Matsui Int’l. Co., Inc.

Trademark Trial and Appeal Board

Dec 20, 2001

EX (T.T.A.B. Dec. 20, 2001)

12/20/01
UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Matsui International Co., Inc.
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Serial Number 75/481,117
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Request for Reconsideration
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Cecelia M. Perry for Matsui International Co., Inc.

Julie Clinton Quinn, Trademark Examining Attorney, Law
Office 107 (Thomas Lamone, Managing Attorney).
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Before Hanak, Hairston and Walters, Administrative
Trademark Judges.

Opinion by Hanak, Administrative Trademark Judge:

Matsui International Co., Inc. (applicant) seeks
reconsideration of this Board’s decision of July 27, 2001
wherein the Board affirmed the Examining Attorney’s
refusal to register applicant’s mark UNIMARK for “heat
transfer labels” based on the fact that use of this mark
would be likely to cause confusion with the identical
mark UNIMARK previously registered for, among other
goods, “self-adhesive unprinted labels.” Registration No.
1,732,953.
Virtually all of applicant’s Request for
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Reconsideration is devoted to arguing that there is no
proof that heat transfer labels and self-adhesive
unprinted labels
Ser. No. 75/481,117

are related. However, what applicant’s Request for
Reconsideration fails to address is the fact that its
mark is identical to the previously registered mark. As
this Board noted at page 2 of its decision of July 27,
2001, when the marks in question are identical, their
contemporaneous use can lead to the assumption that there
is a common source “even when [the] goods or services are
not competitive or intrinsically related.” In re Shell
Oil Co., 992 F.2d 1204, 26 USPQ2d 1687, 1689 (Fed. Cir.
1993)(emphasis added).
However, as applicant itself concedes at page 5 of
its brief and again at page 3 of its Request for
Reconsideration, the same consumers, such as
manufacturers of t-shirts, could purchase and use both
applicant’s UNIMARK heat transfer labels and registrant’s
UNIMARK self-adhesive unprinted labels. Said
manufacturers of t-shirts would place registrant’s
UNIMARK self-adhesive labels on the t-shirts while they
are in the process of being manufactured for, to use
applicant’s own words, “the purpose of organization or
routing.” (Applicant’s brief page 5). Of course, the
same manufacturers of t-shirts could order from applicant
UNIMARK heat transfer labels to place graphics on the t-
shirts. Moreover, as noted at page 4 of our decision,
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Ser. No. 75/481,117

it would not be at all implausible for a manufacturer of
t-shirts to use registrant’s self-adhesive unprinted
labels, with the manufacturer’s wording added, on the
packaging for the t-shirts. Indeed, a manufacturer of t-
shirts could well affix registrant’s UNIMARK self-
adhesive labels on the t-shirts themselves to convey the
size, material (e.g. 100% cotton) or price of the t-
shirts. The ultimate consumer would then remove the
label before wearing the t-shirt.
In short, we find that even if we assume for the
pure sake of argument that heat transfer labels and self-
adhesive unprinted labels are not closely related goods,
they are at least somewhat related goods. Given the fact
that applicant seeks to register the identical mark
previously used by registrant, this is sufficient for a
finding of likelihood of confusion. Shell Oil Co., 26
USPQ2d at 1689. See also In re Martin’s Famous Pastry
Shoppe Inc., 748 F.2d 1565, 223 USPQ 1289, 1290 (Fed.
Cir. 1984). Contrary to applicant’s assertion at page 2
of its Request for Reconsideration, this Board did not
base its finding of likelihood of confusion simply on the
fact that applicant’s identification of goods and
registrant’s identification of goods both contained the
word “labels.” This Board is not pleased with
applicant’s
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Ser. No. 75/481,117

statement at page 2 of its Request for Reconsideration
that the Board’s “reasoning would result in outrageous
conclusions such as garden hose and panty hose being
related.”
Decision: The Request for Reconsideration is
denied.

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