This Opinion Is Not a Precedent of the TTAB

Home , Head (company), Kappa (brand), Lotto Sport Italia

This Opinion is not a Precedent of the TTAB

Mailed: January 14, 2021

UNITED STATES PATENT AND TRADEMARK OFFICE _____

Trademark Trial and Appeal Board _____

Lotto Sport Italia S.p.A. v. Cara Johnson and Najeal Young

_____

Opposition No. 91245013 _____

James J. Bitetto, of Tutunjian & Bitetto PC for Lotto Sport Italia S.p.A.

Cara Johnson and Najeal Young, Pro se.

_____

Before Wellington, Goodman and Larkin, Administrative Trademark Judges.

Opinion by Goodman, Administrative Trademark Judge:

Cara Johnson and Najeal Young (“Applicants”) filed an application to register the mark LOTTAGAME for the following:1 “Backpacks; Duffle bags; Tote bags” in

1 Application Serial No. 87840234 was filed on March 19, 2018, based upon Applicants’ allegation of a bona fide intention to use the mark in commerce under Section 1(b), 15 U.S.C. § 1051(b) of the Trademark Act. References to the briefs and the record refer to the Board’s TTABVUE docket system.

Opposition No. 91245013

International Class 18 and “Hats; Jackets; Jerseys; Pants; Shirts; Shorts; Socks;

Sweatbands; T-shirts; Tank tops; Wristbands as clothing; Warm-up suits” in

International Class 25.

Lotto Sport Italia S.p.A. (“Opposer”) opposes registration of Applicants’

LOTTAGAME mark on the ground of likelihood of confusion under Section 2(d), 15

U.S.C. § 1052(d) of the Trademark Act.2 Opposer has pleaded ownership of the

following registered marks (“LOTTO marks”):

LOTTO (typed drawing) 3 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;

2 Opposer also alleged dilution in paragraph 14 of the notice of opposition. This claim is insufficiently pleaded since Opposer did not affirmatively allege that its pleaded marks became famous prior to the filing date of Applicants’ intent-to-use application. Toro Co. v. Torohead, Inc., 61 USPQ2d 1164, 1174 (TTAB 2001). In any event, Opposer did not pursue its dilution claim during trial or in its brief, and we find that the claim is waived. Alcatraz Media, Inc. v. Chesapeake Marine Tours Inc., 107 USPQ2d 1750, 1753 (TTAB 2013), aff’d mem., 565 Fed. Appx. 900 (Fed. Cir. 2014). 3 Registration No. 2347644 issued May 2, 2000, first renewal; section 8 & 9 received. Effective November 2, 2003, Trademark Rule 2.52, 37 C.F.R. § 2.52, was amended to replace the term “typed” drawing with “standard character” drawing. A mark depicted as a typed drawing is the legal equivalent of a standard character mark. ProMark Brands Inc. v. GFA Brands, Inc., 114 USPQ2d 1232, 1236 n.5 (TTAB 2015) (citing Trademark Manual of Examining Procedure § 807.03(i)).

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4 for

goods made of leather and imitation leather not included in other classes, namely, bags, handbags, carry-all bags, sport bags, shoulder bags, backpacks, travel bags, duffel bags, trunks, suit bags, carriers for suits, shirts and dresses, souvenir bags, clutch bags, key cases, book bags, cosmetic bags sold empty, rucksacks, briefcases and attaché cases, wheeled bags, wallets, pocket wallets, card wallets, document cases, business card cases, calling card cases, credit card cases, name card cases, purses, coin purses; trunks and traveling bags; umbrellas in International Class 18;

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;

Gymnastic and sporting articles not included in other classes, namely, gymnastic apparatus, shin guards for athletic use, soccer shin guards; sports balls, namely, footballs, paddleballs, lacrosse balls, racket balls, squash

4 Registration No. 4148339 issued May 29, 2012; Section 71 accepted. The description of the mark states: “The mark consists of the stylized word ‘LOTTO’ surrounded by a rectangle appearing to the right of two vertically connected chevrons surrounded by a square. In between the vertically connected chevrons is the shape of a diamond.”

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balls, soccer balls, basket balls, volley balls, tennis balls, golf balls, rugby balls, cricket balls, rubber balls, table tennis balls, tennis rackets, table tennis bats; tennis racket covers, squash, tennis and table tennis racket paddles, table tennis paddles, knee guards for athletic use, football gloves, golf gloves, baseball gloves; Bowling gloves, Handball gloves; Hockey gloves; chest protectors for sports; football or soccer goals, soccer goal nets, soccer ball knee pads in International Class 28;

