Trademark Trial and Appeal Board
Patent and Trademark Office (P.T.O.)
*1 THE GREYHOUND CORPORATION
v.
BOTH WORLDS, INC., D.B.A. THE WILD BERRY
Opposition No. 75,652
March 30, 1988
By the Board:
J.E. Rice, R.F. Cissel and E.J. Seeherman
Members
The Greyhound Corporation has opposed the application of Both Worlds, Inc., d.b.a. The Wild Berry, to register the design depicted below for polo shirts and T-shirts. [FN1]
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As grounds for opposition, opposer alleges that since prior to applicant's adoption and use of its design, opposer, either itself, or through affiliated companies, predecessors in interest and licensees, has used a design of a running dog for various services and goods, such as transportation services, hats, toy buses, pillows, printed matter and luggage and that it owns registrations for this mark for such goods and services; [FN2] that it has used the design of a running dog in connection with clothing and particularly shirts, and has filed an application to register this mark for various items of apparel, toys and sporting goods articles; [FN3] that it maintains a licensing program as part of which it has licensed and is ready to license the running dog mark for a variety of goods and services; that by virtue of its sales and advertising of goods and services under the running dog mark the mark is famous; that applicant's goods are closely related to opposer's and applicant's mark is similar in appearance to opposer's running dog mark; that applicant's mark consists of or comprises immoral or scandalous matter; that applicant's use and registration of its mark for its goods may disparage or falsely suggest a connection with opposer or bring opposer into disrepute; and that applicant's use and registration of its mark for its goods would be likely to cause confusion or mistake or to deceive.
In its answer, applicant admitted that its mark depicts a dog in the act of defecating and that opposer has superior and paramount rights in the image of a running greyhound dog. Applicant denied that applicant's goods are closely related to opposer's goods insofar as opposer did not identify which of its goods were related to applicant's, [FN4] and denied the other salient allegations in the notice of opposition. Applicant has also asserted affirmatively the reasons why it believes there is no likelihood of confusion, including the allegation that dog figures have been used and registered by numerous third parties.
This case now comes up on opposer's motion for summary judgment and applicant's motion, styled as a motion for judgment on the pleadings, which was submitted in response to opposer's motion. In effect, applicant's motion is a cross-motion for summary judgment because it refers to exhibits submitted by opposer with its motion, and will be treated as such.
Opposer moves for summary judgment on the grounds that applicant's defecating dog mark consists of or comprises immoral or scandalous matter, that it may disparage or falsely suggest a connection with opposer or bring opposer into contempt or disrepute, and that applicant's design so resembles opposer's previously used and registered running dog mark as to be likely, when applied to the goods of the applicant, to cause confusion or mistake or to deceive. In support of its motion applicant has submitted an affidavit by L. Gene Lemon, its vice president and general counsel, stating the following:
*2 The running dog is a corporate trademark under which opposer and most of its subsidiaries conduct their business. Such businesses include financial services, including equipment leasing and financing; business and consumer services, including food service; transportation manufacturing and transportation services. Advertising expenditures featuring the symbol of the running dog from 1981 through 1985 amounted to more than $114 million, and the running dog symbol has been referred to in various articles and books on famous American trademarks. The running dog has been used on opposer's buses since the 1920's, and since the early 1930's opposer's bus drivers have purchased and worn uniforms bearing the symbol on their caps, lapels and shirts. Opposer has sold items of apparel, bags and jewelry, all bearing the running dog design, in bus station restaurants and rest stop shops, and currently uses the design on shoes, shirts, jackets, sweaters, and gloves. A mail order catalog directed to opposer's employees and published prior to applicant's claimed date of first use features baseball hats, jackets, sweatshirts and T-shirts, all bearing the running dog mark.
