This Opinion is Not a Precedent of the TTAB

Mailed: November 6, 2019

UNITED STATES PATENT AND TRADEMARK OFFICE _____ Trademark Trial and Appeal Board ———— University of at Lafayette v. Richards Cajun Foods Corp. ___

Opposition No. 91233876 ___

Blair B. Suire and Robert L. Waddell of Jones Walker LLP for University of Louisiana at Lafayette.

Evan D. Brown and Adam K. Sacharoff of Much Shelist, P.C. for Richards Cajun Foods Corp. ______Before Kuhlke, Adlin and Pologeorgis, Administrative Trademark Judges.

Opinion by Adlin, Administrative Trademark Judge:

Applicant Richards Cajun Foods Corp. seeks registration of GEAUX CAJUN, in

standard characters, for “fresh and processed products, namely, sausage;

smoked sausage.”1 Opposer University of Louisiana at Lafayette, in its second

1 Application Serial No. 87173267, filed September 16, 2016 under Section 1(b) of the Trademark Act, based on an alleged intent to use the mark in commerce. According to the application, “[t]he English translation of ‘GEAUX’ in the mark is ‘GO’.”

Opposition No. 91233876

amended notice of opposition,2 alleges that it is located in the Acadiana region of

Louisiana, which is known as “Cajun country,” and that its nickname is the RAGIN’

CAJUNS. It further alleges prior use and registration of the mark GEAUX CAJUNS, in standard characters (CAJUNS disclaimed), for educational and entertainment services, clothing and a “wide variety of licensed goods and services.”3 As grounds for opposition, Opposer alleges that use of Applicant’s mark is likely to cause confusion with Opposer’s mark, including because “[t]he consuming public expects the goods sold and licensed by the University under the University’s GEAUX CAJUNS mark to expand to food and beverage products (including sausage) based on the University’s established history of licensing its marks for use in connection with food and beverage products.” 15 TTABVUE 16 (Second Amended NOO ¶ 31). In its answer to the first

2 As explained in the order denying Applicant’s motion for summary judgment, Opposer filed a motion for leave to file a second amended notice of opposition (“NOO”). Applicant had not opposed the motion at the time the summary judgment decision issued. 18 TTABVUE 3. Ultimately, Applicant failed to oppose the motion for leave to amend. The motion is therefore granted as conceded, Trademark Rule 2.127(a), and the Second Amended NOO is Opposer’s operative pleading. In any event, as explained in the summary judgment decision, the second amended NOO is not substantively different than the first, and our decision in this case would be the same under either pleading. 18 TTABVUE 3-4. Citations to the record reference TTABVUE, the Board’s online docketing system. The number preceding “TTABVUE” corresponds to the docket entry number(s), and any number(s) following “TTABVUE” refer to the page number(s) of the docket entry where the cited materials appear. 3 Registration Nos. 4513687 and 4614190, issued April 15, 2014 and September 30, 2014, respectively, both under Section 2(f) of the Trademark Act. The ‘687 Registration issued for “clothing, namely, sweatshirts, caps, T-shirts, jerseys, shorts, jackets, pants, golf shirts, underwear, tennis shoes, neckties, and socks” in International Class 25. The ‘190 Registration issued for “athletic balls, namely, footballs, basketballs, baseballs, and golfballs” in International Class 28; and “education services in the nature of courses at the university level; entertainment services in the nature of football games, basketball games, baseball games, softball games, tennis matches, golf matches, track and field events, and soccer games” in International Class 41.

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amended NOO, Applicant admits that the parties are both located in “Cajun

Country,” and that their marks are “similar visually and phonetically,” but otherwise denies the salient allegations in the notice of opposition; Applicant also asserts

several “affirmative defenses” which are in fact merely amplifications of its denials.4

I. The Record and Trial Stipulations

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

the file of the involved application. In addition, Opposer introduced:

First Notice of Reliance (“Opp. NOR I”) on its pleaded and certain unpleaded registrations; third-party registrations; Internet printouts; and printed publications. 19 and 20 TTABVUE.

Second NOR (“Opp. NOR II”) on the discovery deposition of Ronald Doucet, Applicant’s President (“Doucet Disc. Tr.”) and Applicant’s responses to Opposer’s written discovery requests. 22 TTABVUE.

Testimony Declaration of Leslie Saloom, Opposer’s Associate Director of Trademark Licensing, and the exhibits thereto (“Saloom Dec.”). 27 and 28 TTABVUE.

Testimony Declaration of Aaron Martin, Opposer’s Chief Communications Officer, and the exhibits thereto (“Martin Dec.”). 29 TTABVUE.

Testimony Declaration of Courtney Jeffries, Opposer’s Creative Director, and the exhibits thereto (“Jeffries Dec.”). 30 TTABVUE.

Testimony Declaration of Eric Maron, Opposer’s Senior Communications Representative for the athletic

4 Due to the fairly peculiar circumstances explained in footnote 2, the Board has never set Applicant’s time to answer the Second Amended NOO, and default was never entered; obviously, default would be inappropriate, and because the First and Second Amended NOOs are substantively similar, we presume that Applicant’s answer to the Second Amended NOO would be substantively the same as its answer to the First Amended NOO, and, effectively, a general denial. 3 Opposition No. 91233876

department, and the exhibits thereto (“Maron Dec.”). 31 TTABVUE.

Testimony Declaration of Cory Moss, Senior Vice President and Managing Director of IMG College Licensing (“IMGCL”), and the exhibits thereto (“Moss Dec.”). 33 TTABVUE.

