This Opinion is not a Precedent of the TTAB
Mailed: August 19, 2015
UNITED STATES PATENT AND TRADEMARK OFFICE _____
Trademark Trial and Appeal Board _____
In re Jockey International, Inc. v. M4M Ventures Corp. _____
Opposition No. 91211271 against Serial No. 85734062 _____
Lori S. Meddings, Melissa H. Burkland, Katrina G. Hull and Tanya M. Salman of Michael Best & Friedrich LLP, for Jockey International, Inc.
Michael L. Leetzow of Michael L. Leetzow, P.A., for M4M Ventures Corp.
_____
Before Bucher, Wolfson and Kuczma, Administrative Trademark Judges.
Opinion by Bucher, Administrative Trademark Judge:
M4M Ventures Corp. (“Applicant”) seeks registration on the Principal Register of the mark BABY JOCK (in standard character format) for
“children’s and infants’ cloth bibs; hats for infants, babies, toddlers and children; pants; shirts for infants, babies, Opposition No. 91211271
toddlers and children; shoes; short-sleeved or long-sleeved t-shirts; socks; tee shirts” in International Class 25.1
Jockey International, Inc. (“Opposer”) filed a notice of opposition against the
registration of Applicant’s mark on the grounds of priority of use, likelihood of
confusion and dilution, pursuant to Sections 2(d) and 43(c) of the Trademark Act,
15 U.S.C. §§ 1052(d) and 1143(c). Specifically, Opposer alleges that Applicant’s
BABY JOCK mark for the foregoing goods is likely to cause confusion with and
dilute Opposer’s previously registered marks, including the following registrations:
BABY JOCKEY for “loungewear; playwear and coordinated separates, namely, creepers, multi-piece pant and shirt sets, hats, one- piece underwear” in International Class 25;2
JOCKEY for “men’s and boys’ underwear, undershirts, hosiery, sport shirts, and t-shirts” in International Class 25;3
JOCKEY for “underwear tops and bottoms; shorts, shirts; active wear, namely, boxer shorts, bicycle shorts, gym shorts, pants, pullovers, sport shirts, t-shirts, tank tops, jogging suits, warm-up suits; long underwear; sleepwear; nightwear, pajamas; robes; panties, bras, all-in-ones in the nature of camisoles with built in bras, camisoles, foundation garments, crop tops, stockings, tights and hosiery” in International Class 25;4
1 Application Serial No. 85734062 was filed on September 20, 2012, based upon Applicant’s allegation of a bona fide intention to use the mark in commerce under Section 1(b) of the Trademark Act. 2 Registration No. 4572672 issued on July 22, 2014. No claim is made to the exclusive right to use the word “Baby” apart from the mark as shown. We note that while Application Serial No. 85171554 from which this registration issued had goods in International Classes 24 and 25 when filed on November 8, 2010, with the Statement of Use of June 5, 2014, Class 24 was eliminated and Class 25 was pared down significantly. 3 Registration No. 0509364 issued on May 3, 1949; third renewal. 4 Registration No. 3258066 issued on July 3, 2007; Section 8 affidavit accepted and Section 15 affidavit acknowledged.
- 2 - Opposition No. 91211271
JOCKEY for “underwear, such as men’s and boys’ undershirts, underdrawers, both with and without legs, as well as hosiery” in International Class 25;5
JOCKEY for “retail clothing store services” in International Class 35;6 and
JOCKEY.COM for “computerized online retail services in the field of clothing for men, women, boys and girls” in International Class 35.7
Applicant, in its answer, denied all the salient allegations in the Notice of
Opposition. Both parties have submitted trial briefs and Opposer has submitted a
reply brief.
The Record
By rule, the record includes Applicant’s application file and the pleadings.
Trademark Rule 2.122(b), 37 CFR § 2.122(b).
