Pucel Enterprises, Inc.v.Grizzly Industrial, Inc.

Trademark Trial and Appeal Board

Jan 16, 2008

No. 92031984 (T.T.A.B. Jan. 16, 2008)

Hearing: September 20, 2007

Mailed: January 16, 2008

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
______

Pucel Enterprises, Inc.
v.
Grizzly Industrial, Inc.
_____

Opposition No. 91123506
Cancellation No. 92031984
Cancellation No. 92032024
Cancellation No. 92032025
_____

Kenneth L. Mitchell of Woodling, Krost and Rust for Pucel
Enterprises, Inc.

Joseph F. Schmidt of Michael Best & Friedrich LLP for
Grizzly Industrial, Inc.
______

Before Walsh, Mermelstein, and Bergsman, Administrative
Trademark Judges.

Opinion by Bergsman, Administrative Trademark Judge:

In these consolidated proceedings, Pucel Enterprises,
Inc. (hereinafter “opposer”) filed a notice of opposition
and petitions for cancellation to the application and
registrations owned by Grizzly Industrial, Inc. (hereinafter
“applicant”) that are listed below:
1. Application Serial No. 76088346 for the mark
GRIZZLY.COM, in typed drawing form, used in connection with
the following services:
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Opposition No. 91123506
Cancellation No. 92031984
Cancellation No. 92032024
Cancellation No. 92032025

2
Retail store services, online retail store services,
and mail order services featuring; abrasives; air
cleaners; air compressors; air tanks; air tools; angle
finders; anti-kickback devices; anti-vibration mounts;
auger bits; bearings; belts; benders; bevels; blade
stabilizers; bolt cutters; books and plans; buffing
compounds; buffing machines; buffing wheels; burrs;
cable ties; calipers; cement; center punches; chain
hoists; chisels; chucks; clamps and vises; clamp heads;
containers; cordless tools; cut-off wheels; cutters;
dial indicators; dies; digital read outs; discs;
dollies; dowel cutting saws; dowel pins; drafting
boards; drill guides; dust collection accessories; dust
pans; dust separators; electric motors; end mill
holders; end mills; engine stands; feather boards; file
card files; filter bags; flexible curves; gauges; gear
puller; gloves; gouges; grinders; grinding wheels;
hacksaws; hammers; hand cleaner; hand punches; hand
screws; hand trucks; hex keys; hose reels; hoses;
inserts for toolholders; jacks; jig saw blades; jointer
knives; knee pads; knobs; laminate trimmer; lathe
accessories; live centers; machine mounts; magnetic
bases; magnetic shims; magnetic switches; mallets;
mandrels; mats; micrometers; miter box; miter trimmer;
mortiser machine; moulder/plane; moulding head;
moulding head knives; multi-spur bits; nail puller;
nailers; nails; notches; planer knives; pliers;
protractor; pulleys; punches; push sticks; rasps;
ratchet kits; remote controller; router pads; router
table; routers; rust remover; safes; sanders; sanding
boxes; sanding sealer; sandpaper; saw blades; saw
stops; saws; scrapers; screw extractors; screw grabs;
screwdrivers; screws; security; shovels; slide tables;
slip rolls; sockets; spacers; spindles; sprayers;
square; stains; staplers; staples; storage bins;
switches; tapping machine; tie down ratchets; tile
cutters; tin snips; tool tables; trammel points;
wagons; welding rod; welding supplies; wood filler;
wrenches; battery chargers; clothing; generators;
levels; parts washers; pressure washers; sandblasters;
saw horses; scaffolding; shop vacuums; tool boxes; tool
organizers; wheel barrows; cutlery; cutting tools;
drill presses; drilling and boring equipment, namely,
brad point bits, countersinks, drill bits, extractors,
forstner bits, hole saws, plug cutters, quick change
bits, reamers, solid carbide bits, spade bits, step
drill bits, tapered bits; dust collection systems;
fasteners; finishing supplies, namely, brushes,
Opposition No. 91123506
Cancellation No. 92031984
Cancellation No. 92032024
Cancellation No. 92032025

3
finishes, finishing supplies, spray guns, sprayers;
hand tools; hardware, namely, brackets, bumpers, door
knockers, drawer pulls, drawer slides, hinges, lock
sets, shelf supports; jigs, fixtures; machine
accessories, namely, arbors, belt pulleys, blade
guides, boring heads, bushings and shapers, chuck
inserts, chucks, clamping kits, collet attachments,
collets, dividing heads, dust hoods, electric switches;
face plates, fences, lathe centers, magnetic chucks,
milling attachments, miter gauge, mortising
attachments, motors, phase converters, power feed,
rails, rotary tables, rub collars, sanding attachments,
sleeves, sliding tables, spindles, stands, tailstock
turrets, tool holders, tool post sets, tool rests, V-
belts, V-blocks, wings, material handling equipment,
namely, carts, casters and wheels, mobile bases,
outfeed tables and stands, roller stands, rollers,
tables, work stands; measuring tools; metal stock;
metalworking machines; pneumatic tools; power tools;
router bits; safety equipment, namely, ear protectors,
eye protection, first aid kits, gloves, respirators;
shaper cutters. shop accessories, namely, anvils, arbor
presses, belt cleaners, dowel centers, glue, glue
bottles, glue brushes, laminating, lubricants, moisture
meters, pads and mats, power bits, push blocks, saw
gauges, sharpening equipment, namely, drill sharpeners,
sharpening stone sets, stop blocks, tape, tweezers;
optical equipment; hand tools; coffee; tooling
equipment, namely, boring bars, center drills,
countersinks, cut-off and parting, dovetail cutters,
end mills, fly cutters, indexable tooling, inserts, key
seats, multi-function tools, rotary burrs, slitting
saws, taps and dies, tool bits; welding and cutting
machines; wood products, namely, biscuits, detail kits,
dowels, edge banding, pins, plugs, veneer; and
woodworking machines, in International Class 35.1

2. Registration No. 2166833 for the mark GRIZZLY, in
typed drawing form, for the following goods:
Woodworking and metal working machinery, namely, table
saws, jointers, shapers, planers, power feeders,
molders, sanders, scroll saws, bandsaws, dust

1 Application Serial No. 76088346, filed July 10, 2000, based on
use in commerce. Applicant claimed June 30, 1999 as both its
dates of first use anywhere and first use in commerce.
Opposition No. 91123506
Cancellation No. 92031984
Cancellation No. 92032024
Cancellation No. 92032025

4
collectors, woodworking lathes, metalworking lathes,
drill presses, grinders, buffers, electric motors for
machines, milling machines, power hacksaws, arbor
presses, sheet metal machines, pneumatic air tools,
namely, compressors, wrenches, sanders, die grinders,
ratchets, screwdrivers, drills, spray guns, nailers,
staplers, hammers, saws punches, grease guns and air
brushes, parts washers, cut-off saws, rotary tables,
dividing heads, and parts therefore, in International
Class 7.2

3. Registration No. 2413625 for the mark GRIZZLY, in
typed drawing form, for the following goods and services:
Nails; steel squares, in International Class 6;
Wood and metal working shop machinery, namely, air
cleaners, air compressors and accessories for air
compressors, meat cutting bandsaws, metal cutting
bandsaws, wood bandsaws, buffing machines and buffing
wheels for metal working, drill presses and accessories
for drill presses, dust collectors and accessories for
dust collectors, face plates for lathes bench grinders,
flex shaft grinders, mini grinders, portable grinders,
slow speed grinders, universal knife grinders, wide
wheel grinders, grinding stands, wood lathes and
accessories for wood lathes, lathe chucks, metal lathes
and tooling for metal lathes, mortising machines,
mortising attachments for drill presses, nail guns,
planer knives, belt sanders, bench sanders, combination
sanders, disc sanders, drum sanders, edge sanders,
knife belt sanders, spindle sanders, sanders and
accessories for sanders, sanding belts, sanding discs,
sanding drums, sanding rolls, sanding sleeves, sanding
wheels, saw blades for power operated saws, bandsaw saw
blades, circular saw blades, scroll saw blades, shaper
cutters, shop vacuums, steel squares for machines,
table saws and accessories for table saws, milling
machines, milling vises for milling machines, rotary
tables and angle plates for milling machines, sheet
metal machines for bending, cutting, notching, slip
rolling, and punching flat and tubular sheet metal,
sand blasting machines, welding machines, radial

2 Registration No. 2166833, issued June 23, 1998; Section 8
affidavit accepted. Applicant claimed September 6, 1983 as both
its dates of first use anywhere and first use in commerce.
Opposition No. 91123506
Cancellation No. 92031984
Cancellation No. 92032024
Cancellation No. 92032025

