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Lotto Sport Italia S.P.A. Ukeje Agu

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Lotto Sport Italia S.P.A. Ukeje Agu 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 Lotto Sport Italia 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 on 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 clothing 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. 2 Opposition No. 91229796 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). 3 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, head 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 Golf 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. 4 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 manufacturing 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.
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