LeRoux Entertainment Corporation of Americav.The Army and Air Force Exchange Service

Trademark Trial and Appeal Board

Apr 17, 2008

No. 91165813 (T.T.A.B. Apr. 17, 2008)

Mailed
17 April 2008

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
______

LeRoux Entertainment Corporation of America
v.
The Army and Air Force Exchange Service
_____

Opposition No. 91165813
_____

Mitchell G. Weatherly of Weatherly Kerven & Seigel LLC for
LeRoux Entertainment Corporation of America.

W. Barry Huggins, Esq. for The Army and Air Force Exchange
Service.
______

Before Bucher, Drost, and Mermelstein, Administrative
Trademark Judges.

Opinion by Drost, Administrative Trademark Judge:

On July, 11, 2005, LeRoux Entertainment Corporation of
America (opposer) filed an opposition to the registration of
applicant’s (The Army and Air Force Exchange Service) mark
GIFTS GALORE (standard character drawing) for services
ultimately amended to read: “retail gift item and souvenir
shops operating on military installations and selling to
authorized patrons” in Class 35. Serial No. 78392529
(“Gifts” disclaimed). The application is based on
applicant’s allegation of a bona fide intention to use the
mark in commerce.
THIS OPINION IS NOT A
PRECEDENT OF THE
TTAB
Opposition No. 91165813
2
Opposer relies on its ownership of the mark GIFTS
GALORE (in typed or standard character form), “Gifts”
disclaimed, for the following services in Class 35:
retail catalog services featuring gift items sold
primarily to elementary schools for use in their
holiday gift program in the school fundraising
industry, namely, costume jewelry, calculators, picture
frames, novelties, toys, prizes, statues, bird feeders,
coffee mugs, globes, plush animals, tools, housewares,
candles, candle holders, glassware, keychains,
stationery, figurines, cups, straws, plaques, magnets,
compasses, electronics, games, balls, nautical
products, hats, gloves, ties, vases, flowers,
thermometors [sic], rain gauges, glasses, sunglasses,
music boxes, lamps, jewelry boxes, snow globes,
cosmetics, cosmetic accessories, pet toys, ornaments,
pencil sharpeners, pens, pencils, memo pads, diaries,
binoculars, umbrellas, flashlights, tape measurers,
baby teethers [sic], baby rattles, baby bibs, baby
utensils, baby bowls, baby cups, musical instruments,
bags, purses, wallets, candy, banks, hair accessories,
rings, necklaces, pendants, bracelets, pins, anklets,
dolls, clocks, watches, chimes, wind chimes,
birdhouses, plush toys, stuffed animals, stuffed toys,
action figures, basketballs, baseballs, soccer balls,
bats, volleyballs, four square balls, kick balls,
decorations, party supplies, birthday party supplies,
party favors, balloons, hats, caps, baseball caps,
costumes, masks, perfume, glitter, hairspray, makeup,
fingernail polish, tatoos [sic], jewelry, toy jewelry,
remote controlled toys, laser lights, lava lamps, oil
lamps, water lamps, stoplight toys, mirror balls, disco
balls, laser pointers, lighted keychains, keyboards.

The registration (No. 3009319) issued October 25, 2005,
and it alleges a date of first use anywhere and in commerce
of May 1982. In its notice of opposition (p. 2), opposer
referred to the pending application for its GIFTS GALORE
mark and also alleges that it “first used its GIFTS GALORE
mark in commerce prior to the Defendant’s filing date.”
Applicant has denied most of the allegations of opposer’s
Opposition No. 91165813
3
notice of opposition although it admitted that opposer “has
such a registration [or at that time, an application].”
Answer, ¶ 1.
The Record
The record consists of the file of the opposition;
opposer’s notice of reliance on a status and title copy of
its registration; and the stipulated declaration in lieu of
testimony of Robert J. LeRoux, opposer’s Chief Executive
Officer.
Priority
Priority is not an issue in the opposition proceeding
because opposer is relying on its registration for the mark
GIFTS GALORE. See King Candy Co. v. Eunice King’s Kitchen,
496 F.2d 1400, 182 USPQ 108, 110 (CCPA 1974).
Likelihood of Confusion
The next question is whether there is a likelihood of
confusion. In these cases, we analyze the facts as they
relate to the relevant factors set out in In re E. I. du
Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567
(CCPA 1973). See also In re Majestic Distilling Co., 315
F.3d 1311, 65 USPQ2d 1201, 1203 (Fed. Cir. 2003) and Recot,
Inc. v. Becton, 214 F.3d 1322, 54 USPQ2d 1894, 1896 (Fed.
Cir. 2000).
We begin by looking at the parties’ marks. In this
case, the marks are identical in all respects, GIFTS GALORE.
Opposition No. 91165813
4
When the parties’ marks are identical, “the relationship
between the goods on which the parties use their marks need
not be as great or as close as in the situation where the
marks are not identical or strikingly similar.” Amcor, Inc.
v. Amcor Industries, Inc., 210 USPQ 70, 78 (TTAB 1981). See
also In re Shell Oil Co., 992 F.2d 1204, 26 USPQ2d 1687,
1689 (Fed. Cir. 1993) (“[E]ven when goods or services are
not competitive or intrinsically related, the use of
identical marks can lead to an assumption that there is a
common source”).
Next, we look at the parties’ services. Applicant’s
services are retail gift item and souvenir shops operating
on military installations and selling to authorized patrons.
Opposer also has retail services in the field of gift
services (“retail catalog services featuring gift items sold
primarily to elementary schools for use in their holiday
gift program in the school fundraising industry…”). We must
consider the services as they are identified in the
identification of services. Octocom Systems, Inc. v.
Houston Computers Services Inc., 918 F.2d 937, 16 USPQ2d
1783, 1787 (Fed. Cir. 1990) (“The authority is legion that
the question of registrability of an applicant’s mark must
be decided on the basis of the identification of goods set
forth in the application regardless of what the record may
reveal as to the particular nature of an applicant’s goods,
Opposition No. 91165813
5
the particular channels of trade or the class of purchasers
to which the sales of goods are directed”).
While opposer argues (Brief at 7) that an applicant
cannot avoid a likelihood of confusion by narrowing its
identification of services when the registration has a
“broad identification” of services, we do not find that
opposer’s identification of services is broad. Clearly, its
services are limited to the very specific services of
“retail catalog services featuring gift items sold primarily
to elementary schools for use in their holiday gift program
in the school fundraising.” Therefore, we must determine
whether these specific retail catalog services are related
to retail gift stores operating on military installations
and selling only to authorized personnel.
In order to be related, goods or services do not have
to overlap. It “has often been said that goods or services
need not be identical or even competitive in order to
support a finding of likelihood of confusion. Rather, it is
enough that goods or services are related in some manner or
that circumstances surrounding their marketing are such that
they would be likely to be seen by the same persons under
circumstances which could give rise, because of the marks
used thereon, to a mistaken belief that they originate from
or are in some way associated with the same producer or that
there is an association between the producers of each
Opposition No. 91165813
6
parties' goods or services.” In re Melville Corp., 18
USPQ2d 1386, 1388 (TTAB 1991). See also Time Warner
Entertainment Co. v. Jones, 65 USPQ2d 1650, 1661 (TTAB
2002).
Opposer’s Chief Executive Officer has submitted a
declaration in lieu of testimony (¶ 3) that shows it “has
advertised and sold ‘its retail catalog services featuring
gift items’ under the GIFTS GALORE mark to schools on U.S.
military bases for over twenty years” including:
Holloman AFB [Air Force Base], New Mexico
White Sands Missile Range, New Mexico
Tyndall AFB, Florida
Fort Riley, Kansas
Robbins AFB, Georgia
Travis AFB, California
Eglin AFB, Florida
Vandenberg AFB, California
Pope AFB, North Carolina