5
drills, and electric and battery operated power tools,
in International Class 7;
Hand tools, namely, hammers, screwdrivers, chisels,
wood carving knives, pliers, scrapers, hand saws, nail
pullers, sanding blocks, saw blades, saw horses, socket
sets, wrenches, anvils, tap and die sets, in
International Class 8;
Measuring equipment, namely, dial indicators, dial
calibrators, digital calipers and instruments, and
measuring tapes; software, namely, software for
disseminating information related to wood and metal
working and wood and metal working equipment through a
global information network; magnetic switches, in
International Class 9;
Paint brushes, in International Class 16; and,
Mail order services, featuring abrasives, jigs, air
cleaners, air compressors, air compressor accessories,
anti-fatigue mats, aprons, back support belts, meat
cutting bandsaws, metal cutting bandsaws, wood
bandsaws, bandsaw accessories, biscuits, bit systems,
blade cleaners, blade stabilizers, books, brad drivers,
brad point bit sets, buffing compounds, buffing
systems, buffing wheels, carbon paper, center finders,
chisels, band clamps, bar clamps, C-clamps, T-clamps,
hold-down clamps, pipe clamps, saddle clamps, specialty
clamps, cleaners, combination squares, compressors,
contact cement contour gauges, countersink sets, dado
blades, dead blow hammers, depth stops, dovetail jigs,
dowel plugs, doweling jigs, drafting boards, drawer
slides, drill bits and guides, drill presses, drill
press accessories, drill sharpeners, dust collectors,
dust collection accessories, electric motors, emery
clothes, face frame jigs, face plates, featherboards,
files, glues, glue brushes, bench grinders, flex shaft
grinders, mini grinders, portable grinders, slow speed
grinders, universal knife grinders, wide wheel
grinders, grinding stands, grinding stones, grinding
wheels, hack saw kits, handscrews, hinges, hole
restorer tools, hose reels, hollow chisel mortisers,
jigs and fixtures, jointers, jointer clamp systems,
knee pads, knife-setting jigs, wood lathes, metal
lathes, wood lathe accessories, lathe chucks, levels,
lubricants, magnetic switches, magnetizers and
demagnetizers, mallets, marking gauges, measuring
Opposition No. 91123506
Cancellation No. 92031984
Cancellation No. 92032024
Cancellation No. 92032025

6
tools, miter boxes, miter saw work stations, miter
trimmers, mobile bases, moisture meters, mortising
attachments, moulding heads and knives, multi-spur
bits, nail guns and nails, nail pullers, paint and
stain kits, paint brushes, paint sprayers - HVLP,
planes, planers, planer knives, planer/moulders, planer
pals, plug cutters, pneumatic tools, power carvers,
power feeders, power tools. pressure washers, push
blocks, push sticks, rasps, rasp sets, remote
controllers, right angle drives, roller stands, rosette
cutterheads and cutters, router bits, router bit sets,
router pads, router speed controls, router tables,
router table accessories, rub collars, rub bushings,
rub spacers, rubber gloves, rust removers, safety
equipment, sandblasters, belt sanders, bench sanders,
combination sanders, disc sanders, drum sanders, edge
sanders, knife belt sanders, spindle sanders, sanding
accessories, sanding belts, sanding discs, sanding
drums, sanding rolls, sanding sleeves, sanding wheels,
saw blades, bandsaw saw blades, circular saw blades,
scroll saw blades, saw horse brackets, saw horses,
scaffolding, scrapers, screws, screw accessories,
scroll saws, shapers, shaper cutters, sharpening
accessories, shop vacuums, snips, spokeshaves, spray
guns, staplers, steel squares, step drills, stop
blocks, table saws, table saw accessories, table saw
inserts, table saw fences, tack cloth, tenon cutters,
thickness gauge, toggle clamps, tool organizers,
Trammel points, V-belts, varnishes, vise clamps, vises,
wood parts, wood threading kits, and woodworking
accessories, ordered from printed and on-line catalogs,
in International Class 35.3
4. Registration No. 2312226 for the mark GRIZZLY
INDUSTRIAL, in typed drawing form, for the following goods:
Woodworking and metal working machinery, namely, table
saws; jointers; shapers; planers; power feeders;
molders; sanders; scroll saws; bandsaws; dust
collection systems comprised of dust collectors,
woodworking lathes; metalworking lathes; drill presses;

3 Registration No. 2413625, issued December 19, 2000; Section 8
affidavit accepted. Applicant claimed December 31, 1983 for both
its dates of first use anywhere and first use in commerce for the
goods and services set forth in Classes 7, 8, 9, 16, and 35, and
it claimed December 31, 1986 as the dates of first use for the
goods identified in Class 6.
Opposition No. 91123506
Cancellation No. 92031984
Cancellation No. 92032024
Cancellation No. 92032025

7
grinders; buffers; electric motors; milling machines;
power hacksaws; arbor presses; sheet metal machines;
pneumatic air tools, namely, impact wrenches, ratchet
wrenches, grinders, drills, sanders, air brushes,
staplers, and nailers; parts washers; cut-off saws; and
parts therefore, in International Class 7.4
As ground for the opposition and cancellations, opposer
pleaded priority of use and likelihood of confusion.5
Opposer claimed ownership of the following registrations:
1. Registration No. 0624055 for the mark GRIZZLY,
shown below, for “shop equipment, namely, tables, benches,
cabinets, racks, shelves, stands, desks, and parts thereof,”
in International Class 20;6

4 Registration No. 2312226, issued January 25, 2000; Section 8
affidavit accepted. Applicant disclaimed the exclusive right to
use the word “Industrial.” Applicant claimed December 31, 1983
as both its dates of first use anywhere and first use in
commerce. During the prosecution of these proceedings, applicant
realized that the dates of first use were incorrect, and, on
March 8, 2002, filed a “Request To Amend Certificate Of
Registration No. 2,312,226 Pursuant To Section 7(h) Of The Lanham
Act.” “The date of first use and first use in commerce for the
mark GRIZZLY INDUSTRIAL is August 1997.” (Request To Amend, p.
2).
5 Opposer also pleaded dilution, but withdrew that claim.
6 Registration No. 0624055, issued March 27, 1956; Sections 8 and
15 affidavits accepted and acknowledged; third renewal.
Opposition No. 91123506
Cancellation No. 92031984
Cancellation No. 92032024
Cancellation No. 92032025

8
2. Registration No. 0704529 for the mark GRIZZLY,
shown below, for “box trucks, dump trucks, hand trucks,
dollies and wheeled platforms, wheeled racks and wheeled
tables,” in International Class 12;7

3. Registration No. 0704589 for the mark for the mark
GRIZZLY shown below, for “drum lifters, tilting arcs, drum
cradles, drum up-enders, and hoist hooks,” in International
Class 7.8

4. Registration No. 0704530 for the mark comprising a
grizzly bear design, shown below, for “box trucks, dump

7 Registration No. 0704529, issued September 20, 1960; Sections 8
and 15 affidavits accepted and acknowledged; second renewal.
8 Registration No. 0704589, issued September 20, 1960; Sections 8
and 15 affidavits accepted and acknowledged; second renewal.
Opposition No. 91123506
Cancellation No. 92031984
Cancellation No. 92032024
Cancellation No. 92032025

9
trucks, hand trucks, dollies and wheeled platforms, wheeled
racks and wheeled tables,” in International Class 12;9

5. Registration No. 0704631 for the mark comprising a
grizzly bear design, shown below, for “shop equipment,
namely, tables, benches, cabinets, racks, shelves, stands,
desks and parts thereof,” in International Class 20;10

6. Registration No. 0704588 for the mark comprising a
grizzly bear design, shown below for “drum lifters, tilting
arcs, drum cradles, drum up-enders, and hoist hooks,” in
International Class 7.11

9 Registration No. 0704530, issued September 20, 1960; Sections 8
and 15 affidavits accepted and acknowledged; second renewal.
10 Registration No. 0704631, issued September 20, 1960; Sections 8
and 15 affidavits accepted and acknowledged; second renewal.
11 Registration No. 0704588, issued September 20, 1960; Sections 8
and 15 affidavits accepted and acknowledged; second renewal.
Opposition No. 91123506
Cancellation No. 92031984
Cancellation No. 92032024
Cancellation No. 92032025

10

In our opinion, the most pertinent of opposer’s marks
are the marks because they are word marks.
By focusing on the word marks, we can simply compare all of
the “Grizzly” word marks with each other, and we do not need
to consider whether opposer’s grizzly bear design marks are
likely to trigger the recollection of the literal
equivalent, or vice versa. Therefore, in the remainder of
our analysis, we will refer only to opposer’s “Grizzly” word
marks.

Preliminary Issues
A. Opposer’s Common Law Rights.
Applicant objected to opposer’s assertion of common law
rights in its GRIZZLY trademark to prove that opposer’s
products and applicant’s products and services are related.
Applicant argued that opposer did not plead any common law
rights, and therefore in comparing the goods and services of
Opposition No. 91123506
Cancellation No. 92031984
Cancellation No. 92032024
Cancellation No. 92032025

11
the parties, the Board should consider only the goods set
forth in opposer’s pleaded registrations.12
In response to applicant’s objection, opposer argued
that it “clearly pleaded” common law rights in paragraph No.
4 of its Amended Notice of Opposition when it referred to
“said above described products” and “said above products and
services sold under, and in association with” opposer’s
trademarks.13 Opposer made a similar argument regarding its
petitions for cancellation referencing its statements to
“‘previously used’ goods which includes goods beyond the
registrations.”14 Although opposer did not expressly argue
in the alternative that if the Board did not find that
opposer had pleaded its common law rights, we should find
that opposer’s common law rights were tried by implied
consent pursuant to Rule 15(b) of the Federal Rules of Civil
Procedure, opposer did allude to that argument.
Specifically, opposer contended that applicant conducted
discovery in regard to goods and services beyond the scope
of the registrations, that applicant’s Rule 30(b)(6)
depositions included inquiries regarding opposer’s sale and
advertising of all products and services under opposer’s
marks, and that opposer’s trial depositions included

12 Applicant’s Brief, p. 12.
13 Opposer’s Reply Brief, p. 18.
14 Opposer’s Reply Brief, p. 19 (emphasis in the original).
Opposition No. 91123506
Cancellation No. 92031984
Cancellation No. 92032024
Cancellation No. 92032025

12
extensive testimony regarding opposer’s common use of its
marks.15
1. Whether opposer pleaded its common law rights.

The pertinent allegations in opposer’s Amended Notice
of Opposition may be summarized as follows:
Paragraph No. 1
Opposer has been engaged in the
manufacture and sale of material
handling and industrial equipment.

