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This Opinion is not a Precedent of the TTAB

Mailed: May 20, 2019

UNITED STATES PATENT AND TRADEMARK OFFICE _____

Trademark Trial and Appeal Board _____

Lotto Sport Italia S.p.A. v. Ukeje Agu, Jr. _____

Opposition No. 91229796 _____

James J. Bitetto and Susan Paik of Tutunjian & Bitetto PC for S.p.A.

Ukeje Agu, Jr., pro se. _____

Before Kuhlke, Wellington and Heasley, Administrative Trademark Judges.

Opinion by Kuhlke, Administrative Trademark Judge:

Applicant, Ukeje Agu, Jr., seeks registration of the composite mark

for “Headgear, namely, hats and caps; Jerseys; Pants; Shirts;

Sweaters; Tank tops,” in International Class 25 the Principal Register.1

Opposer, Lotto Sport Italia S.p.A., has opposed registration of Applicant’s mark on the ground that, as applied to Applicant’s goods, the mark so resembles

1 Serial No. 86849691, filed December 15, 2015, based on an allegation of first use and use in commerce on July 1, 2014 under Section 1(a), 15 U.S.C. § 1051(a). Opposition No. 91229796

Opposer’s previously used and registered marks LOTTO in typed form2 for a variety

of items in International Class 25 and , also for a variety of clothing items in International Class 25, in addition to various bags, briefcases, wallets etc. in International Class 18, games and playthings in

International class 28 and retail and wholesale store services featuring a variety of items in International Class 35, as to be likely to cause confusion under Section 2(d) of the Lanham Act, 15 U.S.C. § 1052(d). By his answer, Applicant denies the salient allegations and asserts “affirmative defenses” that are more in the nature of amplifications of its denials.3

The parties filed briefs on the case.

I. RECORD

The record includes the pleadings and, by operation of Trademark Rule

2.122(b)(1), 37 C.F.R. § 2.122(b)(1), the file of the application subject to the notice of

opposition.

Opposer submitted the testimony declaration of Andrea Tomat, Opposer’s

President and CEO, with accompanying exhibits 1 through 14, including TSDR

printouts of Opposer’s pleaded registrations.4

2 Prior to November 2, 2003, “standard character” drawings were known as “typed” drawings. A typed mark is the legal equivalent of a standard character mark. TMEP § 807.03(i) (October 2018).

3 Applicant’s allegation that Opposer’s mark “is or has become generic” is an impermissible collateral attack absent a counterclaim against the pleaded registrations and has been given no consideration.

4 16-18 TTABVUE.

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Opposer also submitted with its notice of reliance5: (1) Applicant’s responses to

Opposer’s Interrogatory Nos. 1-28; and (2) Applicant’s responses to Opposer’s

Requests for Production of Documents Nos. 1-38.6

Applicant did not submit trial evidence. In his brief, Applicant refers to various

“facts” and arguments that are not based on evidence submitted during the trial period. See Trademark Rule 2.121, 37 C.F.R. 2.121. Opposer’s motion to strike

Applicant’s trial brief is granted to the extent that we have not considered those portions of the brief that discuss or rely on material not of record, in particular, the references to third-party applications and registrations. Saul Zaentz Co. v. Bumb,

95 USPQ2d 1723, 1725 n.7 (TTAB 2010) (assertions in brief not evidence unless supported by evidence introduced at trial or except as admission).

II. STANDING AND PRIORITY

Opposer’s pleaded and proven registrations are summarized below:

5 19 TTABVUE. 6 Applicant’s responses to the document requests indicating no documents exist are properly of record. See City National Bank v. OPGI Management GP Inc./Gestion OPGI Inc., 106 USPQ2d 1668, 1674 n.10 (TTAB 2013) (responses to document production requests are admissible solely for purposes of showing that a party has stated that there are no responsive documents); ShutEmDown Sports Inc. v. Lacy, 102 USPQ2d 1036 n.7 (TTAB 2012) (written responses to document requests indicating that no documents exist may be submitted by notice of reliance). However, the responses that consist of website links have not been considered. Documents served in response to document requests may not be made of record by notice of reliance alone, except to the extent that they are admissible by notice of reliance under Trademark Rule 2.122(e) (printed publications, official records); or unless the documents have been authenticated by an admission or stipulation from the producing party. Syndicat Des Proprietaires Viticulteurs De Chateauneuf-Du-Pape v. PasquierDesVignes, 107 USPQ2d 1930, 1932 n.7 (TTAB 2013); ShutEmDown Sports Inc. v. Lacy, 102 USPQ2d 1036 at n.8 (TTAB 2012). Further, website links are not proper matter for submission under notice of reliance and are insufficient to make information from the site of record. Edom Laboratories Inc. v. Lichter, 102 USPQ2d 1546, 1550 (TTAB 2012); In re Olin Corp., 124 USPQ2d 1327, 1332 n.15 (TTAB 2017).

