This document provides a summary of an opposition proceeding between Campari America LLC (Opposer) and Skyyguard, Corp. (Applicant) regarding Applicant's application to register the mark "SKYYGUARD" for roofing services. The Opposition Board dismissed all of Opposer's claims, including Opposer's claim that Applicant was not using the mark in interstate commerce as of the application filing date, as required for a Section 1(a) use-based application. The Board found that although Applicant's roofing projects to date had been confined to Colorado, Applicant's activities were sufficient to constitute "use in commerce" under the Lanham Act. As a result, Applicant's application was

1. This Opinion is Not a
Precedent of the TTAB
Hearing: April 27, 2023 Mailed: September 11, 2023
UNITED STATES PATENT AND TRADEMARK OFFICE
_____
Trademark Trial and Appeal Board
_____
Campari America LLC
v.
Skyyguard, Corp.
_____
Opposition No. 91246989
_____
Joel R. Feldman, Sabina A. Vayner and Alexandra A. Holt
of Greenberg Traurig LLP for Campari America LLC
Terrence M. Wyles of Startup IP Law, LLC
for Skyyguard, Corp.
_____
Before Cataldo, Lynch, and Coggins, Administrative Trademark Judges.
Opinion by Lynch, Administrative Trademark Judge:
Skyyguard, Corp. (“Applicant”) seeks registration on the Principal Register of the
mark for “General residential and

2. Opposition No. 91246989
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commercial roofing contracting services” in International Class 37.1 By its operative
Second Amended Notice of Opposition,2 Campari America LLC (“Opposer”) opposes
registration on several grounds: (1) alleged likelihood of dilution by blurring of its
pleaded registered marks under Section 43(c) of the Act, 15 U.S.C. 1125(c); (2) that
the application is void ab initio because the mark was not in use in commerce as of
the filing date of the application; and (3) alternatively, that the application is void ab
initio because Applicant lacked a bona fide intent to use the mark as of the filing date
of the application.
Opposer relies on common law rights in SKYY for vodka and registrations for the
following marks:3
SKYY in standard characters for “distilled spirits, namely
vodka” in International Class 33;
1 Application Serial No. 88080929 was filed on August 16, 2018, under Section 1(a) of the
Trademark Act, 15 U.S.C. § 1051(a), based on Applicant’s alleged first use and first use in
commerce of the mark at least as early as March 15, 2018. The application states: “The mark
consists of a stylized design of a blue rectangle with gold upper and lower borders and with
the wording ‘SKYYGUARD’ with the letters ‘SK’ and ‘GUARD’ in white and the letters ‘YY’
in blue and white in a gold circle with a white and gold interior and with the space between
the two letter ‘Y’’s forming a stylized design of a white house with the a [sic] gold door. The
color(s) blue, white, and gold is/are claimed as a feature of the mark.”
2 23 TTABVUE; see also 25 TTABVUE (Board order accepting the amended pleading). Record
citations are to TTABVUE, the Board’s publicly available docket history system. See, e.g.,
New Era Cap Co., Inc. v. Pro Era, LLC, 2020 USPQ2d 10596, *2 n.1 (TTAB 2020). The
number preceding “TTABVUE” corresponds to the docket entry number; the number(s)
following “TTABVUE” refer to the page number(s) of that particular docket entry, if
applicable.
3 Opposer attached TSDR records for the registrations to its Second Amended Notice of
Opposition. 23 TTABVUE 11-34. Opposer also introduced registration records by notice of
reliance. 30 TTABVUE.

3. Opposition No. 91246989
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for “distilled spirits, namely vodka” in
International Class 33;
SKYY INFUSIONS (INFUSIONS disclaimed) in standard
characters for “alcoholic beverages, namely, vodka infused
with flavors” in International Class 33; and
for “alcoholic beverages except beers” in
International Class 33.
In its Answer, Applicant denies most of Opposer’s salient allegations, but admits
Opposer’s ownership of the registrations set out above and their status.4
The opposition is fully briefed, and an oral hearing took place on April 27, 2023.
For the reasons set forth below, we dismiss the opposition.
I. Record and Evidentiary Matters
The record includes the pleadings and, pursuant to Trademark Rule 2.122(b),
37 C.F.R. § 2.122(b), the file of the opposed application. Both parties supplemented
the record, and some of the evidence is confidential, so we discuss it only in general
terms in this decision.
4 24 TTABVUE 2-4 (¶¶ 2, 8, 9).