Paragraph No. 2
Opposer identified its pleaded
registrations.

Paragraph No. 3
Opposer is the owner of the GRIZZLY
trademark for the goods identified in
the pleaded registrations.

Paragraph No. 4
“Opposer, for many years and long prior
to the alleged first use or intent to
use ‘GRIZZLY.COM’ by Applicant, has
become widely known as a source of
Opposer’s said above described products
having good quality and has acquired a
favorable reputation for its said above
described products and services sold
under, and in connection with, the
trademarks ‘GRIZZLY’ and ‘GRIZZLY BEAR
SYMBOL’. Opposer has acquired a
favorable reputation and goodwill under
the trademark ‘GRIZZLY’ AND ‘GRIZZLY
BEAR SYMBOL’ as a dependable source of
said above described products and
services.”

15 Opposer’s Reply Brief, pp. 19-20.
Opposition No. 91123506
Cancellation No. 92031984
Cancellation No. 92032024
Cancellation No. 92032025

13
In paragraph No. 1, opposer identified itself as a
company engaged in the manufacture and sale of material
handling and industrial equipment. The sale of one’s own
products is not a separate and distinct service rendered to
benefit the public, but rather it is an activity by and for
the benefit of the manufacturer. In re Dr. Pepper Co., 836
F.2d 836, 5 USPQ2d 1207, 1208 (Fed. Cir. 1987) (“the
rendering of a services which is normally ‘expected or
routine’ in connection with sale of one’s own goods is not a
registrable service”). Accordingly, the reference to
opposer’s “sale of material handling and industrial
equipment” in paragraph No. 1 is too vague to put applicant
on notice that opposer is claiming trademark rights to
services related to the sale of its equipment.
A fair reading of paragraph No. 4, wherein opposer
refers to its “said above described products” and “said
above described products and services,” leads us to conclude
that it is a reference to the goods identified in the
pleaded registrations set forth in paragraph No. 3. Opposer
did not identify any services that would put applicant on
notice that opposer was claiming trademark rights in any
activity related to the sale of its products, or that
opposer was claiming any trademarks rights in connection
Opposition No. 91123506
Cancellation No. 92031984
Cancellation No. 92032024
Cancellation No. 92032025

14
with any products other than those identified in its pleaded
registrations.
In view of the foregoing, we find that opposer did not
plead any common law rights in its Amended Notice of
Opposition.
The pertinent allegations in Cancellation No. 92031984
may be summarized as follows:16
Paragraph Nos. 2-7

Opposer identified its pleaded
registrations.

Paragraph No. 8
Opposer has continuously used its marks
in connection with the goods identified
in its pleaded registrations.

Paragraph No. 11
“The mark registered by Registrant
[applicant], when used on or in
connection with goods cited in the
registrations, is the identical marks
and/or so resembles the previously used
and registered marks by Petitioner
[opposer] for the same or similar goods
so as to cause confusion or to cause
mistake, or to deceive. Further, said
marks registered by Registrant is the
identical mark and/or so resembles the
previously used and registered marks by
the Petitioner for the same or similar
goods so as to cause confusion.”

16 The pleadings in Cancellation No. 92031984 are representative
of the pleadings in the other petitions for cancellation.
Opposition No. 91123506
Cancellation No. 92031984
Cancellation No. 92032024
Cancellation No. 92032025

15
Opposer’s references to its “previously used and
registered marks” in paragraph No. 11 refers to opposer’s
marks used in connection with the goods identified in its
pleaded registrations listed in paragraph No. 8. There is
nothing the petition for cancellation that would put
applicant on notice that opposer is asserting common law
rights. Notice pleading does not require applicant to
divine opposer’s unstated intentions.
In view of the foregoing, we find that opposer did not
plead any common law rights in its petitions for
cancellation.
2. Whether opposer’s common law rights were tried by
applicant’s implied consent.

Fed. R. Civ. P. 15(b) provides, in pertinent part, as
follows:
When issues not raised by the pleadings
are tried by express or implied consent
of the parties, they shall be treated in
all respects as if they had been raised
in the pleadings. Such amendment of the
pleadings as may be necessary to cause
them to conform to the evidence and to
raise these issues may be made upon
motion of any party at any time, even
after judgment; but failure to so amend
does not affect the result of the trial
of these issues.

Implied consent to the trial of an unpleaded issue can
be found only where the nonoffering party (1) raised no
objection to the introduction of evidence on the issue, and
Opposition No. 91123506
Cancellation No. 92031984
Cancellation No. 92032024
Cancellation No. 92032025

16
(2) was fairly apprised that the evidence was being offered
in support of the issue. Barbara’s Bakery, Inc. v.
Landesman, 82 USPQ2d 1283, 1285 n. 4 (TTAB 2007); Boise
Cascade Corporation v. Cascade Coach Company, 168 USPQ 795,
797 (TTAB 1970). Moreover, the nonoffering party may not
stay quiet while evidence is being admitted and subsequently
contend that the matter raised thereby should not be
considered because it was not pleaded. Cascade Corporation
v. Cascade Coach Company, supra.
After a thorough review of the record, we find that
opposer’s common law use of its GRIZZLY trademark was tried
by the consent of the parties. During his trial testimony,
Robert Mlakar, opposer’s Vice President, testified
extensively regarding opposer’s common law use of its
GRIZZLY trademarks.17 Applicant did not at any time during
Mr. Mlakar’s deposition object to opposer’s introduction of
evidence concerning opposer’s common law use of its GRIZZLY
trademarks. In fact, applicant extensively and effectively
cross-examined Mr. Mlakar regarding opposer’s common law
use.18 Under the circumstances of this case, we find that

17 R. Mlakar Trial Dep., pp. 38-110.
18 R. Mlakar Trial Dep., pp. 238-245. Applicant’s counsel
established that, with the exception of a few products, opposer’s
purported common law use was for components of opposer’s products
rather than products that were separately sold and marked as
GRIZZLY products.
Opposition No. 91123506
Cancellation No. 92031984
Cancellation No. 92032024
Cancellation No. 92032025

17
applicant by its failure to object to Mr. Mlakar’s testimony
regarding opposer’s common law use of its GRIZZLY trademark
impliedly consented to include opposer’s common law use as
part of opposer’s case. Therefore, applicant’s objection to
opposer’s testimony regarding its common law use of
opposer’s GRIZZLY trademark is denied and the pleadings are
considered as having been amended to conform to the
evidence.

B. Whether acquiescence has been tried by implied consent.
On April 11, 2000, opposer sent applicant a cease and
desist letter demanding that applicant stop using the
trademark GRIZZLY in connection with material handling and
industrial equipment.19 In applicant’s May 3, 2000
response, applicant denied that there was any likelihood of
confusion because the parties have been concurrently using
the GRIZZLY trademarks in connection with material handling
and industrial equipment for 15 years without any reported
instances of confusion.20 Finally, in correspondence dated
May 30, 2000, opposer stated that it did not have a problem
with applicant’s use of the GRIZZLY trademark in connection

19 Balolia Discovery Dep., pp. 166-168; Exhibit O/P-24; Balolia
Trial Dep., Exhibit 63; A. Mlakar Discovery Dep., p. 13; Exhibit
R-13.
20 Balolia Discovery Dep., pp. 166-168; Exhibit O/P-24.
Opposition No. 91123506
Cancellation No. 92031984
Cancellation No. 92032024
Cancellation No. 92032025

18
with woodworking equipment, but inquired further as to the
industrial tools on which applicant had been using the
GRIZZLY mark.21
In the discovery deposition of Shiraz Balolia,
applicant’s President, Mr. Balolia testified that applicant
did not take any action pursuant to the above-noted exchange
of correspondence with opposer.
Q. Did you take Ms. Vickroy’s letter as a complaint
lodged by Pucel?
A. It is a complaint.
Q. Okay. And did you take any corrective action in
regard to that letter?
A. No.
Q. No?
A. No.
Q. Did you take heed of that letter in any way?
A. Our attorney has responded to that telling them
that we don’t believe there’s basis for a
complaint. That’s not exact words, but something
to that effect.
Q. Well, since the time of Ms. Vickroy’s letter of
April 11th, 2000, did you expand your business in

21 Balolia Trial Dep., Exhibit 64; A. Mlakar Discovery Dep., p. 8;
Exhibit R-14.
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19
regard to sales of material handling equipment
under the mark Grizzly?
A. I already mentioned to you several times that we
do not put the mark Grizzly on our material
handling products.22
On the other hand, in his trial testimony, Mr. Balolia
testified that in reliance on the statements made in
opposer’s May 30, 2000 correspondence, applicant instructed
its attorney to delete material handling equipment from its
registration.
Q. And what was your reaction to this letter?
A. Well, I didn’t didn’t (sic) agree with the letter.
And - -
Q. Well, did you rely on this letter in any way?
A. Yes, I relied on this letter. It’s coming from
our attorney, obviously, and - -
Q. Well, did you take some action because of this
letter in connection with how you ran your
business?
A. Yes. Like I said, I didn’t agree with it, but
since it dealt with a line of products, material-
handling products, that was a negligible part of
our business, less than half a percentage as I’ve

22 Balolia Discovery Dep., pp. 166-167.
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20
testified before, it - - I didn’t feel it was
worth fighting over and - -
Q. What was worth fighting over?
A. This issue about material handling, what name to
put on it, and so on, and what rights their
clients had.
Q. So what - - what action did you take as a result
of this letter?
A. Well, as a result of this letter, I believe I
instructed my attorney to amend the registration
that we had for our Grizzly that included material
handling, to - - amend it to delete the material-
handling portions of the registration with the
trademark office.23
* * *
Q. And in addition to filing that amendment, what
else did you do with respect to the use of the
Grizzly Imports’ name on material - - or the
Grizzly Industrial name on material-handling
equipment?