Retail and wholesale store services featuring clothing, sport clothing, footwear, sport footwear, headgear, belts, sports glasses, life-saving and protective clothing and footwear, protective helmets for the practice of sports, luggage, rucksacks, bags and traveling bags for sports, bags for sports articles, gymnastic and sports equipment, ball for playing sports, shin guards, knee guards and gloves for the practice of sports; Online wholesale and retail store services featuring clothing, sport clothing, footwear, sport footwear, headgear, rucksacks, bags and traveling bags for sports, bags for sports articles, gymnastic and sports equipment, ball for playing sports, shin guards, gloves for the practice of sports; On-line ordering services featuring clothing, sport clothing, footwear, sport footwear, headgear, belts, sports glasses, life-saving and protective clothing and footwear, protective helmets for the practice of sports, luggage, rucksacks, bags and traveling bags for sports, bags for sports articles, gymnastic and sports equipment, ball for playing sports, shin guards, knee guards and gloves for the practice of sports; Mail order services featuring clothing, sport clothing, footwear, sport footwear, headgear, rucksacks, bags and traveling bags for sports, bags for sports articles, gymnastic and sports equipment, ball for playing sports, shin guards, gloves for the practice of sports; Catalog ordering service featuring clothing, sport clothing, footwear, sport footwear, headgear, rucksacks, bags and traveling bags for sports, bags for sports articles, gymnastic and sports equipment, ball for playing sports, shin guards, gloves for the practice of sports in International Class 35;

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(stylized) 5 for

clothing, namely, shorts, trousers, blouses, shirts, skirts, dresses, socks, shoes, sneakers, hats, gloves, and scarves in International Class 25;

gymnastic and sporting equipment, namely, volleyballs, basketballs, soccer balls in International Class 28;

LOTTO WORKS (standard characters)6 for

Optical apparatus and instruments, namely, spectacles, spectacle glasses, spectacle frames, eyeglasses, eyeglass frames, eyeglass chains, eyeglass cords, eyeglass cases, anti-glare glasses, pince-nez, pince-nez chains, pince-nez cords, pince-nez mounting, pince-nez cases, eyeshades, anti-dazzle shades, anti-glare visors; measuring apparatus and instruments, namely, time clocks, time recording apparatus; life-saving apparatus and instruments, namely, protection devices in the nature of gloves and nets for personal use for protection against accidents, clothing for protection against accidents, irradiation and fire; protective clothing especially made for use in laboratories; gloves for protection against accidents; kneepads for workers; protective masks; riding helmets, workmen’s protective face-shields, protective helmets, protective helmets for sports, shoes for protection against accidents, irradiation and fire; safety restraints, other than for vehicle seats and sports equipment, namely, lanyards for safety purposes for fall protection in International Class 9;

Clothing, namely, ready-made clothing, namely, shirts and pants; clothing of leather, namely, leather jackets, leather pants and leather skirts; clothing of imitations of leather, namely, imitation leather jackets, imitation leather pants and imitation leather skirts; waterproof clothing, namely, waterproof jackets and pants; clothing for gymnastics,

5 Registration No. 1379243 issued January 21, 1986, second renewal. 6 Registration No. 5415101 issued March 6, 2018.

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namely, leotards, gym pants and gym shorts; cyclists’ clothing, namely, cyclist jerseys; motorists’ clothing, namely, motorcycle jackets, motorcycle gloves and motorcycle rain suits; fishing vests; beach clothes, namely, beach cover-ups and beach shoes; swimsuits, bath robes, bathing suits, bathing drawers, bathing trunks, wet suits for water-skiing, masquerade costumes, combinations, uniforms; outer clothing, namely, outer jackets; overalls, overcoats, topcoats, pelisses, coats, parkas, stuff jackets, jackets, vests, waistcoats, gabardines, pelerines, mantillas; knitwear, namely, knit tops, knit dresses, knit caps; singlets, jerseys, sports jerseys, jumpers, petticoats, saris, tee-shirts, sweaters, pullovers, shirts, spats, frocks, shirt fronts, shirt yokes, chemisettes, suits, trousers, trouser straps, gaiter straps, gaiters, pants, babies’ pants; clothing layettes; drawers, skirts, hosiery, leggings, tights, stockings, sweat-absorbent stockings, heelpieces for stockings, girdles, stocking suspenders, socks, sock suspenders, pajamas, dressing gowns, underwear, anti- sweat underwear, underclothing, anti-sweat underclothing, sweat-absorbent underclothing, brassieres, camisoles; teddies being underclothing; breeches for wear, underpants, smocks; slips being underclothing; body linen; ready-made linings being parts of clothing; dress shields; collar protector pads for application to clothing collars; collars, detachable collars, bibs, not of paper; neckties, ascots, pocket squares, boas, scarfs, scarves, shoulder wraps, sashes for wear, gloves, mittens, wristbands, muffs, belts, money belts; braces for clothing, suspenders; paper clothing, namely, paper aprons and paper hats for use as clothing items; pockets for clothing; footwear, namely, shoes, sports shoes, football shoes, gymnastic shoes, beach shoes, wooden shoes, boots, lace boots, boots for sports, football boots, boot uppers, studs for football boots, half- boots, esparto shoes or sandals, sandals, bath sandals, slippers; footmuffs, not electrically heated; bath slippers, galoshes, footwear uppers, soles for footwear, inner soles, heels, heelpieces for boots and shoes; non-slipping devices in the nature of non-slip soles for boots and shoes; tips for footwear; fittings of metal for shoes and boots, iron fittings for boots and shoes, welts for boots and shoes, wimples; headwear, namely, berets, caps, cap peaks, skull caps, visors, sun visors, hats, top hats, headbands, ear muffs, bandanas, hoods, cuffs, bathing caps, shower caps, sleep

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masks; paper hats for use as clothing items; turbans, veils in International Class 25.