Applicant introduced:

NOR (“App. NOR”) on its discovery deposition of Mr. Martin (“Martin Disc. Tr.”). 34 TTABVUE.

The parties also filed a stipulation that certain materials are authentic and

admissible, but subject to objection. 24 TTABVUE. Some of the information

submitted in the stipulation and elsewhere in the record was deemed confidential

under the Board’s Standard Protective Order, and will therefore only be discussed

generally.

II. The Parties, Their Marks and Collegiate Licensing in the Food and Beverage Field

A. Opposer

Opposer is located in the Acadiana region of Louisiana, which is known as “Cajun

Country.” Ms. Saloom testified that Cajuns are descendants of French Canadians deported from Nova Scotia in the 1700s who settled in South Louisiana. Many Cajun surnames end with the letters “eaux,” such as Breaux and Boudreaux. 27 TTABVUE

3 (Saloom Dec. ¶¶ 7-8).

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Opposer’s “students, alumni, and sports teams are known by its famous RAGIN’

CAJUNS mark, or simply ‘Cajuns.’” Id. (Saloom Dec. ¶ 9).5 Opposer’s sports teams

have enjoyed considerable success over the years, winning multiple Sun Belt

conference championships in several sports. 31 TTABVUE 3 (Maron Dec. ¶ 6).

Opposer’s students’ cheers of “Go Cajuns” at RAGIN’ CAJUNS games were eventually

displayed as GEAUX CAJUNS “to honor and promote the University’s Cajun heritage

and culture, as ‘eaux’ is a Cajun French form of nouns ending in eau.” 27 TTABVUE

5 (Saloom Dec. ¶ 13). Opposer started using GEAUX CAJUNS as a mark in 1993. For

example, since the 1990’s, Opposer’s alumni association has distributed the signs

depicted below which were displayed at school sporting events:

Id. at 5; 28 TTABVUE 9 (Saloom Dec. ¶ 14 and Ex. 104).

Eventually, and well prior to the filing date of Applicant’s involved application,

Opposer began using the GEAUX CAJUNS mark to promote not only the school’s

sporting events, but also the school’s core education services, as well as collateral

5 Opposer owns registrations for the marks RAGIN’ CAJUNS (Registration Nos. 1999398 and 4308629) for a variety of products and services, and RAGIN’ RED for “seasoning for food and food preparation namely salt, pepper, sauces and spices” (Registration No. 3387262). 5 Opposition No. 91233876 products typical of university trademark licensors, such as sporting goods, clothing and license plates, as depicted below:

6 Opposition No. 91233876

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27 TTABVUE 6-8, 18, 19, 63, 111, 116, 121 (Saloom Dec. ¶¶ 17-20, 61, 65 and Exs.

24, 59); 28 TTABVUE 96, 100, 108, 113-115 (Saloom Dec. Exs. 115-116). The following excerpt is from Opposer’s 2009 admissions brochure:

27 TTABVUE 8-9; 28 TTABVUE 30 (Saloom Dec. ¶ 23 and Ex. 111).

Opposer has an extensive trademark licensing program, managed in part by

IMGCL, Opposer’s licensing agent. 27 TTABVUE 9 (Saloom Dec. ¶ 25 and Ex. 64). As of December 2017, Opposer had 260 trademark licensees, which, pursuant to

IMGCL’s standard licensing regime and agreements, each have the right to sell a wide range of licensed goods under any of Opposer’s licensed marks, of which there are many, including both RAGIN’ CAJUNS and GEAUX CAJUNS. Id. at 10, 126-155

(Saloom Dec. ¶¶ 26-30 and Ex. 63-67).

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Opposer is a pioneer among American colleges and universities in expanding its trademark licensing program to “consumables,” specifically food and beverages. Id. at 11-12 (Saloom Dec. ¶¶ 31-34). In fact, in fiscal year 2017, Opposer’s “royalties on sales of licensed consumable products (food and beverage) accounted for more than

30 percent of the University’s licensing royalties. For the collegiate industry as a whole, royalties on sales of licensed consumable products represent only 4 percent of total licensing royalties.” Id. at 11, 55 (Saloom Dec. ¶ 32 and Ex. 22); 34 TTABVUE

37, 40 (Martin Tr. 32, 35).

More specifically: (1) since 2014 Opposer has licensed its RAGIN’ CAJUNS mark to Mello Joy for beverages (coffee); (2) since 2015 Opposer has licensed its RAGIN’

CAJUNS mark to Bayou Teche for beverages (beer); (3) since 2005 Opposer has licensed its RAGIN’ CAJUNS mark to Credeurs Sports & Specialties for seasoning; and (4) since 2012 Opposer has licensed its RAGIN’ CAJUNS mark to Sonic Capital, which operates the Sonic chain, for hamburgers.6 27 TTABVUE 12-18, 156-

239 (Saloom Dec. ¶¶ 35-64 and Exs. 68-79). These products and advertisements for them are depicted below:

6 As indicated, Opposer in fact licensed all of its marks subject to IMGCL’s standard license agreement to these licensees, including the GEAUX CAJUNS mark. 10 Opposition No. 91233876

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Id. at 12-18, 119, 187, 239, 257 (Saloom Dec. ¶¶ 35-64 and Exs. 61, 72, 79, 83); 30

TTABVUE 7 (Jeffries Dec. ¶ 21). As shown, Bayou Teche uses the GEAUX CAJUNS

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mark in advertisements for its RAGIN’ CAJUNS beer, and beginning in 2014 Mello

Joy started using the GEAUX CAJUNS mark on the packaging for its RAGIN’

CAJUNS coffee. Opposer has received:

• more than $5,000 in royalties from its RAGIN’ CAJUNS coffee license from 2015-2018;

• more than $92,000 in royalties from its RAGIN’ CAJUNS beer license from 2016-2018;

• more than $56,000 in royalties from its RAGIN’ CAJUNS seasoning license from 2013-2018; and

• more than $95,000 in royalties from its RAGIN’ CAJUNS hamburger license to Sonic in 2014 and 2016-2017.

