Michael Harlan Studio LLC v. Vettese, Opposition 91236083
| Decision Date | 01 December 2020 |
| Docket Number | Opposition 91236083 |
| Court | Trademark Trial and Appeal Board |
| Parties | Michael Harlan Studio LLC v. Kari Vettese dba Marilyn Hatten |
This Opinion is Not a Precedent of the TTAB
Shaun P. Keough and Kenneth R.L. Parker of Parker Keough LLP, for Michael Harlan Studio LLC.
Joshua S. Schoonover of Coastal Patent Law Group, P.C., for Kari Vettese dba Marilyn Hatten.
Before Wellington, Wolfson, and Heasley, Administrative Trademark Judges.
Heasley, Administrative Trademark Judge:
Applicant Kari Vettese, dba Marilyn Hatten, seeks registration on the Principal Register of the stylized mark (Image Omitted) for "women's clothing, namely, shirts, dresses, skirts blouses" in International Class 25.[1]
Opposer Michael Harlan Studio LLC, has opposed registration of Applicant's mark under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), claiming priority and likelihood of confusion with its two marks listed below for clothing items, wallets, rJ handbags, tote bags, and luggage.[2] The first mark, (Image Omitted), is the subject of two pending applications for registration on the Principal Register:[3] one alleges use and use in commerce since 2007 on "wallets, handbags, tote bags and luggage" in International Class 18;[4] the other alleges use and use in commerce since 2007 on "clothing, namely, coats, jackets, scarves, and pants," and a bona fide intent to use on "clothing, namely tops, shirts, blouses, sweaters and bottoms" in International Class 25.[5]
The second mark (Image Omitted), is also the subject of two pending applications for registration on the Principal Register:[6] one alleges use and use in commerce since 2007 on "wallets, handbags, tote bags and luggage" in International Class 18;[7] the other alleges a bona fide intent to use on "clothing, namely, coats, jackets, scarves, tops, shirts, blouses, sweaters, pants and bottoms" in International Class 25.[8]
Opposer alleges that its applications were suspended on the ground that there may be a likelihood of confusion with the mark in Applicant's application, which was filed almost two months earlier than the filing dates of Opposer's applications.[9]
Applicant, in her Answer, denied the salient allegations of the Amended Notice of Opposition.[10] The matter is fully briefed.
We focus our analysis on Opposer's (Image Omitted) mark. If likelihood of confusion is found as to this mark, it is unnecessary to consider the other mark. In re I-Coat Company, LLC, 126 U.S.P.Q.2d 1730, 1734 (TTAB 2018) (citing Max Capital Grp. Ltd., 93 U.S.P.Q.2d 1243, 1245 (TTAB 2010)). We find that Applicant's mark poses a likelihood of confusion with this mark, and sustain the opposition.
To establish entitlement to a statutory cause of action under Sections 13 or 14 of the Trademark Act, a plaintiff must demonstrate a real interest in the proceeding and a reasonable belief of damage. Australian Therapeutic Supplies Pty. Ltd. v. Naked TM, LLC, 965 F.3d 1370, 2020 U.S.P.Q.2d 10837, 3 (Fed. Cir. 2020); see also Empresa Cubana Del Tabaco v. Gen. Cigar Co., 753 F.3d 1270, 111 U.S.P.Q.2d 1058 (Fed. Cir. 2014); Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 101 U.S.P.Q.2d 1713, 1727 (Fed. Cir. 2012); Ritchie v. Simpson, 170 F.3d 1092, 50 U.S.P.Q.2d 1023, 1025 (Fed. Cir. 1999).[11]
Applicant points out that Opposer's suspended applications [12] Nonetheless, Opposer's evidence that its pending trademark applications have been suspended pending resolution of Applicant's subject Application demonstrates that Opposer has a real interest in the outcome of this proceeding and a reasonable belief that it would be damaged by registration of Applicant's mark, thus establishing its entitlement to bring and maintain this proceeding.[13] See RxD Media, LLC v. IP Application Dev. LLC, 125 U.S.P.Q.2d 1801, 1807 (TTAB 2018). Moreover, "[a] claim of likelihood of confusion that is not wholly without merit, including prior use of a confusingly similar mark, may be sufficient to establish a reasonable basis for a belief that one is damaged." DeVivo v. Ortiz, 2020 U.S.P.Q.2d 10153, 2 (TTAB 2020) (internal punctuation omitted). Applicant allows that "Although Opposer's claim lacks merit, Applicant does not contest Opposer's standing to bring it."[14]
The record comprises the pleadings, the file of Applicant's opposed Application under Trademark Rule 2.122(b), 37 C.F.R. § 2.122(b), and the following: Opposer's Evidence:
Applicant's Evidence
• Opposer's Notice of Reliance containing evidence concerning some of the third-party registrations Applicant introduced.[29]
Before proceeding to the merits, we address an evidentiary matter. Applicant's First Notice of Reliance contained a May 25, 2016 Women's Wear Daily article reporting that Opposer's principal:
Applicant contends that this Womens' Wear Daily article is relevant because it "goes to the issue of priority; namely, that Opposer lacks prior use of the mark, to the truth and veracity of Opposer's allegations in the Notice of Opposition."[31]
Opposer objects that the article is inadmissible hearsay to the extent it is being offered for the truth of the matter asserted.[32] We agree. "[W]e consider Internet printouts and other materials introduced under a notice of reliance without supporting testimony only for what they show on their face rather than the truth of the matters asserted therein." Spiritline Cruises LLC v. Tour Mgmt. Svcs., Inc., 2020 U.S.P.Q.2d 48324, 2 (TTAB 2020); see Trademark Rule 2.122(e)(2), 37 C.F.R. § 2.122(e)(2). The objection is therefore sustained; the article will not be considered for the truth of the matters asserted therein.
Opposer also argues that some of the MH-formative third-party registrations Applicant introduced to show the weakness of Opposer's MH marks have little or no probative value.[33] This goes to the weight of Applicant's evidence, not its admissibility. Id. We will therefore consider Applicant's third-party registration evidence for what it is worth, in light of Opposer's countervailing evidence and arguments purporting to undermine the probative weight of Applicant's evidence under the relevant DuPont factors.
"The Lanham Act provides national protection of trademarks in order to secure to the owner of the mark the goodwill of his business and to protect the ability of consumers to distinguish among competing producers." Park 'N Fly, Inc. v. Dollar Park & Fly, Inc., 469 U.S. 189, 224 U.S.P.Q. 327, 331 (1985). Consistent with these purposes, Section 2(d) of the Lanham Act prohibits registration of a mark that so resembles a mark previously used in the United States by another and not abandoned as to be likely, when used on or in connection with the goods or services of the applicant, to cause confusion, mistake, or deception. 15 U.S.C. § 1052(d).
To prevail on the ground of likelihood of confusion under Section 2(d) of the Lanham Act, based on a previously used mark, it is Opposer's burden to prove both priority of use and likelihood of confusion by a preponderance of the evidence. Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 U.S.P.Q.2d 1842, 1848 (Fed. Cir. 2000). An opposer must prove that it has proprietary rights in the term it relies upon to demonstrate likelihood of confusion as to source. See Otto Roth & Co....
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