Applicants filed an answer admitting that Opposer is the owner of the pleaded

registrations and has priority but otherwise denying the salient allegations in the

notice of opposition.7

Only Opposer filed a trial brief.

I. The Record

The record includes the pleadings and, by operation of Trademark Rule 2.122(b),

37 C.F.R. § 2.122(b), the file of the involved application. In addition, Opposer

introduced a notice of reliance upon printed publications, 18 TTABVUE, and the

declaration testimony of Andrea Tomat, President and CEO of Opposer with

accompanying exhibits, 16 and 17 TTABVUE.

Applicants did not submit any testimony or evidence during their testimony

period.

II. Statutory Entitlement to Bring an Opposition

In every inter partes case, the plaintiff must establish its statutory entitlement to

bring an opposition or cancellation proceeding. To establish entitlement to a statutory

cause of action, a plaintiff must demonstrate: (i) an interest falling within the zone of

interests protected by the statute and (ii) proximate causation. Corcamore, LLC v.

SFM, LLC, 978 F.3d 1298, 2020 USPQ2d 11277, at *4 (Fed. Cir. 2020).

Demonstrating a real interest in opposing registration of a mark satisfies the zone-

7 Applicants asserted affirmative defenses are not true affirmative defenses but merely amplifications of denials of Opposer’s claims.

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of-interests requirement, and demonstrating a reasonable belief in damage by the

registration of a mark demonstrates damage proximately caused by registration of

the mark. Id. at 7-8.

Opposer introduced copies of its pleaded registrations from the USPTO electronic

database showing their status and title. Tomat Declaration ¶ 29 (16 TTABVUE 11-

12), exhibit 13 (17 TTABVUE 187-222). In addition, Applicant admitted Opposer’s

ownership of its pleaded registrations and that the registrations were valid and

subsisting. Answer ¶¶ 3-4. The pleaded registrations establish Opposer’s direct

commercial interest in the proceeding. See Herbko Int’l v. Kappa Books, 308 F.3d

1156, 64 USPQ2d 1375, 1377 (Fed. Cir. 2002) (“In most settings, a direct commercial

interest satisfies the ‘real interest’ test”); Cunningham v. Laser Golf Corp., 222 F.3d

943, 55 USPQ2d 1842, 1844 (Fed. Cir. 2000) (pleaded registrations “suffice to

establish …direct commercial interest”; a belief in likely damage can be shown by

establishing a direct commercial interest).

Therefore, Opposer has shown that it has demonstrated an interest falling within

the zone of interests protected by the statute and a reasonable basis for its belief of

damage proximately caused by registration of the mark. Australian Therapeutic

Supplies Pty. Ltd. v. Naked TM, LLC, 965 F.3d 1370, 2020 USPQ2d 10837 at *3 (Fed.

Cir. 2020); see also Empresa Cubana Del Tabaco v. Gen. Cigar Co., 753 F.3d 1270,

111 USPQ2d 1058 (Fed. Cir. 2014); Coach Servs., Inc. v. Triumph Learning LLC, 668

F.3d 1356, 101 USPQ2d 1713, 1727 (Fed. Cir. 2012); Ritchie v. Simpson, 170 F.3d

1092, 50 USPQ2d 1023, 1025 (Fed. Cir. 1999).

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Accordingly, we find Opposer has established its entitlement to a statutory cause

of action. Cunningham, 55 USPQ2d at 1844. See also Lipton Indus., Inc. v. Ralston

Purina Co., 670 F.2d 1024, 213 USPQ 185, 189 (CCPA 1982).

III. Priority

In addition to Applicants’ admission of Opposer’s priority in its answer (Answer ¶

7), Opposer has made its valid and subsisting pleaded registrations of record.

Applicants have not counterclaimed to cancel any of them, and priority is not an issue

in this case as to the pleaded LOTTO marks for the goods/services recited in those

registrations. King Candy, Inc. v. Eunice King’s Kitchen, Inc., 496 F.2d 1400, 182

USPQ 108, 110 (CCPA 1974).

IV. Likelihood of Confusion

We now turn our attention to the likelihood of confusion analysis. We consider

Opposer’s pleaded registered marks vis-à-vis the mark in the involved application.

Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d

1157, 1162 (Fed. Cir. 2014).

Our determination under Trademark Act Section 2(d) is based on an analysis of

all of the facts in evidence that are relevant to the factors bearing on the issue of

likelihood of confusion. In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177

USPQ 563, 567 (CCPA 1973). Opposer must establish that there is a likelihood of

confusion by a preponderance of the evidence.