Thus, Opposer has earned more than $240,000 in the past several years merely from use of its RAGIN’ CAJUNS (and sometimes GEAUX CAJUNS mark) for food and beverages. 27 TTABVUE 9, 12, 15, 16, 17, 126-128, 172-75, 205-207, 233-38, 254-56

(Saloom Dec. ¶¶ 24, 38, 50, 57 and 63 and Exs. 63, 69, 74, 78 and 82); 31 TTABVUE

3-6, 23-87 (Maron Dec. ¶¶ 8-9, 15-18 and Ex. 58-60, 87, 88); 33 TTABVUE 4-5, 53-57,

74-76, 98-104, 115-117 (Martin Dec. ¶¶ 9(a)-9(d) and Exs. 69, 74, 78 and 82). We may safely assume that its figures for licensing the RAGIN’ CAJUNS mark for products other than food and beverages are substantially higher. 27 TTABVUE 11 (Saloom

Dec. ¶ 32 (“In fiscal year 2017, the University’s royalties on sales of licensed consumable products (food and beverage) accounted for more than 30 percent of the

University’s licensing royalties.”).

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In addition, in 2015, also prior to Applicant’s filing date, Opposer gave permission to Raising Cane, a restaurant known for its chicken tenders, to use the GEAUX

CAJUNS mark in its advertisements, as depicted below:

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27 TTABVUE 18-19, 261-276 (Saloom Dec. ¶¶ 67-73 and Exs. 84-86); 29 TTABVUE

4, 27-29 (Martin Dec. ¶10 and Ex. 84).

“Tailgating” is quite popular at Cajun Field, Opposer’s football stadium. Opposer promotes and capitalizes on this popularity by managing and renting parking lot and field space outside of the stadium for tailgaters to host their tailgate parties prior to home football games. 27 TTABVUE 20 (Saloom Dec. ¶ 74-75). Opposer and its affiliated groups also host their own tailgate parties, as depicted below:

Id. at 20, 80 (Saloom Dec. ¶¶ 74-75 and Ex. 29); 28 TTABVUE 26 (Saloom Dec. Ex.

106).

The foods commonly served at RAGIN’ CAJUN tailgate parties include gumbo, jambalaya and other foods which may contain sausage. 27 TTABVUE 20 (Saloom

Dec. ¶ 76). See also 31 TTABVUE 9 (Maron Dec. ¶¶ 31-33) (“Common meals prepared and served at tailgating gatherings in South Louisiana include jambalaya including sausage, gumbo including sausage, and barbequed (frequently including smoked sausage and boudin, a type of Cajun sausage).”). Media reports confirm and

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stress the tradition of serving gumbo, jambalaya, boudin (sausage mixed with rice,

liver, green onions and seasoning) and other “Cajun foods” at Louisiana tailgate

parties, and more specifically tailgate parties at Opposer’s home football games. Id.

at 20-22, 65-79 (Saloom Dec. ¶¶ 77-82 and Exs. 25-28). See also 34 TTABVUE 46

(Mitchell Tr. 41). For example, a blog post on the Rouses Markets website recites the following slogan which “embodies what one of UL Lafayette’s oldest tailgating groups is all about”: “WELCOME TO RAGIN’ CAJUN TAILGATING A TRADITION OF

JOIE DE VIVRE WHERE THE MEETS THE ROUX AT THE HANDS

OF THE KREWE DE CHEW.” Id. at 76 (Saloom Decl. Ex. 28).

Beer is also popular at tailgate parties before Opposer’s home football games, and

an article about RAGIN’ CAJUNS beer on Opposer’s website quotes Mr. Martin’s

explanation of the decision to license the RAGIN’ CAJUNS mark for beer: “We were

looking for a product that would be suitable for tailgating before Ragin’ Cajuns

athletic events … The ale’s slogan is French, ‘ca va mieux avec des amis,’ which means

‘it goes better with friends.’ That’s so appropriate because it reflects the hospitality

of the Cajun and Creole cultures in Acadiana.” Id. at 22, 87 (Saloom Dec. ¶ 81 and

Ex. 31); 29 TTABVUE 3 (Martin Dec. ¶ 7 and Ex. 31). According to an article on the

“allaboutbeer.com” website entitled “The First Officially Licensed College Beer,” Mr.

Martin and Opposer first approached Bayou Teche about licensing RAGIN’ CAJUNS

for beer with two requirements. Bayou Teche “had to use at least one Louisiana

ingredient,” and “had to make sure the beer would be quaffable enough for tailgating

in the intense, humid Louisiana heat.” 28 TTABVUE 2 (Saloom Dec. Ex. 89). The

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article goes on to state that RAGIN’ CAJUNS beer “goes great with Cajun dishes such

as boudin and jambalaya,” and sales of RAGIN’ CAJUNS beer have been “in the same

ballpark” as those for Bud Light and Michelob Ultra at home football games. Id. at 3.

Opposer itself offers food at its sporting events, including sausage po-boy

sandwiches, gumbo and jambalaya. A concession stand display from Opposer’s

football stadium is depicted below:

27 TTABVUE 8, 23, 125 (Saloom Dec. ¶¶ 21, 83 and Ex. 62); 31 TTABVUE 8 (Maron

Dec. ¶ 28) (“Concession stands at Cajun Field, the University’s football stadium, sells sausage, jambalaya including sausage, and gumbo during the University’s football games.”).