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Opposition No. 91229796

Registration No. 2347644 for the typed mark LOTTO for “pullovers, gloves, cardigans, jerseys, neckwear, sweaters, socks, stockings, tops, tights, trousers, leggings, skirts, jackets, jerkins, shirts, vests, waistcoats, jumpers, track suits, blouses, blousons, jeans, sweat pants, gym suits, knickers, pants, shorts, t-shirts, sweat-shirts, suits and dresses, overcoats, coats, anoraks, raincoats, belts, suspenders, loungewear, under-wear, beachwear, sleepwear, footwear, headwear,” in International Class 25, issued on May 2, 2000, 1998, renewed;

Registration No. 4148339 for the mark for, inter alia, “Clothing, namely, shirts, body shirts, tank shirts, camp shirts, dress shirts, sweatshirts, t-shirts, knit shirts, long-sleeved shirts, short-sleeved shirts, moisture- wicking sports shirts, polo shirts, shirts for suits, sports shirts, wind shirts, pants, padded pants, gym pants, jogging pants, lounge pants, sports pants, moisture- wicking sports pants, petti-pants, stretch pants, sweat pants, tap pants, track pants, wind pants, Bermuda shorts, jackets, men's and women's jackets, outer jackets, padded jackets, sleeved or sleeveless jackets, sports jackets, sweat jackets, waterproof jackets, wind-jackets, athletic uniforms, coats, trousers, vests, skirts, dresses, jumpers, socks, stockings, tights, ties, underwear, pajamas, bathing suits, swim trunks, gloves, footwear, headgear, namely, hats, caps, caps with visors, bandannas, scarves, sun visors, berets,” in International Class 25, issued on May 29, 2012.

Because Opposer has made its pleaded registrations properly of record, Opposer has established its standing to oppose registration of Applicant’s mark and its priority is not in issue with respect to the marks and goods in those registrations.7 See

Empresa Cubana Del Tabaco v. Gen. Cigar Co., 753 F.3d 1270, 111 USPQ2d 1058

(Fed. Cir. 2014); Cunningham v. Laser Corp., 222 F.3d 943, 55 USPQ2d 1842

7 Applicant challenges Opposer’s standing based on another application that is not of record. This argument has no merit because the application is not of record and absent a counterclaim the pleaded and proven registrations enjoy the presumptions afforded under Section 7 of the Trademark Act, 15 U.S.C. § 1057.

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Opposition No. 91229796

(Fed. Cir. 2000); Ritchie v. Simpson, 170 F.3d 1092, 50 USPQ2d 1023 (Fed. Cir.

1999); Lipton Indus., Inc. v. Ralston Purina Co., 670 F.2d 1024, 213 USPQ 185

(CCPA 1982); and King Candy Co., Inc. v. Eunice King’s Kitchen, Inc., 496 F.2d

1400, 182 USPQ 108 (CCPA 1974).

III. THE PARTIES

Opposer’s predecessor was formed in 1973 and began by sports

footwear. Tomat Decl. ¶¶ 9 -10, 16 TTABVUE 4. The brand name LOTTO derives

from the founder’s surname Caberlotto. Id. In 1999, Opposer’s predecessor assigned

all its rights in the LOTTO marks to Opposer. Id. ¶ 13, 16 TTABVUE 5. Over the

years, the product offerings have expanded to a variety of apparel and accessories

for men, women and children. Id. ¶¶ 8, 10, 16 TTABVUE 4. Opposer’s goods and

services are sold through various types of retail stores and online. Id. ¶ 19, 16

TTABVUE 7.

Examples of Opposer’s use of its mark in connection with its goods as displayed

online and on its goods are set forth below:8

8 Tomat Decl., Exh. 1, 16 TTABVUE 29, 38. 5

Opposition No. 91229796

Applicant began selling hats, caps, jerseys, pants, shirts, sweaters and tank tops

in connection with the applied-for mark on July 1, 2014. Opp. Notice of Reliance, 19

TTABVUE 20. Applicant asserts the term LOTTA is an acronym for “Live Once

Take Time Appreciate.” Id. at 21.