4. Opposition No. 91246989
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Opposer’s submissions are: a declaration with exhibits from its survey expert, Hal
Poret,5 a declaration with exhibits from Andrea Sengara,6 excerpts of deposition
testimony with exhibits from Applicant’s CEO Chase Baron,7 excerpts of deposition
testimony with exhibits from Applicant’s Vice President Sean Smith,8 certain of
Applicant’s discovery responses,9 certain USPTO records,10 Internet evidence,11 and
printed publications.12
Applicant’s submissions are:13 a declaration from Chase Baron,14 a declaration
from Applicant’s counsel Terrence Wyles with exhibits consisting of online records
from Secretary of State websites,15 excerpts of deposition testimony of Chase Baron,16
5 32 & 33 TTABVUE.
6 37-42 TTABVUE. Some of the exhibits to this declaration are multimedia files and Excel
files that are not available through TTABVUE. Nonetheless, they form part of the record,
and we have reviewed and considered them. See, e.g., Pierce-Arrow Society v. Spintek
Filtration, Inc., 2019 USPQ2d 471774, at *1 n.8 (TTAB 2019) (Board considered multimedia
evidence submitted on CD-ROM).
7 34 & 35 & 63 TTABVUE.
8 36 & 64 TTABVUE.
9 31 TTABVUE.
10 29 & 30 TTABVUE.
11 26 & 27 TTABVUE.
12 28 TTABVUE.
13 Applicant’s notice of reliance (48 TTABVUE) that it intends to rely on evidence already
introduced by Opposer was unnecessary. See Trademark Rule 2.122(a), 37 C.F.R. § 2.122(a)
(“When evidence has been made of record by one party in accordance with these rules, it may
be referred to by any party for any purpose permitted by the Federal Rules of Evidence.”).
14 52 & 56 TTABVUE.
15 53 TTABVUE.
16 49 & 65 TTABVUE.

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excerpts of deposition testimony of Sean Smith,17 certain USPTO records,18 and
certain of Opposer’s discovery responses.19
The only evidentiary objection lodged in the briefing is Applicant’s reasserted
objection that Opposer over-designated materials as “attorneys’ eyes only” under the
standing TTAB protective order. As Applicant acknowledges, it previously raised the
same challenge through two motions.20 In addressing the first motion, the Board
granted it as to certain materials, denied it as to other materials, and deemed it moot
as to others.21 In addressing the second motion, the Board denied it both as untimely
and based on Applicant’s failure to meet its obligation to meet and confer in good faith
to resolve the issues with confidentiality designation.22 Applicant did not timely move
for reconsideration of either Board order within one month from their issuance. See
37 C.F.R. § 2.127(b). We therefore decline to revisit Applicant’s challenges regarding
confidentiality of Opposer’s materials.
II. Applicant’s Motion to Amend the Application Filing Basis and
Opposer’s Lack of Bona Fide Intent to Use Claim
During the pendency of this proceeding, on April 13, 2020, Applicant moved,
without Opposer’s consent, for leave to amend its application filing basis to Section
17 50 & 66 TTABVUE.
18 51 TTABVUE.
19 47 & 54 TTABVUE.
20 7 TTABVUE; 43 TTABVUE.
21 19 TTABVUE 9-15;
22 62 TTABVUE 3-8.

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1(b) intent-to-use.23 Applicant characterizes the request “as a contingency in the
event that the Board ultimately decide[s] that Skyyguard was not using its Mark in
interstate commerce as of the filing date of its Application.”24 Applicant supplied an
accompanying declaration of its bona fide intent to use the mark as of the application
filing date.25
Opposer objects to the proposed amendment, arguing that Applicant “seeks to
amend the filing basis for its Application only because of [Opposer’s] challenge to the
validity of the Application and, had [Opposer] not opposed the SKYYGUARD
Application, the Application would have proceeded to registration based on
[Applicant’s] unsubstantiated use in commerce claim.”26 Opposer also previously was
granted leave to amend its Notice of Opposition to include an alternative lack of bona
fide intent to use claim, operative in the event the application filing basis changes to
Section 1(b).27
Because, as explained below, we find that Applicant has established the requisite
use of its mark in commerce as of the application filing date, the contingency on which
Applicant conditioned its motion has not come to pass. Therefore, we deem
Applicant’s motion moot and need not reach it. As a result, Opposer’s alternative
23 21 TTABVUE.
24 70 TTABVUE 8 (Applicant’s Brief).
25 21 TTABVUE 7-8.
26 22 TTABVUE 4.
27 23 & 25 TTABVUE.

7. Opposition No. 91246989
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claim challenging the application based on Applicant’s lack of bona fide intent to use
the mark also is moot and we therefore dismiss it.
III. Entitlement to a Statutory Cause of Action
Entitlement to a statutory cause of action must be established in every inter
partes case. Australian Therapeutic Supplies Pty. Ltd. v. Naked TM, LLC, 965 F.3d
1370, 2020 USPQ2d 10837 at *3 (Fed. Cir. 2020) (citing Lexmark Int’l, Inc. v. Static
Control Components, Inc., 572 U.S. 118, 125-26, 109 USPQ2d 2061, 2067 n.4 (2014)).
A party in the position of plaintiff may oppose registration of a mark when such
opposition is within the zone of interests protected by the statute, 15 U.S.C. § 1063,
and the plaintiff has a reasonable belief in damage that is proximately caused by
prospective registration of the mark. Corcamore, LLC v. SFM, LLC, 978 F.3d 1298,
2020 USPQ2d 11277, at * 6-7 (Fed. Cir. 2020). “[A] party that demonstrates a real
interest in [oppos]ing a trademark under [Trademark Act Section 13, 15 U.S.C.] §
106[3] has demonstrated an interest falling within the zone of interests protected
by [the Trademark Act] .… Similarly, a party that demonstrates a reasonable belief
of damage by the registration of a trademark demonstrates proximate causation
within the context of § 106[3].” Id. at *7.
Opposer’s reasonable belief in damage proximately caused by the registration of
the mark shown in Applicant’s pending application is established through Opposer’s
pleaded registrations, for which status and title are established.28 The registrations
28 23 TTABVUE 11-34; 30 TTABVUE. See Trademark Rules 2.122(d)(1) and (d)(2), 37 C.F.R.
§§ 2.122(d)(1) & (d)(2) (making registrations of record).