23 Balolia Trial Dep., pp. 63-64.
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A. We stopped using the Grizzly Imports or Grizzly
Industrial name at that point on material handling
and started using the name Panther.24
Applicant did not plead acquiescence and estoppel as
affirmative defenses in any of the consolidated proceedings,
nor did applicant seek to amend its pleadings after the
close of discovery. On the other hand, opposer did not
object to the introduction into evidence of opposer’s April
11, 2000 and May 30, 2000 correspondence during the Balolia
trial deposition or to any of the testimony regarding
applicant’s reliance on the May 30, 2000 correspondence.
Applicant argued that the opposer’s May 30, 2000
correspondence proves that opposer “did not object to and
acquiesced to [applicant’s] use of the marks/names GRIZZLY,
GRIZZLY INDUSTRIAL and GRIZZLY.COM in connection with
woodworking tools and machinery. Therefore, [opposer] is
now estopped from objecting to [applicant’s] registration of
[applicant’s] marks for woodworking tools and machinery.”25
However, in its Reply Brief, opposer objected to applicant’s
assertion of the acquiescence affirmative defense because
applicant failed to plead it in any of applicant’s

24 Balolia Trial Dep., p. 65. On cross-examination, Mr. Balolia
reiterated that in reliance on opposer’s May 30, 2000
correspondence, applicant changed the name of its material
handling products to Panther. (Balolia Trial Dep., pp. 87-88).
25 Applicant’s Brief, p. 10.
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22
answers.26 Moreover, opposer argued that the correspondence
applicant relied on to prove acquiescence is opposer’s
“offer or promise to furnish a valuable consideration in
compromising or attempting to compromise claims.
[Opposer’s] attorney was attempting to investigate and
resolve issues concerning [applicant’s] use of the GRIZZLY
mark and thus Fed. R. Evid., R. 408, prohibits its
admissibility into evidence.”27
Because applicant did not plead acquiescence as an
affirmative defense, we must determine whether acquiescence
was tried by implied consent pursuant to Fed. R. Civ. P.
15(b). In this case, we do not find that acquiescence was
tried by implied consent. As indicated in the previous
section of this decision, there are two elements to finding
that an issue has been tried by implied consent: (1) the
nonoffering party raised no objection to the introduction of
evidence on the issue, and (2) the nonoffering party was
fairly apprised that the evidence was being offered in
support of the issue. Barbara’s Bakery, Inc. v. Landesman,
supra; Boise Cascade Corporation v. Cascade Coach Company,
supra.

26 Opposer’s Reply Brief, p. 6.
27 Opposer’s Reply Brief, p. 7.
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23
During his discovery deposition, Mr. Balolia expressly
testified that applicant did not take any action in reliance
on opposer’s May 30, 2000 correspondence.
Q. Okay. And did you take any corrective action in
regard to that letter?
A. No.
Q. No?
A. No.28
In light of this unequivocal testimony during the
Balolia discovery deposition, opposer was within its rights
to assume that applicant would not assert any affirmative
defense based on the correspondence between the parties.
When applicant subsequently decided to change (or clarify)
Mr. Balolia’s testimony and assert acquiescence as an
affirmative defense, applicant had a duty to amend its
pleading to insure that opposer was fairly apprised that
applicant would be asserting acquiescence. Because opposer
was acting under the assumption that acquiescence was not an
issue in these proceedings, when Mr. Balolia testified at
trial about the correspondence, opposer was not on notice
that they were being introduced to prove acquiescence.

28 Balolia Discovery Dep., pp. 166-167.
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24
Opposer may have thought that applicant was using them to
prove that the goods of the parties were not related.29
Under the circumstances of this case, opposer was
misled by applicant’s discovery testimony and was mistakenly
lulled into believing that acquiescence was not an issue in
these proceedings. Therefore, opposer was not fairly
apprised that the correspondence was being introduced in
support of the acquiescence affirmative defense. In view of
the foregoing, we do not find that the affirmative defense
of acquiescence was tried by implied consent and we give it
no further consideration.30

29 In opposer’s May 30, 2000 correspondence, opposer wrote the
following: “While we do not have a problem with your client’s
use of Grizzly in conjunction with wood-working equipment, we are
extremely concerned with and object to your client’s crossing
into our client’s product line.” Thus, opposer could reasonably
have thought that applicant intended to use the correspondence to
prove that woodworking equipment was not related to material
handling and industrial equipment.
30 Assuming that we determined that acquiescence was tried by
implied consent, applicant failed to prove the defense. First,
the May 30, 2000 correspondence does not constitute conduct or a
statement that assents to, encourages, or furthers applicant’s
use of the GRIZZLY trademark in connection with any goods or
services. It is more in the nature of a statement setting out
the parameters for a potential resolution, and therefore
applicant was not entitled rely or act upon it. Second, because
of the discrepancy in Mr. Balolia’s discovery testimony and trial
testimony, we do not find his trial testimony credible. If Mr.
Balolia truly relied on the statements in opposer’s May 30, 2000
correspondence (and if those statements were unequivocal
statements of assent to applicant’s actions), Mr. Balolia would
have so indicated in his discovery deposition. Based on
applicant’s evidence, we do not find that applicant relied on
opposer’s May 30, 2000 correspondence, and therefore opposer is
not estopped from prosecuting these proceedings. Finally, we
agree with opposer that its May 30, 2000 correspondence was
evidence of conduct or statements made in compromise
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25
C. The expert testimony of Sidney J. Levy, Ph.D.
Applicant took the testimony deposition of Sidney J.
Levy, Ph.D, a faculty member in the Marketing Department of
Eller College of Management at the University of Arizona.31
Applicant had requested that Dr. Levy review materials from
the parties and provide an opinion regarding whether there
is a likelihood of confusion.32 Dr. Levy opined that the
use of applicant’s “name, brands, and the URL Grizzly.com is
not likely to cause confusion or damage to the reputation
of” opposer.33 At trial, and in its Brief and Reply Brief,
opposer objected to Dr. Levy’s expert report.
One problem that we have with Dr. Levy’s expert
testimony and report is that Dr. Levy rendered an expert
opinion on the ultimate issue in these proceedings based,
essentially, on the same factors the we use to analyze
whether there is a likelihood of confusion, subject to the
differences discussed infra. Applicant is, in essence,
asking us to substitute Dr. Levy’s findings of fact and
conclusions of law for our own. Section 17(a) of the

negotiations, and it is therefore not admissible to prove
liability or invalidity of a claim pursuant to Fed. R. Evid. 408.
31 Levy Dep., p. 4; Exhibit 67. Dr. Levy has outstanding
credentials in the field of marketing.
32 Levy Dep., p. 21. Dr. Levy reviewed the amended notice of
opposition, the petitions for cancellation, websites of the
parties, catalogs, and Thomson & Thomson searches. (Levy Dep.,
Exhibit 68).
33 Levy Dep., Exhibit 68.
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26
Trademark Act of 1946, 15 U.S.C. §1067(a), gives the Board
the authority and duty “to determine and decide the
respective rights of registration.” This duty may not be
delegated by adoption of conclusions reached by a party’s
witness. Steiger Tractor, Inc. v. Steiner Corporation, 221
USPQ 165, 169 (TTAB 1984); Medtronic, Inc. v. Medical
Devices Inc., 204 USPQ 317, 325 (TTAB 1979); The Mennen
Company v. Yamanouchi Pharmaceutical Co., Ltd., 203 USPQ
302, 305 (TTAB 1971).
The preceding cases do not mean that expert witness
testimony may never be helpful. Fed. R. Evid. 704 provides
that expert witness testimony is not inadmissible because it
embraces an ultimate issue to be decided by the Board.
However, Fed. R. Evid. 702 provides that if scientific,
technical, or other specialized knowledge will assist the
Board to understand the evidence or determine a fact issue,
then expert testimony is appropriate. In this case, there
is nothing extraordinary regarding the marks, the goods, the
channels of trade, or the sophistication of the purchasers
that requires expert testimony to help us understand the
evidence.
In this regard, applicant explained that “Dr. Levy’s
expertise is the complexity that creates identity in the
marketplace, and he concludes that [opposer] and [applicant]
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27
‘have different identities.’”34 However, Dr. Levy reached
his conclusions using different parameters and without the
constraints under which the Board operates. Two of the
differences between Dr. Levy’s and the Board’s analysis are
set forth below:
1. Dr. Levy noted that opposer often uses its GRIZZLY
trademark in conjunction with or “in a subsidiary way” with
its trade name. However, Dr. Levy’s conception of opposer’s
mark is in error. One of the questions to be decided in
these proceedings is whether applicant’s use of GRIZZLY in
connection with the products identified in its application
and registrations so resembles opposer’s GRIZZLY trademark,
used in connection with the products identified in opposer’s
registrations, as to be likely to cause confusion. In this
regard, opposer’s use of the trade name “Pucel” in
connection with the GRIZZLY trademark is not before us. The
only marks that concern us are applicant’s GRIZZLY
trademarks and opposer’s GRIZZLY trademark. Any affect on
consumer perception caused by opposer’s use of the “Pucel”
trade name on packaging and advertising is a question of
unfair competition and it is not relevant to these
proceedings. Hershey Goods Corp. v. Cerreta, 195 USPQ 246,
253 (TTAB 1977); Purex Corp., Ltd. v. Thompson-Hayward