Applicant’s specimen of use of the mark in connection with its goods is shown below:9

9 Applicant’s specimen of use. 6

Opposition No. 91229796

IV. LIKELIHOOD OF CONFUSION

Our likelihood of confusion determination under Section 2(d) is based on an

analysis of all of the probative facts in evidence that are relevant to the factors set

forth in In re E. I. du Pont de Nemours and Co., 476 F.2d 1357, 177 USPQ 563

(CCPA 1973). See also, In re Majestic Distilling Co., 315 F.3d 1311, 65 USPQ2d

1201 (Fed. Cir. 2003). Two key considerations are the similarities between the

marks and the similarities between the goods. See Federated Foods, Inc. v. Fort

Howard Paper Co., 544 F.2d 1098, 192 USPQ 24 (CCPA 1976). As noted above,

Opposer pleaded and proved two registrations for the LOTTO mark. For purposes of

our likelihood of confusion analysis, we confine our analysis to Opposer’s mark in

pleaded and proven Registration No. 2347644, summarized above, because if we do

not find likelihood of confusion with the mark and goods in this registration, we would not find it as to the other pleaded and proven registration. See In re Max

Capital Grp. Ltd., 93 USPQ2d 1243, 1245 (TTAB 2010).

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Opposition No. 91229796

A. Relatedness of Goods, Channels of Trade, Classes of Purchasers

We turn first to a consideration of the goods, channels of trade and classes of

purchasers. We must make our determinations under these factors based on the

goods as they are recited in the registration and application. See Octocom Systems

Inc. v. Houston Computer Services, Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed.

Cir. 1990) (“The authority is legion that the question of registrability of an

applicant’s mark must be decided on the basis of the identification of goods set forth

in the application regardless of what the record may reveal as to the particular

nature of an applicant’s goods, the particular channels of trade or the class of purchasers to which sales of the goods are directed.”); In re Elbaum, 211 USPQ 639

(TTAB 1981).

The subject application and Opposer’s registration contain identical goods

(jerseys, sweaters, shirts, pants) and legally identical goods (Opposer’s “tops”

encompass Applicant’s “Tank tops” and Opposer’s “headwear” encompasses

Applicant’s “hats and caps”). Considering the channels of trade and classes of

purchasers, because the goods are identical and legally identical and there are no

limitations as to channels of trade or classes of purchasers in either the application

or Opposer’s registration, we must presume that Applicant’s and Opposer’s goods will be sold in the same channels of trade and will be bought by the same classes of purchasers. See In re Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1908 (TTAB

2012); Hewlett-Packard Co. v. Packard Press Inc., 281 F.3d 1261, 62 USPQ2d 1001

(Fed. Cir. 2002); Canadian Imperial Bank v. Wells Fargo Bank, 811 F.2d 1490, 1

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USPQ2d 1813 (Fed. Cir. 1987); Genesco Inc. v. Martz, 66 USPQ2d 1260, 1268

(TTAB 2003).

In view of the above, the du Pont factors of the similarity of the goods, the

channels of trade and classes of purchasers favor a finding of likelihood of confusion.

B. Conditions of Sale

In considering this factor, we must at the goods as identified and base our

determination on the least sophisticated consumer. Stone Lion Capital Partners, LP

v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1163 (Fed. Cir. 2014) cited

in In re FCA US LLC, 126 USPQ2d 1214, 1222 (TTAB 2018) (“Board precedent requires our decision to be based on the least sophisticated potential purchasers.”).

Because Applicant’s identification of goods is unrestricted and because the clothing items in the cited registration are also unrestricted, we must assume that these goods are sold to ordinary purchasers who exercise ordinary care in their purchase. See In re Fabfitfun, Inc., 127 USPQ2d 1670, 1673 (TTAB 2018) (no restriction of price). Applicant’s unsupported statements in his brief that his goods have a “high-end price point” (21 TTABVUE 7) is not relevant, in view of the unrestricted identification of goods in the application. Here, the class of consumers for the respective goods consists of the general public, namely all types of consumers

(men, women, and children). There is no evidence that this segment of the general public would necessarily exercise a higher degree of care when encountering the goods. We further note that Opposer’s goods sell in a range between $7-$100 dollars.

Tomat Decl. ¶ 21, 16 TTABVUE 8. Moreover, to the extent some consumers may

take more care in their clothing purchase, as noted above, the standard of care for 9

Opposition No. 91229796

purchasing the goods is that of the least sophisticated purchaser. Alfacell Corp. v.

Anticancer, Inc., 71 USPQ2d 1301, 1306 (TTAB 2004). Accordingly, we find that

this factor slightly favors Opposer.