Opposer’s Evidence
The record includes printouts of Opposer’s registrations from the database
records of the U.S. Patent and Trademark Office submitted by Opposer via a notice
of reliance submitted on August 28, 2014,8 and the testimony deposition of Marie-
Louise (“Milou”) Gwyn, Jockey’s vice president of domestic licensing, taken on
August 20, 2014,9 along with Opposer’s associated Exhibits 1-27.10
5 Registration No. 0391692 issued on November 18, 1941; fourth renewal. 6 Registration No. 2639847 issued on October 22, 2002; renewed. 7 Registration No. 2500535 issued on October 23, 2001; renewed. 8 13 TTABVue. 9 15 TTABVue at 3-66 of 258 (confidential), 17 TTABVue at 3-66 of 189 (redacted).
- 3 - Opposition No. 91211271
Applicant’s Evidence
Applicant adds substantially nothing to the record, although it filed a notice of
reliance on October 28, 2014, on six of its federal trademark applications then
pending but now abandoned, an earlier abandoned federal trademark application
owned by Opposer, and a prior trademark registration owned by Opposer that has
now been cancelled under Section 8 of the Trademark Act.
The Parties
Opposer’s predecessor invented Jockey shorts (in 1934) and introduced the first
classic men’s Y-front brief in North America (in 1935) – representing what was then
a radically different type of product.11 The record demonstrates that Opposer has
owned and continuously used the JOCKEY trade name and trademark for over
eighty years.12 Opposer spends tens of millions of dollars promoting its JOCKEY
mark in the U.S. each year, selling hundreds of millions of dollars’ worth of
underwear and sleepwear for men, women and children.13 Much more recently,
Opposer has begun selling clothing and sleepwear for babies and toddlers under the
mark BABY JOCKEY.
10 15 TTABVue at 68-258 of 258 (confidential), 16 TTABVue at 3-125 of 125 (confidential), 17 TTABVue at 68-189 of 189 (redacted), 18 TTABVue at 4-66 of 66, and 19 TTABVue 3-68 of 68. 11 Exhibit 1, “There’s only one: Jockey International,” by Jay Pridmore (2001), Chapter on “The Jockey Brief,” 18 TTABVue at 51-58 of 66. 12 Id. 18 TTABVue 59-66 of 66 & 19 TTABVue 3-68 of 68. 13 The exact dollar amounts of promotion and sales in the U.S. are contained in confidential testimony so we have chosen to limit the disclosure to orders of magnitude. Gwyn Test. Dep. at 26, 15 TTABVue at 28 of 258 (confidential), 17 TTABVue at 28 of 189 (redacted).
- 4 - Opposition No. 91211271
On September 20, 2012, Applicant filed an intent-to-use application for its BABY
JOCK mark in connection with clothing, accessories and footwear for young
children, namely infants, babies and toddlers.
Standing
Standing is a threshold issue that must be proved in every inter partes case.
Lipton Industries, Inc. v. Ralston Purina Co., 670 F.2d 1024, 213 USPQ 185, 189
(CCPA 1982). In order to meet the standing requirement, a plaintiff need only show
that it has a real interest, i.e., a personal stake, in the outcome of the proceeding.
See Ritchie v. Simpson, 170 F.3d 1092, 50 USPQ2d 1023, 1026 (Fed. Cir. 1999); and
Jewelers Vigilance Committee, Inc. v. Ullenberg Corp., 823 F.2d 490, 2 USPQ2d
2021, 2023-24 (Fed. Cir. 1987). Because Opposer has properly made its pleaded
registrations for BABY JOCKEY and JOCKEY marks of record, it has established
standing to oppose registration of Applicant’s mark. See King Candy Co. v. Eunice
King’s Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108, 110 (CCPA 1974).