34 Applicant’s Brief, p. 31.
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28
Chemical Co., 179 USPQ 190, 191 (TTAB 1973) (any differences
in labeling or the use of additional marks is immaterial and
irrelevant to a determination of applicant’s right to the
registration sought); The Tas-T-Nut Company v. Variety Nut &
Date Company, 128 USPQ 166, 167 n.2 (TTAB 1961); and,
2. Dr. Levy analyzed the parties’ channels of trade,
nature of their advertising and their presence in the
marketplace and concluded that the products of the parties
move in different channels of trade.35 However, Dr. Levy’s
testimony is not relevant vis-à-vis the products listed in
opposer’s pleaded registrations because our determination of
likelihood of confusion is based on the goods and services
as they are identified in the application and registrations
at issue. Hewlett-Packard Co. v. Packard
Press Inc., 281 F.3d 1261, 62 USPQ2d 1001, 1004 (Fed. Cir.
2002); In re Elbaum, 211 USPQ 639, 640 (TTAB 1981); In re
William Hodges & Co., Inc., 190 USPQ 47, 48 (TTAB 1976). We
cannot read any limitations or restrictions into the
description of goods and 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

35 Levy Dep., pp. 24-27.
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29
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,
the particular channels of trade or the class of purchasers
to which the sales of goods are directed”); CBS Inc. v.
Morrow, 708 F.2d 1579, 218 USPQ 198, 199 (Fed. Cir. 1983).
If, as in the case sub judice, the application and
registrations at issue describe the goods and services
broadly, and there is no limitation as to their nature or
type, channels of trade or class of purchasers, it is
presumed that the application and registrations encompass
all the goods and/or services of the type described, that
they move in same channels of trade normal for these goods
and/or services, and that they are available to all classes
of purchasers for the described goods and/or services. In
re Linvest S.A., 24 USPQ2d 1716 (TTAB 1992). Moreover, our
likelihood of confusion analysis may not be unduly
restricted to present modes of marketing when the
descriptions of goods and services is unrestricted because
such trade practices could be changed by either party when
economics or other factors dictate a need for such change.
The Wella Corp. v. California Concept Corp., 558 F.2d 1019,
194 USPQ 419, 421 (CCPA 1977); Sheraton Corp. of America v.
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30
Sheffield Watch Co., Inc., 480 F.2d 1400, 178 USPQ 468, 469
(CCPA 1973). Thus, Dr. Levy analyzed the actual channels of
trade and classes of consumers while the Board is
constrained to analyze the channels of trade and classes of
consumers as identified in the description of goods and
services in the application and registrations at issue.
While we do not strike Dr. Levy’s expert testimony and
report, for the reasons identified above, the testimony
offered by Dr. Levy is of no probative value.
D. Applicant’s motion to amend its application and
Registration No. 2413625.

Prior to trial, applicant filed a motion to amend its
application and Registration No. 2413625 to restrict the
description of goods and services to woodworking and metal
working products and to delete “dollies, hand trucks,
storage bins, tool tables, sliding tables, and material
handling equipment, namely, carts, casters, and wheels,
mobile bases, outfeed tables and stand, roller stands,
rollers, tables, and work stands” from the list of products
in the application.36 Applicant argued that its motion
should be granted because it narrows the scope of the goods
and services.37

36 Applicant’s motion to amend its application and registration,
p. 2.
37 Applicant’s motion, p. 3.
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31
Opposer did not oppose the deletion of the list of
specific goods from applicant’s application. However, it
did object to the proposed restriction to woodworking and
metal working products because it “will exacerbate the
likelihood of confusion and damage to” opposer.38 In its
trial Reply Brief, opposer expounded on its objection to
applicant’s proposed amendment to the channels of trade.
Opposer argued that even with the proposed amendment there
will still be a likelihood of confusion because applicant’s
application and registrations include products for which
opposer has prior common law rights and because applicant’s
goods and services and opposer’s products and related.39
“The Board, in its discretion, may grant a motion to
amend an application or registration which is the subject of
an inter partes proceeding, even if the other party or
parties do not consent thereto.”40 While we agree with
opposer that the proposed amendment to restrict the channels
of trade to woodworking and metal working products will not
eliminate the likelihood of confusion because the goods and
services will remain related,41 the amendment does narrow
the category of users. Because opposer did not consent to

38 Opposer’s brief in opposition to applicant’s motion, p. 1.
39 Opposer’s Reply Brief, pp. 8-18.
40 TBMP §514.03 (2nd ed. rev. 2004), citing Trademark Rule
2.133(a), 37 CFR §2.133(a).
41 See the discussion infra.
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32
the proposed amendment and because applicant did not consent
to judgment on the unrestricted description of goods and
services, the Board’s practice is to determine whether there
is a likelihood of confusion with respect to the original
and the amended description of goods and services.
If the Board ultimately finds that a
defendant is not entitled to
registration in the absence of a
restriction that was timely proposed by
the defendant, the proposed restriction
will be approved and entered. . . . If,
on the other hand, the Board ultimately
finds that defendant is entitled to
registration even without the proposed
restriction, defendant will be allowed
time to indicate whether it still wishes
the have the restriction entered.42

As indicated above, whether we analyze applicant’s
description of goods and services with or without the
restriction to woodworking and metal working products, we
find that applicant’s products and services are related to
the goods listed in opposer’s registrations.43 Accordingly,
we only discuss applicant’s proposed revision to its
description of goods and services in the remainder of this
decision.

42 TBMP 514.03 (2nd ed. rev. 2004).
43 See the discussion infra.
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33
E. Evidence attached to the briefs.
Both parties submitted evidence with their briefs.
However, a brief may not be used as a vehicle for the
introduction of evidence. Hard Rock Café Intentional (USA)
Inc. v. Elsea, 56 USPQ2d 1504, 1511 (TTAB 2000). See also
TBMP §704.05(b) (2nd ed. rev. 2004) and the cases cited
therein. Exhibits and other evidentiary materials attached
to the briefs have been given no consideration unless they
were properly made of record during the testimony periods of
the parties.

The Record
By operation of Trademark Rule 2.122, 37 CFR §2.122,
the record includes the pleadings and applicant’s
application and registration files. The record also
includes the following testimony and evidence:
A. Opposer’s evidence.
1. The discovery deposition of Shiraz Balolia,
applicant’s President, with attached exhibits;
2. The trial deposition of Anthony Mlakar, opposer’s
President, with attached exhibits;
3. The trial deposition of Robert Mlakar, opposer’s
Vice President, with attached exhibits, including certified
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34
copies of opposer’s pleaded registrations showing that the
registrations are subsisting and owned by opposer;
4. Opposer’s notice of reliance on applicant’s
responses to opposer’s interrogatories in the opposition;
and,
5. Opposer’s notice of reliance on applicant’s
response to opposer’s interrogatories in the cancellation
proceedings.
B. Applicant’s evidence.
1. The discovery deposition of Anthony Mlakar, with
attached exhibits;
2. The discovery deposition of Robert Mlakar, with
attached exhibits;
3. The testimony deposition of Shiraz Balolia, with
attached exhibits;
4. The testimony deposition of Sydney Levy, Ph.D,
with attached exhibits; and,
5. Applicant’s notice of reliance on third-party
registrations for the mark GRIZZLY, in whole or in part.

Standing
Because opposer has properly made its pleaded
registrations of record, opposer has established its
standing. Cunningham v. Laser Golf Corp., 222 F.3d 943, 55
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35
USPQ2d 1842, 1844 (Fed. Cir. 2000); Lipton Industries, Inc.
v. Ralston Purina Co., 670 F.2d 1024, 213 USPQ 185, 189
(CCPA 1982).

Priority
Because opposer’s pleaded registrations are of record,
Section 2(d) priority is not an issue in the opposition.
King Candy Co. v. Eunice King’s Kitchen, Inc., 496 F.2d
1400, 182 USPQ 108 (CCPA 1974). However, in the
cancellation proceedings, because opposer and applicant are
both owners of registrations, opposer must prove priority of
use. Henry Siegel Co. v. M & R Mfg. Co., 4 USPQ2d 1154,
1160 n.9 (TTAB 1987); American Standard Inc. v. AQM Corp.,
208 USPQ 840, 841-842 (TTAB 1980); SCOA Industries Inc. v.
Kennedy & Cohen, Inc., 188 USPQ 411, 413 (TTAB 1975). In
proving its priority of use, opposer may rely upon the
filing date of its applications for registration as evidence
of its use of the mark. Henry Siegel Co. v. M & R Mfg. Co.,
supra; American Standard Inc. v. AQM Corp., supra. Opposer
filed its applications to register the GRIZZLY marks on
June 14, 1955 (Registration No. 0624055) and February 23,
1960 (Registration Nos. 0704529 and 0704589). On the other
hand, applicant began using its GRIZZLY mark in commerce in
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36
August 1983.44 In view thereof, opposer has proven that it
has priority of use with respect to the GRIZZLY trademark
with respect to the goods identified in its pleaded
registrations.45

Likelihood of confusion
Our determination of likelihood of confusion under
Section 2(d) of the Lanham Act is based on an analysis of
all the 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, 567
(CCPA 1973). The relevant du Pont factors are discussed
below.
A. The similarity or dissimilarity of the marks in their
entireties as to appearance, sound, connotation and
commercial impression.

