B.V.D. Licensing Corp. v. Body Action Design, Inc.

• Decision Date: 28 April 1988
• Docket Number: No. 87-1646,87-1646
• Citation: 846 F.2d 727,6 USPQ2d 1719
• Parties: , 25 Fed. R. Evid. Serv. 954 The B.V.D. LICENSING CORPORATION, Appellant, v. BODY ACTION DESIGN, INC., Appellee.
• Court: U.S. Court of Appeals — Federal Circuit

Page 727

846 F.2d 727

6 U.S.P.Q.2d 1719, 25 Fed. R. Evid. Serv. 954

The B.V.D. LICENSING CORPORATION, Appellant, v. BODY ACTION DESIGN, INC., Appellee.

No. 87-1646.

United States Court of Appeals Federal Circuit.

April 28, 1988.

Oliver P. Howes, Nims, Howes, Collison & Isner, New York City, argued, for appellant. With him on the brief was William K. Guild. Also on the brief was Joyce M. Russell, Bowling Green, Ky., of counsel.

Stewart J. Bellus, Kuhn & Muller, New York City, argued, for appellee. With him on the brief was Perla M. Kuhn.

Before RICH, Circuit Judge, NICHOLS, Senior Circuit Judge, and NIES, Circuit Judge.

RICH, Circuit Judge.

The July 2, 1987, decision of the Patent and Trademark Office Trademark Trial and Appeal Board (board) dismissing opposition No. 72,022 to the registration of the mark shown below as a trademark for "men's, women's and children's clothing--namely blouses, pants, jackets, dresses, shirts, undergarments, socks and footwear," application Serial No. 493,403, filed August 6, 1984, claiming first use on July 5, 1984, is affirmed.

NOTE: OPINION CONTAINS TABLE OR OTHER DATA THAT IS NOT VIEWABLE

Opposer, The B.V.D. Licensing Corporation, relies on its ownership and use of its unquestionably famous trademark B.V.D. or BVD, many times registered in various forms for the same class of goods as those named in the opposed application to register. Fourteen registrations issued from 1906 to 1983 are relied on herein. There is no priority issue as B.V.D. has been in use since 1876 and registered under the Trademark Act of 1905 since 1906, as evidenced by the many registrations of record.

The sole issue, as stated by the board, is whether opposer's and applicant's marks so resemble one another, the goods being at least in large part identical, that confusion is likely. 15 U.S.C. Sec. 1052(d). The board thought not. We agree with that conclusion though not with most of the board's reasoning in arriving at it.

The board proceeded on the assumption that opposer had to prove the fame of its mark by evidence in this proceeding. BVD, in our view, is, to most Americans at least, among which we count ourselves, practically a household word synonymous, primarily, with underwear for men. Opposer's registrations show it has been extended, during the past couple of decades, to the opposite sex. Webster's Third New International Dictionary (1971) contains the entry "B.V.D. * * * trademark--used for underwear." The Random House Dictionary of the English Language (1967) has this item: "B.V.D. Trademark. a suit of men's underwear, esp. a pair of undershorts. Also, BVDs. Cf. skivvy." Under "skivvy" is a cross-reference to "B.V.D." When a trademark attains dictionary recognition as a part of the language, we take it to be reasonably famous. (Webster has similar listings for "Kodak" and "Levi's.") See Coca Cola Co. v. Gemini Rising, Inc., 346 F.Supp. 1183, 1187 n. 1, 175 USPQ 56, 58 n. 1 (E.D.N.Y.1972), referring to a statement in The Business Lawyer of November 1971 that "B.V.D.," along with "Coca Cola" and "Singer," is one of "the three most-recognized trademarks in the world." The focus here, however, is not primarily on fame but on likelihood of confusion. Fame will be assumed. Courts may take judicial notice of facts of universal notoriety, which need not be proved, and of whatever is generally known within their jurisdictions. Brown v. Piper, 91 U.S. (1 Otto) 37, 42, 23 L.Ed. 200 (1875). To that end, dictionaries and encyclopedias may be consulted. United States v. Merck & Co., 8 Ct.Cust.Appls. 171 (1917). Fed.R.Evid. 201(b) and (f). We judicially notice the fact that within our jurisdiction, which is the whole United States, the B.V.D. trademark is at least widely, if not universally, known.