8. Opposition No. 91246989
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support Opposer’s plausible likelihood of dilution claim against the involved
application, thereby showing its real interest in this proceeding, and a reasonable
basis for its belief of damage. See N.Y. Yankees P’ship v. IET Prods. & Servs., Inc.,
114 USPQ2d 1497, 1501 (TTAB 2015) (citing Cunningham v. Laser Golf Corp., 222
F.3d 943, 55 USPQ2d 1842, 1844 (Fed. Cir. 2000)). Opposer has demonstrated a
statutory entitlement to oppose. See Coach Servs. Inc. v. Triumph Learning LLC, 668
F.3d 1356, 101 USPQ2d 1713, 1727-28 (Fed. Cir. 2012); Cunningham v. Laser Golf
Corp., 222 F.3d 943, 55 USPQ2d 1842, 1844 (Fed. Cir. 2000). Once Opposer has
proven its entitlement to a statutory cause of action on one pleaded ground, it has
established its entitlement for any other ground. Coach Servs., 101 USPQ2d at 1727-
28.
IV. Nonuse
Under Section 1(a) of the Trademark Act, 15 U.S.C. § 1051(a), a mark may not be
registered unless it is “used in commerce,” and “an applicant may not claim a Section
1(a) filing basis unless the mark was in use in commerce on or in connection with all
the goods or services covered by the Section 1(a) basis as of the application filing
date.” Hachette Filipacchi Presse v. Elle Belle LLC, 85 USPQ2d 1090, 1093 (TTAB
2007) (citing Trademark Rule 2.34(a)(1)(i), 37 C.F.R. § 2.34(a)(1)(i)); see also Grand
Canyon W. Ranch, LLC v. Hualapai Tribe, 78 USPQ2d 1696, 1698 (TTAB 2006) (“It
is clear that an applicant cannot obtain a registration under Section 1 of the
Trademark Act for goods or services upon which it has not used the mark. 15 U.S.C.
§ 1051.”). Where an application filed based on Section 1(a) is opposed on the ground

9. Opposition No. 91246989
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that there was no use in commerce on the services specified when the application was
filed, the remedy when such a claim succeeds is to hold the application void. See
Aycock Eng’g, Inc. v. Airflite, Inc., 560 F.3d 1350, 90 USPQ2d 1301, 1305 (Fed. Cir.
2009) (“The registration of a mark that does not meet the use requirement is void ab
initio.”); see also Grand Canyon v. Hualapai Tribe, 78 USPQ2d at 1697 (“[H]olding
an application to be void is an appropriate remedy when the pleaded ground … is …
that the applicant has not used the applied-for mark on any of the goods or services
identified in the application prior to the filing of the application”). Accordingly, when
a mark has not been “used in commerce” by the day the use-based application is filed,
the application is void ab initio. Couture v. Playdom, Inc., 778 F.3d 1379, 113 USPQ2d
2042, 2043-44 (Fed. Cir. 2015).
Opposer alleges that Applicant’s mark was not in use in commerce when the
application was filed, rendering the application void ab initio. The essence of
Opposer’s nonuse claim stems from the intrastate territory of the roofing services
provided by Applicant when the application was filed. Opposer points to deposition
testimony by Applicant’s representatives that its license to provide the identified
services was limited to Colorado, its advertising targeted Colorado residents, and its
roofing projects took place in Colorado.29 Applicant does not dispute that its roofing
projects during the relevant timeframe have been confined to properties in
29 68 TTABVUE 47-48 (Opposer’s Brief, citing deposition testimony at 34 TTABVUE 73-97;
36 TTABVUE 53).

10. Opposition No. 91246989
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Colorado.30 Opposer cites to a non-precedential TTAB case, Doctor’s Assocs. v. Janco,
LLC, Opp. No. 91217243 (TTAB 2016) in which the Board found nonuse where the
applicant’s single-location restaurant services were “not in interstate commerce and
had no impact on interstate commerce.”31
The Trademark Act provides that “[t]he term ‘use in commerce’ means the bona
fide use of a mark in the ordinary course of trade, and not made merely to reserve a
right in a mark.” 15 U.S.C. § 1127; see also Christian Faith Fellowship Church v.
Adidas AG, 841 F.3d 986, 120 USPQ2d 1640, 1642 (Fed. Cir. 2016) (providing an
overview of the statutory use in commerce requirement); Paramount Pictures Corp.
v. White, 31 USPQ2d 1768, 1773-75 (TTAB 1994) (reviewing the legislative history),
aff’d, 108 F.3d 1392 (Fed. Cir. 1997) (unpublished). Trademark Act Section 45 states
in relevant part that a mark is considered in use in commerce for services
when it is used or displayed in the sale or advertising of
services and the services are rendered in commerce, or the
services are rendered in more than one State or in the
United States and a foreign country and the person
rendering the services is engaged in commerce in
connection with the services.
15 U.S.C. § 1127. Thus, “[o]n its face, the statute is clear that a mark for services is
used in commerce only when both [1] ‘it is used or displayed in the sale or advertising
of services and [2] the services are rendered ....’ 15 U.S.C. § 1127.” Couture, 113
USPQ2d at 2043 (emphasis original).
30 70 TTABVUE 18 (Applicant’s Brief); see also 56 TTABVUE 4 (Baron Declaration stating
that “until very recently, Skyyguard’s actual in-field roofing-services were directed to real
properties located within the State of Colorado.”).
31 68 TTABVUE 48.

