Kate Spade LLC v. Wolv, Inc.
| Decision Date | 25 April 2022 |
| Docket Number | Opposition 91241442 |
| Parties | Kate Spade LLC v. Wolv, Inc. |
| Court | United States Patent and Trademark Office. United States Patent and Trademark Office, Trademark Trial and Appeal Board |
Kate Spade LLC
v.
Wolv, Inc.
Opposition No. 91241442
United States Patent and Trademark Office, Trademark Trial and Appeal Board
April 25, 2022
THIS OPINION IS NOT A PRECEDENT OF THE TTAB
Hearing: April 21, 2022
G. Roxanne Elings of Davis Wright Tremaine LLP, for Kate Spade LLC.
Amit Agarwal Esq. for Wolv, Inc.
Before Cataldo, Bergsman, and Hudis, Administrative Trademark Judges.
OPINION
Bergsman, Administrative Trademark Judge:
Wolv, Inc. ("Applicant") seeks registration on the Principal Register of the mark WOLV and design, reproduced below, for "wrist watches," in International Class 14.[1]
♠ WOLV
The description of the mark reads as follows:
The mark consists of the wording "WOLV" in all capital letters beneath a spade logo. The first letter of "WOLV," "W" is stylized, resembling two letter "Vs" intersecting at the center. There is a stylized letter "W" within the body of the spade logo
Color is not claimed as a feature of the mark
Kate Spade LLC ("Opposer") filed a Notice of Opposition[2] against the registration of Applicant's mark under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d) (likelihood of confusion), Section 43(c) of the Trademark Act, 15 U.S.C. § 1125 (likelihood of dilution), and Section 1(b) of the Trademark Act, 15 U.S.C. § 1051(b) (lack of a bona fide intent to use the mark in commerce).[3] Applicant, in its Answer, denied the salient allegations in the Notice of Opposition.
I. Evidentiary Issues
Before proceeding to the merits of the refusal, we address two evidentiary matters.
A. Whether Opposer pleaded ownership of Registration No. 4158410.
Opposer, in its Notice of Opposition, pleaded ownership of numerous SPADE Marks consisting of KATE SPADE NEW YORK and design, reproduced below, KATE SPADE, in typed drawing and standard character form, JACK SPADE in standard character form, and a spade design, reproduced below:[4]
♠ KATE SPADE NEW YORK
Specifically, Opposer pleaded ownership of, inter alia, 12 KATE SPADE NEW YORK and design marks, reproduced above, for a variety of goods. However, Opposer did not identify Registration No. 4158410 in the ESTTA cover sheet for the above-noted mark for "ankle bracelets; bracelets; charms, earrings; jewelry; jewelry boxes, jewelry cases; necklaces; pendants; pins being jewelry; rings; watches," in International Class 14.[5]
Opposer included Registration No. 4158410 for the mark KATE SPADE NEW YORK and design for, inter alia, watches, as part of Exhibit A of the Notice of
Opposition.[6] The Notice of Opposition corresponds to the complaint in a court proceeding. Trademark Rule 2.116(c), 37 C.F.R. § 2.116(c). In addition, the Board views the ESTTA filing form and the Notice of Opposition as comprising a single document or paper being filed with the Board. See PPG Indus. Inc. v. Guardian Indus. Corp., 73 U.S.P.Q.2d 1926, 1928 (TTAB 2005) ("Since ESTTA's inception, the Board has viewed the ESTTA filing form and any attachments thereto as comprising a single document or paper being filed with the Board."). By including Registration No. 4158410 for the mark KATE SPADE NEW YORK and design for goods in International Class 14 in Exhibit A, Opposer put Applicant on notice that it was pleading ownership of that registration. Accordingly, we find that Opposer pleaded ownership of Registration No. 4158410.
B. Whether Opposer's pleaded registrations are of record.
Opposer is under the mistaken impression that its pleaded registration are automatically of record. In its brief, Opposer stated the following:
In addition to the file history of Opposer's registrations for the SPADE Marks and opposed application for the SPADE Wolv Mark, which are automatically of record pursuant to 37 C.F.R. § 2.122(b)(1).[7]
However, Opposer's pleaded registrations are not automatically of record pursuant to 37 C.F.R. § 2.122(b)(1).
Trademark Rule 2.122(b)(1), 37 C.F.R. § 2.122(b)(1), reads as follows (emphasis added):
The file of each application or registration specified in a notice of interference, of each application or registration specified in the notice of a concurrent use registration proceeding, of the application against which a notice of opposition is filed, or of each registration against which a petition or counterclaim for cancellation is filed forms part of the record of the proceeding without any action by the parties and reference may be made to the file for any relevant and competent purpose in accordance with paragraph (b)(2) of this section.
