estta tracking number: estta1093640 11/05/2020
TRANSCRIPT
Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
ESTTA Tracking number: ESTTA1093640
Filing date: 11/05/2020
IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
Proceeding 91244286
Party PlaintiffThe Coca-Cola Company
CorrespondenceAddress
BRUCE W BABERKING & SPALDING LLP1180 PEACHTREE STREET NEATLANTA, GA 30309UNITED STATESPrimary Email: [email protected] Email(s): [email protected], [email protected],[email protected], [email protected]
Submission Brief on Merits for Plaintiff
Filer's Name Bruce W. Baber
Filer's email [email protected], [email protected], [email protected]
Signature /Bruce W Baber/
Date 11/05/2020
Attachments 2020.11.05 TCCC Opening Brief.pdf(432371 bytes )
IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
THE COCA-COLA COMPANY, )
) Opposer, )
) OPPOSITION NO. 91244286 v. )
) ROBERT TROY HOFF, )
) Applicant. )
OPPOSER THE COCA-COLA COMPANY’S OPENING BRIEF ON THE MERITS
Bruce W. Baber KING & SPALDING LLP 1180 Peachtree Street Atlanta, Georgia 30309 404-572-4600 Kathleen E. McCarthy KING & SPALDING LLP 1185 Avenue of the Americas New York, New York 10036 Attorneys for Opposer THE COCA-COLA COMPANY
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TABLE OF CONTENTS INTRODUCTION ................................................................................................ 5 STATEMENT OF THE ISSUES ......................................................................... 7 DESCRIPTION OF THE RECORD .................................................................... 7
A. The File History of the Opposed Application ................................. 8
B. TCCC’s Evidence ......................................................................... 8
C. Applicant’s Evidence ................................................................... 10
BACKGROUND AND FACTS .......................................................................... 11
A. TCCC and the COCA-COLA Script Mark .....................................11
B. The Opposed Application .............................................................22
ARGUMENT AND CITATION OF AUTHORITIES ............................................ 24 I. TCCC’S OPPOSITION SHOULD BE SUSTAINED ............................... 24
A. TCCC’s Standing to Oppose ....................................................... 24
B. TCCC’s Section 2(d) Likelihood of Confusion Claim ................... 25
1. The TCCC COCA-COLA Script Mark Is Strong and Famous ...................................................... 26
2. The Marks Convey Similar Commercial Impressions ...................................................28
3. The Parties’ Goods Are Identical ...................................... 29
4. The Channels of Trade and Classes of Purchasers are the Same ............................... 30
5. Other du Pont Factors .......................................................30
C. TCCC’s Section 43(c) Dilution Claim .......................................... 33
CONCLUSION ................................................................................................. 36
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TABLE OF AUTHORITIES
CASES Bose Corp. v. QSC Audio Prods., Inc., 293 F.3d 1367, 63 USPQ2d 1303 (Fed. Cir. 2002) .................................... 27, 29 Bridgestone Ams. Tire Operations LLC v. Fed. Corp., 673 F.3d 1330, 102 USPQ2d 1061 (Fed. Cir. 2012) ......................................... 29 CBS, Inc. v. Morrow, 708 F.2d 1579, 1581, 218 USPQ 198 (Fed. Cir. 1983) ..................................... 30 Century 21 Real Estate Corp. v. Century Life of Am., 970 F.2d 874, 23 USPQ2d 1698 (Fed. Cir. 1992) ............................................. 29 Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713 (Fed. Cir. 2012) ......................................... 33 Coca-Cola Co. v. Gemini Rising, Inc., 346 F. Supp. 1183, 175 USPQ 56 (E.D.N.Y. 1972) .................................... 27, 36 Coca-Cola Co. v. Koke Co., 254 U.S. 143 (1920) ......................................................................................... 27 Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842 (Fed. Cir. 2000) ...................................... 25, 26 Federal Bureau of Investigation v. Societe: “M. Bril & Co.”, 172 USPQ 310 (TTAB 1971) ............................................................................. 31 Hilson Research, Inc. v. Society for Human Resource Management, 27 USPQ2d 1423 (TTAB 1993) ......................................................................... 31 HRL Assocs. Inc. v. Weiss Assocs. Inc., 12 USPQ2d 1819 (TTAB 1989), aff’d, 902 F.2d 1546, 14 USPQ2d 1840 (Fed. Cir. 1990) .................................. 32 In re Artic Elecs. Co., 220 USPQ 836 (TTAB 1983) ............................................................................. 32 In re Coors Brewing Co., 343 F.3d 1340, 68 USPQ2d 1059 (Fed. Cir. 2003) ........................................... 27
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In re Dixie Rests., Inc., 105 F.3d 1405, 41 USPQ2d 1531 (Fed. Cir. 1997) ........................................... 26 In re E. I. Du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (C.C.P.A. 1973) ............................................... 26 In re i.am.symbolic, llc, 866 F.3d 1315, 123 USPQ2d 1744 (Fed. Cir. 2017) ......................................... 30 It’s a 10, Inc. v. Beauty Elite Group, Inc., 110 USPQ2d 1116 (S.D. Fla. 2013) ................................................................... 5 Kenner Parker Toys, Inc. v. Rose Art Indus., Inc., 963 F.2d 350, 22 USPQ2d 1453 (Fed. Cir. 1992) ............................................. 28 Monster Energy Co. v. Cavaliers Hockey Holdings, Inc., Opposition No. 91240680, 70 TTABVUE (TTAB Oct. 6, 2020) ......................... 30 Nextel Communications Inc. v. Motorola Inc., 91 USPQ2d 1393 (TTAB 2009) ......................................................................... 25 Nike Inc. v. Maher, 100 USPQ2d 1018 (TTAB 2011) ....................................................................... 29 Nike, Inc. v. Muntean, Opposition No. 91247956, 32 TTABVUE (TTAB Sept. 10, 2020) ......... 28, 34, 36 N.Y. Yankees P’ship v. IET Prods. & Servs., Inc., 114 USPQ2d 1497 (TTAB 2015) ................................................................. 35, 36 Octocom Systems Inc. v. Houston Computer Services, Inc., 918 F.2d 937, 16 USPQ2d 1783 (Fed. Cir. 1990) ............................................. 30 Palm Bay Imports, Inc. v. Veuve Clicquot Ponsardin Maison Fondee en 1772, 396 F.3d 1369, 73 USPQ2d 1689 (Fed. Cir. 2005) ..................................... 26, 27 Philip Morris, Inc. v. Liggett & Meyers Tobacco Co., 139 USPQ 240 (TTAB 1963) .......................................................................... 10n Primrose Ret. Communities, LLC v. Edward Rose Senior Living, LLC, 122 USPQ2d 1030 (TTAB 2016) ...................................................................... 25 Recot, Inc. v. Becton, 214 F.3d 1322, 54 USPQ2d 1894 (Fed. Cir. 2000) ........................................... 27
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Ritchie v. Simpson, 170 F.3d 1092, 50 USPQ2d 1023 (Fed. Cir. 1999) ........................................... 25 Thompson v. Spring-Green Lawn Care Corp., 466 N.E.2d 1004 (Ill. 1st Dist. 1984) ................................................................ 10n Toro Co. v. ToroHead Inc., 61 USPQ2d 1164 (TTAB 2001) ......................................................................... 33 UMG Recordings, Inc. v. Mattel, Inc., 100 USPQ2d 1868 (TTAB 2011) .......................................................... 25, 28, 33 Uncle Ben’s Inc. v. Stubenberg Int’l Inc., 47 USPQ2d 1310 (TTAB 1998) ......................................................................... 30 OTHER AUTHORITIES 15 U.S.C. § 1125(c)(2)(A) .......................................................................... 33, 34 15 U.S.C. § 1125(c)(2)(B) ................................................................................. 35 37 C.F.R. § 2.120(k)(5) .................................................................................. 10n 37 C.F.R. § 2.122(b) ........................................................................................... 8 TBMP § 704.03(a) .............................................................................................. 8
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INTRODUCTION
Opposer The Coca-Cola Company (“TCCC” or “the Company”) is the well-known,
publicly-traded beverage company headquartered in Atlanta, Georgia. TCCC owns
several trademarks that are among the best-known and most famous marks in the world.