Priority
In order for Opposer to prevail on its § 2(d) claim, it must first prove it has a
proprietary interest in its BABY JOCKEY and JOCKEY marks, and that this
interest was obtained prior to either the filing date of Applicant’s application for
registration or its date of first use in commerce. These proprietary rights may arise
from a prior registration, prior common law usage as a mark, prior use as a trade
name, prior use analogous to trademark use, or any other use sufficient to establish
proprietary rights. Herbko International Inc. v. Kappa Books Inc., 308 F.3d 1156, 64
- 5 - Opposition No. 91211271
USPQ2d 1375, 1378 (Fed. Cir. 2002); Otto Roth & Co., Inc. v. Universal Foods Corp.,
640 F.2d 1317, 209 USPQ 40, 43 (CCPA 1981); Miller Brewing Co. v. Anheuser-
Busch Inc., 27 USPQ2d 1711, 1714 (TTAB 1993).
Because Opposer’s pleaded registrations for its BABY JOCKEY and JOCKEY
marks on the Principal Register are of record, § 2(d) priority is not an issue in this
case as to those marks and the goods covered by the registrations, i.e., one-piece
underwear; long underwear; under-drawers, both with and without legs; underwear
tops and bottoms; boys’ underwear; boxer shorts; undershirts; shirts; sport shirts; t-
shirts; tank tops; loungewear; playwear; coordinated separates, namely, creepers,
multi-piece pant and shirt sets; sleepwear; nightwear; pajamas; robes; panties;
shorts; bicycle shorts; gym shorts; pants; pullovers; jogging suits, warm-up suits;
hats, hosiery and retail clothing store services. King Candy, 182 USPQ at 110.
Nonetheless, Applicant notes correctly that Opposer’s Registration No. 4572672
for BABY JOCKEY issued after this proceeding was underway. On the other hand,
we note that Opposer listed Application Serial No. 85171554 in its Notice of
Opposition, this registration has subsequently properly been made of record, and
Applicant has not challenged the validity of the registration. See, e.g., UMG
Recordings Inc. v. O’Rourke, 92 USPQ2d 1042, 1045 n.12 (TTAB 2009) (“The
pleading of the application … provided sufficient notice to the applicant that the
opposer would rely on a registration from the application for its likelihood of
confusion claim.”).
- 6 - Opposition No. 91211271
In any case, based upon the timeline of the various applications, Opposer would
still have priority. Applicant filed its application in September 2012, and has not
submitted any evidence of an earlier date of use. Hence, the filing date of this
application is Applicant’s constructive use date. Zirco Corp. v. American Telephone
and Telegraph Co., 21 USPQ2d 1542, 1544 (TTAB 1991) (“[T]here can be no doubt
but that the right to rely upon the constructive use date comes into existence with
the filing of the intent-to-use application and that an intent-to-use applicant can
rely upon this date in an opposition brought by a third party asserting common law
rights”).
Even if Opposer’s registration for the BABY JOCKEY mark were not properly of
record (which it is), we note that an Opposer with an intent-to-use application may
rely on the filing date of its application to establish priority. See Larami Corp. v.
Talk To Me Programs Inc., 36 USPQ2d 1840, 1845 n. 7 (TTAB 1995) (“An opposer
may rely on Section 7(c) to establish priority if it owns a registration for the mark it
is asserting under Section 2(d) or if it has filed an application for registration of that
mark. We might put the matter more simply by saying that in proceedings before
the Board the constructive use provisions of Section 7(c) may be used both
defensively and offensively”). See also 3 MCCARTHY ON TRADEMARKS AND UNFAIR
COMPETITION § 19:31.10 (4th ed. 2015). As noted above, Opposer claimed Application
Serial No. 85171554 (that resulted in Opposer’s ’672 registration) in its Notice of
Opposition. This application was filed in November 2010, which is prior to
Applicant’s September 2012 filing date. Therefore, Opposer has also established its
- 7 - Opposition No. 91211271
priority for the goods listed in the ’672 registration by its constructive use date, i.e.,
its filing date.