11. Opposition No. 91246989
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“The Lanham Act extends to all commerce which Congress may regulate.” Jung v.
Magic Snow, LLC, 124 USPQ2d 1041, 1044-45 (TTAB 2017) (citing Christian Faith
Fellowship Church, 120 USPQ2d at 1646 (citing Larry Harmon Pictures Corp. v.
Williams Rest. Corp., 929 F.2d 662, 18 USPQ2d 1292, 1295 (Fed. Cir. 1991))). “[O]ne
need not direct goods across state lines for Congress to regulate the activity under
the Commerce Clause, there is likewise no such per se condition for satisfying the
Lanham Act’s ‘use in commerce’ requirement.” Christian Faith Fellowship Church,
120 USPQ2d at 1647. Similarly, “[i]t is not required that [identified] services be
rendered in more than one state to satisfy the use in commerce requirement.” Larry
Harmon, 18 USPQ2d at 1295 (citing In re Gastown, Inc., 326 F.2d 780, 140 USPQ
216, 217-18 (CCPA 1964)).
In order to meet the use in commerce requirement under the Lanham Act, if the
services are not rendered interstate, they must impact interstate commerce. We look
to whether the transaction is regulable by Congress, and “Congress’s power under
the Commerce Clause is broad.” Christian Faith Fellowship Church, 120 USPQ2d at
1643. In the non-precedential Janco case to which Opposer cites, the Board found
that the applicant had not made any showing that its services affected interstate
commerce.
By contrast, in this case, Applicant indeed makes such a showing. Applicant
submitted evidence that it:

12. Opposition No. 91246989
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• provided roofing services for Colorado properties owned or maintained by
residents of other states, who were Applicant’s customers;32
• provided roofing services for Colorado properties paid in whole or part
through insurance benefits, whereby the insurance company or its
adjusters were located in other states;33 and
• provided roofing services paid for by parties located outside of Colorado.34
Although the roof repairs or replacements occurred intrastate, some of the
customers were located in other states, and the billing and payment for such work
involved interstate transactions. Thus, the services had substantial effects on
interstate commerce. In holding that an intrastate sale of two hats to an out-of-state
customer met the requirement for “use in commerce,” the Federal Circuit held that
“one need not direct goods across state lines for Congress to regulate the activity
under the Commerce Clause, [and] there is likewise no such per se condition for
32 56 TTABVUE 4, ¶¶ 10-12, 15 (Baron Declaration, stating inter alia that “Some of
Skyyguard’s customers, who own real property in the State of Colorado that Skyyguard
provides roofing services to, are domiciled outside of the State of Colorado.”); see also 52
TTABVUE 117-122, confidential Exhibits 20-21 (payments from out-of-state customers,
including one from September 4, 2018). In the context of the additional pre-filing date
evidence in the record, we consider the payments from September 2018 sufficiently
contemporaneous with the filing date to corroborate the effect on interstate commerce.
33 56 TTABVUE 4-5, ¶¶ 11, 13-14 (Baron Declaration, stating inter alia that Applicant deals
with “national” insurance carriers, adjusters and agents outside of Colorado in providing its
roofing services for Colorado properties); see also 52 TTABVUE 99-101, confidential Exhibit
13-14 (April 2018 documents relating to work under insurance policies from Allstate, a
“national insurance company,” (Baron Declaration ¶13)).
34 52 TTABVUE 10-11 (2019 work order and payment from out-of-state entity); see also 52
TTABVUE 111-114, confidential Exhibit 17-18 (February and March 2018 invoices addressed
to insurance adjustor customers in Texas); id. at 115-122, confidential Exhibits 19-20 (March
and September 2018 check payments to Applicant from out-of-state payors for “earned fees”
(Baron Declaration ¶ 14)).

13. Opposition No. 91246989
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satisfying the Lanham Act’s ‘use in commerce’ requirement.” Christian Faith
Fellowship Church, 120 USPQ2d at 1643. By analogy, we find that Applicant’s
economic activities of billing and accepting payments for intrastate roofing jobs from
multiple out-of-state customers with whom Applicant contracted come within a
category of conduct having the requisite effect on interstate commerce under the
Commerce Clause. See id. at 1644. Applicant’s use of its mark in such commerce
constitutes the requisite bona fide use in the ordinary course of trade under the
Trademark Act.
We therefore conclude that Opposer has not established its nonuse claim.
V. Dilution by Blurring
“Dilution by blurring is ‘association arising from the similarity between a mark or
trade name and a famous mark that impairs the distinctiveness of the famous mark.’
Trademark Act Section 43(c)(2)(B).” N.Y. Yankees P’ship, 114 USPQ2d at 1501
(quoting 15 U.S.C. § 1125(c)(1) and (2)(B)). To prevail on its claim of dilution by
blurring, Opposer must show that: (1) it owns a famous mark that is distinctive;
(2) Applicant is using a mark in commerce that allegedly dilutes Opposer’s famous
mark; (3) Applicant’s use of its mark began after Opposer’s mark became famous; and
(4) Applicant’s use of its mark is likely to cause dilution by blurring. N.Y. Yankees
P’ship, 114 USPQ2d at 1502 (quoting Coach Servs., 101 USPQ2d at 1723-24); see also
Spotify AB v. U.S. Software Inc., 2022 USPQ2d 37, at *20-21 (TTAB 2022).

