The B.V.D. Licensing Corporation v. Body Action Design, Inc.

846 F.2d 727, 25 Fed. R. Serv. 954, 6 U.S.P.Q. 2d (BNA) 1719, 1988 U.S. App. LEXIS 5626, 1988 WL 38903

• Court: Court of Appeals for the Federal Circuit
• Decided: April 28, 1988
• Docket: 87-1646
• Status: Published

Opinions

RICH, Circuit Judge.

The July 2, 1987, decision of the Patent and Trademark Office Trademark Trial and Appeal Board (board) dismissing opposition No. 72,022 to the registration of the mark shown below as a trademark for “men’s, women’s and children’s clothing — namely, blouses, pants, jackets, dresses, shirts, undergarments, socks and footwear,” application Serial No. 493,403, filed August 6, 1984, claiming first use on July 5, 1984, is affirmed.

BAD

Opposer, The B.V.D. Licensing Corporation, relies on its ownership and use of its unquestionably famous trademark B.V.D. or BVD, many times registered in various forms for the same class of goods as those named in the opposed application to register. Fourteen registrations issued from 1906 to 1983 are relied on herein. There is no priority issue as B.V.D. has been in use since 1876 and registered under the Trademark Act of 1905 since 1906, as evidenced by the many registrations of record.

The sole issue, as stated by the board, is whether opposer’s and applicant’s marks so resemble one another, the goods being at least in large part identical, that confusion is likely. 15 U.S.C. § 1052(d). The board thought not. We agree with that conclusion though not with most of the board’s reasoning in arriving at it.

The board proceeded on the assumption that opposer had to prove the fame of its mark by evidence in this proceeding. BVD, in our view, is, to most Americans at least, among which we count ourselves, practically a household word synonymous, primarily, with underwear for men. Opposer’s registrations show it has been extended, during the past couple of decades, to the opposite sex. Webster's Third New International Dictionary (1971) contains the entry “B.V.D. * * * trademark — used for underwear.” The Random House Dictionary of the English Language (1967) has this item: “B.V.D. Trademark. a suit of men’s underwear, esp. a pair of undershorts. Also, BVDs. Cf. skivvy.” Under “skivvy” is a cross-reference to “B.V.D.” When a trademark attains dictionary recognition as a part of the language, we take it to be reasonably famous. (Webster has similar listings for “Kodak” and “Levi’s.”) See Coca Cola Co. v. Gemini Rising, Inc., 346 F.Supp. 1183, 1187 n. 1, 175 USPQ 56, 58 n. 1 (E.D.N.Y.1972), referring to a statement in The Business Lawyer of November 1971 that “B.V.D.,” along with “Coca Cola” and “Singer,” is one of “the three most-recognized trademarks in the world.” The focus here, however, is not primarily on fame but on likelihood of confusion. Fame will be assumed. Courts may take judicial notice of facts of universal notoriety, which need not be proved, and of whatever is generally known within their jurisdictions. Brown v. Piper, 91 U.S. (1 Otto) 37, 42, 23 L.Ed. 200 (1875). To that end, dictionaries and encyclopedias may be consulted. United States v. Merck & Co., 8 Ct.Cust.Appls. 171 (1917). Fed.R. Evid. 201(b) and (f). We judicially notice the fact that within our jurisdiction, which is the whole United States, the B.V.D. trademark is at least widely, if not universally, known.

BVD or B.V.D. has arguable similarities to B A D that are too obvious for discussion. The practical question is whether they are significant. It also has differences which we will discuss. We give no weight to the argument of desperation that an “A” when inverted bears some resemblance to a “V”. The purchasing public, we believe, does not indulge in such recog-nitional contortions but sees things as they are. It will not read an A for a V and, seeing an A between a B and a D will react to it as the common word “bad,” not as a copy or simulation or suggestion of the well-known mark B.V.D. If that recognition makes no sense in the context in which the mark is observed, the viewer, if of the right generation, might think it was intended to mean good, as argued by applicant, a dictionary-recognized slang use of which we were not previously aware. On the other hand, seeing the periods, we believe it would be a normal and therefore common reaction to the symbol to think the letters must be the initials for some commercial entity other than opposer. Considering the norms of the commercial uses of company initials, we cannot imagine that applicant, Body Action Design, Inc., would put its mark into use without in some way associating it with what it is intended to convey, namely, the origin of the goods in that company whose initials constitute the major portion of the mark (all but the raised periods).

The fame of a mark cuts both ways with respect to likelihood of confusion. The better known it is, the more readily the public becomes aware of even a small difference. BVD has that well-known quality which would trigger the observer to notice at once that BAD, with or without the periods in either mark, is a different symbol. Consider the similar ruling, dismissing an opposition, by our predecessor court in Gulf States Paper Corp. v. Crown Zellerbach Corp., 417 F.2d 795, 57 CCPA 720, 163 USPQ 589 (1969), where the owner of the mark “E-Z”, which is recognizable as the word “easy” in meaning and sound, failed to prevail in the attempt to prevent registration of “CZ”. The court held the marks are not confusingly similar, one judge on a 5-judge court dissenting. The discerning, of course, could see that “CZ” stood for Crown Zellerbach.

For the above reasons, we agree that the opposition was properly dismissed. The decision of the board is

AFFIRMED.