YUVAL MARCUS' War Story

VICTORY AFTER TRIAL IN TRADEMARK OPPOSITION FOR APPLICANT CHINESE APPAREL COMPANY

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Chinese apparel company Bosideng Co., Ltd. (“Bosideng”) filed a trademark application to register the mark shown below for "suits, coats, overcoats, shirts, trousers, skirts, sweaters, T-shirts, pajamas, underwear, leather shoes."

The B.V.D. Licensing Corporation ("BVD") filed an opposition based on its BVD mark alleging likelihood of confusion and dilution.

After the close of discovery, Leason Ellis substituted in for White & Case as counsel for Bosideng.  Based on our review of the respective marks, it was our view that the marks were so different that we could argue that there was no likelihood of confusion in our trial briefs.  To reduce Bosideng’s costs, we decided not to take any trial testimony or defend the trial depositions of BVD. 

When we received BVD’s Notice of Reliance, we learned that BVD had served Requests for Admissions (“RFA”) and was relying on Bosideng’s failure to respond to the RFAs.  Among the admissions that BVD sought to rely upon were the strength and fame of the BVD mark and the similarity of the marks.  We immediately served responses denying the RFAs and filed a motion with the Board seeking to amend and withdraw the admissions.  The Board granted the motion and accepted the responses.

Following the close of the testimony periods, we filed our trial brief in opposition to BVD’s brief.   As per our strategy, we argued that the marks were so dissimilar that there was no likelihood of confusion.  We also countered BVD’s dilution arguments.   The Board agreed with our arguments and issued a decision dismissing the opposition.  In particular, the Board noted that Applicant's mark is dominated by the word BOSIDENG, a coined word.  "The letters BSD are so buried in the middle of applicant’s mark and so innocuous that consumers will not perceive applicant’s mark as being similar in appearance or sound to opposer’s mark."  Moreover, the marks create different connotations and commercial impressions.

In sum, Leason Ellis took over the defense of a trademark opposition from a large law firm, established a cost-effective strategy, addressed and overcame an unexpected problem, and achieved a victory for the client.