The best-known and most famous of TCCC’s marks is its iconic mark COCA-COLA,
presented in Spencerian script (the “COCA-COLA Script Mark”), as shown below:
TCCC and its predecessors have used the COCA-COLA Script Mark for over one
hundred and thirty years, for TCCC’s flagship COCA-COLA sparkling beverage products
and, in more recent decades, for a wide variety of other goods, including clothing. The
COCA-COLA Script Mark is the subject of numerous federal registrations, many of which
are incontestable—including at least three incontestable registrations for clothing or other
items in International Class 25. Like many other owners of famous marks, TCCC has
actively licensed the COCA-COLA Script Mark for many years. TCCC has also used the
distinctive script of the COCA-COLA Script Mark and elements of the COCA-COLA Script
Mark in a variety of contexts, in all of which the script is instantly recognizable as
associated with TCCC.
It is not an exaggeration to say that the COCA-COLA Script Mark is one of the
most famous marks both in the United States and in the world, and it has been
consistently recognized as such by commentators and the courts. See, e.g., It’s a 10,
Inc. v. Beauty Elite Group, Inc., 110 USPQ2d 1116 (S.D. Fla. 2013) (“party claiming
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dilution must establish that its mark is practically a household name, of the likes of such
giants of branding as Exxon, Kodak and Coca-Cola.”) The COCA-COLA Script Mark is
one of the “household names” that are widely recognized by the consuming public in the
United States. It is entitled to the broadest scope of protection possible under the Lanham
Act.
Applicant Robert Hoff (“Applicant” or “Hoff”) seeks to register as a mark for ten
types of apparel items a mark that is plainly based on, and is intended to call to mind and
trade on, the goodwill of the TCCC COCA-COLA Script Mark:
Applicant’s alleged “Conceal-Carry” mark includes each of the unique and highly
distinctive elements of the COCA-COLA Script Mark, including the distinctive
presentations of the capital letter “C” in “Coca” and the capital letter “C” in “Cola.”
Applicant even includes in his mark a hyphen like the COCA-COLA Script Mark, even
though “conceal-carry” is not a hyphenated word. Applicant’s alleged mark was blatantly
copied from the famous COCA-COLA Script Mark that is ubiquitous and associated
exclusively with TCCC and its products.
The evidence of record establishes the fame of the COCA-COLA Script Mark and
its extraordinary strength as a mark. Application of the Board’s well-established tests for
likelihood of confusion under Section 2(d) and likelihood of dilution under Sections 2 and
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43(c) yields only one possible result—that Applicant’s alleged mark is likely to cause
confusion, is likely to cause dilution, and should be denied registration.
STATEMENT OF THE ISSUES
The issues to be decided in this proceeding are:
1. Has TCCC carried its burden of proving, by a preponderance
of the evidence, that Applicant’s alleged “Conceal-Carry” mark so
resembles TCCC’s COCA-COLA Script Mark as to be likely, when used in
connection with Applicant’s apparel goods, to cause confusion, or to cause
mistake, or to deceive within the meaning of Section 2(d) of the Lanham
Act?
2. Has TCCC carried its burden of proving, by a preponderance
of the evidence, that Applicant’s alleged “Conceal-Carry” mark is likely,
when used in connection with Applicant’s apparel goods, to cause dilution
of TCCC’s famous COCA-COLA Script Mark within the meaning of Section
43(c) of the Lanham Act?
DESCRIPTION OF THE RECORD
The record consists of the file history of Applicant’s application and the
documentary and testimonial evidence made of record by TCCC during its opening trial
testimony period.
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A. The File History of the Opposed Application
The USPTO file of Applicant’s application to register his alleged “Conceal-Carry
mark,” Serial No. 87-822,744 (the “Opposed Application”), is automatically of record in
this proceeding. 37 C.F.R. § 2.122(b); TBMP § 704.03(a).
The prosecution history of the Opposed Application includes the Examining
Attorney’s file notes dated June 29, 2018 regarding his communications with Applicant’s
counsel concerning the Examining Attorney’s requirement of a disclaimer of all the words
in the alleged mark, i.e., the words “Conceal Carry Registered Handgun.” Jun. 29, 2018
Notation to File, TSDR. It also includes an Examiner’s Amendment dated that same day,
entering such a disclaimer in the application record after Applicant’s counsel agreed to
the disclaimer. Jun. 29, 2018 Examiners Amendment, TSDR p. 1.
The prosecution history also shows that the Examining Attorney’s search of the
office records was based on phonetic elements of the words in Applicant’s alleged mark
and the words “conceal,” “carry,” “register,” “hand” and “gun”—and that the total search
duration was 1 minute, 2 seconds, with the Examining Attorney’s total search session
lasting only 30 minutes and 56 seconds. Jun. 27, 2018 XSearch Search Summary,
TSDR. There is no indication that the Examining Attorney’s search would have identified
or in fact identified any of TCCC’s registrations for the COCA-COLA Script Mark.
The prosecution history is otherwise unremarkable.
B. TCCC’s Evidence
TCCC made the following evidence of record during its opening trial period:
• A testimony declaration from Jaideep Kibe, Vice President,
Coca-Cola TM of Opposer TCCC (“Kibe Decl.”), together with
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Exhibits A through S to that declaration, filed on February 24, 2020
(18 TTABVUE);
• TCCC’s First Notice of Reliance on Applicant’s Discovery
Responses (“TCCC First NOR”), filed on February 24, 2020 (16
TTABVUE), with which TCCC made of record:
• Applicant’s Responses to TCCC’s First Set of Interrogatories,
served on August 8, 2019 (16 TTABVUE Ex. A, 4-18); and
• Applicant’s Responses to TCCC’s First Set of Requests for
Production of Documents, served on August 8, 2019 (16
TTABVUE Ex. B, 19-37); and
• TCCC’s Second Notice of Reliance on U.S. Patent and Trademark
Office Records (“TCCC Second NOR”), filed February 24, 2020 (17
TTABVUE), with which TCCC made of record:
• the TESS and TSDR records of five registrations owned by TCCC
for the COCA-COLA Script Mark for goods in International Class
32 number (17 TTABVUE Exx. C-G, 8-59); and
• the TESS and TSDR records of six registrations owned by TCCC
for the COCA-COLA Script Mark for goods in numerous
International Classes, including classes 6, 8, 9, 11, 14, 16, 18,
20, 21, 24, 25, 26 and 28 (17 TTABVUE Exx. H-M, 60-133).
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C. Applicant’s Evidence
Applicant did not make of record during his trial testimony period any testimony,
declarations, discovery depositions or other testimonial evidence,1 and did not properly
make any evidence of record at all during his trial testimony period. The only materials
Applicant attempted to make of record at any time are three documents that Applicant
attached to a document entitled “Applicant Notice Of Reliance” filed by Applicant’s
counsel on March 11, 2020. 19 TTABVUE. Applicant made that filing, however, on the
day after Applicant’s pretrial disclosures were due and approximately two weeks before
Applicant’s trial period began. See 14 TTABVUE (consent motion), 15 TTABVUE (order
granting motion).