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A. Similarity of the Goods

We first consider the DuPont factor regarding the similarity or dissimilarity of the

parties’ respective goods. In comparing the goods, the issue is not whether purchasers

would confuse Applicants’ and Opposer’s goods, but rather whether there is a

likelihood of confusion as to the source of those goods. In re Cook Med. Tech. LLC, 105

USPQ2d 1377, 1380 (TTAB 2012); Helene Curtis Indus. Inc. v. Suave Shoe Corp., 13

UPSQ2d 1618, 1624 (TTAB 1989); In re Rexel Inc., 223 USPQ 830, 831 (TTAB 1984).

The goods need only be “related in some manner or if the circumstances

surrounding their marketing are such that they could give rise to the mistaken belief

that they emanate from the same source.” Coach Servs., 101 USPQ2d at 1722

(quoting 7-Eleven Inc. v. Wechsler, 83 USPQ2d 1715, 1724 (TTAB 2007)). It is

sufficient for a finding of likelihood of confusion if relatedness is established for any

item encompassed by the identification of goods within a particular class in an

application. Tuxedo Monopoly, Inc. v. Gen. Mills Fun Grp., 648 F.2d 1335, 209 USPQ

986, 988 (CCPA 1981).

Applicants’ Class 25 goods are

Hats; Jackets; Jerseys; Pants; Shirts; Shorts; Socks; Sweatbands; T-shirts; Tank tops; Wristbands as clothing; Warm-up suits.

Opposer’s Class 25 goods in Registration No. 2347644 for the mark LOTTO are

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suspenders, loungewear, under-wear, beachwear, sleepwear, footwear, headwear.

Opposer’s Class 25 goods in Registration No. 1379243 for the mark

are

clothing, namely, shorts, trousers, blouses, shirts, skirts, dresses, socks, shoes, sneakers, hats, gloves, and scarves;

Opposer’s Class 25 goods in Registration No. 4148339 for the mark

are

Opposer’s Class 25 goods in Registration No. 5415101 for the mark LOTTO

WORKS are

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namely, motorcycle jackets, motorcycle gloves and motorcycle rain suits; fishing vests; beach clothes, namely, beach cover-ups and beach shoes; swimsuits, bath robes, bathing suits, bathing drawers, bathing trunks, wet suits for water-skiing, masquerade costumes, combinations, uniforms; outer clothing, namely, outer jackets; overalls, overcoats, topcoats, pelisses, coats, parkas, stuff jackets, jackets, vests, waistcoats, gabardines, pelerines, mantillas; knitwear, namely, knit tops, knit dresses, knit caps; singlets, jerseys, sports jerseys, jumpers, petticoats, saris, tee-shirts, sweaters, pullovers, shirts, spats, frocks, shirt fronts, shirt yokes, chemisettes, suits, trousers, trouser straps, gaiter straps, gaiters, pants, babies’ pants; clothing layettes; drawers, skirts, hosiery, leggings, tights, stockings, sweat-absorbent stockings, heelpieces for stockings, girdles, stocking suspenders, socks, sock suspenders, pajamas, dressing gowns, underwear, anti- sweat underwear, underclothing, anti-sweat underclothing, sweat-absorbent underclothing, brassieres, camisoles; teddies being underclothing; breeches for wear, underpants, smocks; slips being underclothing; body linen; ready-made linings being parts of clothing; dress shields; collar protector pads for application to clothing collars; collars, detachable collars, bibs, not of paper; neckties, ascots, pocket squares, boas, scarfs, scarves, shoulder wraps, sashes for wear, gloves, mittens, wristbands, muffs, belts, money belts; braces for clothing, suspenders; paper clothing, namely, paper aprons and paper hats for use as clothing items; pockets for clothing; footwear, namely, shoes, sports shoes, football shoes, gymnastic shoes, beach shoes, wooden shoes, boots, lace boots, boots for sports, football boots, boot uppers, studs for football boots, half- boots, esparto shoes or sandals, sandals, bath sandals, slippers; footmuffs, not electrically heated; bath slippers, galoshes, footwear uppers, soles for footwear, inner soles, heels, heelpieces for boots and shoes; non-slipping devices in the nature of non-slip soles for boots and shoes; tips for footwear; fittings of metal for shoes and boots, iron fittings for boots and shoes, welts for boots and shoes, wimples; headwear, namely, berets, caps, cap peaks, skull caps, visors, sun visors, hats, top hats, headbands, ear muffs, bandanas, hoods, cuffs, bathing caps, shower caps, sleep masks; paper hats for use as clothing items; turbans, veils.

Opposer’s and Applicants’ goods are identical or otherwise very similar.

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With respect to the LOTTO typed drawing mark, the respective identifications are

identical to the extent that both list the following goods: jerseys, socks, jackets, shirts,

pants, shorts and t-shirts. Further, most of Applicants’ other clothing items are

closely related to Opposer’s clothing items.

