Kimberly-Clark Tissue Co.v.Scot Fetzer Co.

Trademark Trial and Appeal Board

Jun 7, 1999

No. 91094387 (T.T.A.B. Jun. 7, 1999)

Hearing: Paper No. 71
May 7, 1998 JQ
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB JUNE 7, 99
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
_____
Trademark Trial and Appeal Board
______
Kimberly-Clark Tissue Company
v.
The Scott Fetzer Company
_____
Opposition No. 94,387
to application Serial No. 74/423,659
filed on August 12, 1993
_____
Jeffery A. Handelman of Brinks Hofer Gilson & Lione for
Kimberly-Clark Tissue Company.
Robert P. Ducatman, Timothy P. Fraelich and Deborah R.
Schwartz of Jones, Day, Reavis & Pogue for The Scot Fetzer
Company.
______
Before Cissel, Walters and Quinn, Administrative Trademark
Judges.
Opinion by Quinn, Administrative Trademark Judge:
An application has been filed by The Scot Fetzer
Company to register the mark SCOT’S TUFF for “carpet
shampoos and carpet cleaning preparations.”1
Registration has been opposed by Kimberly-Clark Tissue
Company under Section 2(d) of the Trademark Act. Opposer
Opposition No. 94,387
2
alleges that applicant’s mark, if applied to applicant’s
goods, would so resemble opposer’s previously used and
registered SCOTT marks and SCOTT formative marks for various
cleaning, wiping, scrubbing and absorbing products as to be
likely to cause confusion.2
Applicant, in its answer to the amended opposition,
denied the salient allegations.
The record consists of the pleadings; the file of the
involved application; trial testimony, with related
exhibits, taken by each party;3 certified copies of forty-
three of opposer’s pleaded registrations, portions of
discovery depositions with related exhibits, and dictionary
definitions, all introduced by opposer’s notices of
reliance; and discovery depositions with related exhibits,
opposer’s responses to interrogatories and requests for
admissions, and excerpts from phone directories, all made of
record by way of applicant’s notices of reliance. Opposer
and applicant filed briefs on the case, and both were

1 Application Serial No. 74/423,659, filed August 12, 1993,
alleging a bona fide intention to use the mark in commerce.
2 In its amended pleading, opposer also claimed ownership of
registrations of the mark SANI-TUFF for hand soap, dispensers and
disposable wipers. Although the registrations were properly made
of record, no mention of them was made in either of opposer’s
briefs or at the oral hearing. Further, applicant’s statement
that opposer no longer uses the mark stands unrebutted. It would
appear that opposer essentially gave up on its likelihood of
confusion claim with respect to this mark. We hasten to add,
however, that we reach the same result on likelihood of confusion
between SANI-TUFF and applicant’s mark as between opposer’s SCOTT
marks and applicant’s mark: no likelihood of confusion.
Opposition No. 94,387
3
represented by counsel at an oral hearing held before the
Board.
Opposer was founded in 1879 and, since that time, has
continued to sell, with great success, various cleaning,
wiping, scrubbing and absorbing paper and cloth products
under its SCOTT marks. Opposer’s registrations date back to
1915 and, in addition to the SCOTT mark, opposer owns
registrations for marks such as SCOTT FOLD, SCOTTCLOTH,
SCOTTEX, SCOTTISSUE, SCOTTOWELS, SCOTTPLUS, SCOTTFRESH,
SCOTT SELECT and SCOTTPURE. Opposer has divided its
business into three primary segments: the consumer
business; the do-it-yourself business; and the away from
home business. Opposer’s products have been sold through
mass merchandisers, grocery and drug stores, warehouse
clubs, and hardware stores. The products are bought by
various classes of purchasers, including ordinary consumers,
as well as institutional customers such as hotels, office
buildings, health care facilities and restaurants. Opposer
has extensively promoted its products in a wide variety of
media, including television, radio, newspapers, magazines,
trade journals, catalogs and direct mailings, and through
participation at trade shows. Sales and advertising figures
are very impressive, but a confidentiality agreement
precludes us from reciting the specifics.