Opposer’s licensed consumable products and their packaging, including those depicted above, emphasize Opposer’s licensed marks, while the names of Opposer’s licensees are deemphasized. In fact, Opposer’s

policy on packaging and marketing for licensed consumable products is to emphasize the University’s trademarks, not the licensee’s name or trademark. Instead, the licensee’s name and/or trademark appears on the package as an

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indication of the manufacturer or distributor. These packages use the University’s trademark in a primary or dominant position, with the licensee’s name and/or trademark in a secondary position and in a smaller font size … Consumers, including the University’s students, alumni, and fans, are more likely to purchase the licensed consumable products to support the University.

27 TTABVUE 11-12 (Saloom Dec. ¶¶ 33-34); 30 TTABVUE 3 (Jeffries Dec. ¶¶ 7-8).

Opposer “plans to continue expanding its trademark licenses for consumable products, namely, food and beverage products,” and has discussed “encouraging one of its licensees to adopt the GEAUX CAJUNS trademark for a seasoning product.” 27

TTABVUE 23 (Saloom Dec. ¶ 84). This expansion strategy “is focused on food and beverage products important to Cajun and Louisiana culture, including tailgating and the products consumed at tailgating events.” Id. (Saloom Dec. ¶ 87). Ms. Maron

testified that “sausage products are a natural progression of the University’s

expansion of its trademark licensing due to the significant presence of sausage in

traditional meals served at tailgating gatherings before sporting events in Louisiana,

including at the University’s Cajun Field, and by concessions vendors at the

University’s sports events.” 31 TTABVUE 10 (Maron Dec. ¶ 40). See also 34

TTABVUE 38-39, 46 (Mitchell Tr. 33-34, 41) (“because meat, − boudin specifically –

and other things have been tied – jambalaya, which uses sausage, is a big part of our

tailgating tradition. It’s certainly something that would definitely fit into our brand.

You know, I don’t think selling Chicago style pizza would fit into our brand, but

certainly sausage and boudin.”).

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Opposer is concerned that consumers would be confused by Applicant’s GEAUX

CAJUN sausage: “I think a mistake that people might assume that they’re doing these things that support the University’s mission and its objectives by seeing the sausage and thinking that it’s a part of our family of products.” 34 TTABVUE 34

(Mitchell Tr. 29).

B. Applicant

Applicant is a “wholesale manufacturer of Cajun products. Those products include smoked sausage and a line of frozen entrees.” 22 TTABVUE 31 (Doucet Tr. 26). Like

Opposer, Applicant is based in “Cajun Country,” which Mr. Doucet and Applicant consider “as being basically a 50-mile radius of where our facility is located.” Both

Applicant and Opposer are located in Acadia Parish. Id. at 26 (Doucet Tr. 21).

Applicant’s tagline, used on its website and product packaging, is “First Choice of

Cajun Country,” and its packaging sometimes the notation “Certified Cajun.”

Id. at 29, 177, 183 (Doucet Tr. 24 and Exs. H and J).

Applicant adopted its GEAUX CAJUN mark intending to use it for a new “smoked sausage product, that would have been competitive in competing against Manda out of Baton Rouge.” Id. at 36 (Doucet Tr. 31). It is promoted as specifically “great in gumbo.” Id. at 159 (Doucet Tr. Ex. D). The packaging for Applicant’s GEAUX CAJUN product emphasizes the GEAUX CAJUN mark and deemphasizes the RICHARD’S trade name in a way which contrasts with Applicant’s packaging for its other products:

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Id. at 177, 183 (Doucet Tr. Exs. H and J).

Applicant pronounces the term GEAUX in its involved mark as “go,” and admits that Opposer’s mark GEAUX CAJUNS and Applicant’s mark GEAUX CAJUN are

“visually and phonetically similar.” Id. at 33, 70, 157, 198-200 (Doucet Tr. 28, 65 and

Ex. C (Applicant’s Response to Request for Admission Nos. 7 and 19)).

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Mr. Doucet has attended classes in Opposer’s classrooms, although they were sponsored by a banking organization rather than the university itself, and he has attended Opposer’s baseball, basketball and football games. 22 TTABVUE 13-14

(Doucet Tr. 8-9). He has purchased clothing bearing the RAGIN’ CAJUNS mark, and is aware of the Sonic RAGIN’ CAJUNS burger and Mello Joy’s trademark relationship with Opposer. Id. at 15, 18-19 (Doucet Tr. 10, 13-14). He is also aware of

Opposer’s GEAUX CAJUNS mark, having encountered it when attending Opposer’s sporting events. Id. at 19, 21 (Doucet Tr. 14, 16). One of Mr. Doucet’s children graduated from Opposer in 2010. Id. at 13 (Doucet Tr. 8).