C. Fame of Opposer’s Mark

Before we compare the marks, we address the fifth du Pont factor, the fame of

Opposer’s mark. In the likelihood of confusion context, fame “varies along a spectrum from very strong to very weak.” Midwestern Pet Foods Inc. v. Societe des

Produits Nestle S.A., 685 F.3d 1046, 103 USPQ2d 1435, 1440 (Fed. Cir. 2012)

(quoting Palm Bay, 73 USPQ2d at 1689). A famous mark is one that has extensive

public recognition and renown. Bose Corp. v. QSC Audio Prods., Inc., 293 F.3d 1367,

63 USPQ2d 1303, 1305 (Fed. Cir. 2002). Fame, if it exists, plays a dominant role in

the likelihood of confusion analysis. Kenner Parker Toys Inc. v. Rose Art Indus. Inc.,

963 F.2d 350, 22 USPQ2d 1453, 1456 (Fed. Cir. 1992). In view of the extreme

deference that is accorded to a famous mark in terms of the wide latitude of legal

protection it receives, and the dominant role fame plays in the likelihood of

confusion analysis, it is the duty of the party asserting that its mark is famous to

prove it clearly. The commercial strength of a mark “may be measured indirectly,

among other things, by the volume of sales and advertising expenditures of the

goods or services traveling under the mark, and by the length of time those indicia

of commercial awareness have been evident.” Bose, 63 USPQ2d at 1305.

Opposer’s predecessor had many sponsorship agreements with various athletes,

including Dino Zoff, , Martina Navratilova and Boris Becker. Tomat

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Decl. ¶ 11, 16 TTABVUE 5. Opposer’s predecessor also sponsored many national

soccer teams (Holland, Switzerland, Serbia, Croatia and Costa Rica) and soccer

clubs (Juventus, Milan, Queens Park Rangers, Deportive La Coruna, Hoffenheim

and Mainz). Id. ¶ 12. Opposer has continued the sponsorship of athletes, including

Luca Toni, Simone Perrotta, Francesca Schiavone, David Ferrer, Marion Bartoli and Kevin Anderson. Id. ¶¶ 14, 15. Athletes have worn Opposer’s clothing at high profile competitions around the world, including the U.S. Open

Championships and the 1994 Football World Cup in the . Id. ¶ 12.

Opposer sells its products throughout the United States in specialty and general retail stores including, Modells, The Sports Authority, Dick’s Sporting Goods,

Journeys, Famous Footwear, Bobs Stores, Costco, and online, including through

Amazon and Zappos. Id. ¶ 19, 16 TTABVUE 7-8. Opposer also points to its presence in social media (Facebook, Twitter, Instagram, YouTube); its company profile on

Wikipedia is available in 26 different languages. Id. ¶¶ 25, 26, 16 TTABVUE 9-10.

Applicant counters that Opposer has not provided context for its sales figures and has only provided specific information for one year. In addition, Applicant asserts that there is no context to understand the probative value of the “Likes” on

Facebook, the views on YouTube, the number of Twitter followers and “tweets,” or the followers and posts on Instagram.

The evidence of commercial strength in the United States is limited due to the lack of context. For example, Opposer provides testimony that since 2010 Opposer’s sales under the LOTTO mark in the United States have been over $3.5 million and

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in 2013 Opposer’s sales were $1 million. Id. ¶ 22, 16 TTABVUE 8. Based on this

testimony, we do not know whether sales are increasing or decreasing over time, or

the percentage of the market share in that field. In addition, much of the evidence

points to use and events outside the United States (athlete and team sponsorships)

and without more information, we cannot gauge the impact on consumer awareness

in the United States. It is also unclear how long Opposer has offered its goods for

sale in the United States (“Today, Opposer’s goods/services under the ‘LOTTO’

marks are offered for sale and sold to consumers throughout the United States and

have been offered for sale well before the Applicant’s asserted date of first use of

July 1, 2014.” Tomat Decl. ¶ 17, 16 TTABVUE 7). There is a listing of licensing

contracts with six licensees for the United States territory spanning the 2009-2017

time period. Id. ¶ 18, 16 TTABVUE 7, Exh. 4 17 TTABVUE 79. There is also a

listing of catalogues in the United States for the period of 1999-2005 and copies of

the 1999, 2003, 2005 catalogues. ¶ 27, 16 TTABVUE 10; Exh. 11, 18 TTABVUE 29.

However, there is no information as to how much and how widely these were

distributed.

While this record does not support a finding of fame such that it is the dominant

factor, it has been shown that Opposer’s LOTTO mark has acquired substantial

commercial strength warranting a broader scope of protection.10 This factor favors a likelihood of confusion.

