Grover Van Dexterv.Second Childhood, Inc.

Trademark Trial and Appeal Board

Jun 8, 1999

No. 92023491 (T.T.A.B. Jun. 8, 1999)

Paper No. 32
HRW
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB JUNE 8, 99
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
_____
Trademark Trial and Appeal Board
_____
Grover Van Dexter
v.
Second Childhood, Inc.
_____
Cancellation No. 23,491
_____
Stephen E. Feldman of Stephen E. Feldman, P.C.
for Grover Van Dexter.
James C. Nemmers for Second Childhood, Inc.
_____
Before Walters, Wendel and Bucher, Administrative Trademark
Judges.
Opinion by Wendel, Administrative Trademark Judge:
Grover Van Dexter has filed a petition to cancel
Registration No. 1,747,220 for the mark
Cancellation No 23,491
2
for “collectible doll and kits for making collectible dolls
consisting primarily of body parts made of porcelain or
gofum, fabrics and patterns for clothing, wigs and paints,
sold as a unit.”1
In the petition to cancel, petitioner alleges that he
is the owner of a retail store that sells antique toys
including antique dolls and collectible toys and dolls; that
he is the owner of a registration for the mark SECOND
CHILDHOOD for retail antique toy stores2 and a second
registration for the same mark for clothing;3 that long
prior to respondent’s date of first use, petitioner began
using his mark in connection with antique toys including
dolls and collectible dolls and toys and collectable
clothing; that he has advertised and promoted his goods and
policed his mark; that respondent’s goods are sold in the
same channels of trade to the same class of purchasers as
petitioner’s goods; and that respondent’s use of its “SECOND
CHILDHOOD” mark for its goods is likely to cause confusion.

1 Reg. No. 1,747,220, issued Jan. 19, 1993, claiming a first use
date of Sept. 2, 1988 and a first use in commerce of Nov. 28,
1988. A disclaimer has been made of the term INC. A combined
Section 8 and 15 affidavit has been filed.
2 Reg. No. 1,109,762, issued Dec. 19, 1978, claiming a first use
of June 9, 1969 and a first use in commerce of July 5, 1969. A
combined Section 8 and 15 affidavit has been filed and accepted.
3 Reg. No. 1,424,912, issued Jan. 13, 1987, claiming a first use
date of June 9, 1969 and a first use in commerce of July 5, 1969.
A Section 8 and 15 affidavit has been filed and accepted.
Cancellation No 23,491
3
Respondent, in its answer, has denied the salient
allegations of the petition to cancel, and has set forth the
affirmative defenses of laches and estoppel, based on
petitioner’s having made a threat to cancel respondent’s
mark in June 1994 and not having taken any further action
until the filing of this petition in October 1994.
The record consists of the file of the involved
registration; the trial testimony for petitioner consisting
of the deposition of petitioner, and accompanying exhibits,
the deposition of Eric Alberta, a collectible specialist
appraiser in New York City, the deposition of Elizabeth
McGarrity, a doll collector in New York City, and the
deposition of Robert Lester, owner of a shop in Greenwich
Village selling collectible toys including dolls; a notice
of reliance introducing status and title copies of
petitioner’s pleaded registrations; and the trial testimony
for respondent, consisting of depositions of Peggy Bailey,
the owner of Second Childhood, Inc., and accompanying
exhibits, and the depositions of Shirlee Funk, a doll
collector and of Nancy McCray, a dealer in antique dolls.4
Both parties filed briefs, but an oral hearing was not
requested.