C. Third-Party College/University Marks Used and Registered for Food and Beverages

It is not uncommon for colleges and universities to use, or license third parties to use, college and university marks, including nicknames, in connection with food and beverage products. For example, the University of Idaho’s website promotes

VANDAL BRAND MEATS:

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19 TTABVUE 388. An article on “thelantern.com,” based on an interview with Anne

Chasser, the Ohio State University’s Director of Trademark and Licensing, states

that “Ohio Packing Company, which supplies concessions at OSU sporting arenas,

will soon stock grocery stores shelves with OSU hot dogs and new ‘Brutus brats.’” Id.

at 389. Ohio Packing Co.’s website and Facebook page display the hot dogs bearing

the BUCKEYE mark:

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Id. at 392, 394. The University of Nebraska-Lincoln’s Loeffel Meat Laboratory’s website indicates that it sells meat, including sausage:

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19 TTABVUE 385. In addition, the University of Texas’s LONGHORN mark and

University of Cincinnati’s C and paw print design marks are used for nuts, the

University of Wisconsin’s and Washington State’s COUGAR marks are

used for cheese, the University of Pittsburgh’s PANTHERS mark is used for

chips , and Clemson University’s CLEMSON and paw print design

marks are used for blue cheese . 19 TTABVUE 398;

20 TTABVUE 2-37.

Opposer also introduced evidence that third-party colleges and universities have

registered the same marks for educational services and goods and services more traditionally associated with educational institutions on the one hand, and meat or other food or beverage products on the other. These include the University of

Nebraska, University of Idaho, the Ohio State University, University of Texas,

University of Wisconsin, University of Pittsburgh and Clemson University marks

24 Opposition No. 91233876

revealed by the use examples depicted above.7 19 TTABVUE 240-330. “Third-party registrations which cover a number of differing goods and/or services, and which are based on use in commerce, although not evidence that the marks shown therein are in use on a commercial scale or that the public is familiar with them, may nevertheless have some probative value to the extent that they may serve to suggest that such goods or services are of a type which may emanate from a single source.” In re Mucky Duck Mustard Co., 6 USPQ2d 1467, 1470 n.6 (TTAB 1998); see also In re

Davey Prods., 92 USPQ2d at 1203.

III. Standing and Priority

Opposer’s pleaded registrations, made of record with its original notice of

opposition, establish its standing. 1 TTABVUE 16-21. See Empresa Cubana Del

Tabaco v. Gen. Cigar Co., 753 F.3d 1270, 111 USPQ2d 1058, 1062 (Fed. Cir. 2014);

Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1844 (Fed. Cir.

2000).

Because Applicant has not counterclaimed to cancel either of Opposer’s pleaded registrations, priority is not at issue with respect to the mark and goods and services

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

USPQ 108, 110 (CCPA 1974). In addition, Opposer has established prior common law

use of its GEAUX CAJUNS mark for not only the goods and services identified in its pleaded registrations, but also for toys, license plates, pins, and even coffee. 27

7 We have not considered any cancelled registrations, or any specific goods or services for which the submitted registrations were cancelled. 25 Opposition No. 91233876

TTABVUE 6-8, 12-14, 18-20, 63, 111, 116, 121, 156-88 (Saloom Dec. ¶¶ 17-20, 35-44,

61, 65-73 and Exs. 24, 59); 28 TTABVUE 96, 100, 108, 113-115 (Saloom Dec. Exs.

115-116). Moreover, Opposer has licensed third parties to use the GEAUX CAJUNS mark to advertise chicken tenders and restaurant services, as well as RAGIN’

CAJUNS beer. 27 TTABVUE 14-16, 18-19, 119, 261-276 (Saloom Dec. ¶¶ 45-53, 67-

73 and Exs. 61, 84-86); 29 TTABVUE 4, 27-29 (Martin Dec. ¶10 and Ex. 84).

IV. Likelihood of Confusion

Our determination under Section 2(d) is based on an analysis of all of the probative evidence of record bearing on the likelihood of confusion. In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973) (setting forth factors to be considered); see also In re Majestic Distilling Co., 315 F.3d 1311, 65

USPQ2d 1201, 1203 (Fed. Cir. 2003). In any likelihood of confusion analysis, two key considerations are the similarities between the marks and the similarities between the goods and services. See Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d

1098, 192 USPQ 24, 29 (CCPA 1976) (“The fundamental inquiry mandated by § 2(d) goes to the cumulative effect of differences in the essential characteristics of the goods and differences in the marks.”). Opposer bears the burden of establishing that there is a likelihood of confusion by a preponderance of the evidence. Cunningham, 55

USPQ2d at 1848.

A. The Marks

The marks are essentially identical, the only difference between them being that

Opposer uses the plural form CAJUNS and Applicant uses the singular form CAJUN.

This is a distinction without a meaningful difference. Wilson v. DeLaunay, 245 F.2d 26 Opposition No. 91233876

877, 114 USPQ 339, 341 (CCPA 1957) (“It is evident that there is no material

difference, in a trademark sense, between the singular and plural forms of the word

‘Zombie’ and they will therefore be regarded here as the same mark.”); In re

Sarjanian, 136 USPQ 307, 308 (TTAB 1962).

Indeed, Applicant admits that the marks are “visually and phonetically similar.”

22 TTABVUE 33, 70, 157, 198-200 (Doucet Tr. 28, 65 and Ex. C (Applicant’s Response

to Request for Admission Nos. 7 and 19)); 9 TTABVUE 11 (Answer to First Amended

NOO ¶ 27). Applicant does not contend that the marks convey different meanings,

nor would doing so be particularly convincing, where Applicant concedes in its

application and this proceeding that GEAUX in its mark means “go,” as it does in

Opposer’s mark. 21 TTABVUE 70 (Doucet Tr. 65). In any event, to the extent the

parties’ marks have different connotations as a result of Applicant using the singular

form of CAJUN and Opposer using the plural, any such differences are minor at best and not sufficient to avoid confusion.

This factor therefore not only weighs heavily in favor of finding a likelihood of confusion, but also reduces the degree of similarity between the goods that is required to support a finding of likelihood of confusion. In re Shell Oil Co., 992 F.2d 1204, 26

USPQ2d 1687, 1689 (Fed. Cir. 1993); Time Warner Entm’t Co. v. Jones, 65 USPQ2d

1650, 1661 (TTAB 2002); and In re Opus One Inc., 60 USPQ2d 1812, 1815 (TTAB

2001).