Included with the affidavit is a 'Graphics Standards Guide' which depicts the three approved versions of the running dog symbol, as follows:
TABULAR OR GRAPHIC MATERIAL SET FORTH AT THIS POINT IS NOT DISPLAYABLE
Version A
TABULAR OR GRAPHIC MATERIAL SET FORTH AT THIS POINT IS NOT DISPLAYABLE
Version B
TABULAR OR GRAPHIC MATERIAL SET FORTH AT THIS POINT IS NOT DISPLAYABLE
Version C
The exhibits submitted with the affidavit show clothing bearing depictions of Versions A and B. Version A is the one depicted in opposer's application Serial No. 504,928 for, inter alia, shoes, shirts, jackets and sweaters.
Applicant has submitted a memorandum in opposition to opposer's summary judgment motion. This same memorandum was filed in support of applicant's motion for judgment on the pleadings (construed by us as a cross-motion for summary judgment). Opposer has filed a brief in opposition to applicant's motion, and each party has filed a reply brief in connection with its own motion. [FN5] Applicant has not submitted any evidence, either in support of its own motion or in opposition to opposer's, although, as noted previously, it has referred in support of its own motion to evidence submitted by opposer.
The granting of a motion for summary judgment is appropriate where there exists no genuine dispute as to any material fact and where the moving party is entitled to judgment as a matter of law. Fed. R. Civ. P. 56(c); Buffett v. Chi-Chi's, Inc., 226 USPQ 428 (TTAB 1985).
In the present case, each party agrees that there are no genuine issues of material fact. [FN6] We, too, find that there are no genuine issues of material fact, and that, as discussed below, opposer is entitled to judgment as a matter of law.
Turning first to opposer's allegation that applicant's mark comprises or consists of immoral or scandalous matter, applicant contends that opposer does not have standing to raise this ground because it has not shown that it will suffer damage personal to itself and not merely as part of the public at large. However, when an opposer has demonstrated its standing in connection with any ground on which it bases the opposition, it may rely on any other statutory ground which negates the applicant's right to registration and may invoke the general public interests in support of its claim. Jewelers Vigilance Committee, Inc. v. Ullenberg Corp., 823 F.2d 490, 2 USPQ2d 2021 (Fed. Cir. 1987); Lipton Industries, Inc. v. Ralston Purina Co., 670 F.2d 1024, 213 USPQ 185, 190 (CCPA 1982); CPC International, Inc. v. Seven-Up Co., 218 USPQ 379, 380 (TTAB 1983).
*3 In the present case, there is no genuine issue of material fact as to opposer's standing, that is, its real interest in this proceeding. Opposer has demonstrated it has a proprietary interest in the running dog mark, both as a corporate symbol and as a trademark for clothing. Applicant recognizes this both by the admission in its answer that opposer has superior rights in the image of a running greyhound dog, and by the statements in its memorandum which concede opposer's standing to bring an action pursuant to Section 2(d) on the ground of likelihood of confusion. Accordingly, opposer also has standing to raise the issue of whether applicant's mark is immoral or scandalous.
Turning to the merits of this claim, there is no question that applicant's mark comprises the design of a defecating dog, and that this mark is applied to polo shirts and T-shirts. Thus, our determination must be whether, as a matter of law, this design is unregistrable under Section 2(a) of the Trademark Act, which precludes the registration of any mark which 'consists of or comprises immoral . . . or scandalous matter. . . .'.
The cases have referred to dictionary definitions extant at the time the Lanham Act was enacted as indicating the matter encompassed by the term 'scandalous'. See, In re McGinley, 660 F.2d 481, 211 USPQ 668 (CCPA 1981); In re Tinseltown, Inc. 212 USPQ 863 (TTAB 1981). Such definitions include 'shocking to the sense of . . . decency, or propriety; . . . offensive. . . .', Funk and Wagnalls New Standard Dictionary, (1945), reported in In re McGinley, supra at 673. This Board has also determined that 'vulgar', defined as lacking in taste, indelicate and morally crude, is also considered scandalous matter. In re Runsdorf, 171 USPQ 443 (TTAB 1971) ('BUBBY TRAP' for brassieres).