With respect to the stylized mark, the respective identifications

both list shorts and socks. In addition, Applicants’ identified “pants” encompass

Opposer’s “trousers,” and Opposer’s identified “shirts” encompass Applicant’s “t-

shirts.” Further, most of Applicants’ other clothing items are closely related to

Opposer’s clothing items.

With respect to the mark, both Applicants’ and Opposer’s

identifications list t-shirts, pants, shorts, jackets, hats and tank shirts/tank tops. The

other items, in Applicants’ identification, sweatbands, wristbands and warmup suits,

are closely related to Opposer’s clothing items.

With respect to the LOTTO WORKS mark, the overlapping identical goods in the

identifications are t-shirts, wristbands, hats, pants, shirts and socks. Applicants’

identified “jackets” encompass Opposer’s “outer jackets,” “stuff jackets,” “motorcycle

jackets,” “leather jackets,” “imitation leather jackets,” and “waterproof jackets,” and

Applicants’ identified “shorts” encompass Opposer’s “gym shorts.” Applicants’ and

Opposer’s goods are identical in part and many of the other clothing items are closely

related.

Applicants’ Class 18 goods are

Backpacks; Duffle bags; Tote bags.

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Opposer’s Class 18 goods in Registration No. 4148339 for the mark

are

goods made of leather and imitation leather not included in other classes, namely, bags, handbags, carry - all bags, sport bags, shoulder bags, backpacks, travel bags, duffel bags, trunks, suit bags, carriers for suits, shirts and dresses, souvenir bags, clutch bags, key cases, book bags, cosmetic bags sold empty, rucksacks, briefcases and attaché cases, wheeled bags, wallets, pocket wallets, card wallets, document cases, business card cases, calling card cases, credit card cases, name card cases, purses, coin purses; trunks and traveling bags; umbrellas.

Applicants’ and Opposer’s Class 18 goods are identical or otherwise very similar.

Applicants’ identified “backpacks,” “duffel bags,” and “tote bags” are not limited in

any way as to their material composition, and encompass Opposer’s bags, backpacks

and duffel bags made of leather and imitation leather. Accordingly, the goods at issue

are legally identical in part.

The second DuPont factor weighs in favor of a finding of likelihood of confusion.

B. Similarity of trade channels, classes of purchasers, and conditions of sale

The third DuPont factor considers “the similarity or dissimilarity of established,

likely-to-continue trade channels” and the fourth DuPont factor considers the

“conditions under which and buyers to whom sales are made.” DuPont, 177 USPQ at

567.

There are no trade channel limitations in either Applicants’ or Opposer’s

identifications of goods. Thus, given the in-part or legal identity between many of

Applicants’ and Opposer’s Class 18 and Class 25 goods, we must presume that the

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parties’ goods will move in the same trade channels (e.g., clothing stores, specialty

stores, department stores, and the like) to the same class of purchasers, ordinary

consumers. See In re Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1908 (Fed. Cir.

2012); In re Yawata Iron & Steel Co., 403 F.2d 752, 159 USPQ 721, 723 (CCPA 1968).

Additionally, Opposer’s witness identified Opposer’s trade channels as retail

stores, independent specialty stores (tennis and soccer specialty stores) small

sporting good chains, general footwear chains, mid-tier retailer and department

stores, urban retailers, discount department stores, warehouse stores, as well as

online sales. Tomat declaration ¶ 19 (16 TTABVUE 7-8). Opposer’s witness also

testified that Applicants’ goods are sold through the same or similar “online/retail

clothing-related trade channels” and sold to the same “clothing and apparel”

consumers as Opposer. Tomat declaration ¶¶ 35-36 (16 TTAVUE 13).

The parties’ identifications of goods do not include any restrictions or limitations

as to cost. Therefore, we must also presume that the parties’ Class 18 and Class 25

goods encompass all possible price points, including relatively inexpensive clothing,

bags, backpacks and duffels that would be subject to purchase without significant

deliberation. In addition, given the absence of any limitation as to purchasers, we

must presume that the goods are bought by the same classes of consumers, including

ordinary ones using an ordinary degree of care. Also, the record shows that Opposer’s

apparel and footwear are relatively inexpensive. Specifically, Opposer’s witness

testified that Opposer’s goods are “targeted towards and purchased by consumers of

all ages and demographics that includes consumers of all sophistication levels” and

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that its goods are sold at a relatively low cost of $20 to $130 U.S. dollars. Tomat

declaration ¶¶ 28-29 (16 TTABVUE 8-9).

Accordingly, we find the the third DuPont factor also favors a finding of likelihood

of confusion while the fourth Dupont factor is neutral.

C. Fame

We next consider Opposer’s claim that its LOTTO marks are famous under the

fifth DuPont factor. DuPont, 177 USPQ at 567.

