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 Louisiana 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 meat 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. 2 Opposition No. 91233876 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). 4 Opposition No. 91233876 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 7 Opposition No. 91233876 8 Opposition No. 91233876 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). 9 Opposition No. 91233876 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 fast food chain, for hamburgers.6 27 TTABVUE 12-18, 156- 239 (Saloom Dec.