Applicant argues that its mark is not scandalous because, although the dog depicted is defecating, the feces are a small detail of the mark and the mark as a whole is small, that a dog defecating on the ground does not invoke one's sense of right or wrong because dogs should defecate on the ground, and that the mark must be viewed in the context of the goods on which it is used, and in this context reasonable people would not be offended because the mark mocks the craze for shirts bearing prestigious emblems.
We do not find applicant's arguments to be persuasive. Even assuming that people are not offended by the sight of a dog defecating on the ground, applicant's mark, used on its goods, is a dog defecating on a shirt. This certainly produces a different effect from the viewing of a dog defecating in its normal environment.
Further, applicant admits that some people would find the depiction of feces in the mark offensive and that people 'expect to find something a little out of the ordinary when they see this type of applique.' Applicant's Memorandum in Support of its Motion for Judgment on the Pleadings and Applicant's Memorandum in Opposition to Opposer's Motion for Summary Judgment, p. 13. In effect, applicant is admitting that the mark has a shock value, and we view the shock to be the offensiveness of the depiction.
*4 The size of the mark, as applicant uses it on its goods, does not remove its scandalous aspect. To begin with, the mark as applied for is not limited to any particular size and may be used in any manner on applicant's shirts, including covering the entire front and back. Moreover, even if applicant continues to use the mark in the emblem size shown in its specimens, that design is sufficiently large that the casual observer would recognize it as a dog in the act of defecation.
With respect to the context in which the mark is used, we cannot agree with applicant's contention that because the mark is used on shirts, and people pay more for shirts with designer emblems, people expect that non-designer emblems will be out of the ordinary. There is nothing in the record to support such an assertion. Further, in In re Tinseltown, supra, this Board rejected a similar argument that because the motivation for marketing 'BULLSHIT' accessories was to satirize the use of designers' names on products, the clientele for that applicant's goods would not regard the mark as immoral or scandalous. The determination of whether a mark is scandalous must be made in the context of the marketplace for the goods identified in the application, and must be ascertained from the standpoint of not necessarily a majority, but a substantial composite of the general public. In re McGinley, supra. In the present case, the goods are T-shirts and polo shirts, goods which may be encountered in sales establishments patronized by a wide variety of people of all ages and convictions, or may be worn and seen by people in virtually all public places. See, In re McGinley, supra. Given the broad potential audience which may view applicant's mark, we find that a substantial composite of the general public would find the use on a shirt of a graphic portrayal of a dog in the act of defecating, including the depiction of the feces, to be scandalous.
Although our finding that the mark constitutes scandalous matter and is prohibited from registration pursuant to Section 2(a) is sufficient to sustain the opposition, in the interest of completeness we will discuss the remaining grounds.
Opposer argues that applicant's use of the defecating dog mark disparages opposer within the meaning of Section 2(a) because it depicts opposer's alter ego, the running dog symbol, in a posture which is scandalous and repugnant to a substantial portion of the American public. Opposer has submitted extensive evidence showing its use of the running dog symbol since the 1920's, use which has made this design not only the trademark for opposer's goods and services, but a corporate symbol of opposer itself.
In response, applicant contends that in order to be successful on a Section 2(a) disparagement claim the opposer must prove a likelihood of confusion under Section 2(d); accordingly, applicant asserts that the Section 2(d) claim is the only relevant one.
Section 2(a) precludes the registration of 'matter which may disparage or falsely suggest a connection with persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute . . ..' In The University of Notre Dame v. J.C. Food Imports, 703 F.2d 1372, 217 USPQ 505, 509 (Fed. Cir. 1983), the court stated that the legislative history of the Lanham Act indicates that Section 2(a) was intended to preclude registration of a mark which conflicted with another's rights, such as the right of privacy or the right of publicity. These rights may be violated even if there is no likelihood of confusion. See also, In re Cotter & Co., 228 USPQ 202 (TTAB 1985); Buffett v. Chi-Chi's, Inc., supra.