Finally, the testimony of Ms. Gwyn and supporting exhibits demonstrate
continuous use of the JOCKEY marks since 1934 on items of clothing, including
underwear, and of the mark BABY JOCKEY since May 2014 on toddler boys’ briefs
and t-shirts, toddler girls’ panties, tank tops and undershirts, and for the baby
collection, playwear, sleepwear, bodysuits, hats and a variety of layette pieces.14 See
L.C. Licensing Inc., v. Berman, 86 USPQ2d 1883, 1887 (TTAB 2008); Brown Shoe
Co. v. Robbins, 90 USPQ2d 1752, 1754 (TTAB 2009).
Likelihood of Confusion
In determining likelihood of confusion, we must analyze all of the probative facts
in evidence that are relevant to the likelihood of confusion factors. See In re E.I
du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). See also, In
re Majestic Distilling Company, Inc., 315 F.3d 1311, 65 USPQ2d 1201, 1203 (Fed.
Cir. 2003). Two key considerations are the similarities between the marks and the
similarities between the goods and/or services. See Federated Foods, Inc. v. Fort
Howard Paper Co. 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976). We have
considered these and any other du Pont factors on which the parties have submitted
evidence and argument. We focus primarily on Opposer’s registration for the
standard character mark BABY JOCKEY for “loungewear; playwear and
14 Gwyn Test. Dep. at 33-53, 15 TTABVue at 35-55 of 258 (confidential), 17 TTABVue at 35- 55 of 189 (redacted); Exhibits 18-27.
- 8 - Opposition No. 91211271
coordinated separates, namely, creepers, multi-piece pant and shirt sets, hats, one-
piece underwear.”
Relationship of the goods
We turn first to the du Pont factor that focuses on the relationship of the goods
described in the affected application to the goods identified in Opposer’s pleaded
registration. Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842,
1844-46 (Fed. Cir. 2000); Canadian Imperial Bank v. Wells Fargo Bank, 811 F.2d
1490, 1 USPQ2d 1783 (Fed. Cir. 1992).
Although Applicant’s identification of goods does not limit its socks, shoes, pants
or t-shirts by gender or age, the balance of Applicant’s goods are explicitly limited to
clothing and accessories for young children variously identified as infants, babies or
toddlers. Having chosen the mark BABY JOCK, we presume that even those items
not so limited are intended primarily for babies. Similarly, Opposer has registered
the mark BABY JOCKEY for goods identified by terms such as playwear, creepers,15
pant and shirt sets and one-piece underwear. As to sizes, Ms. Gwyn testified as
follows:
In toddler it’s a 2T to 4T, and baby is anything under 2T with the smaller sizes zero to six months roughly being called layette. So baby is 0 to 24 months; toddler is 2T to 4T … .16
15 creepers Dictionary.com. Dictionary.com Unabridged, Random House, Inc. 2015 – a one- piece garment for an infant, the lower portion resembling briefs and having snaps or buttons across the crotch for convenience in diapering. http://dictionary.reference.com/ browse/creeper (accessed: August 18, 2015). 16 Gwyn Test. Dep. at 33-34, 15 TTABVue at 35-36 of 258, 17 TTABVue at 35-36 of 189.
- 9 - Opposition No. 91211271
Though its goods are not expressly limited by age, in view of the mark Opposer
adopted and is using, we again presume these items are intended primarily for
babies and toddlers. As Ms. Gwyn also testified, Opposer conducted extensive
consumer research into the product category of baby clothing and accessories, their
optimal price points and the most appropriate mark before extending the JOCKEY
brand into this new category of goods.17
In that context, with Applicant and Opposer both listing hats, pants and shirts,
we find that there is an overlap of some goods. The remaining items in the
respective identifications of goods are all clothing and accessories appropriate for
babies, and we find them to be closely related. Hence, this du Pont factor strongly
favors a finding of likelihood of confusion.
Trade channels and conditions of sale
As to the third and fourth du Pont factors, given the overlapping nature of the
goods, and the fact there is no showing that these goods are purchased with a
heightened level of care, we must presume that the respective goods will move
through the same channels of trade to the same classes of ordinary consumers.