A party that wishes to rely on its ownership of a federal registration of its mark that is not the subject of a proceeding before the Board may make the registration of record by offering evidence sufficient to establish that the registration is still subsisting, and that it is owned by the party which seeks to rely on it. This may be done in a number of different ways. For example,
• A federal registration owned by the plaintiff in an opposition or cancellation proceeding, and pleaded by the plaintiff in its complaint, will be received in evidence and made part of the record in the proceeding if the complaint (either as originally filed or as amended) is accompanied by (a) an original or a photocopy of the registration prepared and issued by the Office showing both the current status of and current title to the registration; or (b) a current copy of information from the electronic database records of the Office such as (i) TSDR showing the current status and title (owner) of the registration and, if TSDR does not reflect the current owner of the registration, a copy of information from the Trademark Assignment Recordation Branch database demonstrating an assignment to the current owner of
the registration; or (ii) TESS along with a copy of any records from the Trademark Assignment Recordation Branch database showing an assignment to the current owner of the registration. Trademark Rule 2.122(d)(1), 37 C.F.R. § 2.122(d)(1). See also Trademark Trial and Appeal Board Manual of Procedure (TBMP) § 704.03(b)(1)(A) (2021).
•A federal registration owned by any party to a Board inter partes proceeding will be received in evidence and made part of the record in the proceeding if that party files, during its testimony period, a notice of reliance on the registration, accompanied by (a) a copy of the registration prepared and issued by the Office showing both the current status of and current title to the registration; or (b) a current printout or copy of information from the electronic database records of the Office such as (i) TSDR showing the current status and title (owner) of the registration and, if TSDR does not reflect the current owner of the registration, a printout or copy of the information from the Trademark Assignment Recordation Branch database demonstrating an assignment to the current owner of the registration; or (ii) TESS along with a copy of any records from the Trademark Assignment Recordation Branch database showing an assignment to the current owner of the registration. Trademark Rule 2.122(d)(1), 37 C.F.R. § 2.122(d)(1). See also TBMP § 704.03(b)(1)(A).
• Finally, a federal registration owned by any party to a Board inter partes proceeding may be made of record by that party by appropriate identification and introduction during the taking of testimony, that is, by introducing a copy of the registration as an exhibit to testimony, made by a witness having knowledge of the
current status and title of the registration, establishing that the registration is still subsisting, and is owned by the offering party. Trademark Rule 2.122(d)(1), 37 C.F.R. § 2.122(d)(1).[8] See also TBMP § 704.03(b)(1)(A).
Opposer did not take advantage of any of the above-noted means of making its pleaded registrations of record. Accordingly, Opposer's pleaded registrations are not of record. However, Opposer did plead common law rights in the marks KATE SPADE house mark, JACK SPADE, and a spade design reproduced below:
♠
6. Founded in 1993 by the award winning designer Kate Spade, Opposer, including its predecessors-in-interest, launched a collection of handbags bearing the now world-renowned KATE SPADE house mark.
7. Opposer has also used and continues to use the trademark JACK SPADE and the following Spade design: (hereinafter referred to as the "SPADE Logo" and collectively with the KATE SPADE house mark and JACK SPADE trademark referred to herein as the "SPADE Marks").[9]
Thus, Opposer must rely on its common law rights in the KATE SPADE house mark, JACK SPADE, and the spade design mark in the form shown immediately above. See Riceland Foods Inc. v. Pacific Eastern Trading Corp., 26 U.S.P.Q.2d 1883, 1884 (TTAB 1993) (only mark pleaded by opposer and tried was registered design mark and
applicant had no notice that opposer intended to rely on use of unregistered word mark appearing on opposer's packaging).
II. The Record
The record includes the pleadings, and pursuant to Trademark Rule 2.122(b), 37 C.F.R. § 2.122(b), Applicant's application. Only Opposer introduced testimony and evidence, and filed a brief.
Opposer introduced the testimony and evidence listed below:
• Notice of reliance on unsolicited media coverage from publications in general circulation;[10]
• Notice of reliance on Opposer's advertising in publications in general circulation;[11]
• Notice of reliance on excerpts from books published by Opposer;[12]
• Notice of reliance on the discovery deposition of William Hsu, Applicant's sole owner and President;[13]
• Testimony declaration of Kelly Sandoval, the Vice President of Global Marketing for Tapestry, Inc. Opposer is a wholly-owned subsidiary of Tapestry, Inc.[14]
• Unsolicited media coverage relating to Opposer's...
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