4 In neither case was opposing counsel present for the
depositions taken by the other party.
Cancellation No 23,491
4
Earlier in this case, the parties filed cross-motions
for summary judgment. In its decision issued April 25,
1996, the Board granted petitioner’s motion to the extent
that judgment was entered in his favor on the issue of
priority of use, but denied both motions with respect to the
issue of likelihood of confusion, stating that “genuine
issues of material fact remain regarding, at a minimum,
respondent’s laches and estoppel defenses and the
applicability of such defenses, which depend on whether
likelihood of confusion is inevitable.” [Footnotes omitted].
Accordingly, we proceed on the basis that petitioner has
established priority of use and the only issue before us is
the likelihood of confusion.5
Petitioner, in his testimony, described the opening of
his present store in Greenwich Village with his partner Yoji
Morimoto (now deceased) in 1969; the use of the mark SECOND

5 The only evidence introduced with respect to respondent’s
defenses of laches and estoppel consists of the testimony of
Peggy Bailey of her attendance at four doll shows and her placing
a new advertisement in the period from July 1994 and October
1994. We agree with petitioner that this continuation of normal
business activities, and presumably sale of dolls, is clearly
insufficient to demonstrate any detrimental reliance by
respondent on the delay between petitioner’s first learning of
respondent’s use and the filing of this petition, which, at the
most, was four months. See Georgia–Pacific Corp. v. Great Plains
Bag Co., 614 F.2d 757; 204 USOQ 697 (CCPA 1980)[party charging
estoppel by laches must show that it suffered or will suffer
detriment as a result of inaction by the other party].
Accordingly, and since respondent has offered minimal argument
with respect to these defenses, no further consideration has been
given thereto, or the question of whether or not they could have
been raised here.
Cancellation No 23,491
5
CHILDHOOD in connection with the store from then until the
present; and the sale through both the retail store and mail
orders of collectibles, toys, and dolls from all over the
world, including Japan. He stated that, from the opening of
his store, he has also sold the works of contemporary
Japanese artists, including dolls. Petitioner further
testified that his store is popular with tourists,
particularly Japanese, and introduced copies of articles
written over the years about him and his “old toy” shop.
Petitioner testified, and introduced exhibits, as to his
strong policing of his mark, including the warnings to
infringers placed in his advertisements and his prosecution
of others using marks considered to infringe his mark in
connection with the sale of dolls, toys and the like. He
described his learning of respondent’s business from
customers in 1994 and his cease-and-desist letter written to
respondent in May 1994. Petitioner stated that, since
learning of respondent’s business, “20 or more” customers
had inquired whether he had a branch in Iowa selling dolls.
Each of petitioner’s other witnesses testified that
petitioner’s store is well-known in the field of collectable
toys and dolls, and that if he or she saw an advertisement
from a business called “Second Childhood” for dolls,
petitioner would be the presumed advertiser.
Cancellation No 23,491
6
Peggy Bailey, the owner of respondent, testified to the
beginning of her doll business in 1988, which business
consists of the sale of Japanese traditional dolls made to
order for her by artisans in Japan, with no more than five
being made of a given doll, and with prices ranging from
$300 to $1400 (as shown the price list introduced in Exhibit
2). Ms. Bailey testified that her dolls are made for
adults, are not toys, and are usually stored in a case.
Her dolls are not antiques and she knows of no one else that
sells dolls of this type in the United States. She sells
most of her dolls at doll shows, with the remainder being
sold by mail-order through her catalogue.
Ms. Bailey also testified with respect to her creation
of her mark, indicating that the design element was drawn by
her and is a depiction of herself as a little girl; her
filing of an application for the mark and registration being
at first refused on the basis of petitioner’s mark, but the
refusal later being withdrawn; and her use of the term
“collectible” in the identification of goods in the
application for the purpose of excluding antiques. She
testified to advertising in magazines such as “Doll World”
and “Dolls: The Collector’s Magazine,” but never in
magazines such as “Antique Toy World” or “Toy Shop.” She
first became aware of petitioner upon the refusal of her
application, and later became more acutely aware when Mr.
Cancellation No 23,491
7
Van Dexter sent his cease-and-desist letter in May 1994,
which she referred to her attorney, who responded in an
attempt to resolve the matter.
Nancy McCray, as an antique doll dealer in Iowa,
testified that she had never heard of petitioner or his
store; that respondent is the only dealer she knows dealing
in imported dolls from Japan and respondent’s customers are
a very small subset of doll collectors; that “antique” in
the doll collecting industry means dolls at least as old as
1935, with the newer dolls being “collectible;” that
respondent’s Japanese dolls are “new collectible;” that the
phrase “collectible dolls” does not mean the same as
“antique dolls.”
Shirlee Funk, as a doll collector from Iowa, testified
that she had never heard of petitioner; that she had co-
founded with Peggy Bailey a doll club called Japanese
American Doll Enthusiasts, which has about 260 members
worldwide; that, as far as she knows, respondent is unique
in importing these finely crafted dolls from Japan and that
respondent has a small customer base; that respondent’s
customers could possibly, however, include collectors of
antique dolls as well; and that, in her opinion, “antique”
dolls are dolls made prior to 1920.
Cancellation No 23,491
8
Turning to the issue of likelihood of confusion, we
consider those du Pont factors6 which petitioner argues are
relevant to our decision and point to a strong likelihood of
confusion.
First, insofar as the similarity or dissimilarity of
the marks is concerned, petitioner argues that respondent
has appropriated petitioner’s entire mark SECOND CHILDHOOD
to use as the dominant portion of its composite mark.
Petitioner maintains that SECOND CHILDHOOD not only is the
feature which creates the commercial impression for
respondent’s mark, but also is the portion which would be
likely to be used by customers in referring to, or calling
for, the goods of respondent. Petitioner argues that the
remainder of respondent’s mark is simply descriptive of its
goods.
Respondent, on the other hand, argues that the marks of
the parties are clearly dissimilar in appearance, sound and
commercial impression. Respondent contends that not only
are the words “Second Childhood” displayed in a distinctive
lettering style in its mark, but the central portion in
respondent’s mark (the design and the phrase “Dolls for the
Young at ™”) is not even present in petitioner’s mark.
Respondent maintains that the two marks, when viewed in
their entireties, create distinct commercial impressions.