B. Strength of Opposer’s Mark

Opposer does not argue that its GEAUX CAJUNS mark is “famous” or strong.

While the school’s reports to the National Collegiate Athletic Association (“NCAA”) 27 Opposition No. 91233876

reveal that its athletics department has derived several million dollars in revenue

from ticket sales each year from 2014-2016, and has led the in

attendance in several sports, 31 TTABVUE 3-4, (Maron Dec. ¶¶ 7-9, 23-87 and Exs.

87-88), and it is clear that most of these attendees would likely have been exposed to

the GEAUX CAJUNS mark at some point, there is no specific evidence of trademark

strength. Therefore, this factor is neutral.

C. The Goods, Channels of Trade and Classes of Consumers, and the Variety of Goods Opposer Offers Under GEAUX CAJUNS

As we consider the goods and services, we keep in mind that they need not be

identical or even competitive in order to find a likelihood of confusion. Rather, the question is whether the goods are marketed in a manner that “could give rise to the mistaken belief that [the] goods emanate from the same source.” Coach Services Inc. v. Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1722 (Fed. Cir. 2012)

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

Hewlett-Packard Co. v. Packard Press Inc., 227 F.3d 1261, 62 USPQ2d 1001, 1004

(Fed. Cir. 2002) (“Even if the goods and services in question are not identical, the consuming public may perceive them as related enough to cause confusion about the source or origin of the goods and services.”); Recot, 54 USPQ2d at 1898 (“even if the goods in question are different from, and thus not related to, one another in kind, the same goods can be related in the mind of the consuming public as to the origin of the goods”); Kohler Co. v. Baldwin Hardware Corp., 82 USPQ2d 1100, 1109 (2007).

In this case, in which Opposer is not just a fairly large university, but one with active alumni, many successful sports teams and an engaged fan base, we must also

28 Opposition No. 91233876

keep in mind how trademarks are often used not only by Opposer, but also similar

schools and analogous trademark owners which also expand their use to collateral

products.

Although it may not always have been the case, there is now no question under our trademark law, as interpreted by the Court above and this Board, that likelihood of confusion must be found if the public, being familiar with a senior party’s use of a mark for particular goods, and seeing the mark on an item which comes within the description of goods set forth in a junior party’s application, is likely to believe that the senior party has expanded its use of the mark, directly or under license, to such items. E.g., Tuxedo Monopoly, Inc. v. General Mills Fun Group, 648 F.2d 1335, 209 USPQ 986, 988 (CCPA 1981); Squirtco v. Tomy Corp., 697 F.2d 1034, 216 USPQ 937 (Fed. Cir. 1983); Berghoff Restaurant v. Washington Forge, Inc., 225 USPQ 603, 608 (TTAB 1985); Broadway Catering Corp. v. Carla Inc., 215 USPQ 462, 465 (TTAB 1982); Bridgestone Co. v. Bridgestone Trading Co., 221 USPQ 1012, 1014 (TTAB 1984); Hurst Performance, Inc. v. Torsten Hallman Racing, Inc., 207 USPQ 671, 675 (TTAB 1980).

Harley-Davidson Motor Co. Inc. v. Pierce Foods Corp., 231 USPQ 857, 862 (TTAB

1986). See also L.C. Licensing, Inc. v. Berman, 86 USPQ2d 1883, 1889-90 (TTAB

2008); The NASDAQ Stock Market, Inc. v. Antartica, S.r.l., 69 USPQ2d 1718, 1733

(TTAB 2003) (“Also, while opposer’s mark is not registered for goods that are the same as or closely related to those identified in applicant's application, opposer has clearly moved into collateral merchandising and into sponsorship of various sporting events,

29 Opposition No. 91233876

so that consumers, i.e., the general public, encountering the NASDAQ mark on

applicant's goods likely will be confused about their origin or sponsorship.”).8

More specifically, we are mindful of the considerable evidence of record that consumers often encounter marks, such as GEAUX CAJUNS, used by colleges and

universities not just for educational goods and services, and perhaps sports teams

and associated goods and services, but also seemingly far-flung products on which marks are used to designate the college or university as the product’s “secondary source.” See generally 1 J. McCarthy, MCCARTHY ON TRADEMARKS AND UNFAIR

COMPETITION § 3:8 (5th ed. Sept. 2019) (“Trademarks can serve to identify and distinguish a ‘secondary source’ in the sense of indicating sponsorship or authorization. The ‘secondary source’ is the trademark owner and licensor who has permitted the use of its mark on certain goods or services.”). As we stated in analogous circumstances:

… consumers familiar with opposer’s television series and licensed collateral products such as video games, clothing items, beach towels, mugs and other diverse consumer goods, all of which are marketed under opposer’s GILLIGAN'S ISLAND mark, would be likely to believe, upon encountering applicant's mark GILLIGAN'S ISLAND for suntan oil and lotion, sunblock, sunless tanning lotion, after sun moisturizing lotion, lip balm, hand and body lotion, hair shampoo and body bar soap, that the goods originated with or were somehow associated with or sponsored or licensed by the same entity.

8 While some of the cases cited found this type of source confusion based in part on a finding that the senior mark was famous or strong, this type of source confusion has also been found where the senior mark is not famous or strong, as made clear by a number of the other cases cited herein. 30 Opposition No. 91233876

Turner Ent. Co. v. Nelson, 38 USPQ2d 1942, 1945-46 (TTAB 1996) (citing cases).

