R. E. Whittaker Co., Inc.v.Crystal Magic, Inc.

Trademark Trial and Appeal Board

Mar 5, 2003

No. 92030339 (T.T.A.B. Mar. 5, 2003)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________
Trademark Trial and Appeal Board
____________
R. E. Whittaker Company, Inc.
v.
Crystal Magic, Inc.
_______
Consolidated Cancellation Nos. 30,339; 30,519; and 30,370
________
Thomas C. Wettach of Cohen & Grigsby for R. E. Whittaker
Company, Inc.
Daniel R. Johnson of Ryan, Kromholz & Manion for Crystal
Magic, Inc.
____________
Before Hanak, Quinn and Holtzman, Administrative Trademark
Judges.
Opinion by Hanak, Administrative Trademark Judge:
In May 2000 R. E. Whittaker Company, Inc. (petitioner)
filed three separate petitions seeking to cancel three
registrations owned by Crystal Magic, Inc. (respondent).
On August 16, 2001 this Board issued an order consolidating
the three cancellation proceedings stating that “the cases
involve the same parties and common issues of law and
fact.”
Cancellation No. 30,339 involves respondent’s mark
CRYSTAL MAGIC depicted in typed drawing form and registered
Canc. Nos. 30,339; 30,370; and 30,519
2
for “carpet cleaning preparations, namely, cleaners for
removing spots on carpets and carpet extraction cleaners.”
This Registration No. 2,247,086 issued on May 25, 1999.
Cancellation No. 30,370 involves respondent’s mark
CRYSTALLINE registered in typed drawing form for “dry
cleaning fluids for cleaning of carpets.” This
Registration No. 2,127,697 issued on January 6, 1998.
Finally, Cancellation No. 30,519 involves respondent’s mark
CRYSTAL-EX registered in typed drawing form for “chemical
preparations for extracting moisture from carpets.” This
Registration No. 2,109,776 issued on October 28, 1997.
The three cancellation petitions are essentially
identical. They allege that commencing on February 14,
1992 petitioner has used throughout the United States the
mark CRYSTAL DRY in connection with a carpet cleaning
product. Continuing, the petitions allege that each of
registrant’s marks (CRYSTAL MAGIC, CRYSTALLINE and CRYSTAL-
EX) so resemble “petitioner’s mark, as to be likely, when
used in connection with the products of registrant, to
cause confusion, or cause mistake or to deceive because the
public is likely to believe that registrant’s products have
their origin with petitioner or that such products are
approved, endorsed or sponsored by petitioner or associated
in some way with petitioner.” (Petitions paragraphs 6).
Canc. Nos. 30,339; 30,370; and 30,519
3
While petitioner has not made specific reference to Section
2(d) of the Trademark Act, it is clear that this is the
basis for each of the petitions.
Respondent filed answers which denied the pertinent
allegations of the petitions. Both parties filed briefs.
Neither party requested an oral hearing.
The record in this case is summarized at pages 4 to 6
of petitioner’s brief. At page 1 of its brief, respondent
states that it “hereby incorporates [petitioner’s]
description of the record.” This record includes the
depositions (with exhibits) of Richard E. Whittaker
(petitioner’s vice-president) and Gregory DeWerff (the
owner of respondent). In addition, the record includes a
copy of petitioner’s Registration No. 1,770,989 for the
mark CRYSTAL DRY for “carpet cleaning compound for
commercial and/or industrial carpet cleaning.” This
registration issued on May 18, 1993 with a claimed first
use date of February 14, 1992.
The record demonstrates that petitioner has
continuously used its mark CRYSTAL DRY since February 1992.
This is over two years prior to respondent’s first use of
CRYSTALLINE, and it is over three years prior to
respondent’s first use of CRYSTAL MAGIC and CRYSTAL-EX.
Thus, priority of use rests with petitioner.
Canc. Nos. 30,339; 30,370; and 30,519
4
In any likelihood of confusion analysis, two key,
although not exclusive, considerations are the similarities
of the goods and the similarities of the marks. Federated
Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192
USPQ 24, 29 (CCPA 1976)(“The fundamental inquiry mandated
by Section 2(d) goes to the cumulative effect of
differences in the essential characteristics of the goods
and differences in the marks.”).