In the likelihood of confusion context, fame “varies along a spectrum from very

strong to very weak.” Joseph Phelps Vineyards, LLC v. Fairmount Holdings, LLC,

857 F.3d 1323, 122 USPQ2d 1733, 1734 (Fed. Cir. 2017). 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 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. North Face Apparel Corp. v. Sanyang Indus. Co. Ltd., 116 USPQ2d

1217, 1226 (TTAB 2015).

“[F]ame of a mark may be measured indirectly, among other things, by the volume

of sales and advertising expenditures of the goods traveling under the mark, and by

the length of time those indicia of commercial awareness have been evident.” Bose

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Corp., 63 USPQ2d at 1305. When the statistics of sales and advertising as indicia of

fame are large, the Federal Circuit has tended to accept them without any further

supporting proof. Id. at 1306.

We find that the evidence falls short of establishing the fame of Opposer’s marks

in the United States.

Opposer offered its United States sales figures since 2010 for its LOTTO marks as

“more than” $3.5 million dollars, Tomat declaration ¶ 22 (16 TTABVUE 9), which is

not extraordinarily large for a worldwide business selling apparel, sports shoes, and

sporting goods.8 We also do not know whether sales are increasing or decreasing over

time, or the percentage of the market share in its field, or how this figure is allocated

among Opposer’s LOTTO marks and the various goods that Opposer offers.

Opposer’s witness also testified about its promotional activity that includes

participation in tennis events, sports players wearing its apparel, and product

placement in movies (actors wearing its apparel). Tomat Declaration ¶ 23 (16

TTABVUE 9). However, Opposer did not provide specific information so that we can

gauge the consumer exposure. For example, there is no evidence regarding the

attendance or television figures for the sporting events where it promotes its apparel,

and the exhibit showing tennis players that it sponsors and the tournaments they

played is not explained. There also is no information as to the attendance/viewing

8 One of its exhibits self-identifies Opposer as the “third most visible brand in tennis.” Tomat declaration exhibit 9 (17 TTABVUE 11).

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figures for the one movie mentioned by Opposer’s witness in which actors wearing

Opposer’s apparel appeared.9

Opposer’s witness also testified that Opposer distributed catalogs between 1999

through 2005 in the United States. Aside from the lack of information about the level

of distribution of the catalogs, Opposer’s activities and public recognition of its marks

in the United States between 1999 through 2005, a period more than 15 years ago, is

of less relevance in proving the current fame of its marks. Opposer’s witness also

stated that Opposer has granted licenses to seven licensees for the right to

manufacture, distribute and sell products under the LOTTO trademark in the United

States during the 2012 to 2019 time period. However, Opposer’s witness did not

provide additional information about licensee distribution and sales to show the

impact on the United States consumer.

Opposer’s witness also states that it promotes its goods on its two websites (one is

an Italian website with web pages provided in Italian) but the witness did not provide

any United States visitor information to its websites from which we could infer

exposure to United States consumers. Tomat declaration ¶ 24 (16 TTABVUE 9-10);

exhibit 9 (17 TTABVUE 5-98). To the extent that Opposer has relied on the Wikipedia

page to establish the fame of the LOTTO marks, ¶ 26 (16 TTABVUE 10-11), and

exhibit 11 (17 TTABVUE 109-111), the Wikipedia page is admissible for the limited

purpose of demonstrating what has been printed, but not for the truth of what has

9 Some of the apparel displays the chevron diamond design element alone and not as a combined word and design mark. Tomat declaration, exhibit 9 (17 TTABVUE 5-98).

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been printed. The existence of the Wikipedia page falls far short of establishing the

fame or renown of Opposer’s LOTTO marks.

As to its social media presence, Opposer’s witness testified about a Facebook page

that has recorded over 856,790 “Likes”; a YouTube account with 1,540 subscribers

and 799,754 views; a Twitter page with 11,210 followers; and an Instagram page with

116,000 followers. Tomat Declaration ¶ 25 (16 TTABVUE 10). However the social

media sites use “Lotto Sport,” “LottoSport” or “Lottosportitaly,” which are not the

pleaded marks. Tomat Declaration exhibit 10 (17 TTABVUE 99-108). It also is

unclear how many of these subscribers, followers, likes, or views are United States

consumers, and we have no information as to how these numbers compare to the

social media success of Opposer’s competitors.

Accordingly, we find that Opposer has failed to clearly show that its LOTTO

marks are so commercially strong that we should accord them a broader scope of

protection than any other arbitrary/coined mark.10 Nonetheless, because LOTTO is

conceptually strong, we find that Opposer’s LOTTO marks are inherently distinctive.

Therefore, we accord them the normal scope of protection to which an inherently

distinctive mark is entitled. Bell’s Brewery, Inc. v. Innovation Brewing, 125 USPQ2d

1340, 1348-49 (TTAB 2017) (citing Joseph Phelps, 122 USPQ2d at 1734). This DuPont

factor is neutral in our likelihood of confusion analysis.

10 According to Opposer’s witness, “Lotto” is derived from the surname of its founder, Caberlotto. Tomat declaration ¶ 9 (16 TTABVUE 4).