Here, as Applicant stresses, the goods and services in Opposer’s pleaded registrations – educational services, entertainment services (athletic events), sports balls and clothing – are obviously different than Applicant’s sausage. The same is

true of a number of goods for which Opposer has established prior common law use

of GEAUX CAJUNS. That does not end our inquiry, however, because our focus must be not on whether consumers would confuse the goods, but instead on whether they would be confused about the source of Applicant’s goods, or whether they would perceive an affiliation of some kind between Applicant and Opposer.

In answering this question, we find the ninth du Pont factor, “the variety of goods on which a mark is or is not used,” to be relevant. In re E.I. du Pont, 177 USPQ at

567. Specifically, Opposer has established use of its GEAUX CAJUNS mark in

connection a broad range of goods and services, from educational services to sports

balls, from neckties to license plates, from athletic events to pins and from bobblehead

dolls to coffee. Because Opposer has used its mark for such a wide array of goods and

services, we find that it would not be a “stretch” for consumers to believe that Opposer

also offers or licenses GEAUX CAJUN for sausage. In fact, in an analogous case, we

found toy vehicles related to specifically different collateral products offered by a

record company, because “[i]t requires no stretch of the imagination for consumers to

believe that these varied collateral goods could reasonably include toy cars …

particularly in view of the fame of opposer’s MOTOWN marks in connection with its

music and entertainment services.” UMG Recordings Inc. v. Mattel Inc., 100 USPQ2d

31 Opposition No. 91233876

1868, 1884 (TTAB 2011). See also Genesco Inc. v. Martz, 66 USPQ2d 1260, 1271

(TTAB 2003) (“this factor may favor a finding that confusion is likely even if the goods

are not obviously related”); Uncle Ben’s Inc. v. Stubenberg Int’l Inc., 47 USPQ2d 1310,

1313 (TTAB 1998) (“Section 2(d) of the Trademark Act also covers situations where

the public, because of the similarity of the marks, is likely to believe that a

recognizably different product, because of the similarity of the marks, emanates from,

or is authorized, sponsored or licensed by the prior user or registrant.”).

More importantly, Opposer has taken initial steps to use GEAUX CAJUNS for food and beverage products beyond just coffee, such as chicken tenders and beer, just as it previously expanded its use of RAGIN’ CAJUNS to food and beverages. We agree with Opposer that its prior common law use, through licensees, of GEAUX CAJUNS for coffee, and to promote beer and a restaurant and its chicken tenders, as well as

Opposer’s licensees’ more widespread use of RAGIN’ CAJUNS for coffee, beer, hamburgers and seasoning, establishes that Applicant’s use of GEAUX CAJUN for sausage would be likely to cause confusion as to the source of Applicant’s goods. Put simply, sausage is no further from Opposer’s core educational services than the coffee, beer, chicken restaurants, hamburgers or seasoning for which Opposer already uses its marks, including in some cases its pleaded GEAUX CAJUNS mark.

While Opposer may use RAGIN’ CAJUNS more than GEAUX CAJUNS, especially

in the food and beverage field, and consumers may very well be more familiar with

RAGIN’ CAJUNS than GEAUX CAJUNS, that does not mean they would not be

32 Opposition No. 91233876

confused by Applicant’s use of GEAUX CAJUN. As we stated in analogous circumstances:

The mark KRYPTONITE is one of the marks that opposer licenses as a part of the Superman licenses. Although KRYPTONITE has not been used on the wide variety of goods that the Superman mark itself has been used, it has been used on various items. Specifically, and as stated previously … opposer has used the mark KRYPTONITE through licensees … on gum, jewelry pins, a necklace sold as part of “Smallville” action figures, and “authentic replica” Kryptonite crystals. Further, while not technical trademark use, opposer has used KRYPTONITE in conjunction with promotions for food products and beverages, specifically, Kraft Macaroni and Cheese Dinners (advertisement headed “IT SURE BEATS A BOWL OF KRYPTONITE”); and Coca-Cola's Diet Coke (advertisement headed “KRYPTONITE FREE”).

Consumers are likely to view KRYPTONITE as a merchandising mark in the same manner that Superman is a merchandising mark: the “element” to which opposer gave the name “kryptonite” has been used in the various Superman stories for so many decades, and is an integral part of the stories, to the point that it is akin to a character in the stories. In addition, because opposer coined the word “KRYPTONITE” for the fictional substance (and therefore it has no other meaning), when consumers see the term they will view it as an indicia of the Superman mythos.

While applicant’s prepared alcoholic fruit cocktails are not the same goods as those on which opposer’s KRYPTONITE mark has been used or associated, the question is whether the parties’ respective goods are sufficiently related such that consumers will believe that they come from or are associated with the same source. That is, in this marketing environment, including the licensing of commercial marks, will the purchasing public believe that applicant’s prepared alcoholic fruit cocktail comes from or is sponsored by or associated with opposer? On this record, we find that the answer is in the affirmative.

33 Opposition No. 91233876

DC Comics Pan American Grain Mfg. Co. Inc., 77 USPQ2d 1220, 1226 (TTAB 2005).