We turn first to the du Pont factor focusing on the
similarity or dissimilarity of the marks in their entireties
as to appearance, sound, connotation and commercial
impression. In re E. I. du Pont De Nemours & Co., supra.
In a particular case, any one of these means of comparison

44 Applicant’s Response to Interrogatory No. 30 in all the
cancellation proceedings; Balolia Trial Dep., p. 9 (Mr. Balolia
founded applicant in 1983);
45 As discussed infra, because we find that applicant’s goods and
services are related to the products listed in opposer’s pleaded
registrations, we have not considered opposer’s common law use.
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37
may be critical in finding the marks to be similar. In re
Lamson Oil Co., 6 USPQ2d 1041, 1042 (TTAB 1988). See also,
In re White Swan Ltd., 9 USPQ2d 1534, 1535 (TTAB 1988).
In comparing the marks, we are mindful that the test is
not whether the marks can be distinguished when subjected to
a side-by-side comparison, but rather whether the marks are
sufficiently similar in terms of their overall commercial
impression so that confusion as to the source of the goods
offered under the respective marks is likely to result. San
Fernando Electric Mfg. Co. v. JFD Electronics Components
Corp., 565 F.2d 683, 196 USPQ 1, 3 (CCPA 1977); Spoons
Restaurants Inc. v. Morrison Inc., 23 USPQ 1735, 1741 (TTAB
1991), aff’d unpublished, No. 92-1086 (Fed. Cir. June 5,
1992). The proper focus is on the recollection of the
average customer, who retains a general rather than specific
impression of the marks. Winnebago Industries, Inc. v.
Oliver & Winston, Inc., 207 USPQ 335, 344 (TTAB 1980);
Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106, 108 (TTAB
1975).
The word “Grizzly” is the dominant portion of
applicant’s marks GRIZZLY INDUSTRIAL and GRIZZLY.COM. With
respect to GRIZZLY INDUSTRIAL, applicant disclaimed the
exclusive right to use “industrial” in response to the
Examining Attorney’s requirement for a disclaimer on the
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38
ground that the word “industrial” is merely descriptive of a
characteristic or function of applicant’s woodworking and
metal working machinery.46 In re DNI Holdings Ltd., 77
USPQ2d 1435, 1442 (TTAB 2005); See also Quaker State Oil
Refining Corp. v. Quaker Oil Corp., 453 F.2d 1296, 172 USPQ
361, 363 (CCPA 1972). Therefore, the word “Grizzly” is
accorded more weight than the word “Industrial” in our
comparison of the marks. In re National Data Corp., 753
F.2d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985).
With respect to the mark GRIZZLY.COM, the top level
domain “.com” has no source indicating significance and does
not serve any trademark purpose. In re CyberFinancial.Net
Inc., 65 USPQ2d 1789, 1791-1792 (TTAB 2002); In re Martin
Container Inc., 65 USPQ2d 1058, 1060 (TTAB 2002). See also
In re Oppedahl & Larson LLP, 373 F.3d 1171, 71 USPQ2d 1370
(Fed. Cir. 2004). Therefore, the word “Grizzly” is accorded

46 February 23, 1998 Office Action in application Serial No.
75303371 (Registration No. 2312226) for the mark GRIZZLY
INDUSTRIAL. Although statements made in an application may not
be relied on as evidence on behalf of the applicant, they may
used as evidence against applicant as an admission against
interest. See TBMP §704.04 (2nd ed. rev. 2004). In this case,
applicant’s acquiescence to the Examining Attorney’s disclaimer
requirement may be construed as an admission that the word
“industrial” used in connection with applicant’s woodworking and
metal working machinery is descriptive. See American Rice, Inc.,
v. H.I.T. Corp., 231 USPQ 793,798 TTAB 1986) (the fact that
opposer took position in its application regarding
descriptiveness of term inconsistent with its position in inter
partes proceeding may be considered as evidence, although earlier
inconsistent position does not give rise to an estoppel).
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more weight in our analysis that the top level domain
“.com.”
The significance of the word “Grizzly” as the dominant
element of applicant’s marks is further reinforced by its
location as the first word of the marks. Presto Products
Inc. v. Nice-Pak Products, Inc., 9 USPQ2d 1895, 1897 (TTAB
1988)(“it is often the first part of a mark which is most
likely to be impressed upon the mind of a purchaser and
remembered”). See also Palm Bay Imports Inc. v. Veuve
Clicquot Ponsardin, 396 F.3d 1369, 73 USPQ2d 1689, 1692
(Fed. Cir. 2005)(“Veuve” is the most prominent part of the
mark VEUVE CLICQUOT because “veuve” is the first word in the
mark and the first word to appear on the label); Century 21
Real Estate Corp. v. Century Life of America, supra (upon
encountering the marks, consumers must first notice the
identical lead word).
In view of the foregoing, opposer’s
mark and applicant’s GRIZZLY mark are essentially identical.
The stylization of opposer’s mark is not sufficient to
distinguish the marks because applicant’s marks have been
applied for and registered in typed drawing form. By
applying and registering its marks as typed drawings,
applicant is asserting rights in its marks in any type
style, proportions, or other possible variations, including
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opposer’s script format. Squirtco v. Tomy Corp., 697 F.2d
1038, 216 USPQ 937, 939 (Fed. Cir. 1983); In re Melville
Corp., 18 USPQ2d 1386, 1388 (TTAB 1991). Thus, the word
“Grizzly” in applicant’s mark must be considered identical
to opposer’s GRIZZLY marks. In any event, opposer’s script
format is not so distinctive as to create a commercial
impression separate and apart from the word “Grizzly” per
se, especially because consumers are unlikely to remember
this distinction between the marks. Rather, it is the word
itself that will more likely be recalled. In re Melville
Corp., supra; In re Appetito Provisions Co., 3 USPQ2d 1553,
1554 (TTAB 1987).
In view of the arbitrary nature of the word “Grizzly”
when applied to the products of the parties,47 the lesser
weight to be accorded the word “Industrial” and the term
“.com” in applicant’s marks, and the identity of the word
“Grizzly” in the marks at issue, we find that the marks are
similar, if not identical.
B. The similarity or dissimilarity and nature of the
goods.

As indicated above, it is well settled that likelihood
of confusion is determined on the basis of the goods as they
are identified in applicant’s application and registrations

47 See the discussion of the strength of the mark factor infra.
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and the cited registrations. Hewlett-Packard Co. v. Packard
Press Inc., supra; In re Elbaum, supra; In re William Hodges
& Co., Inc., supra. Moreover, the greater the degree of
similarity between the applicant’s mark and the mark in the
cited registrations, the lesser the degree of similarity
between the goods and services in applicant’s application
and registrations and the cited registrations is required to
support a finding of likelihood of confusion. In re Opus
One, Inc., 60 USPQ2d 1812, 1815 (TTAB 2001); In re Concordia
International Forwarding Corp., 222 USPQ 355, 356 (TTAB
1983). If the marks are the same, or almost so, as in the
case sub judice, it is only necessary that there be a viable
relationship between the goods and services to support a
finding of likelihood of confusion. In re Engine Supply,
Inc., 225 USPQ 216, 217 (TTAB 1985); In re Concordia
International Forwarding Corp., supra. The goods and
services of the applicant and the registrant do not have to
be identical or directly competitive to support a finding
that there is a likelihood of confusion. It is sufficient
if the respective goods and services are related in some
manner and/or that the conditions surrounding their
marketing are such that they would be encountered by the
same persons under circumstances that could, because of the
similarity of the marks used in connection therewith, give
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rise to the mistaken belief that they emanate from or are
associated with a single source. In re Albert Trostel &
Sons Co., 29 USPQ2d 1783, 1785 (TTAB 1993); In re
International Telephone & Telegraph Corp., 197 USPQ 910, 911
(TTAB 1978).
The products identified in applicant’s application and
registrations are woodworking and metal working tools (e.g.,
table saws, planers, sanders, lathes, etc.) and the services
comprise retail store services, mail order services, and
online retail store services for woodworking and metal
working tools. The cover of applicant’s catalogs have the
caption “Purveyors of Fine Machinery: High Quality
Woodworking and Metalworking Tools & Accessories.” The
cover of the catalogs “gives anybody looking just at the
cover, gives them an idea of what we sell, which is
woodworking and metalworking tools.”48
Opposer has listed the following products in its
registrations:
1. “shop equipment, namely, tables, benches,
cabinets, racks, shelves, stands, desks, and parts thereof”
(Registration No. 0624055);

48 Balolia Testimony Dep., p. 26; Exhibit 5; Applicant’s response
to opposer’s Interrogatory No. 19(b).
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2. “box trucks, dump trucks, hand trucks, dollies and
wheeled platforms, wheeled racks and wheeled tables”
(Registration No. 0704529); and,
3. “drum lifters, tilting arcs, drum cradles, drum
up-enders, and hoist hooks” (Registration No. 0704589).
Opposer is a manufacturer of shop equipment for
material handling such as hand trucks, work benches, stands,
dollies, lifts, carts, etc.49 Opposer’s products include,
but are not limited to, shop desks, work benches, tool
cabinets, heavy duty tool stands, heavy duty shop trucks,
hand trucks, dollies, storage racks, and drum lifters (i.e.,
hoists used to lift drums).50 For example, opposer’s PTC
Series tool cabinet workbench is a workbench with a 9-drawer
tool cabinet for the storage of tools, parts, and other
items.51
Although the products listed in the respective
description of goods and services are not identical, and
they are not interchangeable, the products of the parties
are complementary because they can be used together. It
does not take much imagination to envision applicant’s saws,
lathes, planers, etc. being used in connection with
opposer’s work benches, and applicant’s hammers, nails, saw

