The TTAB sustained Gap (Apparel), LLC's ("Opposer") opposition against Gap One Enterprises, LLC's ("Applicant") application for the mark GAP ONE for "general business merchandising services, namely, marketing" on the ground of likelihood of confusion. The TTAB found, among other things, that Opposer's GAP mark was famous, that Applicant's marketing services and Opposer's retail clothing store services were related, presumed to move in similar channels of trade, and offered to the same consumers, and that the parties' marks were similar. In reaching its decision, the TTAB emphasized that there is "no excuse for even approaching the well-known trademark of a competitor."
Opposer, one of the world's leading consumer retail stores, has used the marks GAP and THE GAP in connection with retail clothing store services, clothing, and related products since at least as early as 1969. Opposer's testimony established that since 1996, it has also sold personalized apparel and accessories, such as bags, wallets, frames, and credit card holders, displaying customers' logos and trademarks. Opposer argued that its GAP marks became famous prior to Applicant's first use of the mark GAP ONE, and Applicant's use of the mark GAP ONE in connection with the applied-for services was likely to cause confusion and dilution. Applicant used the GAP ONE mark in its business as an independent sales agent rendering marketing services, including arranging for the sale of promotional products, such as shirts, hats, jackets, and coffee mugs, that display the customer's logo or trademark.
The TTAB found that priority had been established for the goods and services identified in Opposer's registrations, and that Opposer established additional common-law rights through the sale of personalized apparel and accessories since at least as early as 1996, whereas Applicant's earliest date of first use of its GAP ONE mark in connection with its services was July 1997.
The TTAB then applied the following likelihood-of-confusion factors: (1) the strength or fame of the GAP marks; (2) the number and nature of similar marks in use for similar goods; (3) the similarity of the parties' marks; (4) the similarity of the parties' goods and services; (5) the similarity of the parties' trade channels and classes of customers; (6) the sophistication of the purchasers; and (7) the nature and extent of any actual confusion.
The TTAB noted Applicant's admission in its answer that Opposer's GAP marks had become famous, and found, based upon Opposer's evidence of sales revenues, advertising expenditures, and submissions of numerous news articles and third-party coverage regarding GAP and its products, that the GAP trademarks were famous, and thus entitled to a broad scope of protection.
The TTAB rejected Applicant's contention that Opposer's GAP marks were entitled to only a narrow scope of protection because of the existence of a number of third-party registrations for marks containing the term "GAP." The TTAB explained that the third-party registrations were of little probative value in the absence of proof that these marks were in commercial use or that the public was familiar with them.
The TTAB also found unpersuasive Applicant's arguments that the parties' marks GAP and GAP ONE differed in meaning and commercial impression, as the letters G.A.P. were the initials for Applicant's owner George A. Peterson, and the term "gap" in Applicant's mark was intended to reference an opening or space in one's marketing program, whereas Opposer's mark was derived from the term "generation gap." Noting that consumers were unlikely to be aware of these underlying meanings, and that the addition of the term ONE in Applicant's mark did nothing to convey the nature of GAP as an acronym or initials, the TTAB reasoned that "GAP" was the dominant element of Applicant's GAP ONE mark and that the additional word "ONE" in Applicant's mark did not serve to distinguish the marks because of its suggestive laudatory meaning. The TTAB also emphasized that because Opposer's mark was famous, the degree of similarity between the marks need not be as great.
Turning to the factors relating to the similarity of the goods and services, trade channels, and classes of consumers, the TTAB noted that in addition to the retail clothing store services, clothing, tote bags, and other goods covered by Opposer's registrations, Opposer sold personalized apparel and accessories displaying customers' logos and trademarks. As such, Applicant's marketing services were essentially identical, or at least highly related, to Opposer's goods and services. The TTAB emphasized that for famous marks, "special care is necessary to appreciate that products not closely related may nonetheless be confused as to source by the consumer because of the fame of the mark," and thus consumers may be likely to believe that Opposer, whose GAP marks are famous for clothing and retail store services in the field of clothing, was the source of GAP ONE marketing services that include personalized apparel and other related products.
The TTAB found that one factor favored Applicant, namely, the conditions under which Applicant's sales were made. Applicant's owner testified that its sales resulted from personal calls to a customer interested in buying corporate apparel or logo-imprinted products followed by an in-person sales presentation during which Applicant's owner, Mr. Peterson, would explain that GAP ONE Enterprises means "George A. Peterson, one-man enterprise." Nevertheless, the TTAB explained that its analysis was not limited to the conditions of purchase under which Applicant currently offers its services, but rather must encompass how such services may be offered in the future, as defined by the identification of services in the application. Finally, the TTAB found that the actual confusion factor was neutral because there had been no opportunity for actual confusion to have occurred due to Applicant's relatively limited, local marketing efforts.
In balancing the likelihood-of-confusion factors, the TTAB concluded that Opposer had demonstrated that Applicant's use of the mark GAP ONE was likely to cause confusion with Opposer's GAP trademarks and sustained the opposition. The TTAB did not reach the issue of dilution.
The TTAB repeatedly emphasized the importance of its finding that the GAP mark was famous on the remainder of its analysis. Notably, the discussion of the mark's fame was not limited to likelihood-of-confusion factors such as the strength of the GAP mark and the similarities of the marks. Rather, even when assessing the similarities of the goods and services, the TTAB warned that "special care" must be taken to appreciate that products not closely related may still be confused because of the fame of a mark. This decision thus provides insight into the significance of establishing fame for purposes of a claim of likelihood of confusion in a TTAB proceeding.