Applicant “does not dispute that a few of the larger or
more remote installations have an elementary or middle
school within their boundaries.” Brief at 6. However,
applicant does argue:
These schools are located as they are, under individual
memoranda of agreements with the installations, due to
logistical difficulties of transporting large number of
children long distances off an installation.

More importantly, neither these schools, nor employees
of these schools, have any ability to shop at
Applicant’s stores, particularly for fundraising
purposes, for either one or two reasons. One, no
business or local government entity can be an
authorized patron… And two, even if there were an
employee at one of the ten schools who was also a
military dependent (and therefore eligible to shop at
Opposition No. 91165813
7
Applicant’s stores), such an individual could purchase
only in such amounts consistent with personal needs.

Brief at 6-7.
We point out that opposer does not have to show that
schools will purchase from applicant before there can be
confusion. If those familiar with opposer’s service mark
will also encounter applicant’s service mark, there is
opportunity for confusion. See, e.g., Shell Oil, 26 USPQ2d
at 1689 (“[D]istributorship services in the field of
automotive parts” related to service station oil change and
lubrication services). Here, both applicant and opposer
have retail gift-type services. Applicant’s services
involve retail gift item shops and opposer’s services are
“retail catalog services.” Opposer specifies a large number
of items that its catalog services sell. Applicant’s gift
shops can sell similar items. Goods or services can be
related if potential customers will believe that there is a
common source for the services. McDonald's Corp. v.
McKinley, 13 USPQ2d 1895, 1898 (TTAB 1989) (“It is enough if
there is a relationship between them such that persons
encountering them under their respective marks are likely to
assume that they originate at the same source or that there
is some association between their sources”). See also In re
Opus One Inc., 60 USPQ2d 1812, 1814-15 (TTAB 2001). If the
same purchasers encounter applicant’s and opposer’s services
with the identical marks they are likely to believe that the
Opposition No. 91165813
8
sources of the gift item services are in some way related or
associated.
Therefore, the next question is whether customers are
likely to encounter these same services. At this point, we
note that opposer has shown that it markets its services at
schools that are actually on military installations.
Furthermore, to the extent that authorized patrons of
applicant’s shops have children in schools that are not on
military installations, there are other purchasers who could
encounter opposer’s and applicant’s services. Parents and
school employees who are involved with fundraising
activities and who also have access to shops on military
installations are likely to encounter both marks used in
association with applicant’s and opposer’s identified
services. Inasmuch as the marks are used on gift-related
services, even as limited by applicant and opposer, these
purchasers are likely to believe that these services are
related. Furthermore, there is no evidence that would
indicate that these purchasers would exercise great care in
using applicant’s services. Also, many of those
encountering opposer’s services would likewise not be
particularly careful and sophisticated purchasers.
When we consider the record in this case, we start with
the fact that the marks are identical. While the term GIFTS
GALORE for gift-related services is not arbitrary, there is
Opposition No. 91165813
9
no evidence that the mark is weak and entitled to only a
narrow scope of protection. As we noted previously, when
marks are identical, the services do not need to be as
closely related before there is confusion. Applicant’s and
opposer’s services both involve gift-related services that
could be encountered by the same purchasers. Under these
circumstances, we must resolve any doubts we have about
confusion in favor of opposer/registrant, which we do, and
we hold that there is a likelihood of confusion. In re
Chatam International Inc., 380 F.3d 1340, 71 USPQ2d 1944,
1948 (Fed. Cir. 2004) and In re Hyper Shoppes (Ohio), Inc.,
837 F.2d 463, 6 USPQ2d 1025, 1026 (Fed. Cir. 1988).
Decision: The opposition is sustained.