GoPro, Inc. v. Walmsley

• Decision Date: 30 March 2017
• Docket Number: 91216035
• Court: Trademark Trial and Appeal Board
• Parties: GoPro, Inc. v. Ross Walmsley Application Serial No. 85825238

GoPro, Inc. v. Ross Walmsley

Application Serial No. 85825238

No. 91216035

United States Patent and Trademark Office, Trademark Trial and Appeal Board

March 30, 2017

This Opinion is not a Precedent of the TTAB

Connie L. Ellerbach, Eric J. Ball and Mark A. Jansen, of Fenwick & West LLP, for Opposer, GoPro, Inc.

Ross Walmsley, pro se.

Before Zervas, Kuczma and Adlin, Administrative Trademark Judges.

OPINION

Kuczma, Administrative Trademark Judge:

Ross Walmsley ("Applicant") filed an application to register the mark:

(Image Omitted)

for:

Aromatized beverages based on fruit, protein, cordial, sugar and other fluid nutrients, namely, carbohydrate drinks for use as food fillers and protein drinks for use as a food fillers and not for use as a meal replacement; beauty beverages, namely, fruit juices and energy drinks containing nutritional supplements; bottled drinking water coffee-flavored soft drink; cola drinks; colas; concentrates and powders used in the preparation of energy drinks and fruit-flavored beverages; concentrates for making fruit drinks; concentrates, syrups or powders for making soft drinks, tea-flavored beverages or sports and energy drinks distilled drinking water; drinking water; drinking water with vitamins; energy drinks; energy drinks enhanced with vitamins, minerals, nutrients; essences for use in making soft drinks; fruit drinks; fruit juices; fruit flavored drinks; fruit-based soft drinks flavored with tea; guarana drinks; isotonic drinks; non-alcoholic drinks, namely, energy shots; pop; powders used in the preparation of isotonic sports drinks and sports beverages; preparations for making beverages, namely, fruit drinks; prepared entrees consisting of fruit drinks and fruit juices, fruit-based beverages non-alcoholic beverages containing fruit juices, non-alcoholic fruit extracts used in the preparation of beverages, non-alcoholic fruit juice beverages, vegetable juices, vegetable-fruit juices and smoothies; soft drinks; sports drinks; syrups for making fruit-flavored drinks and soft drinks; vegetable drinks, in International Class 32.^1[]

GoPro, Inc., formerly Woodman Labs, Inc., ("Opposer"), opposes registration of Applicant's mark on the grounds of priority and likelihood of confusion under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), dilution under Section 43(c), 15 U.S.C. § 1125(c), and false suggestion of a connection under Section 2(a), 15 U.S.C. § 1052(a).

Opposer bases its opposition on prior use of the mark GOPRO and variations thereof, and its ownership of, inter alia, Registration No. 3032989 issued on December 20, 2005, for the mark GOPRO (standard characters) for photographic equipment, namely film cameras and digital cameras, cases and housings for cameras and camera straps, in International Class 9.^2[] Opposer also alleges that its GOPRO mark became famous prior to the filing date of Applicant's application and that there is no issue as to priority because Opposer's GOPRO mark was filed and registered prior to the filing date of Applicant's Application.^3[]

Applicant denied the salient allegations of the Notice of Opposition and pleaded several affirmative defenses which were not pursued and are therefore waived.

I. The Record

By rule, the record includes Applicant's application file and the pleadings. Trademark Rule § 2.122 (b), 37 CFR § 2.122 (b). Additionally, Opposer introduced the following testimony and evidence:

Notice of Reliance on Opposer's Registration No. 3032989, Exhibit A (23 TTABVUE 2-14);

Notice of Reliance on Applicant's Rule 36 Admissions, Exhibits B and C (23 TTABVUE 15-36);

Notice of Reliance on Third-Party Registrations Exhibits D-R (23 TTABVUE 37-212). Applicant did not submit any evidence or testimony, nor did he submit a trial brief.

II. Evidence

Opposer timely served its First Set of Requests For Admission on Applicant by U.S. mail addressed to Applicant at: 1) Applicant's address of record and 2) at the address identified by Applicant in an email Applicant sent to Opposer dated October 20, 2015. Opposer also sent Applicant copies of the First Set of Requests For Admission via email to the two email addresses for Applicant identified in Applicant's October 20, 2015 email to Opposer. Inasmuch as Applicant did not respond to Opposer's First Set of Requests For Admission which were timely served on Applicant, the Requests for Admission are deemed admitted pursuant to Fed.R.Civ.P. 36. Trademark Rule 2.120(k)(3)(i), 37 CFR § 2.120(k)(3)(i). Trademark Board Manual of Procedure § 407.03(a) (TBMP) (Jan. 2017).