BVD or B.V.D. has arguable similarities to B A D that are too obvious for discussion. The practical question is whether they are significant. It also has differences which we will discuss. We give no weight to the argument of desperation that an "A" when inverted bears some resemblance to a "V". The purchasing public, we believe, does not indulge in such recognitional contortions but sees things as they are. It will not read an A for a V and, seeing an A between a B and a D will react to it as the common word "bad," not as a copy or simulation or suggestion of the well-known mark B.V.D. If that recognition makes no sense in the context in which the mark is observed, the viewer, if of the right generation, might think it was intended to mean good, as argued by applicant, a dictionary-recognized slang use of which we were not previously aware. On the other hand, seeing the periods, we believe it would be a normal and therefore common reaction to the symbol to think the letters must be the initials for some commercial entity other than opposer. Considering the norms of the commercial uses of company initials, we cannot imagine that applicant, Body Action Design, Inc., would put its mark into use without in some way associating it with what it is intended to convey, namely, the origin of the goods in that company whose initials constitute the major portion of the mark (all but the raised periods).

The fame of a mark cuts both ways with respect to likelihood of confusion. The better known it is, the more readily the public becomes aware of even a small difference. BVD has that well-known quality which would trigger the observer to notice at once that B A D, with or without the periods in either mark, is a different symbol. Consider the similar ruling, dismissing an opposition, by our predecessor court in Gulf States Paper Corp. v. Crown Zellerbach Corp., 417 F.2d 795, 57 CCPA 720, 163 USPQ 589 (1969), where the owner of the mark "E-Z", which is recognizable as the word "easy" in meaning and sound, failed to prevail in the attempt to prevent registration of "CZ". The court held the marks are not confusingly similar, one judge on a 5-judge court dissenting. The discerning, of course, could see that "CZ" stood for Crown Zellerbach.

For the above reasons, we agree that the opposition was properly dismissed. The decision of the board is

AFFIRMED.

NICHOLS, Senior Circuit Judge, concurring.

I join in the court's opinion. In view of the use made therein of the concept of judicial notice, I am particularly glad to see it. Judicial notice gets quite a workout in TTAB appeals, but it is not acknowledged as often as it should be. With so little at stake in the grant or refusal of a trademark or service mark registration, it is often not worthwhile to fill the record with proofs of every fact a court might wish to take into account. Judicial notice fills the gaps. It is just as well for a judicial author to say so when he is doing this, and every now and then to take a side glance at Fed.R. of Evid. 201 to be sure he is using judicial notice correctly. It is available at the appellate level, even if not used by the trial tribunal, and may support or undermine that tribunal's conclusions. Rule 201(f). It is particularly needed when the issue is "likelihood of confusion." To what extent can we resort to our "gut feeling" to supply evidence of what consumers will think falsely that is not in the record? By the Advisory Committee's notes, it must be "beyond reasonable controversy." We cannot use a debatable supposed fact to bootstrap ourselves to a dubious conclusion.

Amalgamated Bank of New York v. Amalgamated Trust & Savings Bank, 842 F.2d 1270 (Fed.Cir.1988), by another panel than this one, illustrates what I consider the proper use and misuse of judicial notice. We invoked by judicial notice what we supposed we, and everyone else, knew about how the banking business is conducted in this Year of Our Lord 1988. We professed not to know how "consumers," i.e., customers of banks get to be customers, as well as bankers do, so we would not substitute a contrary view for that of bankers, that identity of name does not by itself produce confusion. Actually, around the corner from our courthouse, on the same block of 15th Street, N.W., are two large full-service banks, independent of one another, but both using the word "American" in their names. If that produced customer confusion, it would seem they would do something about it. The temptation to point this out was resisted, as it does seem to be pushing judicial notice too far to draw conclusions from what might be an atypical situation. What if, however, there had been nothing else to go on? Arguably, if the parties on both sides fail to offer evidence on a relevant point, they stipulate by implication that the court will decide it by judicial notice.

It would be proper to take judicial notice that a lot of deregulation of banks had occurred in recent years, and that some of it has made a lot of difference to customers, for example the availability of interest on checking accounts. It would be all wrong to determine that deregulation has put customers' bank deposits at a greater risk of loss. It was all wrong for the board to say that deregulation had effected such changes that experienced absence of customer confusion in the past had no bearing on whether such confusion would be experienced in the future. In the absence of any showing of any item of deregulation that could have a bearing on confusion as to a bank's identity, this was a controversial inference, and because controversial, a misuse of judicial notice.

The importance of Rule 201 cannot be underestimated in light of the numerous cases in which questions of appropriate use of judicial notice arise. I am pleased with the panel op...