Tuxedo Monopoly, Inc. v. General Mills Fun Group, Inc.

NIES, Judge.

This appeal is from the decision of the Patent and Trademark Office (PTO) Trademark Trial and Appeal Board (board), reported at 204 USPQ 396 (TTAB 1979), sustaining an opposition to registration of the trademark MONOPOLY for men’s, women’s, and children's wearing apparel — namely, dresses, skirts, coats, scarves, pant suits, blouses, sweaters, jackets, shirts, slacks, shoes, belts, pantie hose, and socks,¹ on the basis of prior use and registration of the trademark MONOPOLY for a real estate board game.² The facts are set out in detail in the opinion of the board at 204 USPQ 397-402 and familiarity with these facts is presumed. We affirm.

OPINION

In finding likelihood of confusion, the board states:

[W]e are of the opinion that purchasers who encounter items of clothing bearing the mark “Monopoly”, ... are likely to believe that, or at least wonder whether, the items originate from, or are approved by, or are in some way associated with opposer. [204 USPQ at 401.]

Thus, the board appears to have found that there would be likelihood of confusion from concurrent use of the mark MONOPOLY on a board game and on all of the goods encompassed by the registration sought by appellant. We could not agree with that broad finding. Nevertheless, likelihood of confusion must be found if the public, being familiar with appellee’s use of MONOPOLY for board games and seeing the mark on any item that comes within the description of goods set forth by appellant in its application, is likely to believe that appellee has expanded its use of the mark, directly or under a license, for such item.

We agree with the board that appellee’s evidence establishes that appellee has built up an enormous goodwill in the mark MONOPOLY, which has been used since 1935 for a board game and that MONOPOLY may properly be termed a “famous” mark. We also find no error in the board’s conclusion that it is a matter of common knowledge that famous marks are frequently used on items such as clothing, glassware, and trash cans and that appellee’s licensing of its mark for use on certain novelty items supports this conclusion.³ Further, appellee’s vice president testified that requests have been received by appellee for licenses to utilize its mark MONOPOLY on T-shirts (as well as other novelty clothing), and that it has acted against unauthorized use on such goods.

We conclude that use of the mark MONOPOLY on novelty T-shirts would be likely to cause confusion with appellee and that appellant’s broad description of goods includes such items. Appellant’s argument that it does not intend to make this type of use of the mark MONOPOLY is irrelevant. The question of the likelihood of confusion must be based upon a consideration of appellant’s goods as described in the application. Feed Service Corp. v. FS Services, Inc., 58 CCPA 708, 432 F.2d 478, 167 USPQ 407 (1970); Ford Motor Co. v. Ford, 59 CCPA 1124, 462 F.2d 1405, 174 USPQ 456 (1972). Further, the description must be construed most favorably to the opposing prior user. CTS Corp. v. Cronstoms Mfg. Inc., 515 F.2d 780, 185 USPQ 773 (CCPA 1975).

Design features associated with appellant’s mark, or appellant’s asserted restriction of sales to an exclusive boutique in Tuxedo Park, New York, are considerations similarly irrelevant to the question of registrability of appellant’s mark when such limitations are not inherent in marketing of the goods or specifically set forth as limitations in the application. The Wella Corp. v. California Concept Corp., 558 F.2d 1019, 194 USPQ 419 (CCPA 1977); Sheraton Corp. of America v. Sheffield Watch, Inc., 480 F.2d 1400, 178 USPQ 468 (CCPA 1973); Norton Co. v. Bear Mfg. Co., 58 CCPA 981, 438 F.2d 620, 169 USPQ 44 (1971).

Here, appellant seeks to register the word MONOPOLY as its mark without any restrictions reflecting the facts in its actual use which it argues on this appeal prevent likelihood of confusion. We cannot take such facts into consideration unless set forth in its application. Toro Co. v. Hardigg Industries, Inc., 549 F.2d 785, 790, 193 USPQ 149, 155 (CCPA 1977).

Finally, appellant asserts that the board ignored “a record which indicates appellee’s specific lack of interest in collateral exploitation of its own ‘famous mark’.” Lack of present intent to expand use of one’s mark is not an overriding consideration. American Drill Bushing Co. v. Rockwell Mfg. Co., 52 CCPA 1173,342 F.2d 1019,145 USPQ 144 (1965). We are unpersuaded that appellee’s private intent would affect .public reaction to seeing the mark used in the manner discussed above.

Accordingly, we affirm the opposition for the reasons indicated.

AFFIRMED.

1 . Application Serial No. 431,254, filed July 31, 1972, claiming first use on or about July 26, 1972.

2 . Registration No. 326,723, issued July 30, 1935, and Registration No. 338,834, issued September 15, 1936.

3 . We do not agree that the majority below relied solely on taking judicial notice of a common trade practice, as argued by appellant. The board stated, “This practice is borne out by the evidence in the instant case.” We agree. In any event, “collateral product” use is a matter of textbook discussion (see J. Gilson, Trademark Protection and Practice § 5.05[10] (1980)) and frequent commentary (see Grimes & Battersby, The Protection of Merchandising Properties, 69 T.M.Rep. 431 (1979) and references cited therein). Appellant has not requested an opportunity to show that the board’s statement that “such use has become a part of life which we cannot ignore” lacks a “high degree of indisputability.” Fed.R.Evid. 201, Notes of Advisory Committee.