simply because it is less dominant, or would not have trademark significance if used alone.”).
`
`A.
`
`The marks are not similar in appearance or sound.
`
`
`When comparing a composite mark with a standard character mark, likelihood of confusion
`
`is reduced by the presence of dominant design features in the composite mark. See, e.g., In re
`
`Covalinski, 113 U.S.P.Q.2d 1166, 1167 (T.T.A.B. 2014) (no likelihood of confusion found
`
`between REDNECK RACEGIRL design mark and RACEGIRL word mark because of the
`
`dominance of the former’s design features); In re White Rock Distilleries, Inc., 92 U.S.P.Q.2d
`
`1282, 1284 (T.T.A.B. 2009) (no likelihood of confusion between TERZA VOLTA design mark
`
`and VOLTA word mark because of prominent design feature and additional word). Thus, a mark
`
`dominated by the design feature has a completely different commercial impression than that of a
`
`standard character mark.
`
`When evaluated in its entirety, the GLOBE RUNNER Mark presents a significantly
`
`different visual impression than Petitioner’s Marks. Petitioner’s Marks are primarily word marks
`
`
`
`9
`
`

`

`with no design. The GLOBE RUNNER Mark, however, is a stylized, composite mark that
`
`contains an image of a globe (specifically, the Earth) surrounded by laurels, with the words
`
`“GLOBE RUNNER” embedded between the globe and the laurels. The design elements, namely
`
`the image of the globe and the laurels, are prominently displayed. They are the largest elements
`
`of the mark and fully envelope the literal portion of the GLOBE RUNNER Mark. Because of the
`
`strong visual impact of those elements, the appearance of the composite GLOBE RUNNER Mark
`
`greatly differs from Petitioner’s standard word mark. See Parfums de Coeur, Ltd. V. Lory Lazarus,
`
`83 U.S.P.Q.2d 1012, 1016 (T.T.A.B. 2007) (finding strong visual impact of large, prominently
`
`displayed design elements distinguished composite mark in appearance from opposing word
`
`mark). Furthermore, rights in a word mark such as GLOBE do not generally extend to “include
`
`protection for that word combined with . . . other words or a design element.” White Rock
`
`Distilleries, Inc., 92 U.S.P.Q.2d at 1284.
`
`The GLOBE RUNNER Mark also differs visually from Petitioner’s Marks because its
`
`design contains two words rather than only the one word, “Globe,” present in most of Petitioner’s
`
`Marks. See, e.g., W.L. Gore & Assocs. V. Johnson & Johnson, 882 F. Supp. 1454, 1458, 36
`
`U.S.P.Q.2d 1552, 1555-56 (D. Del. 1995) (concluding that two marks are not confusingly similar
`
`because two-word, three-syllable mark differed in appearance from one-word, one-syllable mark).
`
`The visual differences are even more pronounced when comparing the GLOBE RUNNER Mark
`
`and Petitioner’s Australia Mark because the marks contain different words – “Runner” and
`
`“Australia” – as well as significantly different designs. Unlike the globe and laurels design
`
`contained in the GLOBE RUNNER Mark, Petitioner’s Australia Mark contains a highly stylized
`
`“G” design. Thus, in the present case, there is no likelihood of confusion when comparing the
`
`GLOBE RUNNER Mark and Petitioner’s Marks.
`
`
`
`10
`
`

`

`The GLOBE RUNNER Mark and Petitioner’s Marks also do not sound alike. Likelihood
`
`of confusion between two marks is reduced when a dominant design element is combined with
`
`phonetic differences and differences in pronunciation. See Parfums de Coeur, Ltd., 83 U.S.P.Q.2d
`
`at 1016. Petitioner’s Marks contain only one syllable, “Globe.” By contrast, the GLOBE
`
`RUNNER Mark contains three syllables, as well as prominent design elements. Additionally,
`
`when shopping for Globe Runner’s products, there is no reason to believe that a consumer would
`
`ask for them by a shortened name, GLOBE, rather than the full name, GLOBE RUNNER.