14. Opposition No. 91246989
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A. Distinctiveness
Opposer’s pleaded marks are registered on the Principal Register without claims
of acquired distinctiveness, and are therefore presumed inherently distinctive. See
Tea Board of India v. Republic of Tea, Inc., 80 USPQ2d 1881, 1899 (TTAB 2006).
B. Dilution Fame
A “threshold question in a federal dilution claim is whether the plaintiff’s mark is
famous,” New York Yankees P’ship, 114 USPQ2d at 1502, and “[i]t is well-established
that dilution fame is difficult to prove.” Coach Servs., 101 USPQ2d at 1724; Everest
Cap. Ltd. v. Everest Funds Mgmt. LLC, 393 F.3d 755, 73 USPQ2d 1580, 1585 (8th
Cir. 2005) (“The judicial consensus is that ‘famous’ is a rigorous standard.”). A mark
is famous for dilution purposes “if it is widely recognized by the general consuming
public of the United States as a designation of source of the goods or services of the
mark’s owner.” 15 U.S.C. § 1125(c)(2)(A). An opposer must show that, when the
general public encounters the mark “in almost any context, it associates the term, at
least initially, with the mark’s owner.” TiVo Brands LLC v. Tivoli, LLC, 129 USPQ2d
1097, 1103 (TTAB 2018) (quoting Coach Servs., 101 USPQ2d at 1725). In other words,
the record must show that the mark has become a “household name.” Coach Servs.,
101 USPQ2d at 1724 (cleaned up). Fame for purposes of dilution applies to a select
class of marks proven to be truly renowned.
“The federal dilution statute [also] clearly sets forth the requirement that a
plaintiff’s mark must be famous prior to the date an allegedly dilutive mark is first
used by the defendant.” TiVo Brands, 129 USPQ2d at 1112 (citing Trademark Act

15. Opposition No. 91246989
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Section 43(c)(1); 15 U.S.C. § 1125(c)(1)). In this case, Applicant began using its mark
at issue in March 2018,35 so Opposer’s proof must show fame prior to that date.
There are four non-exclusive factors to consider when determining whether a
mark is famous for purposes of dilution:
i. The duration, extent, and geographic reach of advertising
and publicity of the mark, whether advertised or publicized
by the owner or third parties.
ii. The amount, volume, and geographic extent of sales of
goods or services offered under the mark.
iii. The extent of actual recognition of the mark.
iv. Whether the mark was registered under the Act of
March 3, 1881, or the Act of February 20, 1905, or on the
principal register.
TiVo Brands, 129 USPQ2d 1104 (quoting 15 U.S.C. § 1125(c)(2)(A)).
1. Advertising and Publicity
Under the first dilution fame factor, Opposer relies on the testimony of Andrea
Sengara, its Vice President of Marketing, U.S., as well as Internet and printed
publications.36 Ms. Sengara’s relevant testimony includes:
20. Campari has received numerous industry awards for
the quality of its SKYY branded products over the years.
As just one example, SKYY-branded products
consecutively medaled at the San Francisco World Spirits
Competition from 2013-2018.
21. The SKYY brand is also regularly ranked by
independent, third-party sources as one of the Top 10 most
popular and best-selling vodka brands in the world. Copies
35 56 TTABVUE 3.
36 Opposer’s Brief cites only to the Sengara Declaration and exhibits under this fame factor.
69 & 70 TTABVUE. Her declaration refers to documents submitted under notice of reliance.

16. Opposition No. 91246989
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of various articles reflecting these rankings are attached as
exhibits to Campari’s notices of reliance.
28. In general, Campari targets all adults in the United
States over the legal drinking age for its SKYY brand
marketing and advertising efforts.
37. Campari also routinely uses its website and various
SKYY brand social media channels to promote its SKYY
brand and products. As of January 2021, the SKYY brand
Facebook account had approximately 4.2 million followers;
the SKYY brand Instagram account had over 37,000
followers; and the SKYY brand Twitter account had nearly
53,000 followers. Campari regularly posts about its SKYY-
branded products, innovative cocktails that can be created
with SKYY-branded products, and about various
sponsorships and collaborations on its social media pages.
True and correct copies of representative printouts from
the SKYY brand Facebook, Instagram, and Twitter
accounts, printed on January 25, 2021 (as shown on each
printout), are attached as Exhibits 50-54.
39. From 2012 through 2017 alone, Campari spent more
than [redacted] U.S. Dollars to advertise and promote
SKYY-branded products in the United States. A true and
correct copy of a summary of Campari’s advertising
budgets and actual spend, on an annual basis, from 2012-
2017, is attached as Exhibit 56 (stamped with production
number SKYY0003931). This summary was prepared
directly from Campari’s accounting records, which are kept
in the ordinary course of business.37
The Declaration also describes and provides print and multimedia examples of
particular marketing campaigns under the SKYY marks, including special
campaigns from certain years, but does not include specifics about the numbers of
consumers reached by the campaigns.38 We note Opposer’s reliance on “brand plans,”
37 37 & 39 TTABVUE 8-12.
38 While some of Opposer’s media “plans” estimate numbers of “impressions” from particular
activities, these are anticipated for future activities, rather than reports on activities that
occurred and the resulting impressions.