The likelihood of this type of trademark confusion is exacerbated in this case because of the demonstrated nature and importance of tailgating at Opposer’s football games and Louisiana sports events generally. In fact, the record makes clear that not only is food generally an important part of RAGIN’ CAJUNS tailgating culture, but that sausage is a specific feature of many foods popular at RAGIN’ CAJUNS tailgate parties, including boudin, po’ boys and, at times, jambalaya and gumbo. We are thus persuaded by Mr. Mitchell’s testimony that sausage “would definitely fit into

[Opposer’s GEAUX CAJUNS] brand,” and find that consumers would be likely to make the same assessment. This case calls to mind the Gilligan’s Island case, in which we found confusion “especially” likely “given the obvious association between a television series based on the theme of castaways on a tropical island in the Pacific and suntan lotion and oil, lip balm, and similar products. Further, applicant’s products are logical tie-in products with some of opposer’s licensed items such as beach towels and beach bags.” Turner Ent., 38 USPQ2d at 1946.

In this case, Opposer’s alumni, students and fans familiar with the widely used

GEAUX CAJUNS brand, including its use on many seemingly far-flung products, would be likely, upon encountering GEAUX CAJUN sausage, to assume that it is sponsored or licensed by or somehow affiliated with Opposer. See e.g. Tuxedo

Monopoly, 209 USPQ at 986 (finding MONOPOLY for clothing likely to be confused with MONOPOLY for board games); Harley-Davidson, 231 USPQ at 857 (HARLEY-

HOG for pork likely to be confused with HARLEY-DAVIDSON and HOG for motor

34 Opposition No. 91233876

vehicle-related products and services and a “wide range of consumer products” including unrelated food and beverages such as beer and ); The All England

Lawn Tennis Club (Wimbledon) Ltd. V. Creations Aromatiques, Inc., 220 USPQ 1069

(TTAB 1983) (WIMBELDON COLOGNE & Design for cologne likely to be confused with WIMBELDON for tennis championships).

Opposer’s evidence that a number of third party universities also use their marks

for food and beverage products further persuades us that confusion is likely. While

perhaps at one time unexpected, it would no longer surprise many relevant consumers that a university-associated mark would be used for food and beverages.

See L.C. Licensing, 86 USPQ2d at 1889-90 (finding confusion between ENYCE mark for clothing and same mark for automobile accessories in part based on evidence showing “use of the clothing brand marks EDDIE BAUER and L.L. BEAN on automobiles,” SEAN JOHN for automobile wheels and MARK ECKO for a special edition vehicle); Cadence Indus. Corp. v. Kerr, 225 USPQ 331, 335-36 (TTAB 1985)

(“…it is apparent that publications about cartoon characters do not have a natural association with vitamins. However, opposer’s evidence clearly demonstrates that the names and representations of a number of cartoon characters who were familiar to the public in relation to their existence as cartoon characters have subsequently been used as trademarks for vitamin products … Thus, there is clearly some precedent for associating a cartoon character and/or its name with the sale of vitamins.”). In short, the goods are sufficiently related under the circumstances presented here that confusion as to their source is likely.

35 Opposition No. 91233876

As for channels of trade, both Applicant’s and Opposer’s goods are Cajun-focused,

not just geographically, but culturally. The parties’ use of GEAUX CAJUN(S) in

“Cajun Country,” with appeals to Cajun pride and customs, is perhaps not a typical

trade channel, but the fact remains that overlapping consumers are targeted by both

parties in similar ways. Applicant’s package for its GEAUX CAJUN sausage

specifically highlights that it is not only “certified Cajun,” but also “great in gumbo.”

22 TTABVUE 159 (Doucet Tr. Ex. D). Gumbo is one of the products often served at

tailgates before Opposer’s football games, in connection with which Opposer uses and

prominently displays its GEAUX CAJUNS mark in a variety of ways. See L.C.

Licensing, 86 USPQ2d at 1890 (finding that trade channels supported a finding of

likelihood of confusion because clothing and automobile accessories would “be offered to and encountered by the same classes of consumers”); Jonbil Inc. v. Int’l Multifoods

Corp., 3 USPQ2d 1882, 1885 (TTAB 1987) (finding confusion likely between

LONGHAUL & Design for jerky and sausage and LONGHAUL for clothing, cologne and wallets, because both parties’ goods were sold at or intended for truck stops).

There is also more traditional evidence that the trade channels overlap.

Applicant’s GEAUX CAJUN sausage and Opposer’s RAGIN’ CAJUNS beer and coffee

(which are marketed using the GEAUX CAJUNS mark) are sold in two of the same stores. 21 TTABVUE 122-25 (Doucet Tr. 117-120); 27 TTABVUE 13, 15 (Saloom Dec.

¶¶ 40, 49). This factor also weighs in favor of finding a likelihood of confusion.9

9 In the absence of specific evidence regarding purchasing conditions (other than the price of Applicant’s goods), we find this factor neutral. In addition, while Applicant was aware of

36 Opposition No. 91233876

V. Conclusion

Like a number of third-party universities, Opposer has expanded use of its marks from its educational services and athletic events to collateral products having little if anything to do with its core mission, such as toys, clothes, food and beverages. Among these marks is GEAUX CAJUNS, which is increasingly used in connection with food and beverage products. Applicant’s use of the virtually identical mark GEAUX

CAJUN for its own food product, sausage, is thus likely to cause confusion as to the source of its goods, especially given the parties’ joint focus on “Cajun Country,” the

Cajun culture and Cajun foods, such as Opposer’s Cajun seasoning and Applicant’s

Cajun sausage.

Decision: The opposition is sustained and registration is refused.

Opposer’s GEAUX CAJUNS mark at the time it adopted its mark, that is not enough to establish that Applicant acted in bad faith in adopting its mark. Action Temporary Services, Inc. v. Labor Force, Inc., 870 F.2d 1563, 10 USPQ2d 1307, 1310 (Fed. Cir. 1989) (“mere knowledge of the existence of the prior user should not, by itself, constitute bad faith”). 37