10 As discussed above, we have not considered the listing of purported third-party applications and registrations in Applicant’s brief. We further note that while third-party use is relevant in the context of du Pont factor 6 to show weakness of a mark, even were we to consider the listing, it would have no probative value. 12

Opposition No. 91229796

D. Similarity of the Marks

We now consider the similarity or dissimilarity of Applicant’s mark

and Opposer’s mark LOTTO when compared in their entireties in terms of

appearance, sound, connotation and commercial impression, keeping in mind that

“when marks would appear on virtually identical goods or services, the degree of

similarity necessary to support a conclusion of likely confusion declines.” Century 21

Real Estate Corp. v. Century Life of Am., 970 F.2d 874, 23 USPQ2d 1698, 1701 (Fed.

Cir. 1992). See also Bridgestone Americas Tire Operations LLC v. Fed. Corp., 673

F.3d 1330, 102 USPQ2d 1061, 1064 (Fed. Cir. 2012); Citigroup Inc. v. Capital City

Bank Grp. Inc., 637 F.3d 1344, 98 USPQ2d 1253, 1260 (Fed. Cir. 2011).

The marks are composed of five letters, both beginning with the same letters

LOTT. The only difference in the literal portions is one letter; Opposer’s mark ends with the vowel O and Applicant’s ends with the vowel A. Applicant’s stylization in its mark blurs that distinction because the letter A vaguely approaches the shape of the letter O. In addition, because Opposer’s mark in the registration is in typed form, we must consider all depictions of the marks including the same manner of depiction regardless of the font style, size, or color in use. See In re Viterra, 101

USPQ2d at 1910; Citigroup v. Capital City Bank Group, 98 USPQ2d at 1259. Such depictions would include those that emphasize the similarities in the marks―such as appearing in a similar font or stylization. The design in Applicant’s mark does not sufficiently serve to distinguish the marks. In general, “in a composite mark comprising a design and words, the verbal portion of the mark is the one most likely

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Opposition No. 91229796 to indicate the origin of the goods to which it is affixed.” CBS, Inc. v. Morrow, 708

F.2d 1579, 218 USPQ 198, 200 (Fed. Cir. 1983). In addition, here, the design is in a subordinate position, being very small and appearing at the end of the literal portion. Herbko Int’l Inc. v. Books Inc., 308 F.3d 1156, 64 USPQ2d 1375,

1380 (Fed. Cir. 2002) (“Because the impact of the design in the overall commercial impression is minor when compared with the words, a consumer viewing Herbko’s mark would attach greater significance to the words CROSSWORD COMPANION than to the crossword puzzle design.”).

Applicant’s argument that his mark is short for “lot of,” which would lead the consumer to associate the mark with luxury, is not supported by evidence. To the extent such a meaning would be perceived by some consumers, it does not overcome the strong similarities in sound, appearance and overall commercial impression.

We find the marks to be similar in appearance, sound, meaning and overall commercial impression. This factor weighs in Opposer’s favor.

E. Actual Confusion

While the absence of actual confusion may weigh against a finding of likelihood of confusion, the absence of any reported instances of confusion is meaningful only if the record indicates a reasonable opportunity for confusion to have occurred.

Barbaras Bakery, Inc. v. Barbara Landesman, 82 USPQ2d 1283, 1287 (TTAB 2007).

Applicant contends that there is no evidence of actual confusion. However, there is no evidence of Applicant’s actual use in the market and the extent of use of

Applicant’s mark is unknown. We have insufficient evidence on which to determine whether there have been meaningful opportunities for confusion to occur. See 14

Opposition No. 91229796

Cunningham v. Laser Golf Corp., 55 USPQ2d at 1847; Gillette Canada Inc. v. Ranir

Corp., 23 USPQ2d 1768, 1774 (TTAB 1992). Moreover, evidence of actual confusion

is not necessary to establish a likelihood of confusion. Herbko v. Kappa Books, 64

USPQ2d at 1380; Han Beauty, Inc. v. Alberto-Culver Co., 236 F.3d 1333, 1338 (Fed.

Cir. 2001). We find this factor to be neutral.

F. Balancing the Factors

We have considered all of the evidence pertaining to the relevant du Pont

factors, as well as the parties’ arguments with respect thereto (including any evidence and arguments not specifically discussed in this opinion). In balancing the

relevant factors, we conclude that because the goods are identical and legally

identical, the trade channels and classes of customers are identical, Opposer’s mark

is strong, and the marks are similar, confusion is likely.

Decision: The opposition is sustained.

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