49 R. Mlakar Trial Dep., Exhibits 13-16, 21-30.
50 Id.
51 R. Mlakar Trial Dep., Exhibit 29, p. 8.
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blades, and hand tools, etc. being stored in opposer’s tool
cabinets. Complementary use is recognized as a relevant
consideration in determining likelihood of confusion. In re
Martin’s Famous Pastry Shoppe, Inc., 748 F.2d 1565, 223 USPQ
1289, 1290 (Fed. Cir. 1984); Visual Information Institute v.
Vicon Industries, 209 USPQ, 179, 190 (TTAB 1980). In fact,
in his discovery deposition, Mr. Balolia testified that
material handling equipment, specifically roller stands, and
mobile bases, are complementary to applicant’s core
products.52 Subsequently, during his trial deposition, Mr.
Balolia testified that applicant’s customers have requested
material handling equipment to complement applicant’s core
products.
Q. And why do you - - well, why does Grizzly
Industrial sell material handling equipment?
A. Essentially as an accommodation to our customers,
just as a service. It’s not - - you know,
customers asked us for - - for certain products,
material handling products to complement the
machinery that we sold and to buy from the same
company at the same time.53

52 Balolia Discovery Dep., pp. 27-28; Balolia Trial Dep., Exhibit
1. Mobile bases are synonymous with racks with wheels. (R.
Mlakar Trial Dep., p. 189).
53 Balolia Trial Dep., p. 61.
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Moreover, opposer and applicant both sell carts, two-
wheel dollies, drum dollies, storage bins, workbenches, tool
stands.54 The fact that applicant and opposer both sell the
same products, albeit under different marks,55 has a bearing
on whether consumers believe, when the products do appear
under the same mark, that they have the same source.
Sterling Drug Inc. v. Sebring, 515 F.2d 1128, 185 USPQ 649,
652 (CCPA 1975); Black and Decker Mfg. Co. v. Bright Star
Industries, Inc., 220 USPQ 890, 892 (TTAB 1983).
In view of the foregoing, we find that the products and
services of the parties are related.
C. The similarity or dissimilarity of established, likely-
to-continue trade channels and classes of purchasers.

As we noted in our discussion regarding Dr. Levy’s
testimony, if the application and registrations at issue
describe the goods and services broadly, and there is no
limitation as to their nature or type, channels of trade or
class of purchasers, it is presumed that the application and
registrations encompass all the goods and/or services of the
type described, that they move in same channels of trade

54 Balolia Discovery Dep., pp. 28-30; Balolia Testimony Dep., p.
61
55 In his discovery deposition, Mr. Balolia testified that
applicant sold material handling equipment with the mark GRIZZLY
INDUSTRIAL (Balolia Discovery Dep., pp. 12-13), however, in his
trial testimony, Mr. Balolia testified that applicant now sells
its material handling equipment under the PANTHER trademark
(Balolia Trial Dep., pp. 61-62).
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normal for these goods and/or services, and that they are
available to all classes of purchasers for the described
goods and/or services. In re Linvest S.A., supra.
Moreover, our likelihood of confusion analysis may not be
unduly restricted to present modes of marketing when the
descriptions of goods and services is unrestricted because
such trade practices could be changed by either party when
economics or other factors dictate a need for such change.
The Wella Corp. v. California Concept Corp., supra; Sheraton
Corp. of America v. Sheffield Watch Co., Inc., supra.
Because the goods of the parties are broadly
identified, without any restrictions or limitations as to
channels of trade or classes of consumers, we must presume
that applicant and opposer sell their products in all the
normal channels of trade for these products (e.g., retail
store services, mail order services, Internet, distributors,
etc.) to all classes of consumers who would buy such
products. Accordingly, applicant’s evidence regarding the
different methods of distribution used by the parties is not
relevant.56

56 Mr. Balolia’s testimony that the parties sell their products in
different channels of trade is not credible because applicant
also sells the same type of material handling equipment sold by
opposer. (Balolia Trial Dep., p. 61).
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Moreover, even if applicant’s evidence regarding the
different methods of distribution used by the parties was
relevant, we would not find it persuasive because
applicant’s channels of trade argument is based on the false
premise that the end users of the products are different.
The evidence shows that applicant sells its products
directly to end users (e.g., homeowners, small shops, as
well as the “readily-identified, well-known companies”57
identified in applicant’s catalogs) through its retail
stores, mail order services, and online sales.58 By the
same token, opposer sells its products through online
sales.59 In addition, many of opposer’s distributors sell
opposer’s products through catalogs.60 Opposer’s products
are also purchased by engineers and purchasing agents
through the Thomas Register.61 Beside the fact that both
parties sell their products online and through the mail,
opposer’s distributors sell its products to end users62 who
could be anyone, including applicant’s customers, such as

57 Applicant characterized the sampling of its customers
identified on page 3 of its catalogs as “readily-identified,
well-known companies.” (Balolia Trial Dep., p. 73).
58 See also Balolia Discovery Dep., pp. 90-93, 142-143;
Applicant’s response to opposer’s Interrogatory No. 22.
59 A. Mlakar Discovery Dep., pp. 18-22; R. Mlakar Discovery Dep.,
p. 19.
60 A. Mlakar Discovery Dep., pp. 21-22.
61 A. Mlakar Discovery Dep., p. 20.
62 R. Mlakar Discovery Dep., p. 64.
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home shops, small shops, or industrial purchasers.63 The
problem with applicant’s argument is that it ignores sales
of opposer’s products beyond its distributors. Even where
goods are sold through a distributor, rather than directly
to end users, the ultimate sale to end users remains highly
relevant in a likelihood of confusion analysis. That the
goods of one party pass through an intermediary on the way
to the end user has little relevance if the result is that
they eventually end up in the hands of the same consumers.
In that regard, the most significant fact in the
channels of trade analysis in these proceedings is that the
same consumers may ultimately purchase both applicant’s and
opposer’s products. As indicated supra, likelihood of
confusion may be found where the conditions surrounding the
marketing of the parties’ products are such that they would
be encountered by the same persons under circumstances that
could give rise to the mistaken belief that they emanate
from the same source. In re Albert Trostel & Sons Co.,
supra; In re International Telephone & Telegraph Corp.,
supra. Opposer sells its products to metal workers and
woodworkers.64 In fact, opposer sells to almost all of the
customers that applicant identifies as representative

63 R. Mlakar Discovery Dep., p.p. 75-76.
64 R. Mlakar Trial Dep., pp. 147-149.
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customers in its catalogs.65 By the same token, the
majority of applicant’s customers are woodworkers
comprising homeowners with small shops and cabinet shops.66
In addition, applicant sells its metalworking products to
small repair shops, small machine shops, and homeowners.67
While there may be some differences in how the parties
actually sell their products, it cannot be denied that the
products of the parties reach the same consumers.
In view of the foregoing, we find that the channels of
trade and classes of consumers are similar.
D. The conditions under which and buyers to whom sales are
made (i.e., the degree of consumer care).

Applicant contended that the customers of the parties
exercise a high degree of consumer care when purchasing
applicant’s woodworking or metal working machinery or
opposer’s material handling and industrial equipment, and

65 R. Mlakar Trial Dep., pp. 149-163; Exhibits 68 (applicant’s
2005 catalog) and 34 and 37 (opposer’s invoices). Although
applicant objected to opposer’s Exhibits 34 and 37 at the
deposition of R. Mlakar, it did not renew that objection in its
brief, and we therefore consider it waived. Hard Rock Café
International (USA) Inc. v. Elsea, 56 USPQ2d 1504, 1507 n.5 (TTAB
2000) (objection to exhibit raised during deposition but not
maintained in brief deemed waived); Reflange Inc. v. R-Con
International, 17 USPQ2d 1125, 1126 n.4 (TTAB 1990). See also
TBMP §707.04 (2nd ed. rev. 2004). Applicant explained that the
sample customers identified in its catalogs are “readily-
identified, well-known companies” “to inspire confidence in our
customers . . . if large corporations like this buy Grizzly
Industrial products, well they must be good-quality products.”
(Balolia Trial Dep., p. 73).
66 Balolia Trial Dep., p. 74.
67 Id.
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therefore the likelihood of confusion will be minimal.68
Applicant supported its argument by referencing the prices
of the products and the process by which the products are
purchased. Applicant’s products range in cost from $100 to
$20,000 with an average price of $200.69 In addition,
applicant provides a customer representative on its toll-
free telephone ordering system to answer technical
questions.70 Opposer’s products average $500 to $800.71
However, Mr. Mlakar testified that the degree of care
exercised by opposer’s consumers varies.72
It seems implausible the someone purchasing the
products of either party would not exercise a heightened
degree of care. The products are not everyday purchases.
They are specific “shop” equipment or tools purchased for a
specific purpose. On the other hand, the fact that the
parties’ consumers may be exercising a heightened degree of
care and may even have a high level of sophistication in the
field does not provide any assurance that the consumers and
potential consumers are sophisticated or knowledgeable
regarding trade identifications, or have such goods memories
for minute differences in marks, that they could

68 Applicant’s Brief, pp. 44-47.
69 Balolia Discovery Dep., p. 104; Balolia Trial Dep., p. 76.
70 Balolia Trial Dep., p. 75.
71 R. Mlakar Trial Dep., p. 248.
72 R. Mlakar Trial Dep., p. 248.
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differentiate between the parties’ marks or appreciate that
their similarity does not imply some of kind of business
relationship or affiliation. Medtronic, Inc. v. Medical
Devices, Inc., 204 USPQ 317, 326 (TTAB 1979); Hydrotechnic
Corporation v. Hydrotech International, Inc., 196 USPQ 387,
393-393 (TTAB 1977). This is especially true in a case like
this where the marks are essentially identical and the goods
and services are closely related.
In these proceedings, the evidence regarding the degree
of care with which the ultimate consumers of the parties
consider the trademarks or the source of the machinery and
equipment sold by the parties was not developed in
sufficient detail to permit us to draw any conclusions
regarding the degree of consumer care. Accordingly, this du
Pont factor is neutral.
E. The strength of opposer’s mark.
Applicant argued that because GRIZZLY has been
registered numerous times for a wide variety of goods and
services that opposer’s GRIZZLY marks are weak, and are
entitled to only a narrow scope of protection or exclusivity
of use.73 In support of this argument, applicant submitted
copies of twenty-eight (28) different registrations