The three documents attached to Applicant’s premature notice of reliance are:
(a) a copy of an Illinois state registration for Applicant’s alleged mark; (b) Applicant’s initial
disclosures in this proceeding, served on March 1, 2019; and (c) Applicant’s responses
to TCCC’s first set of interrogatories, served on August 8, 2019. 19 TTABVUE.2
1 Applicant also did not cross-examine Mr. Kibe of TCCC regarding the testimony Mr. Kibe provided in his declaration submitted by TCCC. 2 To the extent the Board deems Applicant’s three documents timely made of record, TCCC objects to them on the following grounds: (1) the Illinois state registration is not authenticated, is irrelevant to this proceeding, and provides no defense to Applicant, see Philip Morris, Inc. v. Liggett & Meyers Tobacco Co., 139 USPQ 240 (TTAB 1963); Thompson v. Spring-Green Lawn Care Corp., 466 N.E.2d 1004, 1013 (Ill. 1st Dist. 1984); (2) Applicant may not introduce or rely on his counsel’s unsworn initial disclosures for any purpose; and (3) while TCCC may rely on Applicant’s interrogatory answers, Applicant may not rely on his own interrogatory answers as evidence. 37 C.F.R. § 2.120(k)(5).
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BACKGROUND AND FACTS
A. TCCC and the COCA-COLA Script Mark
Jaideep Kibe, TCCC’s declarant, is a long-time marketing employee of TCCC who
currently serves as Vice President, Coca-Cola TM for TCCC and has held that position
since May 2017. Kibe Decl., 18 TTABVUE 3-4, ¶¶ 1, 3. Prior to being elevated to his
current position, Mr. Kibe served as Global Brand Director, Coca-Cola for four years
(2013-2017) and, prior to that, had worked in various marketing roles for TCCC and its
affiliates for over sixteen years, beginning in 1997. Kibe Decl., 18 TTABVUE 3-4, ¶¶ 1, 3.
Mr. Kibe has had specific responsibility for TCCC’s COCA-COLA brand products
since 2013. As a result, he is familiar with TCCC’s COCA-COLA marks and other brand
properties, including the iconic, familiar and distinctive COCA-COLA Script Mark. Kibe
Decl., 18 TTABVUE 4, ¶ 4. Based on his review of the files and records of TCCC and his
personal knowledge, Mr. Kibe attested to the following facts, Kibe Decl., 18 TTABVUE 4,
¶ 5, which are uncontroverted in the record.
TCCC began use of the original form of the COCA-COLA Script Mark in 1887.
Kibe Decl., 18 TTABVUE 4, ¶ 6. That form of the mark, which is shown below, is the
subject of registration number 22,406, which was issued on January 31, 1893, and is still
in effect:
Kibe Decl., 18 TTABVUE 4-5, ¶ 7; TCCC Second NOR, TCCC Ex. C, 17 TTABVUE 8-12.
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TCCC is the owner of the following additional U.S. federal trademark registrations,
each of which is for a form of the COCA-COLA Script Mark or includes a form of the
COCA-COLA Script Mark, is for soft drinks, and is incontestable:
Mark Registration
No. Issue Date Goods
238,146 1/31/1928 Beverages and syrups for the manufacture of such
beverages
1,257,789 11/15/1983 Soft drinks
1,432,152 3/10/1987 Soft drinks
3,252,896 6/19/2007
Non-alcoholic beverages, namely, soft drinks; and
syrups and concentrates for making beverages, namely,
soft drinks
Kibe Decl., 18 TTABVUE 5-6, ¶ 8; TCCC Second NOR, TCCC Exx. D-G, 17 TTABVUE
13-59.
TCCC is also the owner of the following incontestable registrations for the
COCA-COLA Script Mark for a wide variety of goods in addition to soft drinks:
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Mark Registration
No. / Issue Date
Goods
1,277,043
5/8/1984
Class 24: Domestic linens and textile products - namely, sheets, pillow cases, blankets, comforters, bedspreads, drapes, curtains and slumber bags -
namely, a comforter folded and constructed to look like a sleeping bag, for indoor use only
1,287,644
7/31/1984
Class 6: Keyrings; money clips (not made of precious metal)
Class 8: Nonelectric can/bottle openers
Class 9: Thermometers; radios; calculators; sunglasses
Class 11: Electric lamps and lighting fixtures
Class 14: Clocks; watches; jewelry - namely, charms, pendants, bracelets, necklaces, money clips (made of
precious metal) and keyrings
Class 16: Writing instruments - namely, pens; pencils and mechanical pencils; folders and portfolios for
papers; calendars; pen and pencil holders; paper clip holders; paper weights; playing cards; paper napkins;
postcards; posters and adhesive stickers
Class 18: Purses and handbags; wallets; business folders - namely, brief case type portfolios, attache cases (made of leather and vinyl); various bags -
namely, garment bags for travel, all purpose sporting goods bags, gym bags and all purpose gear carrying
bags made of leather, vinyl and fabric; umbrellas; luggage tags and luggage
Class 20: Mirrors
Class 21: Porcelain dishware - namely, plates, bowls, cups and mugs; dishware made of non-precious metal - namely, dishes, bowls, goblets, tankards, cups, coasters; serving trays, plastic dishware -
namely, mugs, bowls, coasters and cups; insulated beverage holders, ice chests and beverage coolers
Class 25: Clothing - namely, mens and womens t-shirts, sport shirts, night shirts, sweaters, jackets,
shorts, socks, uniforms for work; hats; neckties
Class 26: Badges
Class 28: Sporting equipment - namely, tennis balls; golf balls; golf tees; golf clubs; bats; toys - namely,
cars; trucks; and flying discs
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Mark Registration
No. / Issue Date
Goods
1,451,756
8/11/1987
Class 6: Containers and banks made of tin and metal
Class 9: Decorative magnets
Class 11: Electric portable coolers which operate like a refrigerating unit and barbeque grills
Class 14: Jewelry, namely lapel pins made of brass and enamel; and pins and medallions made of
precious metal
Class 16: Greeting cards, bookmarks and erasable memo boards, paper napkins
Class 20 Garden umbrellas
Class 21: Insulated picnic and lunch containers, picnic baskets, decanters
Class 24: Towels, potholders, hot mitts
Class 25: Men’s and women’s shirts, blouses, aprons, jackets and caps
Class 28: Puzzles, dart boards, nonpowered toy vehicles, die cast metal vehicles, railroad cars, trains,
and Christmas ornaments
1,493,254
6/21/1988
Class 25: Footwear
1,530,904
3/21/1989
Class 21: Plastic cups
1,569,612
12/5/1989
Class 16: Paper goods, specifically napkins
Class 21: Cups and plates
Kibe Decl., 18 TTABVUE 6-8, ¶ 9; TCCC Second NOR, TCCC Exx. H-L, 17 TTABVUE
60-133.
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As the marks shown in the registrations identified above demonstrate, TCCC has
consistently used the COCA-COLA Script Mark in a form that includes distinctive
presentations of the capital letter “C” in “Coca” and the capital letter “C” in “Cola.” Those
letters are characterized by: (a) a long “tail” on the “C” in “Coca” that extends below the
remaining letters of “Coca” and includes two distinctive points towards the end of the “tail,”
and by (b) a distinctive loop and swirl element at the top of the “C” in “Cola” that extends
over the remaining letters of “Cola” and passes through the loop of the letter “l” and (c) a
distinctive lower portion of the “C” in “Cola” that, like the “C” in “Coca,” includes two
distinctive points (collectively, the “Distinctive Capital C Elements”). Kibe Decl., 18
TTABVUE 8, ¶ 10.
TCCC has also consistently used the COCA-COLA Script Mark in the color red.
The Company’s use of the COCA-COLA Script Mark in red and white has been
ubiquitous, consistent and sustained for many decades. Kibe Decl., 18 TTABVUE 8-9,
¶ 11.
