Oakley, Inc. opposed an application to register the mark FROGSKINS(standard characters) for “protective cover and cases for cell phones, laptop computers, tablet computers and portable media players,” claiming a likelihood of confusion with its identical mark registered for “eyewear, namely sunglasses and accessories for sunglasses, namely, replacement lenses, ear stems and nose pieces.” Because the marks are identical, a lesser degree of similarity between the goods is necessary to support a finding of likely confusion. But are the goods close enough? How do you think this came out? Oakley, Inc. v. JMM Lee Properties, LLC, Opposition No. 91231865 [not precedential] (Opinion by Judge Marc A. Bergsman).

Strength of Opposer’s Mark: “In determining the strength of a mark, we consider both its inherent strength, based on the nature of the mark itself, and its commercial strength, based on marketplace recognition of the mark.” The Board found Oakley’s mark FROGSKINS to be inherently distinctive. The mark is registered on the Principal Register without a Section 2(f) claim, and there was no evidence or testimony regarding third-party use or registration of similar marks for similar goods.

As to commercial strength, Oakley claimed that its mark is famous but its proofs fell short. The record showed that Oakley has used the mark since 1985, has sold an average of about $15 million worth of the goods on an annual basis, that it has expended $62,500 per year on advertising, and has sold about 156,250 units per year. The Board, however, noted that long use alone does not establish fame. Oakley offered no evidence of market share and no evidence as to how its advertising expenditures compare to those of competitors. Moreover, the FROGSKINS mark does not appear without the OAKLEY house mark.

Nonetheless, the Board found that FROGKSINS is a “commercially strong mark entitled to a broad scope of protection or exclusivity of use in connection with sunglasses and related accessories, but it does not have the extensive public recognition and renown of a famous mark.”

Comparing the Goods: Oakley argued that the goods are related because it sells “goods that compete with the goods identified in Applicant’s Application, under its house brand,” namely, computer bags and “wristlets” that are able to hold cell phones. These goods, Oakley asserted, are sold in close proximity to its eyewear products.

The fact that Oakley sells the same goods as applicant, even under a different mark, is relevant for the issue of relatedness of the goods. However, there was no testimony or evidence that any other third-party manufactures or sells eyewear and eyewear accessories and “protective covers and cases for cell phones, laptop computers, tablet computers and portable media players.”

Oakley submitted a copy of Applicant JMM Lee’s cancelled use-based registration for the mark FROGSKINS for “sunglasses, sunglass lenses, eyewear cases . . . ,” but the Board observed that a cancelled or expired registration has no probative value other than to show that it once issued. [Not sure why this doesn’t have some probative value on the issue of the relatedness of the involved goods. – ed.].

Oakley also contended that because it sells the products that applicant identified, its planned expansion of the FROGSKINS line to those products lends support that Applicant’s protective covers and cases for cell phones are within Oakley’s natural zone of expansion for eyewear and sunglasses. The Board, however, found “no evidence from which to determine if Applicant’s goods are or are not a distinct departure from Opposer’s eyewear and eyewear accessories.”

There is no testimony or evidence establishing that the nature or purpose of Opposer’s eyewear and eyewear accessories is related to Applicant’s protective covers. There is no testimony or evidence establishing that the channels of trade for Opposer’s eyewear and eyewear accessories are similar to Applicant’s protective covers. There is no testimony or evidence establishing that other companies sell both eyewear and eyewear accessories and protective covers.

Therefore Oakley failed to prove its natural zone of expansion claim.

Trade Channels and Purchasers: There was no evidence or testimony as to how and to whom eyewear products and protective covers are sold, how those products would be encountered by the same consumers, or how the marketing efforts of the parties overlap. In short, Oakley failed to meet its burden to prove that the involved goods are offered in the same channels of trade to the same classes of consumers.

Bad Faith: Oakley claimed bad faith under the thirteenth du Pontfactor, asserting that applicant has a business model of trading on the well-known brands of others. In support, Oakley relied on certain documents produced by applicant in response to its production requests. However, documents produced in response to a Rule 34 request are not admissible by way of notice of reliance. Trademark Rule 2.120(k)(3)(ii), 37 C.F.R. § 2.120(k)(3)(ii) (A party that has obtained documents from another party through disclosure or under Rule 34 of the Federal Rules of Civil Procedure may not make the documents of record by notice of reliance alone, except to the extent that they are admissible by notice of reliance under the provisions of § 2.122(e), or the party has obtained an admission or stipulation from the producing party that authenticates the documents.”). And so this evidence of purported bad faith was rejected as inadmissible.

Conclusion: Balancing the relevant du Pont factors, the Board found that applicant’s mark is not likely to cause confusion with Oakley’s registered mark, and so it dismissed the opposition.

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TTABlog comment: I wonder whether a civil action for review under Section 1071 is in the offing, so that Oakley can add additional evidence in a trial de novo?

Text Copyright John L. Welch 2018.