Wednesday, February 02, 2022

Additional "GARANIMALS" Evidence Yields District Court Reversal Of TTAB's "MANIMAL" Opposition Dismissal

The United States District Court for the District of Oregon reversed the Board's decision dismissing an opposition to registration of the mark MANIMAL for a wide variety of clothing, including "children’s clothing." [TTABlogged here]. The Board found that opposers failed to establish a likelihood of confusion with its registered mark GARANIMALS for children's shirts and pants. Reviewing de novo the TTAB record as well as substantial additional evidence, the court granted the plaintiffs' motion for summary judgment on its cause of action for review under Section 1071 of the Trademark Act. Garan, Incorporated and Garan Services Corporation v. Manimal, LLC, Case No. 3:20-cv-00623-IM (D. Oregon January 25, 2022).

Plaintiffs' new evidence focused on establishing the fame of the GARANIMALS mark, including evidence of substantial media recognition. Plaintiffs also placed their sales and advertising figures in marketing context, "showing that it is the second largest children’s clothing brand by market share, second only to Carter’s and ahead of brands including Children’s Place, Old Navy, Gerber, OshKosh, Circo, Hanes, Wrangler, and Healthtex."

Plaintiffs also attacked the eight third-party registrations relied on by the TTAB (to show that Plaintiff's had not challenged other "animal" or "imal"-formative marks) by proving that four of those registrations have been cancelled for nonuse and four are not currently in use in connection with apparel.


Plaintiffs have submitted a plethora of new evidence that goes directly to the heart of the TTAB’s decision. Plaintiffs introduced additional evidence to support a finding that the GARANIMALS mark is famous that specifically address the TTAB’s concern that there was no evidence of unsolicited media attention and no context for Plaintiffs’ advertising expenditures and revenue. This new evidence demands this Court’s de novo review of both the new evidence and the administrative record.

The court found that GARANIMALS is a famous mark for purposes of likelihood of confusion. [The TTAB had made that same finding in a different case involving that mark]. Consequently, the GARANIMALS mark merits broad protection.

Thus, before this Court are two marks—one famous and one newcomer—which are appended to similar goods with identical channels of trade and similar classes of customers. Moreover, the owner of the famous mark has successfully canceled several other marks [sic] which use the same suffix. Against that backdrop, this Court disagrees with the TTAB’s finding that the marks do not present a likelihood of confusion.

The court therefore granted the plaintiffs' motion for summary judgment and overturned the TTAB’s decision. The court declined to grant the defendant's motion for summary judgment on Plaintiff's trademark infringement, unfair competition, and dilution claims, due to the existence of genuine and disputed issues of material fact. As to plaintiffs' fifth claim, asserting that defendant lacked a bona fide intent when it filed the opposed application, the court asked for further briefing on whether that issue was moot in light of the reversal of the Board's decision.

Read comments and post your comment here.

TTABlogger comment: Is plaintiffs' mark singular or plural? The TTAB treated it as singular. Anyway, the takeaway here is that it's not over until its over. But why didn't the plaintiffs put in a fuller record before the TTAB? They had done so in another TTAB proceeding.

Text Copyright John L. Welch 2022.


At 10:32 AM, Anonymous Anonymous said...

The appeal was instituted by new counsel.

At 2:03 PM, Anonymous Anonymous said...

P's mark is GARANIMALS - plural.

D's mark is MANIMAL - singular.


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