17. Opposition No. 91246989
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“media plans,” etc., but these documents signify “plans” and “anticipated
expenditures” rather than proof that the plans were fulfilled and the actual
marketing and advertising activities and expenditures occurred.39 Ms. Sengara
authenticates the plans as business records, but the Declaration does not include the
critical testimony that such plans were fulfilled. However, to the extent the plans
include a recap of the prior year or report factual information or assessments of the
then-current state of the market, we consider them. Also, as Applicant notes, the
plans tend to suggest that Opposer’s target marketing is geographically limited, as
opposed to nationwide.
We cannot rely on 2021 social media numbers to establish dilution fame prior to
March 2018. Cf. N.Y. Yankees P’ship, 114 USPQ2d at 1503 (testimony regarding sales
figures for period between 1995 and 2015 faulted for not specifying how much
occurred by the relevant date for dilution fame, 2008). Regardless, even if we
considered them, they are relatively modest.40 In Spotify, by contrast, the opposer’s
social media following was exponentially greater than Opposer’s in this case. 2022
USPQ2d 37 at *9 (“Opposer has 23.3 million ‘likes’ on Facebook, 5.3 million followers
on Instagram, 3.5 million Twitter followers, 1 million followers on LinkedIn and 1
million subscribers on YouTube.”).
39 37 & 39 TTABVUE Exhibits 57-66 (brand and media plans); see, e.g., 37 & 39 TTABVUE
Exhibits 56-57 (references, for example, on p.193, to future months and seasons in which
digital and print advertising will occur and reference on p.297 to “Potential [celebrity]
Partners”).
40 37 & 39 TTABVUE 10, ¶ 37.

18. Opposition No. 91246989
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Opposer points to a 2018 Silver Medal from the San Francisco World Spirits
Competition in the “Flavored Vodka” category (Skyy was not among the medalists in
the general “Vodka” category, but we note there were four gold medalists, three of
which came from the U.S., 25 silver medalists, 16 of which came from the U.S., and
26 bronze medalists, 20 of which came from the U.S.)41 Certain flavors of SKYY
infused vodka also received recognition from The International Wine & Spirit
Competition – 2013, 2014, 2015 and 2016 silver medals, and a 2014 bronze medal.42
A 2017 CNN article lists SKYY Vodka as the twelfth “most popular liquor brand[]” as
determined “in the US by 2014 retail-store sales (not counting liquor sold at bars) as
measured by IRI, a Chicago-based market research firm.”43
Numerous pieces of Internet evidence Opposer offers to demonstrate fame consist
of lists of “top” or “most popular” liquors or vodkas worldwide,44 from which we cannot
infer to what degree the popularity is associated with or known in the United States.
This type of evidence is minimally probative as an indication of fame in this case, as
we must assess fame based on U.S. consumer perception, rather than the reputation
41 26 TTABVUE 183-87. The 2017 results from the same competition are similar, although
two flavors of Skyy infused vodka received silver medals. Id. at 240-41. In 2016, the overall
number of medalists was smaller, and three flavors of Skyy infusions received silver medals,
and a fourth received a bronze medal. Id. at 289-90. Opposer also introduced results from
2013-2015.
42 Id. at 473-92.
43 26 TTABVUE 13, 20.
44 For example, a website called Vodka Spot lists Skyy Vodka as the ninth most popular vodka
brand in the world. 26 TTABVUE 28-29; see also id. at 74-86 (“The 30 Most Popular Liquors
in the World” & “The 20 Best Selling Vodka Brands in the World”). And a website called
Bestvodka.net lists Skyy as eighth in the “Top 10 Most Popular Vodka Brands in the World,”
a list compiled according to “different criteria, for instance the results of various researches,
opinions of Vodka experts and consumers, etc.” 26 TTABVUE 32-35.

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of a mark on a global scale. The evidence may be persuasive to the extent U.S.
consumers might be aware of the rankings or listings. Cf. Hornby v. TJX Cos., 87
USPQ2d 1411, 1416 (TTAB 2008) (evidence of likelihood of confusion “fame or
reputation in other countries” gets “only the probative weight to which it is entitled”
“to the extent that consumers in the United States would be aware” of the activities).
However, the extent of such awareness is unclear from the record. Also, we do not
consider evidence from years well after the relevant date, such as an online article
from 2020 on “The 14 Best Vodkas You Can Buy Right Now”45 and “Best Flavored
Vodka 2021: Top Brands Review” from the DADONG website.46 See Inter IKEA Sys.
B.V. v. Akea, LLC, 110 USPQ2d 1734, 1745 (TTAB 2014) (“This evidentiary showing
is not sufficient to show that opposer’s mark is famous for purposes of dilution
because most of the evidence points to events that occurred after the filing date of
applicant’s application.”); Cf. N.Y. Yankees P’ship, 114 USPQ2d at 1503 (testimony
regarding sales figures for period between 1995 and 2015 faulted for not specifying
how much occurred by the relevant date for dilution fame, 2008). Other evidence has
less probative value because it dates from well before the 2018 operative date, such
as a 2004 Campari Group online press release about Skyy Vodka winning Impact’s
“Hot Brand” award and a 2005 one about winning a “Blue Chip” award from Impact.47
Cf. Inter IKEA Sys., 110 USPQ2d at 1745 (“Of course, the more time that has passed
45 26 TTABVUE 57-72.
46 26 TTABVUE 103-13.
47 26 TTABVUE 169-73.