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`Consumers, therefore, are not likely to confuse the marks with each other.
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`Petitioner seeks to minimize the visual and sound differences between the marks by urging
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`the Board to ignore the word “Runner” because Globe Runner disclaimed that word. Specifically,
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`Petitioner argues that “Globe” is the dominant portion of the GLOBE RUNNER Mark, as it is the
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`only word not disclaimed. Petitioner’s Mem. 2–3. Globe Runner’s disclaimer of the word
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`“Runner,” however, has no legal effect on the issue of likelihood of confusion because consumers
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`would request the goods by the full name GLOBE RUNNER. See In re Nat’l Data Corp., 753
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`F.2d 1056, 1059, 224 U.S.P.Q.2d 749, 751–52 (Fed. Cir. 1985) (“The technicality of
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`a disclaimer in National’s application to register its mark has no legal effect on the issue of
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`likelihood of confusion. The public is unaware of what words have been disclaimed during
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`prosecution of the trademark application at the PTO.”); Opryland USA, Inc., 970 F.2d at
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`851 (Board erred by giving no weight to generic term). Thus, the Board must give legal
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`significance to each word contained in the GLOBE RUNNER Mark, as well as the design, when
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`comparing it with Petitioner’s Marks.6
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`6 Petitioner also asserts that Globe Runner’s design is the legal equivalent of the word “globe.” Petitioner
`is mistaken. The Globe Runner Mark is a composite mark of the words “GLOBE RUNNER” and two
`images, a globe and laurels. This composite mark cannot be considered a legal equivalent with words
`because the legal equivalent doctrine is meant to equate solely a pictorial representation (not multiple
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`B. The marks convey different meanings, connotations, and commercial impressions.
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`The Board must determine the connotation, meaning, and commercial impression of a mark
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`by considering the mark in its entirety. See Bell’s Brewery, Inc. v. Bell Hill Vineyards, LLC, No.
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`91177980, 2009 WL 5118319, at *4 (T.T.A.B. Dec. 18, 2009) (see attached). Each aspect of a
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`mark carries trademark and market significance, which affects consumer impression. See Shen
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`Mfg. Co. v. Ritz Hotel, Ltd., 393 F.3d 1238, 1245, 73 U.S.P.Q.2d 1350, 1356 (Fed. Cir. 2004); In
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`re Farm Fresh Catfish Co., 231 U.S.P.Q. 495 (T.T.A.B. 1986) (holding that CATFISH BOBBERS
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`with “CATFISH” disclaimed for fish is not likely to be confused with BOBBER for restaurant
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`services because the word “BOBBER” has different connotation when used with the respective
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`goods and services).
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`The decision in Bell’s Brewery is illustrative. There, the owner of a registration for the
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`mark BELL’S with a bell design that was used with beer opposed registration of the mark BELL
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`HILL for packaged wine. The Board found no likelihood of confusion between the BELL’S design
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`mark and the BELL HILL standard character mark. It rejected opposer’s argument that the shared
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`word “Bell” was alone sufficient to create a likelihood of confusion. Instead, the Board held that
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`applicant’s mark, BELL HILL, should be read as a unitary phrase, which had a “connotation and
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`commercial impression of a place, in contrast to opposer’s mark, which evoked simply bells or a
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`personal name.” Bell’s Brewery, Inc., 2009 WL 5118319, at *4. The connotations of each mark,
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`when read as a unitary phrase, were sufficient to differentiate the marks in terms of meaning and
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`commercial impression.
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`images and words) with its literal equivalent. See Navistar Int’l Transp. Corp. v. Freightliner Corp., No.
`96 C 6922, 1998 WL 911776, at *5 n.12 (N.D. Ill. Dec. 28, 1998) (noting there is no sound basis to convert
`a composite mark into its elements to find legal equivalency) (see attached).