Hence, these factors favor a finding of likelihood of confusion.
Similarity of Marks
We turn then to the du Pont factor focusing on the similarity or dissimilarity of
the marks in their entireties as to appearance, sound, meaning and commercial
impression. See In re du Pont, 177 USPQ at 567; See also Palm Bay Imports Inc. v.
17 Id. at 35-36, 15 TTABVue at 37-38 of 258, 17 TTABVue at 37-38 of 189.
- 10 - Opposition No. 91211271
Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d
1689, 1992-94 (Fed Cir. 2005).
In comparing the marks, we are mindful that the test is not whether the marks
can be distinguished when subjected to a side-by-side comparison, but rather
whether the marks in their entireties are sufficiently similar in terms of their
overall commercial impression so that confusion as to the source of the goods offered
under the respective marks is likely to result. Coach Services Inc. v. Triumph
Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012) and San
Fernando Elec. Mfg. Co. v. JFD Electronics Components Corp., 565 F.2d 683, 196
USPQ 1, 3 (CCPA 1977). The focus is on the recollection of the average purchaser
who normally retains a general rather than specific impression of trademarks. See
L’Oreal S.A. v. Marcon, 102 USPQ2d 1434, 1438 (TTAB 2012); and Sealed Air Corp.
v. Scott Paper Co., 190 USPQ 106, 108 (TTAB 1975).
While the marks must be compared in their entireties, “there is nothing
improper in stating that, for rational reasons, more or less weight has been given to
a particular feature of a mark, provided the ultimate conclusion rests on
consideration of the marks in their entireties.” In re National Data Corp., 753 F.2d
1056, 224 USPQ 749, 751 (Fed. Cir. 1985). In assessing this factor, we also keep in
mind that when marks would appear on legally identical goods, as they do here, the
degree of similarity necessary to support a conclusion of likely confusion declines.
Century 21 Real Estate Corp. v. Century Life of America, 970 F.2d 874, 23 USPQ2d
1698, 1700 (Fed. Cir. 1992).
- 11 - Opposition No. 91211271
Applicant argues that Opposer has improperly dissected Applicant’s mark by
advocating that the word “Jock” is substantially the same as “Jockey.” Rather,
Applicant argues that the final “-ey” syllable (pronounced “ee”) of Opposer’s mark
makes a significant difference in both the appearance and sound of the respective
marks, and that the marks are significantly different in their meanings.
Applicant’s word mark BABY JOCK and Opposer’s word mark BABY JOCKEY
are both presented in standard character format. Therefore, in appearance, the
marks both consist of the same initial eight letters. In effect, Applicant’s mark
simply eliminates the last two letters of Opposer’s ten-letter mark. Because this
dissimilarity is minor and located at the end of the marks, this difference in
appearance is not legally significant. Similarly, Applicant’s three-syllable mark,
BABY JOCK, differs in sound only by lopping off the “ee” sound at the very end of
Opposer’s four-syllable mark, BABY JOCKEY.
As to meaning, Applicant argues that the work “Jock” elicits images of a large,
strong athlete who competes in contact sports, while a “Jockey” is usually a small,
light-weight rider of a race horse.
To support the athletic imagery of a “jock,” Applicant submitted several
dictionary definition entries for the first time with its brief:18
18 Although Opposer objected to the late submission of these dictionary entries, we have considered them inasmuch as the Board may take judicial notice of dictionary definitions, Univ. of Notre Dame du Lac v. J.C. Gourmet Food Imp. Co., 213 USPQ 594 (TTAB 1982), aff’d, 703 F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983), including online dictionaries that exist in printed format or regular fixed editions. In re Red Bull GmbH, 78 USPQ2d 1375, 1377 (TTAB 2006). As seen infra, we have for the same reason also considered Opposer’s dictionary entries attached to its reply brief.