20. Opposition No. 91246989
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since the registration date, the less probative the activities are” of fame or reputation
at the relevant time).
Applicant’s limited evidence regarding the reach and effects of its own advertising
and promotion does not persuade us of the requisite consumer perception. The
relatively modest showing of media coverage and recognition does not rise to the level
of the showings in other dilution cases where marks were deemed akin to a
“household term.” See TiVo Brands, 129 USPQ2d at 1105 (discussing news articles
describing the opposer’s TIVO mark “as having ‘near household-name recognition’”);
Nike, Inc. v. Maher, 100 USPQ2d 1018, 1024-26 (TTAB 2011) (fame of opposer’s JUST
DO IT mark evidenced by “third-party references to and discussions about the mark,”
which “have been pervasive, reflecting the extreme popularity of the mark and the
message of compelled action that it represents,” including numerous articles in well-
known publications around the United States and listings of the slogan as among the
most memorable slogans of the 20th Century). We cannot find the requisite type of
ubiquitous and sustained exposure of the marks to the general public in the United
States prior to March 2018.
2. Amount, Volume, and Geographic Extent of Sales
Through the Sengara Declaration and its confidential Exhibit 2, Opposer
submitted sales information under its SKYY marks for 2012 through part of 2019.48
Opposer also provided the number of on-premise (bars, restaurants and nightclubs)
and off-premise (liquor stores, grocery stores and other retail outlets) accounts it has
48 37 & 39 TTABVUE 8 ¶¶ 24-26, Exhibit 2.

21. Opposition No. 91246989
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nationwide.49 Opposer also introduced 2019 market share data regarding SKYY
Vodka in the “Total Spirits” market, the “Vodka” market, the “Classic Vodka” market,
and the “Flavored Vodka” market.50
While Opposer’s raw sales figures are not insignificant, its market share rankings,
even within the vodka market, are not by any measure reflective of dilution-level
fame. Contrast Spotify, 2022 USPQ2d 37 at *9 (opposer’s users “represented a sizable
percentage of the entire United States population,” and its app was among the most
downloaded). We have considered, but are not persuaded by, Opposer’s arguments in
its confidential Reply Brief regarding its relative place in the vodka market share
rankings.51
3. Extent of Actual Recognition of the Mark
“Perhaps the most significant of the four elements set forth in the Act to determine
fame [for purposes of dilution] is the extent of actual public recognition of the mark
as a source-indicator for the goods or services in connection with which it is used.”
TiVo Brands, 129 USPQ2d at 1104 (quoting Nike, 100 USPQ2d at 1024). Under this
fame factor, Opposer points to “market research studies conducted by Campari in the
ordinary course of business in 2018 show[ing] that SKYY brand awareness among
vodka drinkers reached [redacted] as of November 2017 (Kantar) and that, as of
March 2018, [redacted] of vodka drinkers were aware of the SKYY brand and
49 37 & 39 TTABVUE 13-14 ¶¶ 44-45.
50 37 & 39 TTABVUE 8 ¶ 26, Exhibit 3.
51 74 TTABVUE 13-15 (Opposer’s Reply Brief).

22. Opposition No. 91246989
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[redacted] had tried it (Technomic).”52 Opposer’s characterization in its Brief that it
“conducted” the studies is not supported by Ms. Sengara’s testimony which indicates
that Opposer merely commissioned the studies from third parties, Kantar and
Technomic.
Thus, we give these studies some weight, not necessarily for the truth of the
findings therein that were made by third parties, for which we have no expert or other
testimony regarding methodology, etc., but as “studies and reports prepared at the
request and direction of” Opposer, on which Opposer presumably relied in its
business. Chanel, Inc. v. Makarczyk, 110 USPQ2d 2013, 2022 (TTAB 2014)
(considering pre-litigation consumer recognition surveys commissioned and used in
the ordinary course of business); NASDAQ Stock Mkt., Inc. v. Antartica, S.r.l.,
69 USPQ2d 1718, 1724 (TTAB 2003) (considering results of annual awareness
surveys); cf. Swatch AG (Swatch SA) (Swatch Ltd.) v. M. Z. Berger & Co., 108
USPQ2d 1463, 1466 (TTAB ) (admitting a magazine article on the magazine’s brand
awareness study that included the opposer’s mark only for consideration as “a
magazine article displaying evidence of the strength of the brand … rather than as a
scientific survey or other expert evidence”). However, we decline to accord this
evidence the type of weight that would be given to a consumer survey conducted and
introduced through a designated expert witness. See Nat’l Pork Bd. & Nat’l Pork
Producers Council v. Supreme Lobster & Seafood Co., 96 USPQ2d 1479, 1482-83
(TTAB 2010) (admitting promotional campaign tracking studies performed by third
52 67 & 68 TTABVUE 35 (Opposer’s Brief).