TCCC maintains corporate archives that contain, among other materials,
examples of advertising and marketing materials that TCCC and its bottlers and
customers (such as retailers) have used over the years. The records contained in those
archives are a rich source of documentation of the use of the COCA-COLA Script Mark
since its adoption and first use in 1887. Those archives are extensive and, because the
COCA-COLA Script Mark is the Company’s oldest, most well-known and most valuable
mark, they contain many, many examples of the advertising and marketing materials used
over the years that bear the COCA-COLA Script Mark. Kibe Decl., 18 TTABVUE 9, ¶ 12.
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Attached to Mr. Kibe’s declaration as Exhibits A through M are representative
examples from each decade, beginning with the 1890s and ending with the 2010s, of
packaging and advertising materials that show use of the COCA-COLA Script Mark. Kibe
Decl., 18 TTABVUE 9-10 (¶ 13), 18-56 (Exx. A-M). Those materials are the following:
Exhibit Decade Materials
A 1890-1899 Coca-Cola syrup urn and coupon
B 1900-1909 Coca-Cola bottle with script mark and advertising sign
C 1910-1919 Coca-Cola bottle with script mark and serving tray
D 1920-1929 Coca-Cola cooler and advertisement
E 1930-1939 Coca-Cola fountain dispenser and advertisement
F 1940-1949 Coca-Cola advertisement and outdoor sign
G 1950-1959 Coca-Cola advertisements with bottle bearing script mark
H 1960-1969 Coca-Cola outdoor signage and advertisement
I 1970-1979 Coca-Cola advertisement and beach pants
J 1980-1989 Coca-Cola advertisements
K 1990-1999 Coca-Cola advertisements
L 2000-2009 Coca-Cola cooler and Coca-Cola Zero packaging
M 2010-2019 Coca-Cola advertisement and Coca-Cola Energy packaging
The archives of the Company include a booklet entitled “125 years of sharing
happiness – A Short History of The Coca-Cola Company,” which was created in
connection with the Company’s 125th anniversary in 2011. Kibe Decl., 18 TTABVUE 10,
¶ 14. A true and correct copy of that booklet is attached to Mr. Kibe’s declaration as
Exhibit N. That booklet indicates that the “famous Spencerian script logo” form of the
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COCA-COLA mark was created in 1886. The booklet includes numerous additional
examples of advertising and other materials bearing the COCA-COLA Script Mark that
the Company has used throughout its history. Kibe Decl., 18 TTABVUE 57-84, Ex. N.
The archives of the Company also include a document entitled “Evolution of the
Coca-Cola Trademark 1880’s to the Present,” a true and correct copy of which document
is attached to Mr. Kibe’s declaration as Exhibit O. Kibe Decl., 18 TTABVUE 11 (¶ 15),
85-86 (Ex. O). That document demonstrates that the COCA-COLA Script Mark has
featured some or all of the Distinctive Capital C Elements identified above since the late
1880s. Kibe Decl., 18 TTABVUE 85-86, Ex. O.
Third parties not associated with the Company often refer to the COCA-COLA
Script Mark as an “iconic” or “famous” logo or mark. Examples of such references are
attached to Mr. Kibe’s declaration as Exhibit P. Kibe Decl., 18 TTABVUE 11 (¶ 16),
87-125 (Ex. P). These references include: (1) an article identifying the COCA-COLA
Script Mark as an “iconic logo,” Kibe Decl. Ex. P, 18 TTABVUE 88-92; (2) an article
identifying the COCA-COLA Script Mark as a “famous logo,” Kibe Decl. Ex. P, 18
TTABVUE 93-108; (3) an article characterizing COCA-COLA as “probably the world’s
most widely recognized brand” and the COCA-COLA Script Mark specifically as a
“famous logo” and “the Famous Script,” Kibe Decl. Ex. P, 18 TTABVUE 109-121; and
(4) an article identifying “Coca-Cola’s famous logo” as a “Design Icon.” Kibe Decl. Ex. P,
18 TTABVUE 122-123.
Third parties not associated with the Company often rank the COCA-COLA Script
Mark as one of the most valuable trademarks in the world. Kibe Decl., 18 TTABVUE 11,
¶ 17. Examples of such references are attached to Mr. Kibe’s declaration as Exhibit Q
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and include (1) an article characterizing Coca-Cola as “the most valuable soft drink
brand,” Kibe Decl. Ex. Q, 18 TTABVUE 127-130; and (2) a 2018 article identifying
COCA-COLA as one of the “world’s most valuable brands,” with a value of $57.3 billion.
Kibe Decl. Ex. Q, 18 TTABVUE 131-135.
TCCC uses the COCA-COLA Script Mark on beverage products as well as on a
wide variety of licensed products, including t-shirts and other clothing items, and has done
so for many years. Kibe Decl., 18 TTABVUE 11, ¶ 18. Attached to Mr. Kibe’s declaration
as Exhibit R are examples of product packaging for beverage products that is currently in
use in the United States and that bears the COCA-COLA Script Mark. Kibe Decl., 18
TTABVUE 136-138, Ex. R. The COCA-COLA Script Mark is used for all of TCCC’s
beverage products on which the COCA-COLA mark is used, including COCA-COLA,
COCA-COLA Zero Sugar, Cherry COCA-COLA, Vanilla COCA-COLA, Cherry Vanilla
COCA-COLA, Orange Vanilla COCA-COLA, Coke Life, and, most recently, COCA-COLA
Energy. Kibe Decl., 18 TTABVUE 11 (¶ 18), 136-138 (Ex. R).
Attached to Mr. Kibe’s declaration as Exhibit S are examples of apparel and other
clothing items that are currently on sale in the United States and that bear the
COCA-COLA Script Mark. Kibe Decl., 18 TTABVUE 11-12, (¶ 19), 139-191 (Ex. S).
Examples of many other items bearing the COCA-COLA Script Mark that are currently on
sale in the United States can be found in the online Coca-Cola Store, located at
www.cokestore.com. As Mr. Kibe’s Exhibit S demonstrates, the apparel items bearing
the COCA-COLA Script Mark that TCCC and its licensees have sold and currently sell
include hats, hoodies, jackets, jerseys, sweaters and t-shirts of many kinds. Kibe Decl.
Ex. S, 18 TTABVUE 168, 170 (hats), 175, 177 (hoodies), 162, 166, 167 (t-shirts).
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The exhibits to Mr. Kibe’s declaration demonstrate that, as noted above, TCCC
often uses the COCA-COLA Script Mark in the color red, often with a white background.
Kibe Decl., 18 TTABVUE 19-20 (Ex. A), 26 (Ex. C), 53 (Ex. L), 55 (Ex. M), 67, 73, 84
(Ex. N), 146, 150, 175, 177 (Ex. S). TCCC also uses the mark on different color
backgrounds, including black, on apparel and other items. Kibe Decl., 18 TTABVUE 145,
150, 151, 168, 177 (Ex. S).
The uses of the COCA-COLA Script Mark on product packaging for beverage
products and on apparel and other items shown in Mr. Kibe’s declaration are typical and
are representative of uses of the COCA-COLA Script Mark that have been made by TCCC
for many years and since long prior to 2018. Kibe Decl., 18 TTABVUE 12, ¶ 21.
The COCA-COLA Script Mark has been prominently displayed in a wide variety of
settings that result in the exposure of significant numbers of members of the general
public to the COCA-COLA Script Mark. Kibe Decl., 18 TTABVUE 12, ¶ 22. As just a few
examples, TCCC has maintained prominent outdoor advertising in Times Square in New
York City for many decades. TCCC has also been a worldwide sponsor of the Olympic
Games since 1928 and a worldwide sponsor of the FIFA soccer World Cup tournament
since 1978. Advertising featuring the COCA-COLA Script Mark has appeared in arenas
and stadiums and on television broadcasts of Olympic and World Cup events (and many
other sporting events) for many years. Kibe Decl., 18 TTABVUE 12, ¶ 22.