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D. Similarity of the Marks

As to the first du Pont factor, “similarity or dissimilarity of the marks,” we analyze

“the marks in their entireties as to appearance, sound, connotation and commercial

impression.” Viterra 101 USPQ2d at 1908 (quoting DuPont, 177 USPQ at 567). See

also Palm Bay Imps. Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396

F.3d 1369, 73 USPQ2d 1689, 1691 (Fed. Cir. 2005) (quoting DuPont, 177 USPQ at

567). “The proper test is not a side-by-side comparison of the marks, but instead

‘whether the marks are sufficiently similar in terms of their commercial impression’

such that persons who encounter the marks would be likely to assume a connection

between the parties.” Coach Servs., 101 USPQ2d at 1721 (citation omitted). The focus

is on the recollection of the average purchaser, who normally retains a general rather

than a specific impression of trademarks. See Inter IKEA Sys. B.V. v. Akea, LLC, 110

USPQ2d 1734, 1740 (TTAB 2014); Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106,

108 (TTAB 1975).

Because the similarity or dissimilarity of the marks is determined based on the

marks in their entireties, our analysis cannot be predicated on dissecting the marks

into their various components. The decision must be based on the entire marks, not

just part of the marks. In re Nat’l Data Corp., 753 F.2d 1056, 224 USPQ 749, 751

(Fed. Cir. 1985); see also Franklin Mint Corp. v. Master Mfg. Co., 667 F.2d 1005, 212

USPQ 233, 234 (CCPA 1981) (“It is axiomatic that a mark should not be dissected

and considered piecemeal; rather, it must be considered as a whole in determining

likelihood of confusion.”).

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Finally, where Applicants’ goods in the application are legally identical to

Opposer’s goods in the pleaded registrations, the degree of similarity between the

marks which is required to support a finding that the marks are confusingly similar

under the first DuPont factor (and thus a finding that a likelihood of confusion exists)

is less than it would be if the goods were not identical. Century 21 Real Estate Corp.

v. Century Life of America, 970 F.2d 874, 23 USPQ2d 1698 (Fed. Cir. 1992).

Applicant’s mark is LOTTAGAME and Opposer’s marks are LOTTO,

, and LOTTO WORKS.

We first consider Opposer’s LOTTO, LOTTO (stylized) and LOTTO and design

marks.

Applicant’s LOTTAGAME mark is in standard characters and Opposer’s LOTTO

mark is in typed drawing form. Marks presented in standard or typed characters are

not limited to any particular depiction. Viterra, 101 USPQ2d at 1909-11; Citigroup

Inc. v. Capital City Bank Grp., Inc., 637 F.3d 1344, 98 USPQ2d 1253, 1259 (Fed. Cir.

2011). Because the marks are either in typed format or in standard characters, they

could conceivably be displayed in the same font style or size or color.

Opposer’s mark has a slight stylization. As indicated,

Applicant’s mark could be displayed in a similar stylization because the rights in a

standard character mark reside in the wording and not any particular display or

rendition.

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As to Opposer’s mark, the stylized word LOTTO

dominates over the design element because purchasers most likely will use the word

portion of the mark to call for the goods. See Viterra, 101 USPQ2d at 1908 (normally

according greater weight to the word in composite word and design marks because

purchasers would use the word to request or refer to the goods or services); CBS Inc.

v. Morrow, 708 F.2d 1579, 218 USPQ 198, 200 (Fed. Cir. 1983) (“[I]n a composite mark

comprising a design and words, the verbal portion of the mark is the one most likely

to indicate the origin of the goods to which it is affixed.”). As indicated, Applicant’s

mark could be displayed in a similar stylization as the word portion of the LOTTO

design mark.

As to its LOTTO, LOTTO stylized, and LOTTO and design marks, Opposer’s basic

position is that LOTTO and LOTTA are similar.

Opposer’s LOTTO, LOTTO stylized and LOTTO and design marks and Applicants’

LOTTAGAME mark are similar in sound and appearance to the extent they share

the similar five-letter term LOTTO/LOTTA, with the difference being the end vowel;

the letter “o” in Opposer’s mark is substituted for the letter “a” in Applicants’ mark.

But the marks also differ in appearance and sound by virtue of the word GAME in

Applicants’ mark. As to Opposer’s mark, there also is an

additional point of difference in appearance due to the vertically connected chevron

diamond design element and the rectangular background carrier.

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Opposer also points to the placement of the word LOTTA at the beginning of

Applicants’ mark, arguing that it is the dominant portion of Applicants’

LOTTAGAME mark and noting that consumers are inclined to focus on the first word

in a mark. However, we disagree with Opposer’s assessment that LOTTA is the

dominant element in Applicants’ mark. Instead we find that LOTTAGAME is a

unitary mark. Because LOTTA is part of a unitary phrase, the placement of the word

LOTTA is not as impactful.