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`The GLOBE RUNNER Mark evokes a vastly different connotation, meaning, and
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`commercial impression than that of Petitioner’s Marks. The word “globe” has multiple meanings,
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`including the Earth or simply a spherical object. See Declaration of Adam J. Bello (“Bello Decl.”),
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`Ex. 3. Furthermore, the word “globe,” as used in the GLOBE RUNNER Mark, describes a type
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`of “runner.” The word “runner” means “one that runs.” Id., Ex. 3. And, “runner” derives from
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`the verb “run,” which means “to go faster than a walk,” “to manage or conduct,” as in “to direct
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`the business or activities of,” or “to be in charge.” Id., Ex. 3. In fact, a recognized meaning of the
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`word “runner” is “one who operates or manages something.” Id., Ex. 3.
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`When “Globe” and “Runner” are combined in the GLOBE RUNNER Mark, they create
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`the commercial impression of either one who runs around the world – a traveler or adventurer – or
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`one who runs or manages the world. These meanings are buttressed by the globe and laurels design
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`elements contained in the composite GLOBE RUNNER Mark and are consistent with the intended
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`image and branding of the goods sold using the GLOBE RUNNER Mark. As Globe Runner
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`explained during its application process before the USPTO:
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`Garlands and laurels historically have symbolized champions and victors. . . .
`[T]he company is “born out of the heart and mind of a winner. Worn by the
`individual who will stand for nothing but the best. The overachiever who
`understands second doesn’t count in a world full of bravado and champions. A
`leader who knows planning, practice, patience, and perseverance is the only way to
`achieve your goals and
`the only way
`to become a Globe Runner.”
`http://www.globerunnerapparel.com/about/. The appearance of [Globe Runner]’s
`Mark is not only consistent with [Globe Runner]’s products and brand; the design
`means one who is a champion of the world or who “runs” the world. [Globe
`Runner]’s Mark is about complete achievement, leadership, and being in charge.
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`Ross Decl. ¶7, Ex. 2.
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`By contrast, Petitioner’s Marks evoke no such connotation or commercial impression. Its
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`marks mean only the Earth or an orb-like object. They do not connote a traveler or adventurer,
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`nor do they mean someone who runs or manages the world. A consumer simply has no idea what
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`Petitioner’s Marks mean. Given the different commercial impressions between the marks, there
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`is no likelihood of confusion.
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`II.
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`The lack of consumer recognition of Petitioner’s Marks and the use of other “Globe”
`marks with clothing show that Petitioner’s Marks are not commercially strong.
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`The strength or fame of a mark is a critical consideration in a likelihood of confusion
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`analysis. While a strong or famous mark may enjoy broader protection, a commercially weaker
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`mark does not receive this benefit. See Tea Board of India v. The Republic of Tea, Inc., 80
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`U.S.P.Q.2d 1881, 1899 (T.T.A.B. 2006) (“In determining the strength of a mark we consider both
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`its inherent strength based on the nature of the mark itself and its market strength.”). The strength
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`of a mark must be evaluated in the relevant market among consumers who would purchase the
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`goods. See Palm Bay Imps., Inc., 396 F.3d at 1375, 73 U.S.P.Q.2d at 1695.
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`It does not appear that Petitioner contends that Petitioner’s Marks are strong.7 Indeed,
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`Petitioner’s Marks are not commercially strong. Despite using Petitioner’s Marks for
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`approximately two decades with its clothing items, there is no evidence that its marks are well
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`known by consumers in the general clothing market or even the streetwear market. For example,
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`Petitioner’s Marks do not show up in numerous rankings of top clothing or streetwear brands in
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`the United States. See Bello Decl. ¶3, Ex. 2. Thus, it does not appear that Petitioner’s clothing
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`brand is well known or particularly popular with the general public.
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`Evidence of third-party use also bears on the strength or weakness of a mark. See Palm
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`Bay Imps., Inc., 396 F.3d at 1373, 73 U.S.P.Q.2d at 1693 (“evidence of third-party use of similar
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`marks on similar goods is relevant to show that a mark is relatively weak and entitled to only a
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`7 The burden of demonstrating and clearly proving the strength of a mark is on the party asserting that its
`mark is strong because of the high deference the Board accords a “famous” mark. Lacoste Alligator S.A.
`v. Maxoly, Inc., 91 U.S.P.