Because the COCA-COLA Script Mark has been in use for more than 130 years,
it is difficult to state with accuracy the total amounts spent advertising, promoting and
marketing the COCA-COLA Script Mark and the TCCC products bearing that mark. Kibe
Decl., 18 TTABVUE 12-13, ¶ 23. The amounts spent include not only amounts spent by
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TCCC itself, but would also include amounts spent by TCCC’s bottlers, who prepare and
market (and advertise and promote) the finished products; by TCCC’s licensees, who
manufacture and sell licensed merchandise bearing the COCA-COLA Script Mark; and
by the multitude of retailers who sell Coca-Cola products at retail to consumers. The
amounts that TCCC itself spends is therefore only a portion of the total amounts spent on
advertising and promotion that features the COCA-COLA Script Mark. Kibe Decl., 18
TTABVUE 12-13, ¶ 23.
Over the past five years, TCCC has spent hundreds of millions of dollars annually
on advertising, marketing and promotional activities in the United States that have
included the COCA-COLA Script Mark. Kibe Decl., 18 TTABVUE 13, ¶ 24. These
activities have included a wide variety of television and radio commercials, outdoor
advertising, print advertising, online Internet advertising, product packaging and point-of-
sale materials. As this list shows, TCCC uses the COCA-COLA Script Mark in virtually
all forms of media that are available, and does so extensively. Kibe Decl., 18 TTABVUE
13, ¶ 24. TCCC spent several billion dollars for advertising, marketing and promotion of
products bearing the COCA-COLA Script Mark in the United States during just the
five-year period 2015-2019. Kibe Decl., 18 TTABVUE 13, ¶ 24.
In addition to amounts spent in advertising, marketing and promotional activities
relating to COCA-COLA brand beverage products, TCCC also spends significant
amounts in connection with advertising, marketing and promotional activities relating
specifically to licensed merchandise bearing the COCA-COLA Script Mark. Kibe Decl.,
18 TTABVUE 13-14, ¶ 25. Over the past five years, TCCC has spent many hundreds of
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thousands of dollars annually on such advertising, marketing and promotional activities
in the United States. Kibe Decl., 18 TTABVUE 13-14, ¶ 25.
It is also difficult to state with accuracy the total volume of historical sales of
products bearing the COCA-COLA Script Mark. Kibe Decl., 18 TTABVUE 14, ¶ 26. Over
the past five years alone, TCCC’s revenues from the sale of beverage products bearing
the COCA-COLA Script Mark in the United States have been nearly two billion dollars per
year, and TCCC’s revenues from the sale of apparel and other products bearing the
COCA-COLA Script Mark in the United States have been in the many hundreds of millions
of dollars. Kibe Decl., 18 TTABVUE 26, ¶ 14. TCCC’s total net revenues from the sale
of products bearing the COCA-COLA Script Mark in the United States during the period
2015-2019 exceeded ten billion dollars. Kibe Decl., 18 TTABVUE 14, ¶ 26.
As a result of TCCC’s extensive advertising, marketing and sales of products
bearing the COCA-COLA Script Mark, TCCC’s COCA-COLA beverage products are
routinely recognized as among the most popular and best-selling beverages of their type
in the United States. Kibe Decl., 18 TTABVUE 14, ¶ 27.
In recent years, TCCC has taken public positions on a number of issues of public
interest and/or concern, including environmental issues and personal choice, diversity
and lifestyle issues. As a result, consumers are accustomed to seeing TCCC take such
positions, and many consumers care regarding the positions that TCCC takes on such
issues. Kibe Decl., 18 TTABVUE 14, ¶ 28.
TCCC has not to date taken a public position on any issues relating to firearms,
gun control or the Second Amendment. Kibe Decl., 18 TTABVUE 14-15, ¶ 29. If TCCC
was incorrectly associated with a position that TCCC had not adopted or with which TCCC
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did not agree, TCCC would lose control of at least a portion of its goodwill and reputation
that the COCA-COLA Script Mark symbolizes, especially with consumers who do not
agree with the position. Kibe Decl., 18 TTABVUE 14-15, ¶ 29.
TCCC has historically used legends such as “Trade-Mark Registered” and “Reg.
U.S. Pat. Off.,” placed below the COCA-COLA Script Mark, in connection with its use of
the COCA-COLA Script Mark. Kibe Decl., 18 TTABVUE 16, ¶ 33 & Ex. O.
The alleged mark shown in Applicant’s application has the potential to do
significant harm to TCCC. Kibe Decl., 18 TTABVUE 16, ¶ 35. Even if purchasers of
apparel items bearing Mr. Hoff’s alleged “Conceal-Carry” mark are aware (or are made
aware) that the apparel was not sold by TCCC and agree with the “pro-Second
Amendment” message of the graphic, members of the public who are exposed to the
apparel when it is being worn will have no such awareness and—because of the blatant
imitation of the COCA-COLA Script Mark that is the largest element of the alleged mark—
could easily (but mistakenly) believe that TCCC authorized the use of the graphic and/or
that TCCC agrees with its message. Kibe Decl., 18 TTABVUE 16, ¶ 35.
B. The Opposed Application
Applicant Robert Troy Hoff, an individual resident of the State of Illinois, filed the
Opposed Application on March 6, 2018. The Application seeks to register Applicant’s
alleged “Conceal-Carry” mark for hats; hoodies; jackets; jerseys; sweaters; t-shirts;
graphic t-shirts; short-sleeved or long-sleeved t-shirts; and sports jerseys in International
Class 25. The Application was based on intent-to-use and was published for opposition
on August 21, 2018. TCCC filed its Opposition on October 22, 2018.
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In his responses to TCCC’s interrogatories, Mr. Hoff stated that he designed the
alleged “Conceal-Carry” mark “to express the support for the Second Amendment of the
United States Constitution, and the stemming therefrom laws [sic] permitting concealed
carry of registered handguns,” and that, “by offering for sale articles of clothing bearing
the Mark,” he “is targeting gun enthusiasts, and avid supporters of the Second
Amendment of the United States Constitution.” TCCC First NOR, TCCC Ex. A, 16
TTABVUE 9-10 (Interrogatory 8), 11 (Interrogatory 12).
The primary element of Mr. Hoff’s graphic—the phrase “Conceal-Carry” in
Spencerian script—is a blatant imitation of the COCA-COLA Script Mark. Kibe Decl., 18
TTABVUE 15-16, ¶ 32. Like “Coca-Cola,” the “Conceal-Carry” element consists of two
words, each of which begins with the letter “C,” separated by a hyphen. The
“Conceal-Carry” graphic includes each of the three Distinctive Capital C Elements of the
COCA-COLA Script Mark, i.e., (a) the long “tail” on the “C” in “Conceal,” which mimics the
“C” in “Coca,” extends below the remaining letters of “Conceal” and includes two
distinctive points towards the end of the “tail”; (b) the distinctive loop and swirl element at
the top of the “C” in “Carry,” which mimics the “C” in “Cola” and extends over the remaining
letters of “Carry”; and (c) the distinctive lower portion of the “C” in “Carry” that, like the “C”
in “Cola,” includes two distinctive points. Kibe Decl., 18 TTABVUE 15-16, ¶ 32.
Mr. Hoff’s alleged mark also includes, below the “Conceal-Carry” element, the
phrase “Registered Handgun”—which mimics the “Trade-Mark Registered” legend that
TCCC has historically used in a similar manner, below the COCA-COLA Script Mark.