6 In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ
Cancellation No 23,491
9
It is well established that there is nothing improper
in giving more weight, for rational reasons, to a particular
feature of a mark, provided that the ultimate conclusion
rests on a consideration of the marks in their entireties.
In re National Data Corp., 753 F.2d 1056, 224 USPQ 749
(Fed. Cir. 1985); Hilson Research Inc. v. Society for Human
Resource Management, 27 USPQ2d 1423 (TTAB 1993).
Furthermore, it is often appropriate to give more weight to
the word portions of a mark than to a design feature, since
it is by the words that purchasers will refer to the goods,
and the words, rather than a design feature or stylized
lettering, will thus create the greater impression on them.
Ceccato v. Manifattura Lane Gaetano Marzotto & Figli S.p.A.,
32 USPQ2d 1192 (TTAB 1994).
We agree with petitioner that the dominant feature of
respondent’s composite mark is the phrase SECOND CHILDHOOD,
(the additional term INC. having no trademark significance).
This is the word portion presented in the largest letters at
the top of the mark and would be the first to meet a
purchaser’s eyes. The slogan or logo “Dolls for the Young
at ™” clearly has descriptive import, respondent’s goods
being “collectible dolls,” i.e., dolls for adults. While
the design features would undoubtably be part of the overall
commercial impression initially created by respondent’s