3 Opposer’s testimony of Edward T. O’Brien, Jr. was submitted in
Opposition No. 94,387
4
Applicant was founded in 1914 by George Scott and Carl
Fetzer. Since that time, applicant has been engaged in the
manufacture and sale of vacuum cleaners. Another entity,
Scot Laboratories, was formed in 1964 and sold carpet
cleaning preparations to applicant for use with its vacuum
cleaning machines which apparently included a carpet
shampooer. Scot Laboratories became a division of applicant
in 1971. Applicant began selling carpet cleaning
preparations under the mark SCOT’S TUFF in 1993. The goods
have been promoted in newspapers and trade journals.4
A procedural matter requires our attention before we
turn to the merits of the likelihood of confusion claim.
After the filing of the parties’ briefs, but before the oral
hearing was held, applicant moved to strike several of
opposer’s registrations on the grounds that some of the
registrations were canceled by the Office, and that others
were abandoned. Thus, applicant argued, these registrations

affidavit form pursuant to the parties’ agreement.
4 The record shows that in addition to the carpet cleaners,
applicant sells a variety of other household cleaners under the
SCOT’S TUFF mark. These cleaners include kitchen and bathroom
cleaners, and glass and surface cleaners. In the present case,
however, applicant is seeking to register its trademark for
carpet shampoos and carpet cleaning preparations only. Our
determination in this proceeding must be based on a consideration
of the identified goods in the involved application, and not
whether confusion is likely in connection with goods not listed
in the application before us here. Saks & Co. v. Snack Food
Association, 12 USPQ2d 1833, 1836 (TTAB 1989). The dismissal of
the present opposition in no way precludes the Board from
reaching a different result, based on a different record, if the
parties were to litigate applicant’s right to registration of
Opposition No. 94,387
5
were immaterial and should be stricken from the record.
Opposer objected to the motion to strike, but also confirmed
that four of the registrations were canceled under Section
8. The Board, in an order dated February 5, 1998, denied
the motion to strike. Applicant also filed a motion to
amend the pleadings to conform to the evidence pursuant to
Fed. R. Civ. P. 15(b). The Board, in the same order,
deferred consideration of the motion until final hearing.
It is this Fed. R. Civ. P. 15(b) matter that requires our
consideration.
Applicant has moved to amend its answer to include
counterclaims to conform to the evidence presented at trial.
Applicant contends that certain portions of the testimony of
record establish that twelve of opposer’s registrations have
been abandoned and that, therefore, the registrations should
be canceled. Applicant further contends that the issue of
abandonment was tried with the consent of the parties.
Applicant points to portions of the testimony of Robert
Behan, and asserts that Mr. Behan, “without equivocation and
without objection from [opposer], that [opposer] is no
longer offering goods in connection with twelve subject
trademark registrations and that it has divested itself of
the capability of manufacturing such goods.” Applicant goes

SCOT’S TUFF as a trademark for any of its other types of
household cleaners.
Opposition No. 94,387
6
on to state that while it raised the abandonment issue in
its brief, opposer’s reply brief is silent on the issue.
Opposer objects to the motion, arguing that the issue
of abandonment was not tried by the express or implied
consent of the parties. Opposer also directs the Board’s
attention to the fact that applicant filed, on July 25,
1997, twelve separate petitions to cancel the
registrations.5
Essentially for the reasons set forth in more detail in
opposer’s brief in opposition to the motion, applicant’s
motion is not well taken. Opposer was not put on notice
that the validity of its registrations was being challenged
until after the trial had concluded in this case and
opposer’s brief had been filed.
Our review of the record convinces us that the issue of
abandonment was not tried, either by express or implied
consent of the parties, as contemplated by Fed. R. Civ. P.
15(b). Colony Foods, Inc. v. Sagemark, Ltd., 735 F.2d 1336,
222 USPQ 185 (Fed. Cir. 1984). The mere introduction of
responses to a few questions on cross examination falls far
short in this case of establishing that the issue was tried.
To allow amendment at this late juncture would result in
undue prejudice to opposer. ABC Moving Co., Inc. v. Brown,
218 USPQ 336, 339 (TTAB 1983). Inasmuch as it appears that
Opposition No. 94,387
7
opposer was not on notice that abandonment of twelve of its
registrations was an issue in this case, the motion to amend
is denied.
This interlocutory ruling results in a somewhat unusual
procedural situation in this case. That is to say, although
this case is at final hearing, there remains a cloud over
twelve of opposer’s registrations by virtue of the pendency
of the consolidated cancellation proceedings. Generally,
when an opposer’s registration is sought to be canceled,
that matter is taken up first, usually as a compulsory
counterclaim in the opposition, before proceeding to the
merits of the opposition.6 Nonetheless, due to the late
stage of this proceeding and the early stage of the
cancellation proceedings, the Board is inclined to issue a
final decision in the present case. In doing so, while we
obviously are aware that twelve of opposer’s registrations
remain under attack, we will decide the likelihood of
confusion issue herein as if these twelve registrations
survived the cancellation proceedings, thereby remaining
valid and subsisting registrations. We now turn to the
likelihood of confusion issue in this case.