LOTTAGAME is a unitary phrase that has the connotation of “a lot of” skill.11 This

is very different from Opposer’s LOTTO, LOTTO stylized and LOTTO and design

marks that connote either a nickname/surname, or the English word “lotto,” a game

of chance or a shortened form of lottery, but carry no connotation whatsoever of

quantity, specifically “a lot of.”12 We find the overall connotation and commercial

11 We take judicial notice of the dictionary definition of “lotta” and the meaning of the idiom “got game.” See In re Jimmy Moore LLC, 119 USPQ2d 1764, 1767-68 (TTAB 2016) (Board may take judicial notice of online dictionary definitions also available in printed form); Threshold TV Inc. v. Metronome Enters. Inc., 96 USPQ2d 1031, 1038 n.14 (TTAB 2010) (same). Lotta is defined as “a written form of ‘lot of’ or ‘lots of’ … : •We’re gonna have a lotta fun.” Oxford Advanced American Dictionary, oxfordlearnersdictionaries.com/us/definition/ americanenglish/lotta (accessed January 11, 2021). The Macmillan Dictionary states that “lotta” is “a way of writing ‘lot of’ that shows how it sounds in informal conversation. You’ve got a lotta nerve!” https://www.macmillandictionary.com/us/dictionary/american/lotta (accessed January 11, 2021). “Got Game” is an idiom that means “: skill at playing a particular game or sport, such as basketball. // In playing against her older brother, she showed that she’s got game.” Merriam- Webster Dictionary, https://www.merriam-webster.com/dictionary/got%20game (accessed January 11, 2021). 12 We take judicial notice of the definition of “lotto” that is defined as “1. [uncountable] a game of chance similar to bingo but with the numbers drawn from a container by the players instead of being called out; 2. [countable] a lottery.” Oxford Advanced American Dictionary

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impressions between Applicants’ LOTTAGAME mark and Opposer’s LOTTO, LOTTO

stylized and LOTTO and design marks to be quite different and sufficient to outweigh

any similarities in appearance or sound based on the terms LOTTO/LOTTA.

As to Opposer’s LOTTO WORKS and Applicants’ LOTTAGAME mark, both are

standard character and not limited to any particular depiction or display, and both

are composed of two words. The marks are similar in sound and appearance to the

extent they share the similar five-letter term LOTTO/LOTTA, with the only

difference being the end vowel. But the marks are also dissimilar in sound and

appearance to the extent that they include different second terms, WORKS and

GAME.

When taken as a whole, the marks convey different meanings and commercial

impressions. As indicated, LOTTAGAME is a unitary phrase that conveys “a lot of”

skill. WORKS in Opposer’s mark suggests a complete line of a particular class of

goods (all possible accessories, or clothing, or the whole works).13 To the extent

LOTTO has a connotation of a nickname or surname, the combination LOTTO

WORKS suggests the designer or the company LOTTO is offering a complete line of

its Class 9 and 25 goods.

https://www.oxfordlearnersdictionaries.com/us/definition/americanenglish/lotto (accessed January 11, 2021). 13We take judicial notice of the dictionary definition of “works” (Informal): “all the extra things that may be offered with something: •This camera came with a carrying case, zoom lens, tripod.” Cambridge Dictionary, https://dictionary.cambridge.org/us/dictionary/ english/works (accessed January 11, 2021). “The works” is defined as “informal: everything that there is to have or do : everything that is available. // They ordered a pizza with the works.” Merriam Webster dictionary, https://www.merriam- webster.com/dictionary/the%20works (accessed January 11, 2021).

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We find the first DuPont factor weighs against a finding of likelihood of confusion.

V. Conclusion

Balancing all of the DuPont factors, we conclude that confusion is not likely.

Notwithstanding the identity or close similarities of the respective goods, trade

channels and purchasers, we find that the marks are sufficiently dissimilar that

confusion is unlikely. Thus, the dissimilarity of the marks under the first DuPont

factor simply outweighs the other applicable DuPont factors in this case. See Oakville

Hills Cellar, Inc. v. Georgallis Holdings, LLC, 826 F.3d 1376, 119 USPQ2d 1286, 1290

(Fed. Cir. 2016) (“a single DuPont factor may be dispositive in a likelihood of

confusion analysis, especially when that single factor is the dissimilarity of the

marks”) (quoting Odom’s Tenn. Pride Sausage, Inc. v. FF Acquisition, LLC, 600 F.3d

1343, 93 USPQ2d 2030, 2032 (Fed. Cir. 2010) (“[E]ven if all other relevant DuPont

factors were considered in [opposer’s] favor, as the board stated, the dissimilarity of

the marks was a sufficient basis to conclude that no confusion was likely.”));

Champagne Louis Roederer S.A. v. Delicato Vineyards, 148 F.3d 1373, 47 USPQ2d

1459, 1460 (Fed. Cir. 1998) (“[O]ne DuPont factor may be dispositive in a likelihood

of confusion analysis, especially when that single factor is the dissimilarity of the

marks.”).

Decision: Opposition No. 91245013 is dismissed.

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