Kibe Decl., 18 TTABVUE 16, ¶ 33 & Ex. O. Mr. Hoff’s discovery responses also indicate
that he has used his alleged mark on two items of apparel, namely a red hoodie
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sweatshirt, on which the “Conceal-Carry” graphic appears in white, and a black t-shirt on
which the graphic also appears in white. TCCC First NOR, 16 TTABVUE 6-7, 11-12
(TCCC Ex. A), 21-22, 32 (TCCC Ex. B). TCCC often uses these color combinations for
the TCCC COCA-COLA Script Mark, including on apparel items. See, e.g., 18 TTABVUE
137-138 (packaging), 146-147, 150, 162, 167, 170 (apparel).
ARGUMENT AND CITATION OF AUTHORITIES
I. TCCC’S OPPOSITION SHOULD BE SUSTAINED. TCCC asserts in its Opposition both a claim of priority and likelihood of confusion
under Section 2(d) and a claim of likelihood of dilution under Sections 2 and 43(c). The
opposition should be sustained on both grounds.3
A. TCCC’s Standing To Oppose
As a preliminary matter, TCCC has standing to assert its claims in this Opposition.
TCCC has a legitimate interest in preventing the registration of Applicant’s alleged
“Conceal-Carry” mark because TCCC is the owner of all right, title and interest in and to
the COCA-COLA Script Mark for both TCCC’s beverage products and apparel items
(among other goods), the parties’ goods are legally identical, and TCCC believes that it
will be damaged by the registration of Applicant’s alleged mark given the similarity
3 TCCC also asserted in its Opposition claims based on lack of a bona fide intent to use the mark and a claim under Section 2(a) based on false suggestion of a connection or affiliation. To simplify this proceeding, TCCC relies only on its likelihood of confusion and likelihood of dilution claims herein.
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between Applicant’s alleged mark and TCCC’s famous COCA-COLA Script Mark and the
similarity of the parties’ goods, the relevant consumers and the channels of trade.
“[T]he Federal Circuit has set forth a liberal threshold for determining standing,
namely, whether a plaintiff's belief in damage has a reasonable basis in fact and reflects
a real interest in the case.” Nextel Communications Inc. v. Motorola Inc., 91 USPQ2d
1393, 1400 (TTAB 2009), citing Ritchie v. Simpson, 170 F.3d 1092, 50 USPQ2d 1023
(Fed. Cir. 1999). TCCC’s standing is established with respect to its likelihood of confusion
and dilution claims by its federal trademark registrations for the COCA-COLA Script Mark,
made of record in this proceeding by TCCC’s Second Notice of Reliance. 17 TTABVUE;
see Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1844 (Fed. Cir.
2000); Primrose Ret. Communities, LLC v. Edward Rose Senior Living, LLC, 122
USPQ2d 1030, 1032 (TTAB 2016) (standing established based on pleaded registration
made of record).
B. TCCC’s Section 2(d) Likelihood of Confusion Claim
To prevail on its Section 2(d) claim, TCCC must prove that (1) it owns prior rights
in its COCA-COLA Script Mark; and (2) Applicant’s alleged “Conceal-Carry” mark for
apparel items is likely to cause confusion with the COCA-COLA Script Mark. See UMG
Recordings, Inc. v. Mattel, Inc., 100 USPQ2d 1868 (TTAB 2011).
The testimony of Jaideep Kibe, a Vice President of TCCC, and the documentary
USPTO evidence regarding TCCC’s registrations is undisputed and establishes TCCC’s
prior rights. TCCC and its predecessors have used the COCA-COLA Script Mark for over
130 years, the mark has been registered in Class 32 for more than 125 years; it has been
registered for apparel items since 1984; and TCCC’s three pleaded registrations for
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goods that include apparel items are all incontestable. Kibe Decl., 18 TTABVUE 4-8,
¶¶ 6-9; TCCC Second NOR, 17 TTABVUE, Exx. TCCC A-M.
Applicant’s application was filed on March 6, 2018 and does not claim any dates
of first use. TCCC clearly has priority both generally and with respect to apparel items
specifically.
In determining whether a mark is likely to cause confusion, the Board evaluates
the factors set forth in In re E. I. DuPont de Nemours & Co., 476 F.2d 1357, 177 USPQ
563, 567 (C.C.P.A. 1973). These factors are well known to the Board and need not be
recited in detail. An opposer does not need to show that every DuPont factor weighs in
its favor. Cunningham, supra, 222 F.2d at 947. While the likelihood of confusion analysis
considers all of the DuPont factors, it may focus on dominant or key factors such as the
strength of the plaintiff’s mark, the similarity of the parties’ respective marks, the
relatedness of the goods, and the similarity of the relevant trade channels and target
purchasers. Not all of the DuPont factors may be relevant or of equal weight in a given
case, and “any one of the factors may control a particular case.” In re Dixie Rests., Inc.,
105 F.3d 1405, 1406-07, 41 USPQ2d 1531, 1533 (Fed. Cir. 1997).
1. The TCCC COCA-COLA Script Mark Is Strong and Famous.
“Fame for confusion purposes arises as long as a significant portion of the relevant
consuming public . . . recognizes the mark as a source indicator.” Palm Bay Imports, Inc.
v. Veuve Clicquot Ponsardin Maison Fondee en 1772, 396 F.3d 1369, 1374-75, 73
USPQ2d 1689 (Fed. Cir. 2005) (“[T]he proper legal standard for evaluating the fame of a
mark under the fifth DuPont factor is the class of customers and potential customers of a
product or service, and not the general public.”). “While dilution fame is an either/or
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proposition—fame either does or does not exist— likelihood of confusion fame ‘varies
along a spectrum from very strong to very weak.’” Id., quoting In re Coors Brewing Co.,
343 F.3d 1340, 1344, 68 USPQ2d 1059 (Fed. Cir. 2003).
TCCC and its predecessors’ use of the COCA-COLA Script Mark has been
continuous since 1887, Kibe Decl., 18 TTABVUE 9-11, ¶¶ 12-15, and TCCC owns
numerous incontestable registrations for the COCA-COLA Script Mark for a wide variety
of goods in multiple classes. The evidence of record, summarized above, see pages
11-21, supra, demonstrates that the COCA-COLA Script Mark is an extremely strong and
famous mark, entitled to a broad scope of protection.
There is no evidence of record that shows that the COCA-COLA Script Mark is
anything other than one of the most well-known and strongest marks in the United States.
As long ago as 1920, the U.S. Supreme Court acknowledged that the Coca-Cola mark
“means a single thing coming from a single source, and well known to the community,”
Coca-Cola Co. v. Koke Co., 254 U.S. 143, 146 (1920), and, nearly fifty years ago, the
federal courts recognized the COCA-COLA Script Mark as “one of the three
most-recognized trademarks in the world.” Coca-Cola Co. v. Gemini Rising, Inc., 346 F.
Supp. 1183, 1187 n.1, 175 USPQ 56 (E.D.N.Y. 1972).
Where fame exists, it “plays a ‘dominant role in the process of balancing the
DuPont factors,’ ... and ‘[f]amous marks thus enjoy a wide latitude of legal protection.’”
Bose Corp. v. QSC Audio Prods., Inc., 293 F.3d 1367, 63 USPQ2d 1303, 1305 (Fed. Cir.
2002), quoting Recot, Inc. v. Becton, 214 F.3d 1322, 54 USPQ2d 1894, 1897 (Fed. Cir.