III. Standing and Priority

Opposer bears the burden of proving both standing to oppose and at least one valid ground for refusal of registration. Ritchie v. Simpson, 170 F.3d 1092, 50 U.S.P.Q.2d 1023, 1025 (Fed. Cir. 1999); Sanyo Watch Co., Inc. v. Sanyo Electric Co., Ltd., 691 F.2d 1019, 215 U.S.P.Q. 833, 834 (Fed. Cir. 1982). To establish standing in an opposition, an opposer must show both a real interest in the proceeding as well as a reasonable basis for its belief of damage. Empresa Cubana Del Tabaco v. Gen. Cigar Co., 753 F.3d 1270, 111 U.S.P.Q.2d 1058, 1062 (Fed. Cir. 2014); Ritchie v. Simpson, 50 U.S.P.Q.2d at 1025; Lipton Indus., Inc. v. Ralston Purina Co., 670 F.2d 1024, 213 U.S.P.Q. 185, 189 (CCPA 1982). Because Opposer has properly made its pleaded Registration No. 3032989 for the mark GOPRO of record, it has established standing to oppose registration of Applicant's mark and priority is not an issue as to those goods covered by the registration. See Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 U.S.P.Q.2d 1842, 1844 (Fed. Cir. 2000); King Candy Co. v. Eunice King's Kitchen, Inc., 496 F.2d 1400, 182 U.S.P.Q. 108, 110 (CCPA 1974).

IV. Likelihood of Confusion

Our determination under Section 2(d) of the Trademark Act is based on an analysis of all of the relevant probative evidence in the record related to a likelihood of confusion. See In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 177 U.S.P.Q. 563 (CCPA 1973); see also Palm Bay Imports, Inc. v. Veuve Clicquot Pansardin Maison Fondee En 1722, 396 F.3d 1369, 73 U.S.P.Q.2d 1689 (Fed. Cir. 2005). In any likelihood of confusion analysis, two key considerations are the similarities between the marks and the similarities between the goods. Federated Foods, Inc., v. Fort Howard Co., 544 F.2d 1098, 192 U.S.P.Q. 24, 29 (CCPA 1976) ("The fundamental inquiry mandated by § 2(d) goes to the cumulative effect of differences in the essential characteristics of the goods and differences in the marks."). Additionally, Opposer asserts the fame of its GOPRO mark; the overlap between Opposer's and Applicant's trade channels; the conditions under which, and buyers to whom, sales are made; and Applicant's intent in selecting the mark all also support a finding of likelihood of confusion. We address each of these factors below.

A. Similarity of the Marks

Turning to the first du Pont factor, we consider "the similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation and commercial impression." du Pont, 177 U.S.P.Q. at 567. The test is not whether the marks can be distinguished when subjected to a side-by-side comparison, but rather whether they are sufficiently similar in terms of their overall commercial impression that consumers would assume a connection between the parties. Viewing the marks in their entireties, we find that consumers will perceive the marks (Image Omitted) and as having the same meaning and engendering the same commercial impression.

Applicant's mark (Image Omitted) incorporates the entirety of Opposer's GOPRO mark, followed by the letter G in a circle. Because Applicant's mark and Opposer's mark both begin with the term "gopro, "they are similar in sound and appearance. Moreover, Applicant admits the marks are "virtually identical, " both visually and auditorily.^4[]

The presence of the additional designation (Image Omitted) at the end of Applicant's mark does not eliminate the likelihood of confusion because the first term in both marks is identical. See, e.g., China Healthways Inst., Inc. v. Wang, 491 F.3d 1337, 83 U.S.P.Q.2d 1123 (Fed. Cir. 2007) (the common word in CHI and CHI PLUS is likely to cause confusion despite differences in the marks' designs); In re West Point-Pepperell, Inc., 468 F.2d 200, 175 U.S.P.Q. 558 (CCPA 1972) (WEST POINT PEPPERELL likely to cause confusion with WEST POINT for similar goods); Lilly Pulitzer, Inc. v. Lilli Ann Corp., 376 F.2d 324, 153 U.S.P.Q. 406 (CCPA 1967) (THE LILLY as a mark for women's dresses is likely to be confused with LILLI ANN for women's apparel including dresses); In re United States Shoe Corp., 229 U.S.P.Q. 707 (TTAB 1985) (CAREER IMAGE for women's clothing stores and women's clothing likely to cause confusion with CREST CAREER IMAGES for uniforms including items of women's clothing). Indeed, Applicant's mark may be perceived as a version of Opposer's mark, while Opposer's mark GOPRO may be perceived as a shortened version of Applicant's mark

(Image Omitted). See In re United States Shoe, 229 U.S.P.Q. at 709 (applicant's mark CAREER IMAGE would appear to prospective purchasers to be a shortened form of registrant's mark CREST CAREER IMAGES).

Additionally the stylization of Applicant's mark does not sufficiently distinguish it from Opposer's mark to avoid confusion. Because Opposer's mark is registered in standard characters, Opposer is not limited to any particular depiction of its mark; it may be displayed in any lettering style; the rights reside in the wording or other literal elements and not in any particular display. In re White Rock Distilleries Inc., 92 U.S.P.Q.2d 1282, 1284 (TTAB 2009). Thus, Opposer may display its standard character mark in the...