- 12 - Opposition No. 91211271
1. A person, esp. a young man, who is extremely enthusiastic about and good at sports; 19
2. Someone, especially a student, who plays lots of sport and is often considered to be stupid. 20
3. 1952, short for jockstrap “supporter of the male genital organs,” which also meant, in slang, “athletic male;” Jock with the meaning “an athletic man” is from 1963, American English slang. 21
Similarly, Opposer has included a number of entries for the word “jock” taken
from Dictionary.Com:
jock noun, Informal. 1. jockey. 2. disc jockey. 1820-30; shortened form of jockey
jock noun 1. a jockstrap. 2. Informal. an athlete. 3. Informal. an enthusiast: a computer jock. Origin Expand 1950-55; by shortening from jockstrap 22
jock noun 1. a slang word or term of address for a Scot 23
19 THE CAMBRIDGE ACADEMIC CONTENT DICTIONARY, http://dictionary.cambridge.org/us/ dictionary/american-english/jock.
20 LONGMAN DICTIONARY OF CONTEMPORARY ENGLISH, http://www.ldoceonline.com/dictionary/ jock.
21 THE ONLINE ETYMOLOGY DICTIONARY, http://www.etymonline.com.
22 RANDOM HOUSE DICTIONARY, 2015, http://dictionary.reference.com/
23 COLLINS ENGLISH DICTIONARY, 2012, http://dictionary.reference.com/
- 13 - Opposition No. 91211271
jock noun 1. A jockey (1670+) 2. Disc jockey (1970s+) 3. The penis; the crotch : I’ll be beating the bushes with snow to my jock (1790+) 4. An athletic supporter; jockstrap: I asked him if he wanted some sweat clothes, or a jock (1952+) 5. (also jocko) An athlete •Now used of both men and women, despite the phallic derivation: The players themselves are a curious blend of woman and jock/ the lucrative job proper to an all-Ivy jock (1963+) [the basic etymon is jock, “penis,” fr jack, probably the diminutive of John, which from the 14th century has been applied to males, male-like things, and male organs; the sense “athlete” is fr jockstrap] 24
In support of its claim that the word “Jockey” elicits the image of a usually short,
light-weight person on a horse, Applicant submitted with its brief several dictionary
definition entries for the word “Jockey”:
1. a person whose job is riding horses in races. 25
2. someone who rides horses in races. 26
3. 1520s, “boy, fellow,” originally a Scottish proper name, variant of Jack. The meaning “person who rides horses in races” first attested 1660s. 27
In support of Applicant’s position that consumers will associate Opposer’s
JOCKEY brand with someone who rides a horse, Applicant points to the evidence of
record showing the historic importance of this imagery during Opposer’s past:
24 THE DICTIONARY OF AMERICAN SLANG, Fourth Edition 2007, http://dictionary.reference.com/.
25 THE CAMBRIDGE ACADEMIC CONTENT DICTIONARY, Cambridge University Press. (http:// dictionary.cambridge.org/us/dictionary/american-english/jockey).
26 LONGMAN DICTIONARY OF CONTEMPORARY ENGLISH, http://www.ldoceonline.com/ dictionary/jockey_1.
27 THE ONLINE ETYMOLOGY DICTIONARY, http://www.etymonline.com.
- 14 - Opposition No. 91211271
In this context, Applicant argues that the ordinary consumer has no idea that
the name “Jockey” was derived from the term “jock strap,” as Opposer alleges, but
would associate Opposer’s brand with the light-weight person who rides a horse in
races.