2000). As the Federal Circuit has stated, a strong mark “casts a long shadow which
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competitors must avoid.” Kenner Parker Toys, Inc. v. Rose Art Indus., Inc., 963 F.2d 350,
22 USPQ2d 1453, 1456 (Fed. Cir. 1992).
The evidentiary record in this proceeding establishes that the COCA-COLA Script
Mark is an extremely strong and exceedingly famous mark. It confirms the
appropriateness of the Board referring to COCA-COLA as an example of a famous mark
when considering other parties’ claims that their marks are famous. See, e.g., Nike, Inc.
v. Muntean, Opposition No. 91247956, 32 TTABVUE 8 (TTAB Sept. 10, 2020).
2. The Marks Convey Similar Commercial Impressions.
An oft-repeated test is “not whether the marks can be distinguished when
subjected to a side-by-side comparison, but rather whether the marks are sufficiently
similar in their entireties that confusion as to the source of the [goods] offered under the
respective marks is likely to result.” UMG Recordings, supra, 100 USPQ2d at 1885.
The COCA-COLA Script Mark and Applicant’s alleged “Conceal-Carry” mark
convey similar overall commercial impressions. Applicant’s mark incorporates the
Distinctive Capital C Elements that are unique to TCCC and are well-known to
consumers, and the presence of those elements makes it apparent that Applicant’s
alleged mark was copied from the COCA-COLA Script Mark:
“Because Opposer’s mark is famous, it enjoys a wide latitude of protection, and the
degree of similarity between the marks necessary to support a conclusion of likely
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confusion declines.” Nike Inc. v. Maher, 100 USPQ2d 1018, 1022 (TTAB 2011), citing
Bose, 63 USPQ2d at 1305.
3. The Parties’ Goods Are Identical.
The apparel goods identified in Applicant’s application are identical or at least
closely related to goods with respect to which TCCC has priority. TCCC uses and has
registered its COCA-COLA Script Mark for apparel items of numerous types in
International Class 25, including men’s and women’s t-shirts, sport shirts, night shirts,
sweaters, jackets, shorts, socks, work uniforms, hats and neckties, TCCC Second NOR,
17 TTABVUE 72-87 (TCCC Ex. I, Reg. No. 1,287,644), and men’s and women’s shirts,
blouses, aprons, jackets and caps. TCCC Second NOR, 17 TTABVUE 88-101 (TCCC
Ex. J, Reg. No. 1,451,756). Applicant seeks to register his alleged “Conceal-Carry” mark
in Class 25 for many of these same items, including hats, jackets, sweaters and t-shirts.
For purposes of Section 2(d) analysis, the parties’ Class 25 goods are as a matter of law
identical.
Where some of the goods are identical or legally identical, the marks need not be
as close as would be necessary if there were a disparity between the goods. See, e.g.,
Bridgestone Ams. Tire Operations LLC v. Fed. Corp., 673 F.3d 1330, 102 USPQ2d 1061,
1064 (Fed. Cir. 2012); Century 21 Real Estate Corp. v. Century Life of Am., 970 F.2d 874,
23 USPQ2d 1698, 1700 (Fed. Cir. 1992) (“When marks would appear on virtually identical
goods or services, the degree of similarity necessary to support a conclusion of likely
confusion declines.”).
In addition, TCCC uses its COCA-COLA Script Mark on a wide variety of licensed
and other products—which makes confusion even more likely. Use of a mark by an
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opposer on a variety of products makes it more likely that relevant consumers will be
confused by an applicant’s similar mark. See, e.g., Uncle Ben’s Inc. v. Stubenberg Int’l
Inc., 47 USPQ2d 1310, 1313 (TTAB 1998). And as the Board has recently recognized,
“[i]t is common knowledge that owners of famous marks frequently use those marks on
collateral or merchandising products such as clothing, mugs and other consumer goods.”
Monster Energy Co. v. Cavaliers Hockey Holdings, Inc., Opposition No. 91240680, 70
TTABVUE 34 (TTAB Oct. 6, 2020).
4. The Channels of Trade and Classes of Purchasers are The Same.
The Opposed Application does not contain any restrictions on the channels of
trade or target consumers for Applicant’s goods. The Board must therefore presume that
Applicant’s apparel goods will be marketed in all of the normal trade channels for such
goods and will be purchased by the usual classes of purchasers. See Octocom Systems
Inc. v. Houston Computer Services, Inc., 918 F.2d 937, 16 USPQ2d 1783 (Fed. Cir.
1990); CBS, Inc. v. Morrow, 708 F.2d 1579, 1581, 218 USPQ 198 (Fed. Cir. 1983). For
purposes of the Board’s Section 2(d) analysis, the parties’ channels of trade and classes
of purchasers overlap and should be considered identical and overlapping. In re
i.am.symbolic, llc, 866 F.3d 1315, 123 USPQ2d 1744, 1750 (Fed. Cir. 2017) (“In the
absence of meaningful limitations in either the application or the cited registrations, the
Board properly presumed that the goods travel through all usual channels of trade and
are offered to all normal potential purchasers.”).
5. Other du Pont Factors
There is no evidence in the record of similar marks in use on similar goods. While
there is no evidence of actual confusion, Applicant’s discovery responses reflect that
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Applicant has only used his alleged mark on two articles of apparel that he first offered
for sale in August 2019, i.e., a “used” black t-shirt and a red hoodie sweatshirt—and
neither one has been sold. TCCC First NOR, 16 TTABVUE 6-7, 10 (Interrogatories 2, 3,
11), 21, 26 (Document Requests 2, 12).
Finally, it is clear that, in view of the myriad ways in which TCCC has used the
COCA-COLA Script Mark, use by Applicant of his alleged mark creates a likelihood of
confusion and damage to TCCC’s goodwill. “Although confusion, mistake or deception
about source or origin is the usual issue posed under Section 2(d), any confusion made
likely by a junior user’s mark is cause for refusal; likelihood of confusion encompasses
confusion of sponsorship, affiliation or connection.” Hilson Research, Inc. v. Society for
Human Resource Management, 27 USPQ2d 1423, 1429 (TTAB 1993); Federal Bureau
of Investigation v. Societe: “M. Bril & Co.”, 172 USPQ 310, 315 (TTAB 1971) (under
Section 2(d), party must show that “the purchasing public would mistakenly assume that
the applicant’s goods or services originate with, are sponsored by, or are in some way
associated with it”).
Although it has taken well-publicized public positions on issues such as
environmental issues and personal choice, diversity and lifestyle issues, TCCC has not
to date taken a public position on any issues relating to firearms, gun control or the
Second Amendment. Kibe Decl., 18 TTABVUE 14-15, ¶¶ 28-29. If TCCC was incorrectly
associated with a position like Applicant’s proclaimed “pro-Second Amendment” stance
that TCCC had not adopted or with which TCCC did not agree, TCCC would lose control
of at least a portion of its goodwill and reputation that the COCA-COLA Script Mark
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symbolizes, especially with consumers who do not agree with the position. Kibe Decl.,
18 TTABVUE 14-15, ¶ 29.
In addition, even if purchasers of apparel items bearing Mr. Hoff’s “Conceal-Carry”
graphic are aware (or are made aware) that the apparel was not sold or authorized by
TCCC and agree with the “pro-Second Amendment” message of the graphic, members
of the public who are exposed to the apparel when it is being worn will have no such
awareness and—because of the blatant imitation of the COCA-COLA Script Mark that is
the largest element of the graphic—could easily (but mistakenly) believe that TCCC
authorized the use of the graphic and/or that TCCC agrees with its message. Kibe Decl.,
18 TTABVUE 16, ¶ 35. The Board has found likelihood of confusion under Section 2(d)
based on this type of likely post-sale confusion. See, e.g., HRL Assocs. Inc. v. Weiss
Assocs. Inc., 12 USPQ2d 1819, 1822 (TTAB 1989), aff’d, 902 F.2d 1546, 14 USPQ2d
1840 (Fed. Cir. 1990); In re Artic Elecs. Co., 220 USPQ 836, 838 (TTAB 1983).