5 Cancellation proceedings were instituted, and the proceedings
were consolidated by the Board.
6 We note that opposer, as respondent in the cancellation
proceedings, urged that the petitions be dismissed essentially on
the basis that applicant’s challenge to the registrations could
have and should have been timely raised as compulsory
counterclaims in this opposition. Although the Board denied
Opposition No. 94,387
8
In view of opposer’s ownership of valid and subsisting
registrations for its pleaded marks, there is no issue with
respect to opposer’s priority.7 King Candy Co., Inc. v.
Eunice King’s Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108
(CCPA 1974). In any event, the record clearly establishes
that opposer began using its SCOTT marks long prior to the
filing date of applicant’s intent-to-use application.
Our determination under Section 2(d) is based on an
analysis of all of the probative facts in evidence that are
relevant to the factors bearing on the likelihood of
confusion issue. In re E. I du Pont de Nemours & Co., 476
F.2d 1357, 177 USPQ 563 (CCPA 1973). In any likelihood of
confusion analysis, two key considerations are the
similarities between the marks and the similarities between
the goods. We will first turn our attention to these
factors, and then will consider the remaining relevant du
Pont factors.

opposer’s motion on February 12, 1999, opposer has filed a
request for reconsideration of that decision.
7 The Board’s check of Office records shows that some of
opposer’s registrations of record have been canceled. When a
federal registration owned by a party has been properly made of
record in an inter partes proceeding, and there are changes in
the status of the registration between the time it was made of
record and the time the case is decided, the Board, in deciding
the case, will take judicial notice of, and rely upon, the
current status of the registration, as shown by the Office
records. Royal Hawaiian Perfumes, Ltd. v. Diamond Head Products
of Hawaii, Inc., 204 USPQ 144 (TTAB 1979); and TBMP § 703.02(a).
The following registrations introduced by way of opposer’s notice
of reliance have been canceled: Registration Nos. 1,615,762;
1,630,017; 1,648,827; 1,651,305; 1,650,698; 1,652,446; 1,659,371;
Opposition No. 94,387
9
Insofar as the goods are concerned, the essence of
opposer’s arguments is that the goods “are closely related
in that they are complementary products that are used
together to remove stains and messes from carpets.” In
making this point, opposer particularly notes applicant’s
spot remover products, such as the pet stain and odor carpet
cleaner and the food stain carpet cleaner, which are used by
blotting the soiled area with a towel or cloth. Stephen
Platt, opposer’s vice president, sales, testified about
opposer’s sales demonstrations where opposer’s heavy-duty
towels are dunked in water, wrung out and then used to
remove stains from carpet, and that the towels do not shred
or fall apart. In this connection, some of opposer’s
products are promoted as “tough enough to work with cleaning
agents.”
Opposer also highlights its joint marketing efforts
under opposer’s SCOTT mark with at least two third parties.8
One involved the joint marketing of opposer’s SCOTT shop
towels with the cleaning product SIMPLE GREEN sold by
Sunshine Makers, Inc. The testimony establishes that the
SIMPLE GREEN brand product has a carpet cleaning