563 (CCPA 1973).
Cancellation No 23,491
10
mark, the fact remains that purchasers would be more likely
to remember over a period of time the distinctive word
portion of the mark, SECOND CHILDHOOD, as the indicator of
source. Certainly, in referring to the source of goods
purchased, or sought to be purchased, customers would be
most likely to use the phrase SECOND CHILDHOOD. Thus,
taking into consideration the marks in their entireties, we
find respondent’s mark to be highly similar in commercial
impression to petitioner’s mark SECOND CHILDHOOD.
Turning next to the similarity or dissimilarity of the
goods and services involved, petitioner contends that
because both petitioner and respondent sell “collectible”
dolls, the goods of the parties must be considered
identical. Petitioner argues that, in view of the unlimited
description of goods in respondent’s registration,
respondent cannot rely upon its evidence of actual use on a
particular type of Japanese doll in an attempt to
distinguish its goods from the dolls sold by petitioner.
Respondent maintains that it is clear from the
description of goods in respondent’s registration that its
“collectible dolls” are new dolls, and not the antique dolls
sold by petitioner. Respondent further argues that the
testimony of Shirlee Funk and Nancy McCray refutes
petitioner’s argument that “collectible dolls” include
Cancellation No 23,491
11
“antique dolls” and shows that “collectible” refers to items
newer than 1935, whereas “antique” refers to items older.
We begin with the general principle that, in
determining likelihood of confusion, we must consider the
identification of goods or services as set forth in the
registrations involved, regardless of the evidence of record
with respect to the actual nature of the goods or services
of the parties. See Miles Laboratories Inc. v. Naturally
Vitamin Supplements Inc., 1 USPQ2d 1445 (TTAB 1986) and the
cases cited therein.
Respondent has described its goods in its registration
as “collectible dolls.” Petitioner’s mark is registered for
“retail antique toy store services.” Petitioner has
established that its sales include antique dolls.7 The
testimony of Nancy McCray and Shirlee Funk establishes that
the word “antique” has a specific meaning in the doll
collecting field and refers only to items from a time at
least prior to 1935, whereas newer items would simply be
called “collectible.” Their testimony makes it clear that
the term “collectible dolls” does not have the same meaning
as “antique dolls” or “antique toys.”