To the extent we look to the etymological roots of the word “jock,” it seems that
its original meaning, going back centuries, was as a shortened version of the word
“jockey.” It has also had a long history of phallic derivations. On this record, we
accept that Opposer’s predecessor chose the JOCKEY mark in the 1930s because of
- 15 - Opposition No. 91211271
the structural similarities of its new style of briefs to athletic supporters, or jock
straps:
The third major marketing decision for the auspicious new product was clearly the most important – the name. In the weeks before the rollout, Cooper sales managers … thought of little else but the perfect moniker. Among dozens of names suggested in that period, someone mentioned “Jockey,” derived loosely from “jock strap,” a not altogether polite word for an athletic supporter. It wasn’t love at first blush, but as the sales team continued to throw out names, nothing else caused much excitement either. Then when Kneibler, mildly frustrated, asked the naming committee to write their preferences on a sheet of paper, the only name on all four lists was Jockey. It was, in retrospect, perfect – easily pronounced, athletic and suggestive of the product’s masculine support.28
Accordingly, to the extent that Jockey shorts represented the first men’s briefs in
North America, it would seem that the words “Jock” and “Jockey” have very similar
connotations in the context of men’s underwear. Furthermore, as argued by
Opposer, both terms in their common parlance imply athletics. And of course, given
that we must compare these respective marks at bar, when both composite marks
begin with the word “Baby,” the differences in meanings between “Baby Jock” and
“Baby Jockey” are even further attenuated. Hence, despite the minor dissimilarities
noted above as to appearance and sound, both these marks combine the descriptive
term “Baby” with the suggestive terms “Jock” or “Jockey,” both of which imply
athletics. Accordingly, we conclude that the respective marks convey similar
connotations and overall commercial impressions.
28 Exhibit 1, “There’s only one: Jockey International,” by Jay Pridmore (2001), 18 TTABVue at 55 of 66.
- 16 - Opposition No. 91211271
Commercial strength of Opposer’s claimed BABY JOCKEY mark
Given the brief period of time that Opposer has been marketing goods under the
BABY JOCKEY mark, while we find this two-word composite to be an inherently
distinctive mark, the mark BABY JOCKEY has not achieved any degree of fame
under the fifth du Pont factor. However, that does not end our inquiry under the
fifth, sixth and ninth du Pont factors.29 Specifically, the commercial strength of
Opposer’s BABY JOCKEY mark is clearly affected by the fame of Opposer’s
JOCKEY mark, its uniqueness in this field, and the breadth of goods on which
Opposer has used the JOCKEY mark over the years.
As seen above, Opposer invented the first men’s Y-front brief in 1934 and has
continuously used the JOCKEY designation for over eighty years. Opposer spends
tens of millions of dollars promoting its JOCKEY mark in the U.S. each year, selling
hundreds of millions of dollars’ worth of underwear and sleepwear for men, women
and children. Opposer points out in its brief its history on the cutting edge of
promoting underwear:
Jockey has long recognized the value and importance of advertising to its broad consumer base, and has never been bashful about showing off its wares on television – a shocking first for the marketplace back in the 1950’s. Over its lifespan, the JOCKEY Mark has been used as the centerpiece of some of the most creative and popular underwear advertising in the industry. Indeed, early advertising for the JOCKEY brand supported the greatness of some of the best-known idols of all time – the
29 (5) The fame of the prior mark (sales, advertising, length of use). (6) The number and nature of similar marks in use on similar goods. (9) The variety of goods on which a mark is or is not used (e.g., house mark, “family” mark, product mark).
- 17 - Opposition No. 91211271
likes of Yogi Berra, Sammy Baugh, and Jim Palmer, just to name a few. More recently, Jockey’s advertising endeavors rely on professional athletes, pop-culture, and iconic legends from the past – through media channels that reach and saturate a broad population – such as Tim Tebow, Madison Bumgardner (“Mad Bum”), Rachel Zoe, Babe Ruth, Buzz Aldrin, and General [Patton].
We agree with Opposer that in examining the duration of its usage, the reach of
its advertising and placement, unsolicited media attention and the level of sales in
the U.S., the JOCKEY brand has long been a mark well-known to the relevant
consuming public, and thus entitled to a broad scope of protection. Opposer has also
been vigilant in enforcing the reach of its brand in the field of clothing and
accessories.