Considering first the goods, there is no dispute that
as described in petitioner’s registration and as described
in respondent’s three registrations, all of the goods are
carpet cleaning compounds or preparations. Unlike
petitioner’s CRYSTAL DRY registration which contains the
limiting words “for commercial and/or industrial cleaning,”
respondent’s registrations do not contain such limiting
words. However, this means that respondent’s carpet
cleaning preparations as described in its three
registrations are broad enough to include carpet cleaning
preparations for commercial and/or industrial carpet
cleaning. Indeed, respondent’s carpet cleaning
preparations are specifically designed for commercial and
industrial uses. (DeWerff deposition page 12). Thus, while
petitioner’s carpet cleaning compound and registrant’s
carpet cleaning compounds are not identical in the sense
Canc. Nos. 30,339; 30,370; and 30,519
5
that they contain the exact chemical formulation, they are
legally identical in the sense that they are all carpet
cleaning preparations or compounds for commercial and
industrial use.
Considering next the marks, we note at the outset that
when the goods are legally identical, as is the case here,
“the degree of similarity [of the marks] necessary to
support a conclusion of likely confusion declines.”
Century 21 Real Estate Corp. v. Century Life of America,
970 F.2d 874, 23 USPQ2d 1698, 1700 (Fed. Cir. 1992).
Obviously, petitioner’s mark and respondent’s three
marks all begin with the identical word CRYSTAL. This is
“a matter of some importance since it is often the first
part of a mark which is most likely to be impressed upon
the mind of a purchaser and remembered.” Presto Products
v. Nice-Pak Products, 9 USPQ2d 1895, 1897 (TTAB 1988).
Moreover, the record reflects that as applied to carpet
cleaning compounds and preparations, there are no other
trademarks or trade names that contain the word CRYSTAL.
To be perfectly clear, Mr. DeWerff did testify about
two or three other companies which used the word “crystal”
or a variation thereof in the text of their carpet cleaning
compound labels. (DeWerff deposition pages 22-23).
However, Mr. DeWerff did not testify that any other
Canc. Nos. 30,339; 30,370; and 30,519
6
companies used the word CRYSTAL as part of a trademark or
trade name for carpet cleaning compounds.
In addition, respondent attached to its motions for
summary judgment a list of third-party registrations which
contained the word CRYSTAL as part of the mark. Three
comments are in order. First, respondent has not properly
made of record copies of these third-party registrations.
Material attached to a motion for summary judgment does not
form a part of the record at final hearing. Second, even
if we were to consider these third-party registrations, we
note that not one of these third-party registrations is for
carpet cleaning compounds or preparations. Thus, even if
the third-party registrations had properly been made of
record, their evidentiary value would be minimal. Finally,
even assuming that the third-party registrations had been
properly made of record and even further assuming that some
of the third-party registrations were for carpet cleaning
compounds, the third-party registrations by themselves
would “in the absence of any evidence showing the extent of
use of any of such marks or whether any of them are not in
use, they [the third-party registrations] provide no basis
for saying that the marks so registered have had, or may
have, any effect at all on the public mind so as to have a
bearing on likelihood of confusion.” Smith Bros. Mfg. Co.
Canc. Nos. 30,339; 30,370; and 30,519
7
v. Stone Mfg. Co., 476 F.2d 1004, 177 USPQ 462, 463 (CCPA
1973)(original emphasis).
As noted earlier in this opinion, the similarities of
the marks and the similarities of the goods, while the most
important factors in deciding the issue of likelihood of
confusion, are not the only factors. In this case, there
is another important factor bearing on the issue of
likelihood of confusion, namely, respondent’s intent in
adopting its marks CRYSTAL-EX, CRYSTALLINE and CRYSTAL
MAGIC. Petitioner and respondent are by no means
strangers. Respondent entered the carpet cleaning business
in 1983 under the name Dryit Carpet Dry Cleaning. It began
manufacturing carpet cleaning preparations in 1991 under
the name Sun Distributing. (DeWerff deposition pages 47-
48). Respondent changed its corporate name from Sun
Distributing to Crystal Magic, Inc. “when we saw what was
happening in the industry with crystallization and with
what Mr. Whittaker [petitioner] had done with the
crystallization of his chemical.” (DeWerff deposition page
48). Indeed, Mr. DeWerff had purchased petitioner’s
CRYSTAL MAGIC carpet cleaning preparation for testing
purposes, and in addition, Mr. DeWerff traveled from
Wisconsin to petitioner’s headquarters in Massachusetts to
Canc. Nos. 30,339; 30,370; and 30,519
8
visit petitioner’s facilities for manufacturing its CRYSTAL
MAGIC carpet cleaning preparation.