*5 Disparagement is essentially a violation of one's right of privacy--the right to be 'let alone' from contempt or ridicule. See, Carson v. Here's Johnny Portable Toilets, Inc., 698 F.2d 831, 218 USPQ 1 (6th Cir. 1983). It has been defined as the publication of a statement which the publisher intends to be understood, or which the recipient reasonably should understand, as tending 'to cast doubt upon the quality of another's land, chattles, or intangible things.' Restatement (Second of Torts § 629 (1977). The two elements of such a claim are (1) that the communication reasonably would be understood as referring to the plaintiff; and (2) that the communication is disparaging, that is, would be considered offensive or objectionable by a reasonable person of ordinary sensibilities.
Id.
With respect to the first element, we must determine whether applicant's dog design would be recognized by the public as referring to opposer. As stated above, opposer has submitted evidence that for many years it has used the running dog design not only as a technical trademark for its goods and services, but also as its corporate symbol, and this evidence is sufficient to show prima facie that this design is, in effect, an alter ego of opposer which points uniquely and unmistakably to opposer's persona. Applicant's defecating dog design bears a strong resemblance to opposer's running dog symbol, the only readily identifiable difference between them being the activities in which they are engaged. It is our view that the public would readily perceive applicant's mark as opposer's symbol shown in the act of defecating.
As for element 2, we have already discussed why applicant's defecating dog mark would be considered generally offensive by a substantial portion of the public, and we need not reiterate the negative nature of the design. As it relates to opposer, however, the offensiveness of the design becomes even more objectionable because it makes a statement about opposer itself, and holds opposer up to ridicule and contempt.
Accordingly, we find as a matter of law that applicant's design disparages opposer and is precluded from registration by Section 2(a) of the Act.
Turning to the issue of likelihood of confusion under Section 2(d), opposer has submitted evidence of use of its running dog symbol on clothing since long prior to applicant's claimed first use, and has made status and title copies of its pleaded registrations, including its registration for hats, of record for purposes of the motion for summary judgment. Thus, priority is not an issue. The record also shows that opposer has used and continues to use the symbol as a trademark for, inter alia, T-shirts, one of the items listed in applicant's identification of goods. Thus, we must determine whether the parties' marks are so similar that, when used on identical or related items of clothing, the public is likely to be confused as to the source of the goods.
*6 Applicant apparently concedes that this is the question to be determined, because its arguments regarding the likelihood of confusion are directed to the marks and applicant's intent in adopting its mark.
We have already discussed the strong similarity between the two marks in connection with the disparagement claim. However, applicant has raised some further arguments in connection with the issue of likelihood of confusion. Applicant asserts that its mark does not depict a greyhound dog and, as the party responsible for the design, states that it is in the best position to know what the design is. Thus, applicant argues that opposer is wrong in claiming that the mark portrays opposer's running dog in a squatting position. Applicant also contends that the cases cited by opposer in which a likelihood of confusion was found between a famous trademark and one mocking it are distinguishable because in the present case there is no showing that applicant deliberately adopted and modified plaintiff's mark.
While intent is a factor to be considered in determining likelihood of confusion, see In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973), lack of intent to trade on or copy another's mark will not prevent a finding of likelihood of confusion if the actual impression created by the mark is likely to cause confusion. See, Hydra Mac, Inc. v. Mack Trucks, Inc., 507 F.2d 1399, 184 USPQ 351 (CCPA 1975); General Foods Corp. v. Ocean Spray Corp., 199 USPQ 246 (TTAB 1978). One of the most important factors to be considered in the case of design marks is the visual impression made by the marks. Whether or not applicant meant to depict a greyhound dog or a 'generic' dog, the impression created by its mark, as we stated previously, clearly is that of opposer's dog in a defecating posture.