* * * * *
In view of the uncontroverted evidence of record relating to the relevant DuPont
factors, TCCC has shown by a preponderance of the evidence that there is a strong
likelihood of confusion between TCCC’s COCA-COLA Script Mark and Applicant’s
alleged “Conceal-Carry” mark for apparel. TCCC’s opposition should therefore be
sustained under Section 2(d).
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C. TCCC’s Section 43(c) Dilution Claim
The evidence of record also fully supports TCCC’s opposition based on dilution of
the COCA-COLA Script Mark under Section 43(c). The Board’s precedents fully support
the conclusion that Applicant’s alleged “Conceal-Carry” mark is likely to dilute the famous
COCA-COLA Script Mark.
Dilution by blurring occurs when a substantial percentage of consumers, on
seeing the junior party’s use of a mark on its goods, are immediately reminded of the
famous mark and associate the junior party’s use with the owner of the famous mark,
even if they do not believe that the goods come from the famous mark’s owner. UMG
Recordings, supra, 100 USPQ2d at 1888, citing Toro Co. v. ToroHead Inc., 61 USPQ2d
1164, 1183 (TTAB 2001). To prevail on a dilution claim, an opposer must show (1) it
owns a famous mark that is distinctive; (2) the applicant is using a mark in commerce that
allegedly dilutes the opposer’s famous mark; (3) the applicant’s use of its mark began
after the opposer’s mark became famous; and (4) the applicant’s use of his mark is likely
to cause dilution by blurring. Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356,
101 USPQ2d 1713, 1723-24 (Fed. Cir. 2012).
A mark is famous for dilution purposes “if it is widely recognized by the general
consuming public of the United States as a designation of source of the goods or services
of the mark’s owner.” 15 U.S.C. § 1125(c)(2)(A). There are four non-exclusive factors to
consider when determining whether a mark is famous:
(i) The duration, extent, and geographic reach of advertising and
publicity of the mark, whether advertised or publicized by the
owner or third parties.
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(ii) The amount, volume, and geographic extent of sales of goods or
services offered under the mark.
(iii) The extent of actual recognition of the mark.
(iv) Whether the mark was registered under the Act of March 3, 1881,
or the Act of February 20, 1905, or on the principal register.
Id.
The evidence of record establishes the fame of the COCA-COLA Script Mark and
is similar to the evidence on which the Board has relied in recent cases to find a mark to
be famous for purposes of Section 43(c). The COCA-COLA Script Mark has been widely
and extensively promoted for over one hundred and thirty years nationwide, in virtually all
available media and channels of trade. Kibe Decl., 18 TTABVUE 11-14, ¶¶ 18-27. The
sales of products bearing the COCA-COLA Script Mark have been extraordinarily high,
as have the amounts spent on advertising and promotion of those goods by TCCC, its
bottlers, retailers and others. Kibe Decl., 18 TTABVUE 13-14, ¶¶ 24-26. Since long prior
to the filing of Applicant’s application for the “Conceal-Carry” mark, the COCA-COLA
Script Mark has often been recognized as an iconic mark by third parties and by courts,
and the proof of “actual recognition” of the COCA-COLA Script Mark as an indicator of
source is strong. Kibe Decl., 18 TTABVUE 11, ¶¶ 16-17. And the COCA-COLA Script
Mark has been registered for over 125 years, is registered on the Principal Register, and
the majority of TCCC’s registrations of the COCA-COLA Script Mark are incontestable.
The COCA-COLA Script Mark is a famous mark, eligible for protection under Section
43(c), and has been famous since long prior to Applicant’s filing date. Compare Muntean,
supra, at 22-23.
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Section 43(c)(2)(B) of the Trademark Act enumerates six non-exhaustive
factors a tribunal may consider in determining whether a mark is likely to cause dilution
by blurring:
(i) The degree of similarity between the mark or trade name and the
famous mark.
(ii) The degree of inherent or acquired distinctiveness of the famous
mark.
(iii) The extent to which the owner of the famous mark is engaging in
substantially exclusive use of the mark.
(iv) The degree of recognition of the famous mark.
(v) Whether the user of the mark or trade name intended to create
an association with the famous mark.
(vi) Any actual association between the mark or trade name and the
famous mark.
15 U.S.C. § 1125(c)(2)(B).
Like the applicable likelihood of confusion factors and the relevant fame factors,
the likelihood of dilution factors weigh strongly in favor of TCCC. The crux of a dilution
claim is whether consumers viewing the junior party’s mark “are immediately reminded of
the famous mark and associate the junior party’s mark with the owner of the famous mark,
even if they do not believe that the goods emanate from the famous mark’s owner.” N.Y.
Yankees P’ship v. IET Prods. & Servs., Inc., 114 USPQ2d 1497, 1509 (TTAB 2015).
The parties’ marks are similar in their overall impressions; Applicant’s alleged mark
unquestionably will cause consumers to “conjure up” TCCC’s famous COCA-COLA Script
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Mark, and “associate the two.” Id. at 1507. The COCA-COLA Script Mark enjoys a high
degree of distinctiveness and recognition, and there is no evidence showing that TCCC’s
use of the COCA-COLA Script Mark has been anything other than exclusive. Like Nike’s
JUST DO IT mark, the COCA-COLA Script Mark “is one of the most recognized marks of
this and the last century.” Muntean, supra, at 26. And Applicant’s apparent copying of
the COCA-COLA Script Mark and its Distinctive Capital C Elements shows Applicant’s
intent to create an association between his mark and the COCA-COLA Script Mark, and
to trade on the goodwill of TCCC and the COCA-COLA Script Mark. Based on the record
in this proceeding, there is only one possible conclusion: Applicant’s alleged
“Conceal-Carry” mark is likely to cause dilution of TCCC’s famous COCA-COLA Script
Mark.
CONCLUSION
The courts have for many years protected the famous COCA-COLA Script Mark
from imitation, infringements and diluting uses like that presented by Applicant’s alleged
“Conceal-Carry” mark. Like the defendant in Gemini Rising that sold a poster nearly fifty
years ago with the words “Enjoy Cocaine,” with “Cocaine” in Spencerian script based on
the COCA-COLA Script Mark, Applicant “does not and could not seriously deny that it is
deliberately imitating [TCCC’s] trademark in its [mark],” and “one would have to be a
visitor from another planet not to recognize immediately the familiar ‘Coca’ in its stylized
script and accompanying words, colors and design.” Gemini Rising, supra, 346 F. Supp.
at 1187. And as in Gemini Rising, “the resemblance between [Applicant’s alleged mark]
and [TCCC’s] trademark format as used in advertising is not only so close as to be virtually
identical but obviously deliberately so.” Id. at 1191.
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For all of the reasons stated above, TCCC respectfully prays that the Board enter
an order sustaining TCCC’s opposition to registration of Applicant’s “Conceal-Carry” mark
for apparel items under both Section 2(d) and Section 43(c).
Respectfully submitted, KING & SPALDING LLP /Bruce W. Baber/ Bruce W. Baber Kathleen E. McCarthy
1180 Peachtree Street Atlanta, Georgia 30309 Telephone: 404-572-4600
Attorneys for Opposer THE COCA-COLA COMPANY
CERTIFICATE OF SERVICE
This is to certify that I have this day served the foregoing Opposer The Coca-Cola
Company’s Opening Brief On The Merits by causing a true and correct copy thereof to be
forwarded by electronic mail to counsel of record for Applicant as follows:
Mr. Steven Ivy Steven Ivy P.C. 2600 Oak Street, Suite 1541 St. Charles, Illinois 60175 [email protected]
This 5th day of November, 2020.
/Bruce W. Baber/ Bruce W. Baber