Even though we are comparing Opposer’s BABY JOCKEY mark in its entirety
with Applicant’s BABY JOCK mark, we may ascribe more or less weight to a
particular feature of Opposer’s mark in making our comparison. National Data, 224
USPQ at 751. As noted earlier, the fact that the term “Baby” is highly descriptive of
these goods and disclaimed is support for the conclusion that the word “Baby” is not
the dominant portion of Opposer’s composite mark despite its leading placement.
Conversely, given the demonstrated fame of the word “Jockey” in the field of
underwear, this term must be seen as a dominant portion of Opposer’s claimed
mark. The fame of the JOCKEY brand creates a penumbra of protection that carries
over into this extension of the JOCKEY brand to the relatively new field of clothing
and sleepwear for babies and toddlers.
This extension is all the more anticipated given the fact that Opposer has
methodically expanded the reach of the JOCKEY mark over the past eighty years
- 18 - Opposition No. 91211271
from men’s underwear, to boy’s underwear,30 to women’s31 and girls’ underwear,32
and now to clothing and sleepwear for babies. The very fact that Opposer selected
BABY JOCKEY as a logical extension of the JOCKEY brand for babies’ clothing and
sleepwear after extensive marketing research33 serves as an indication that
relevant consumers who are acquainted with the JOCKEY brand would expect
babies’ clothing items having a mark so very similar to BABY JOCKEY to be in
some way associated with Opposer. Certainly, marks arguably no more similar to
any of Opposer’s claimed marks than is true in the case at bar have resulted in a
finding of likelihood of confusion.34
Accordingly, these three du Pont factors also weigh in favor of a likelihood of
confusion.
30 Witness: It’s a photograph of a man and a little boy, and he is wearing Jockey underwear, full-length bottoms and a short sleeve top, and a little boy is sort of in a playful pose next to him. It’s kind of a cute father/son, sort of like I want to be like my daddy and wear Jockey kind of story … . [On page 63 of Exhibit 1] it says, “Youngsters grew up dreaming of the day that they could wear their dad’s Jockeys too, and in the early ’50s, the company introduced the Jockey Junior line to take advantage of the enormous pent-up demand for boy’s underwear.” Gwyn Test. Dep. at 12, 15 TTABVue at 14 of 258, 17 TTABVue at 14 of 189, Exhibit 1, “There’s only one: Jockey International,” by Jay Pridmore (2001), 18 TTABVue at 60 of 66; Exhibit 16. 31 Gwyn Test. Dep. at 12, 15 TTABVue at 14 of 258, 17 TTABVue at 14 of 189; Exhibits 2-8. 32 Gwyn Test. Dep. at 33-35, 39, 15 TTABVue at 35-37 of 258, 17 TTABVue at 35-37, 41 of 189; Exhibit 17. 33 Gwyn Test. Dep. at 36, 15 TTABVue at 38 of 258, 17 TTABVue at 38 of 189. 34 Decades ago, a federal district court found that the trademark JOCK SOCK was confusingly similar to the trademark JOCKEY. The court concluded, “The similarity of the trademark JOCK SOCK to JOCKEY exists because of its similarity in its entirety, and because one of the established meanings of “jock” is “jockey.” Jockey Int’l, Inc. v. Burkard, 185 USPQ 201, 206 (S.D.Cal. 1975).
- 19 - Opposition No. 91211271
Conclusion on Likelihood of Confusion
Given an overlap in the goods, trade channels and classes of ordinary
purchasers, as well as the overall similarity as to the connotations and commercial
impressions of the respective marks, we find a likelihood of confusion herein. That
the “Jockey” component of Opposer’s composite is famous in the field of underwear
generally is simply corroboration of this result.
Finally, having found for Opposer on the basis of its BABY JOCKEY registration,
we need not reach the questions of likelihood of confusion with Opposer’s other
claimed registrations for its JOCKEY or JOCKEY.COM marks, or its allegations of
a likelihood of dilution with its famous JOCKEY mark.
Decision: The opposition is hereby sustained under Section 2(d) of the Act, and
hence the refusal to register Applicant’s mark BABY JOCK is affirmed.
- 20 -