1,691,598; and 1,694,452. These registrations have not been
considered in reaching our decision.
8 Applicant quibbles with some of the details concerning these
efforts and urges the Board to disregard Mr. Platt’s testimony.
Contrary to applicant’s remarks, we find Mr. Platt’s testimony,
as well as that of the witnesses from the two third parties, to
be credible.
Opposition No. 94,387
10
application. In this promotion, a roll of opposer’s shop
towels was packaged and sold together with SIMPLE GREEN
brand cleaner in True Value hardware stores. Although the
two companies engaged in discussions regarding further joint
promotions, nothing ever materialized.9
The other effort undertaken by opposer involved Church
& Dwight Co., Inc., which sells various household cleaning
products under the mark ARM & HAMMER. There is testimony to
the effect that the companies discussed a project for a
household cleaner to be jointly branded under the companies’
marks. No such product ever came to the market, however.
We acknowledge that the record establishes that the
parties’ goods travel in some of the same channels of trade
for household products and are bought by the same classes of
purchasers for such products. Also, the goods are
relatively inexpensive and are purchased with nothing more
than ordinary care. Nevertheless, Mr. Platt testified that
opposer’s goods essentially are paper products. (dep., pp.
56-60) Further, none of opposer’s registrations covers
household cleaning preparations.
Simply put, the parties’ goods are specifically
different. Although the above evidence supports opposer’s