73 Applicant’s Brief, pp. 52-53.
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consisting of the word “Grizzly” for a wide variety of goods
and services.
Generally, third-party registrations, in and of
themselves, cannot justify the registration of another mark
that is so similar to a previously registered mark as to
cause a likelihood of confusion. Third-party registrations
are not evidence of what happens in the market place or that
consumers are familiar with the marks. To the extent that
such third-party registrations have any probative value in
the likelihood of confusion analysis, they are relevant to
show that the mark, or a portion of a mark, is descriptive
or suggestive, and that therefore the public will look to
other elements to distinguish the source of the products
identified in the registrations. AMF Inc. v. American
Leisure Products, Inc., 474 F.2d 1403, 177 USPQ 268, 269-270
(CCPA 1973); Specialty Brands, Inc. v. Coffee Bean
Distributors, Inc. 748 F.2d 669, 223 USPQ 1281, 1285 (Fed.
Cir. 1984). Thus, third-party registrations may be used
like dictionaries to demonstrate that the mark conveys a
specific meaning. Tektronix, Inc. v. Daktronics, Inc., 534
F.2d 915, 189 USPQ 693, 694-695 (CCPA 1976); In re Melville
Corp., 18 USPQ2d 1386, 1388 (TTAB 1991); Plus Products v.
Star-Kist Foods, Inc., 220 USPQ 541, 544 (TTAB 1983).
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The third-party registrations do not show that the word
“Grizzly” is suggestive of opposer’s material handling or
industrial equipment, nor does applicant assert that
“Grizzly” is suggestive. The twenty-eight (28) third-party
registrations of record are for a wide range of products in
disparate fields (e.g., waste treatment equipment, tires,
weightlifting equipment, farm equipment, etc.). The
disparate nature of the goods in the third-party
registrations do not shed any light on what common
significance the word “Grizzly” might have for these
different goods, or for opposer’s identified goods.
Accordingly, we do not believe that opposer’s mark has been
shown to be weak.
Moreover, even if we were to deem the protection
accorded opposer’s mark as being more limited than that for
an inherently strong mark, the protection still extends to
prevent the registration of marks that convey the same
commercial impression and that is used for related goods.
Likelihood of confusion “is to be avoided, as much between
‘weak’ marks as between ‘strong’ marks.” King Candy Co. v.
Eunice King’s Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108,
109 (CCPA 1974).
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F. The nature and extent of any actual confusion.
Opposer argued that the following exhibits constitute
evidence of actual confusion (our analysis of the probative
value of each exhibit is set forth immediately after the
identification of the exhibit):
Exhibit 44
Opposer’s catalog request form, dated September 9,
2003, wherein the company requesting the catalog
told opposer’s telephone operator that it had
bought welding benches from Grizzly Industrial.74
In Exhibit 44, the requestor had previously bought
a product from applicant. We can infer from this
exhibit that because of the identity of the marks
and complementary nature of the products, the
requestor mistakenly believed that there was an
association between the parties;
Exhibit 45
A fax, dated August 27, 2003, from one of
opposer’s distributors requesting a quote for a
number of products identified by the GRIZZLY
trademark. Many of the products listed are not
manufactured by opposer, but may be found in
applicant’s description of goods (i.e., lathes,

74 A. Mlakar Trial Dep., pp. 47-48.
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shapers, cutters, and spindle sanders).75
Although we cannot be sure that the distributor
requesting a quote had confused the parties, we
can infer from this exhibit that because of the
identity of the marks and complementary nature of
the products the distributor mistakenly believed
that there was some association between the
parties;
Exhibit 46
A photocopy of a page from applicant’s website
depicting a shelf cart that one of opposer’s
customers faxed to opposer inquiring “can you come
up with anything?”76 Exhibit 46 is not evidence
of actual confusion because opposer’s customer is
inquiring whether opposer has a similar product
and the customer is not showing any confusion as
to the source of the product displayed in the fax;
Exhibit 47
Opposer’s catalog request form, dated October 17,
2000, indicating that the caller was looking for
Grizzly Industrial.77 We infer from this exhibit
that the caller contacted opposer instead of

75 A. Mlakar Trial Dep., pp. 48-51.
76 A. Mlakar Trial Dep., pp. 51-52.
77 A. Mlakar Trial Dep., pp. 52-53.
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applicant because of the similarity of the
trademarks;
Exhibit 48
Correspondence from Industrial Appraisal Company,
dated August 16, 2000, to opposer requesting the
selling price of a “Grizzly Spindle sander” for an
insurance valuation appraisal. Opposer does not
sell sanders, but they are listed in applicant’s
description of goods. Industrial Appraisal
Company is not a purchaser or potential purchaser
of the parties’ products so it would not exercise
the same degree of care as potential purchaser.
However, the misdirected communication comprising
Exhibit 48 is illustrative of the type of
confusion that may occur because of the identify
of the marks and complementary nature of the
goods;
Exhibit 49
A fax, dated October 4, 2000, from Supply Depot
Incorporated, addressed to Grizzly Industrial
requesting a quote for tools manufactured by
applicant (e.g., router, sander, jig saw, table
saw, etc.).78 This communication appears to be

78 A. Mlakar Trial Dep., pp. 55-56.
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misdirected correspondence sent to opposer because
of the similarity of the trademarks;
Exhibit 50
A copy of a request for a quote from Find MRO.com,
dated May 16, 2001, for the type of equipment that
is manufactured by applicant (i.e., gauge sets,
thread restorers, replacement blades, tap stick,
and a circle marker set).79 The request for a
quote is addressed to Pucel Enterprises, and there
is no reference to the trademark “Grizzly.”
Without testimony from the contact at Find
MRO.com, we cannot draw any inferences regarding
whether it mistakenly believed that there was an
association between the parties; and,
Exhibit 51
A copy of a purchase order for drawers. However,
because Mr. Mlakar could not testify as to whether
it was or was not for opposer’s products or
applicant’s products, Exhibit 51 is not evidence
of actual confusion.80
Applicant argued that in light of the facts that the
parties have concurrently and extensively used and

79 A. Mlakar Trial Dep., p. 56.
80 A. Mlakar Trial Dep., pp. 56-57.
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advertised their marks on a national basis for twenty-three
(23) years,81 opposer’s five (5) credible instances of
actual confusion are de minimis.82
On the one hand, the above-noted five credible
instances of actual confusion do not prove that someone
bought applicant’s products believing it to be opposer’s
products or vise versa, nor are only five credible instances
of confusion especially impressive under the circumstances.
On the other hand, the evidence demonstrates that because of
the similarity of the marks and the complementary nature of
the goods potential consumers have mistakenly believed the
products and services emanate from the same source. While
the relevant standard is likelihood of confusion, not actual
confusion, any instances of actual confusion are clearly

81 The record clearly establishes that there has been ample
opportunity for actual confusion to arise. Applicant has an
average of 1.5 million customers per year. (Balolia Trial Dep.,
p. 12). It ships over 500,000 orders annually. (Balolia Trial
Dep., pp. 40-41). Since 1996, applicant has been distributing
approximately 2 million catalogs a year, and since 1983, it has
distributed a total of approximately 25 million catalogs.
(Balolia Trial Dep., pp. 17 and 40). Applicant’s sales have
grown from $1 million per year in 1983 to over $100 million per
year in 2005. (Balolia Trial Dep., pp. 13-15; Exhibit 67).
Opposer distributes approximately 15,000 catalogs per year. (R.
Mlakar Trial Dep., p. 140). It has approximately 2,500
distributors, some of whom display opposer’s products in their
catalogs. (R. Mlakar Trial Dep., pp. 141-142). One of opposer’s
distributors, SMO, distributes over 1 million catalogs a year.
(R. Mlakar Trial Dep., p. 143). In addition, some distributors
link to opposer’s website. (R. Mlakar Trial Dep., pp. 143-145).
Opposer also advertises in the Thomas Register. (A. Mlakar Trial
Dep., p. 22).
82 Applicant’s Brief, pp. 27-28.
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probative of whether confusion is likely. Accordingly, we
find that this du Pont factor favors finding that there is a
likelihood of confusion.
G. Balancing the factors.
The du Pont factors require to us to consider the
thirteen factors for which evidence has been made of record.
The Court of Customs and Patent Appeals, the predecessor to
our reviewing court, has observed that “[t]he fundamental
inquiry mandated by §2(d) goes to the cumulative effect of
differences in the essential characteristics of the goods
and differences in the marks.” Federated Foods, Inc. v.
Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA
1976). Because of the identity of the marks, the similarity
of the goods set forth in each application and registration
owned by both parties, and the absence of any evidence that
militates against confusion, we conclude that applicant’s
GRIZZLY mark, as applied to applicant’s woodworking and
metal working machinery and tools and related services, so
resembles opposer’s GRIZZLY marks, as applied to material
handling and industrial equipment, as to be likely to cause
confusion.
Decision: The opposition is sustained and application
Serial No. 76088346 is refused registration.
Opposition No. 91123506
Cancellation No. 92031984
Cancellation No. 92032024
Cancellation No. 92032025

60
The petitions for cancellation are granted and the
registrations will be cancelled in due course.