7 For purposes of this proceeding, we do not find it necessary to
determine whether or not petitioner is also entitled to rely upon
common law rights with respect to the use of the mark SECOND
CHILDHOOD for the sale of dolls other than “antique dolls.”
Cancellation No 23,491
12
We are convinced by respondent’s evidence that a
distinction is drawn in the doll collecting field between
“antique” dolls and “collectible” dolls. Ms. Bailey has
testified that she used the term “collectible” in the
identification of her goods to specifically exclude
“antique” dolls. Thus, we cannot accept petitioner’s
premise that the term “collectible,” as used in respondent’s
recitation of goods, encompasses “antique” dolls. In order
to find a likelihood of confusion, however, it is not
necessary that the goods or services involved be identical
or even competitive. It is sufficient if there is a
relationship between the goods and/or services such that
persons encountering them under their respective marks are
likely to assume that they originate from the same source or
that there is some association between their sources. See
McDonald’s Corp. v. McKinley, 13 USPQ2d 1895 (TTAB 1989) and
the cases cited therein. Here, while “antique” dolls and
“collectible” dolls are not identical, there is an obvious
relationship between the two categories of dolls, both being
the object of doll collectors, and, thus, there is the
likelihood that persons encountering the two types of dolls
under similar marks might assume that there is, at the very
least, some association between the sources of the “antique”
and the “collectible” dolls.
Cancellation No 23,491
13
Furthermore, there is a definite overlap in the
channels of trade and of purchasers for the dolls, be they
“antique” or “collectible.” While respondent argues that
its dolls are sold predominately at doll shows, with only a
few being sold by mail order, and petitioner sells his dolls
at a retail store or by mail-order, no meaningful
distinction can be made on this basis. Respondent’s
registration is not restricted to any particular manner of
distribution or sale, and thus must be must be assumed to
include all the normal channels of trade for goods of this
type. See Sarah Coventry Inc. v. T. Sardelli & Sons, 179
USPQ 630 (TTAB 1973). Although respondent may presently
sell most dolls at doll shows, respondent might well change
its manner of sale in the future, so as to concentrate more
on the mail-order sales, a method of distribution often used
by petitioner.
Even more significantly, we find evidence of record
that there are doll collectors who are interested in both
antique and the newer dolls. Shirlee Funk, as a doll
collector, testified that she collected dolls from “all
periods ...antiques as well as nonantiques.” [Test 5:1-3].
She also testified that the customers of respondent might
include collectors of antique dolls and that it was possible
that a person might collect both antique dolls and Japanese
dolls such as those offered by respondent. [Test 11: 6-13].
Cancellation No 23,491
14
While respondent has introduced testimony to the effect that
Ms. Bailey would be not allowed to set up in a strictly
“antique” doll show, Nancy McCray did state that “if it was
antique and collectibles, then she could have a booth.”
[Test. 12:13-16]. Accordingly, purchasers already familiar
with petitioner’s sale of antique dolls under his SECOND
CHILDHOOD mark might well encounter respondent’s collectible
dolls being offered under a similar mark.
In addition, even though the relevant purchasers may be
sophisticated doll collectors, and clearly not buying these
expensive dolls on a whim, we find the potential for
confusion on the part of these purchasers when faced with
the sale of two types of dolls under SECOND CHILDHOOD marks.
Although doll collectors may be knowledgable with respect to
dolls, this does not mean that they are sophisticated in the
field of trademarks or immune from confusion as to the
source or affiliation of the respective dolls. See Aries
Systems Corp. v. World Book Inc., 23 USPQ2d 1742 (TTAB 1992)
and the cases cited therein. Once again, we emphasize that
in view of the broad identification of respondent’s goods in
its registration as “collectible dolls,” respondent cannot
rely upon any uniqueness of the Japanese dolls which it
presently sells under the mark to overcome a holding of the
likelihood of confusion.
Cancellation No 23,491
15
Petitioner has also argued the strength of his mark,
and has pointed to the evidence introduced to show
recognition by others of the “fame” of his mark. While we
agree that the evidence is adequate to show recognition, at
least in the New York City area, of petitioner and his sale
of antique toys and dolls under his SECOND CHILDHOOD mark,
we do not consider this evidence rises to the level of
demonstrating that petitioner’s mark is a famous or
extremely strong mark in the field of doll collecting in
general.
The only other factor which petitioner has raised is
that of actual confusion. Petitioner points to his own
testimony with respect to customers’ inquiries about a store
or business in Iowa and to the three declarations from doll
collectors submitted in connection with his motion for
summary judgment in which they uniformly stated that they
were “informed that there was another company in Iowa” and
they “assumed it was the same company” [as the store in New
York].
Respondent argues that petitioner’s evidence fails to
show any actual effect on purchasers’ decisions to buy.
Respondent questions the failure of Mr. Van Dexter to be
able to identify any of the customers asking about the “Iowa
store” and labels his testimony hearsay. As for the three
declarations submitted by petitioner, respondent argues that
Cancellation No 23,491
16
the declarations are incomplete with respect to the type and
amount of information given to the declarants and that once
again there is no evidence of any effect on a purchasing
decision. Respondent also points to the six years of
concurrent use by the parties of their marks, prior to
petitioner’s learning of respondent, without any evidence of
actual confusion.
Petitioner, by his testimony, has shown that he first
learned of respondent by a customer inquiry and that there
have been further inquires about a business in Iowa
operating under a similar mark. His testimony when
considered to this extent is not hearsay. See Towers v.
Advent Software Inc., 17 USPQ2d 1471, 1473 (TTAB 1989). At
the same time, this testimony is far from demonstrative of
any actual confusion on the part of potential purchasers.
The three declarations from doll collectors are sketchy and
of little probative value. All in all, we find the evidence
of any actual confusion to be minimal. Nonetheless,
evidence of actual confusion is not essential to proving
likelihood of confusion, but rather is only one factor to be
taken into consideration. See Hilson Research Inc. v.
Society for Human Resource Management, supra. In a similar
vein, although petitioner has presented the testimony of
three witnesses as to the potential for confusion, we find
this to be of little probative weight, especially since this
Cancellation No 23,491
17
is a legal conclusion for us to make on a full review of the
evidence with respect to the relevant du Pont factors.
Upon making this review, we find that the similarities
of petitioner’s and respondent’s marks, the similarities of
petitioner’s services and respondent’s goods and the
similarities of the channels of trade and potential
customers clearly outweigh any other factor which might be
resolved in respondent’s favor. Petitioner has established
that there is a likelihood of confusion with the
contemporaneous use by the parties of their marks for the
services and goods involved.
Decision: The petition to cancel is granted.
C. E. Walters
H. R. Wendel
D. E. Bucher
Trademark Administrative Judges,
Trademark Trial and Appeal Board