9 Mark Rhodes, opposer’s district team leader in Atlanta,
Georgia, also testified that retailers try to group similar items
for display. In this connection, Mr. Rhodes pointed to exhibit
no. 164, which shows 409 brand cleaner on shelves just above
paper towels as part of a single display in a retail store.
Opposition No. 94,387
11
claim that its products and household cleaners are
complementary, it hardly establishes that consumers would
have a basis for assuming that both emanate from the same
source, or that there is an industry practice of such joint
promotions or that consumers have become accustomed to such
a practice. In this connection, while opposer’s joint
promotion with Sunshine Makers was characterized as a
“success,” the record lacks any details (e.g. sales or
duration) about the promotion, thereby making it impossible
to guage the exposure to consumers in the marketplace.
Other than this single promotion, it appears that other
efforts have not moved beyond the discussion phase.
More to the point is that the evidence falls short in
establishing a basis upon which to conclude that consumers
would be likely to believe that paper towels and similar
products used for cleaning and wiping on the one hand, and
carpet cleaning preparations on the other, emanate from the
same source. The record is devoid of even one instance
where the same entity makes both types of products. To the
extent that other products are marketed under opposer’s
SCOTT marks, such as dropcloths and air fresheners, we
likewise find that the record is lacking in establishing a
nexus between those products and applicant’s carpet cleaning
products such that consumers, upon encountering the parties’
marks, would attribute a common source to them.
Opposition No. 94,387
12
We next turn to compare opposer’s SCOTT marks (both
SCOTT and SCOTT formative marks) to applicant’s mark SCOT’S
TUFF. Although there is a similarity between the marks in
that SCOTT and SCOT’S sound alike, we find that when the
marks are considered in their entireties, on balance, the
differences outweigh the similarities. Although the TUFF
portion of applicant’s mark is clearly subordinate to the
SCOT’S portion, it nevertheless forms part of the mark and
cannot be ignored. Giant Food, Inc. v. Nation’s
Foodservice, Inc., 710 F.2d 1565, 218 USPQ 390, 395 (Fed.
Cir. 1983). Further, the SCOT’S portion of applicant’s mark
is spelled differently (one fewer letter “t”) from opposer’s
SCOTT mark. As to opposer’s argument that consumers will
assume that SCOT’S TUFF is just another variant of opposer’s
SCOTT and SCOTT formative marks, the differences between the
marks and the goods sold thereunder lead us to conclude that
confusion is unlikely to occur in the marketplace.
With respect to the absence of actual confusion between
the marks, we find that applicant has overstated its case.
Applicant would have us place significant weight on this
factor due to “over eighty years of concurrent use of marks
incorporating ‘Scott’ or ‘Scot’ by the parties to this
opposition.” What opposer correctly points out, however, is
that applicant is referring to its use of the designation
“The Scott & Fetzer Company” in connection with applicant’s
Opposition No. 94,387
13
sale of vacuum cleaners. Applicant sales of its carpet
cleaner under the involved mark SCOT’S TUFF, however, did
not commence until 1993. In any event, although neither
party is aware of any instances of actual confusion, proof
of actual confusion, often very difficult to obtain, is not
required to show a likelihood of confusion.
Another factor concerns the fame of opposer’s SCOTT
mark. Fame, of course, is a significant factor in the
determination of likelihood of confusion, and can play a
dominant role in cases featuring a famous mark. Kenner
Parker Toys Inc. v. Rose Art Industries Inc., 963 F.2d 350,
22 USPQ2d 1453 (Fed. Cir. 1992). There is no question but
that opposer has enjoyed huge success with its paper
products. As noted earlier, although a confidentiality
agreement prevents us from setting forth opposer’s sales
volume and advertising expenditures, suffice it to say that
they are, by any standard, enormous. Given these figures
and the many years of use of the SCOTT mark, we have no
problem concluding that this mark is famous as used in
connection with paper towels, facial issues, toilet paper
and closely related products sold by it. The evidence of
third-party uses shown by applicant does very little to
diminish this fame inasmuch as virtually all of the uses
involve goods and/or services different from the ones of the
Opposition No. 94,387
14
parties in this case. Moreover, applicant has not supplied
any evidence bearing on the extent of these uses.
At the same time, we also recognize that SCOTT is a
fairly common surname and appears in the names of many
businesses as shown by the telephone directory listings
submitted by applicant. The commonality of the surname
“Scott” tends, we think, to contribute to the limitation of
the fame of opposer’s mark to those products mentioned
above.
While we find that opposer’s SCOTT mark is a famous
mark for cleaning, wiping, scrubbing and absorbing paper
products, we do not view the mark in the same fashion in
relation to non-paper or non-cloth items such as carpet
shampoos and carpet cleaning preparations. There is no
evidence on which we can find that opposer’s SCOTT marks for
its various cleaning, wiping, scrubbing and absorbing
products are so famous that the fame carries over to non-
paper (or non-cloth) items such as carpet cleaning
preparations. There simply is no evidence establishing
public awareness and transference of the trademark function
of opposer’s SCOTT marks to carpet cleaners by virtue of the
