FAME: Here today, not tomorrow.

Opposer, Fruit of the Loom, Inc., owns numerous trademark registrations for its FRUIT OF THE LOOM trademark for clothing, and specifically for underwear.  

Applicants filed a trademark application for BODY FRUIT for several clothing items, including undergarments.

Opposer filed a Notice of Opposition and, not surprisingly, convinced the TTAB to sustain the opposition in favor of Opposer.  My first question when reading this case was how did it ever make its way all the way to a TTAB trial.  The answer:  Applicants were Pro Se, and most likely did not have a competent attorney to counsel them on just how terrible their case was.  

The other reason this case caught my attention is that the issue of whether the FRUIT OF THE LOOM trademark is famous was addressed.  Ultimately, the TTAB held that FRUIT OF THE LOOM was not a famous trademark.  This quite surprising holding presents an important lesson for trademark owners with well-known trademarks.  

It appears the Opposer made the false assumption that, because its FRUIT OF THE LOOM trademark had been adjudicated famous in past litigations, the TTAB would take judicial notice of that prior “famous” finding and apply it to the pending opposition proceeding.  The TTAB did not.

Rather, the TTAB expressly stated “…we are not privy to the evidence made of record in the [prior] court cases noted by opposer in which its brand or marks were found famous…we cannot determine in this case the evidentiary bases for the courts findings.”  

In other words, Opposer failed to submit sufficient evidence that its FRUIT OF THE LOOM trademark was famous, at least according to the TTAB.  

The smarter move would have been for the Opposer to simply re-introduce all of the “fame” evidence from those prior litigations directly into the evidentiary record for the pending opposition.

In the end, the TTAB sustained the Opposition in favor of the Opposer.  However, this is not quite “no harm, no foul.”  There is now a published decision stating that FRUIT OF THE LOOM is not a famous trademark.  Undoubtedly, this will cost the Opposer more money in the future when engaging in enforcement activity.  

Image Courtesy of: Sean MacEntee. Used under Creative Commons license.