Thereafter, respondent came out with its CRYSTAL-EX
and CRYSTALLINE carpet cleaning preparations. On both of
these carpet cleaning preparations, the mark CRYSTAL MAGIC
appears in subordinate fashion as a housemark.
Reproduced below is a container for petitioner’s
CRYSTAL DRY carpet cleaning preparation.
Canc. Nos. 30,339; 30,370; and 30,519
9
Reproduced below are the containers for respondent’s
CRYSTALLINE and CRYSTAL-EX carpet cleaning preparations
with the CRYSTAL MAGIC housemark.
As is readily apparent, the packagings for
respondent’s products bear a striking resemblance to the
packaging for petitioner’s product. In each case,
respondent’s marks (CRYSTALLINE and CRYSTAL-EX) are
positioned on the products exactly as is petitioner’s mark
CRYSTAL DRY. That is to say, all three marks are
positioned in a sloping fashion with the first portion of
the marks lower than the latter portion of the marks. Mr.
DeWerff has testified that “we steered clear when we
designed, when we put together our labels, we specifically
Canc. Nos. 30,339; 30,370; and 30,519
10
steered clear of anything that the Whittaker Company, and
actually a number of other companies, were using.” (DeWerff
deposition page 45). We find that respondent simply did
not steer clear. Of all of the possible ways to place its
trademarks on its packaging, there was absolutely no need
for respondent to slope its marks in the same manner as
petitioner had long since sloped its CRYSTAL DRY mark.
Over seventy years ago, a predecessor court to our
primary reviewing Court stated that “one entering a field
of endeavor already occupied by another should, in the
selection of a trade name or trade mark, keep far enough
away to avoid all possible confusion,” and that a court has
“a right, in determining the question of likelihood of
confusion or mistake, to consider the motive in adopting a
mark as indicating an opinion, upon the part of one vitally
interested, that confusion or mistake would likely result
from the use of the mark.” Lever Brothers Company v.
Riodela Chemical Co., 41 F.2d 408, 5 USPQ 152, 154-55 (CCPA
1930).
The teachings of Lever Brothers are as true today as
they were over seventy years ago. Our primary reviewing
Court has stated that “proof of intent to trade on
another’s goodwill, while persuasive evidence of likelihood
of confusion, is not, in any event, a requirement under
Canc. Nos. 30,339; 30,370; and 30,519
11
Section 2(d).” Jewelers Vigilance Committee Inc. v.
Ullenberg Corp., 853 F.2d 888, 7 USPQ2d 1628, 1630 (Fed.
Cir. 1988). Other Courts of Appeal have adopted the same
reasoning of Lever Brothers. See Beer Nuts, Inc. v. Clover
Club Foods Co., 711 F.2d 934, 221 USPQ 209, 216 (10th Cir.
1987)(“One who adopts a mark similar to one already
established in the marketplace does so at his peril …
because the court presumes that he can accomplish his
purpose: that is that the public will be deceived.”);
Official Airline Guides Inc. v. Goss, 6 F.3d 1394, 28
USPQ2d 1641, 1647 (9th Cir. 1993) (“When an alleged
infringer knowingly adopts a mark similar to another’s,
courts will presume intent to deceive the public.”).
In short, given the fact that petitioner’s and
respondent’s goods are legally identical; the fact that all
of the involved marks begin with the word CRYSTAL; the fact
that on this record there is no evidence that others are
using the word CRYSTAL as part of a trademark or trade name
for carpet cleaning preparations or compounds; and the fact
that respondent knowingly adopted its three marks with full
knowledge of petitioner’s CRYSTAL DRY mark and then
respondent presented its marks in a similar fashion, we
find that there exists a likelihood of confusion. Of
course, it need hardly be said that to the extent that
Canc. Nos. 30,339; 30,370; and 30,519
12
there are doubts on the issue of likelihood of confusion,
we are obligated to resolve those doubts in favor of
petitioner as the prior user. Century 21 Real Estate, 23
USPQ2d at 1707; In re Shell Oil Co., 992 F.2d 1204, 26
USPQ2d 1687, 1691 (Fed. Cir. 1993).
Two final comments are in order. We have accorded no
weight to Mr. Whittaker’s testimony about possible
instances of actual confusion as it is too vague.
(Whittaker deposition pages 17-18). Second, at pages 27 to
30 of its brief, petitioner argues that its CRYSTAL DRY
mark is famous. In finding that there exists a likelihood
of confusion, we have done so under the premise that
petitioner has not shown its mark to be famous.
Decision: The petitions for cancellation are granted.