fame of opposer’s mark for its products. G.H. Mumm & Cie v.
Desnoes & Geddes Ltd., 917 F.2d 1292, 16 USPQ2d 1635, 1639
(Fed. Cir. 1990); Levi Strauss & Co. v. Genesco, Inc., 742
F.2d 1401, 222 USPQ 939 (Fed. Cir. 1984); and Bausch & Lomb
Opposition No. 94,387
15
Inc. v. Leupold & Stevens Inc., 6 USPQ2d 1475 (TTAB 1988).
Thus, to the extent that fame can be accorded to opposer’s
SCOTT marks, the fame is confined to its cleaning, wiping,
scrubbing and absorbing paper and cloth products, and does
not extend to carpet cleaners at this time.
Further, the fact that applicant’s mark may call to
mind opposer’s mark is not dispositive. Likelihood of
confusion under Section 2(d) means more than the likelihood
that the public will recall a mark on seeing the mark of
another. It must also be established that “there is a
reasonable basis for the public to attribute the particular
product or service of another to the source of the goods or
services associated with the famous mark.” University of
Notre Dame Du Lac v. J.C. Gourmet Food Imports Co., Inc.,
703 F.2d 1372, 217 USPQ 505, 507 (Fed. Cir. 1983), aff’g 213
USPQ 594 (TTAB 1982). See also: Jacobs v. International
Multifoods Corp., 668 F.2d 1234, 212 USPQ 641, 642 (CCPA
1982), aff’g 211 USPQ 165 (TTAB 1981); In re Ferrero, 479
F.2d 1395, 178 USPQ 167 (CCPA 1973); Recot Inc. v. Becton,
50 USPQ2d 1439 (TTAB 1998); Viacom International Inc. v.
Komm, 46 USPQ2d 1233 (TTAB 1998); Original Appalachian
Artworks, Inc. v. Streeter, 3 USPQ 1717 (TTAB 1987); and
American Express Co. v. Payless Cashways, Inc., 222 USPQ 907
(TTAB 1984). Here, the record falls short of establishing
the reasonable basis contemplated by the Court.
Opposition No. 94,387
16
Based on the record before us, we see the likelihood of
confusion claim asserted by opposer as amounting to only a
speculative, theoretical possibility. We suppose that
somebody, somewhere, someday, may be confused, but the
likelihood is remote. Language used by our primary
reviewing court is helpful in resolving the likelihood of
confusion controversy in this case:
We are not concerned with mere
theoretical possibilities of confusion,
deception, or mistake or with de minimis
situations but with the practicalities
of the commercial world, with which the
trademark laws deal.
Electronic Design & Sales Inc. v. Electronic Data Systems
Corp., 954 F.2d 713, 21 USPQ2d 1388, 1391 (Fed. Cir. 1992),
citing Witco Chemical Co. v. Whitfield Chemical Co., Inc.,
418 F.2d 1403, 1405, 164 USPQ 43, 44-45 (CCPA 1969), aff’g
153 USPQ 412 (TTAB 1967).
Finally, there is no evidence of any bad faith by
applicant in adopting its mark SCOT’S TUFF. Scot
Laboratories, which became a division of applicant several
years ago, sold carpet cleaning products to applicant for
use with applicant’s vacuum cleaning machines (which also
included a carpet shampooer). According to the testimony of
Patrick Dowling and Robert Shumay, both employed by
applicant, Scot Laboratories selected its business name to
trade on its association with its primary customer at that
time, applicant (The Scott Fetzer Company).
Opposition No. 94,387
17
In making our determination in this case, we cannot
help but take special note of the case of Scott Paper Co. v.
Scott’s Liquid Gold, Inc., 589 F.2d 1225, 200 USPQ 421 (3d
Cir. 1978). See also: S.C. Johnson & Son, Inc. v. Johnson,
266 F.2d 129, 121 USPQ 63 (6th Cir. 1959), cert. denied 361
US 820; and S.C. Johnson & Son, Inc. v. Johnson, 175 F.2d
176 (2d Cir. 1949). Although there is not, of course, any
estoppel effect (see Board’s decision on summary judgment,
dated February 12, 1996), the decision tends to support the
result reached herein. Based on its SCOTT mark, opposer
brought a trademark infringement action in federal district
court, challenging a third-party’s (Scott’s Liquid Gold,
Inc.) use of its registered mark SCOTT’S LIQUID GOLD for
furniture polish. In pertinent part, the appellate court
found that despite the facts that the goods moved through
the same channels of trade to the same classes of
purchasers, that the goods were inexpensive, that paper
towels and furniture polish were functionally related and
often used together, that household cleaners might be a
logical area for opposer’s expansion, and that both marks
include the name SCOTT, there was not such a likelihood of
confusion sufficient to warrant injunctive relief against
the defendant’s use of its mark. In reversing, the court of
appeals found that the lower court ignored the absence of
evidence showing that other paper companies sold liquid
cleaners. The court also stated that “selection of a mark
with a common surname naturally entails a risk of some
Opposition No. 94,387
18
uncertainty and the law will not assure absolute
protection.”
Suffice it to say that while the decision is not
binding on this Board, it is, nonetheless, instructional,
given the overall factual context of the two cases.
Further, although opposer contends that marketing has
changed since the court’s opinion in that products today are
co-branded and are the subjects of joint promotions,
evidence showing these practices to be commonplace is
lacking.
Given the voluminous record in this case and the
lengthy briefs, the Board is compelled to make one final
point. Both parties’ briefs have made and debated, and we
have considered, arguments other than those specifically
mentioned in this opinion. We find it unnecessary, however,
to comment on each and every one.
In sum, the cumulative differences between the parties’
marks and the goods sold thereunder persuade us that
confusion is unlikely to occur in the marketplace.
Decision: The opposition is dismissed.
R. F. Cissel
T. J. Quinn
Opposition No. 94,387
19
C. E. Walters
Administrative Trademark
Judges, Trademark Trial
and Appeal Board