Applicant also argues that the marks are distinguishable because they face in different directions, because applicant's mark is solid while opposer's mark has detail lines, and because applicant's mark is smaller. To the extent that these are distinctions, they are distinctions without a difference. While opposer's dog design is depicted in a rightward facing direction on clothing, and applicant's faces left, the public is not likely to remember the direction, and therefore would not be able to distinguish one mark from another based on this. Moreover, several of opposer's registrations depict the dog facing left, and opposer has shown that, as the mark is used in connection with buses, the dog, depending on placement, may face either to the right or the left. As for the detail lines, the minor details depicted in opposer's mark would not be likely to make an impression on the viewer such that they would be remembered as a distinguishing feature. Applicant has suggested that we compare the marks as they are shown in each party's application for clothing items. While opposer's mark appears in white in the drawing of its application (Figure A), and while applicant's mark is shown as a solid black in its drawing, neither mark is limited as to color. In fact, opposer's graphics guide specifically allows the use of black or a solid color for the body of the running dog. With respect to the size of the mark, we have previously stated that a registration for the mark would not be limited to the particular size shown in the drawing. Moreover, opposer's exhibits show that it uses its mark on clothing in the same size and manner as that shown on applicant's shirts.
*7 Finally, applicant argues that opposer's rights in a running greyhound dog do not give it the right to contest all uses of a dog as a trademark, only those uses which are similar to its mark. In this case, because the commercial impression of the two designs is that of the identical dog, albeit engaged in two different activities, we find that the marks are similar, and that applicant's mark as applied to polo shirts and T-shirts is likely to cause confusion with opposer's mark as used on T-shirts and other clothing items.
In summary, we conclude that there are no genuine issues of material fact relating either to opposer's standing and/or to the three noted grounds for opposition, and that opposer is entitled to judgment on these questions as a matter of law.
The motion for summary judgment is granted, applicant's cross-motion for summary judgment is denied, and the opposition is sustained pursuant to Sections 2(a) and 2(d) on the grounds that applicant's mark consists of or comprises scandalous matter; that it may disparage opposer or bring it into contempt or disrepute; and that it is likely to cause confusion with opposer's running dog symbol.
J. E. Rice
R. F. Cissel
E. J. Seeherman
Members, Trademark Trial and Appeal Board
FN1. Serial No. 577,797, filed January 15, 1986 and asserting a date of first use in commerce 'on or about December 1,, 1985.'
FN2. Registration No. 541,199, issued April 17, 1951, for transportation by motor bus of passengers, mail, express and newspapers, Section 8 affidavit accepted; Section 15 affidavit received; renewed.
Registration No. 1,089,549, issued April 18, 1978, for, inter alia, hats; Section 8 affidavit accepted.
Registration No. 875,984, issued September 2, 1969, for toy busses, Section 8 affidavit accepted; Section 15 affidavit received.
Registration No. 887,502, issued March 10, 1970, for pillows, Section 8 affidavit accepted; Section 15 affidavit received.
Registration No. 888,302, issued March 24, 1970, Section 8 & 15 affidavit received for brochures, post cards and luggage tags.
Registration No. 888,503, issued March 31, 1970, for luggage--namely, tote bags and utility bags, Section 8 affidavit accepted; Section 15 affidavit received.
FN3. Application Serial No. 504,928, filed October 22, 1984, for calculators, shoes, shirts, jackets, sweaters, golf gloves, toy stuffed animals, golf balls, golf tees, golf ball markers and golf club head covers.
FN4. Elsewhere in its answer (paragraph 16), applicant stated that there is no likelihood of confusion 'regardless of the fact opposer uses its mark on goods closely related to those of applicant's.'
FN5. The rules do not provide for the submission of reply briefs on interlocutory motions, but the Board may consider such briefs in the exercise of its discretion, and we do so here.
FN6. Although applicant refers to the question of likelihood of confusion as a question of fact, it is clear from its remarks that it is characterizing the ultimate conclusion of whether or not there is likelihood of confusion as an issue of fact, not contending that it believes that there are any questions of fact which bear on that conclusion. We point out, in this connection, that the ultimate issue of likelihood of confusion is one of law, not of fact. Sweats Fashions, Inc. v. Pannill Knitting Company, Inc., ___ USPQ2d ___ (Fed. Cir. November 13, 1987); Giant Food, Inc. v. Nation's Foodservice, Inc., 710 F.2d 1565, 218 USPQ 390 (Fed. Cir. 1983).