23. Opposition No. 91246989
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parties at the opposer’s request under the business records exception based on
custodian “responsible for working directly with the firms that performed the
surveys” and giving them probative value only to “corroborate the results” of other
surveys that were “subject to the rigors of the Daubert test”).
We also note that these studies regarding recognition among vodka drinkers do
not assess the relevant population for dilution fame. By using the “general consuming
public” as the benchmark, the Trademark Dilution Revision Act eliminated the
possibility of “niche fame,” which some courts had recognized under the previous
version of the statute. Coach Servs., 101 USPQ2d at1726. In addition, as Applicant
highlights in its confidential discovery requests and its briefing, the unaided
awareness53 figures reporting in the 2018 Brand Tracking Report are well below the
general range for dilution fame, as described below in connection with Opposer’s
survey evidence.
Opposer’s properly introduced consumer survey evidence was submitted through
its survey expert, Hal Poret, and reflects results from a 2017 survey he conducted.54
Applicant has not criticized the survey methodology, and we need not address it.
Although Opposer characterizes the results of this survey as favorable, we disagree.
The percentage of respondents that identified SKYY in an unaided awareness
question about vodka products is not indicative of dilution-level fame.55 Professor
53 An “unaided awareness” survey question asks respondents to list marks that come to their
minds when they think about brands for particular goods or services. See ProMark Brands
Inc. v. GFA Brands, Inc., 114 USPQ2d 1232, 1246 n.65 (TTAB 2015).
54 32 & 33 TTABVUE 3-4 (Poret Declaration).
55 32 & 33 TTABVUE 3.

24. Opposition No. 91246989
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McCarthy posits, and our precedent is consistent with the proposition, that a
threshold response in the range of 75% of the general consuming public is necessary
to prove fame for purposes of dilution. 4 MCCARTHY ON TRADEMARKS AND UNFAIR
COMPETITION § 24:106 (5th ed.). See also Nat’l Pork Bd., 96 USPQ2d at 1495 (“nearly
eighty percent awareness of the mark among the general adult population”); 7-Eleven
Inc. v. Wechsler, 83 USPQ2d at 1723, 1727-28 (BIG GULP for a large sized drink was
found to be “famous” based in part on evidence of an unaided awareness by 73% of all
consumers); NASDAQ Stock Market Inc., 69 USPQ2d at 1737 (80% unaided
awareness level for stock market services). We are not persuaded by Opposer’s
citation to cases involving survey results for likelihood of confusion fame because
“[f]ame for likelihood of confusion and fame for dilution are distinct concepts, and
dilution fame requires a more stringent showing.” Coach Servs., 101 USPQ2d at 1724.
In addition to reporting on the survey Mr. Poret conducted, however, he “was also
asked to review” another survey from December 2008 conducted by a third party, and
opine on it. We reject the attempt to pull in the results of this other survey through
Mr. Poret’s review and opinion of its results, given that he did not conduct it and the
survey’s creator did not qualify as an expert or offer any testimony in this
proceeding.56 See M2 Software, Inc. v. Madacy Ent., Corp., 421 F.3d 1073, 76 USPQ2d
1161, 1171 (9th Cir. 2005) (“district judges properly rejected the ... survey because
56 Regardless, the 2008 survey, attached to the Sengara Declaration as Exhibit 73, 38
TTABVUE 198-494, reflects unaided recognition percentages that are not indicative of
dilution-level fame.

25. Opposition No. 91246989
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the survey’s creator did not qualify as an expert on designing or analyzing consumer
surveys” (internal quotations omitted)).
4. Registration of Opposer’s Marks
As set out above, Opposer introduced four Principal Register registrations in
support of its dilution claim.57
5. Weighing the Dilution Fame Factors
Considering the entire record for the relevant timeframe prior to March 2018, we
find that Opposer’s proof falls short of the high standard set for dilution fame. UMG
Recordings, Inc. v. Mattel, Inc., 100 USPQ2d 1868, 1887 (TTAB 2005) (proponent “has
the burden of a ‘higher and more rigorous standard for dilution fame.’”) (quoting Palm
Bay Imps. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73
USPQ2d 1689, 1694 (Fed. Cir. 2005)).
While Opposer has proven some substantial advertising expenditures and sales
under its marks, the reach and effectiveness of its promotional efforts remain
unproven, and its market share in its own industry is not commensurate with
dilution-level fame. While its marks are registered, the evidence regarding actual
recognition indicates that Opposer’s SKYY marks have not evolved into a household
name, reflecting “widespread recognition by the general public.” Coach Servs., 101
USPQ2d at 1725.
57 23 TTABVUE 11-34; 30 TTABVUE.

26. Opposition No. 91246989
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Opposer failed to prove fame by the relevant date for dilution purposes. Because
this threshold element of the dilution claim is lacking, we need not consider the other
elements of the claim. The claim necessarily fails.
Decision: The opposition is dismissed.