Sentry Chemical Co.v.Central Mfg. Co.

Trademark Trial and Appeal Board

Jan 19, 2001

No. 91108924 (T.T.A.B. Jan. 19, 2001)

1/19/01
ejs
Opposition No. 108924
Sentry Chemical Company
v.
Central Mfg. Co.
Before Seeherman, Quinn and Holtzman, Administrative
Trademark Judges.1
By the Board:
On April 5, 2000 applicant filed an amended motion for
reconsideration of the Board’s March 8, 2000 decision
granting opposer’s motion for summary judgment, denying
applicant’s motion for summary judgment, and sustaining the
opposition.2 Applicant asserts that the Board erred in its
consideration of the duPont factor of “the length of time
during and conditions under which there has been concurrent
1 Administrative Trademark Judge McLeod, who participated in the
decision on the parties’ cross-motions for summary judgment, has
since left government service. Accordingly, Administrative
Trademark Judge Quinn has been substituted for her in this
decision.
2 Applicant stated that its amended motion merely corrects some
typographical errors in the motion for reconsideration filed on
April 4, 2000. As part of the motion, applicant moved to
disqualify certain judges from considering the motion for
reconsideration. That motion for disqualification was decided
prior to the motion for reconsideration, hence the delay in
issuing the present decision.
UNITED STATES PATENT AND TRADEMARK OFFICE
Trademark Trial and Appeal Board
2900 Crystal Drive
Arlington, Virginia 22202-3513
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Opposition No. 108,924
2
use without evidence of actual confusion.” In re E.I. du
Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567
(CCPA 1973). In particular, applicant points to the
statement made in the Board’s March 8, 2000 decision, in
connection with applicant’s argument regarding the lack of
evidence of actual confusion, that
the absence of actual confusion is not
sufficient to raise a genuine issue.
Applicant has not submitted any evidence
as to the extent of its use or
advertising of its mark such that it
would raise a question as to whether
there has been an opportunity for
confusion to occur.
p. 7-8.
Applicant asserts that this statement is contrary to
the stipulated facts submitted in support of the parties’
motions for summary judgment, and specifically the fact that
“both parties are engaged in the sale and promotion of their
respective goods through the same channels of trade, and to
the same general class of purchasers.”
Although we have carefully considered applicant’s
motion for reconsideration, as well as the papers filed in
connection with both opposer’s and applicant’s motions for
summary judgment, we are not persuaded that there was any
error in the Board’s March 8, 2000 decision in favor of
opposer. The stipulated fact that the parties sell and
promote their goods through the same channels of trade to
the same classes of customers does not provide any
Opposition No. 108,924
3
information as to the extent of sales or promotion, or even
as to whether the parties’ goods are sold in the same
geographic area. It simply means that the parties’ goods
are sold in the same type of stores, etc.; are promoted
through the same type of media, etc.; and are purchased by
the same kinds of customers, which would include the general
public.
Thus, applicant’s assertion that the parties have
coexisted for 13 years without any evidence of actual
confusion and the stipulated fact that the parties’ goods
are promoted and sold in the same channels of trade, do not
show, nor would it be reasonable to infer, that there has
been substantial use and advertising in the same geographic
areas. Accordingly, we cannot assume from the lack of
evidence of actual confusion that there has been a
meaningful opportunity for confusion to occur if such were
likely. As applicant itself has recognized in its cross-
motion for summary judgment, “the absence of actual
confusion would be meaningful only if the record indicated
appreciable and continuous use by applicant of its mark for
a significant period of time in the same markets as those
served by opposer under its marks.” Gillette Canada Inc. v.
Ranir Corp., 23 USPQ2d 1768, 1774 (TTAB 1992), emphasis
added. The stipulated use by the parties in the same trade
channels does not constitute use in the same markets; as
Opposition No. 108,924
4
indicated above, the stipulated fact does not provide any
information as to the extent of sales or promotion, or that
the goods are sold in the same geographic area. And
applicant’s asserted 13 years of use does not reflect how
substantial the use is, since applicant has provided no
information about the amount of its sales.
As the Board said in its March 8, 2000 decision,
evidence of actual confusion is not necessary to prove
likelihood of confusion.3 Gillette Canada Inc. v. Ranir
Corp., supra. The courts and this Board have long
3 It should be noted that the record is silent with respect to
actual confusion. Opposer stated in its motion that “the parties
mutually agree and request that the Board decide the proceeding
by means of cross motions for summary judgment on the basis of
the application file, the pleadings and the stipulated facts.”
p. 2. The stipulation indicated only that the parties owned
certain registrations, that they used the marks on certain
products, that their goods are sold through all channels of
trade, and that both parties sell and promote their goods through
the same channels of trade to the same class of consumers. No
reference whatsoever was made with respect to actual confusion.
Applicant, in its cross-motion, asserted that the parties had
coexisted for 13 years, and that opposer, in its motion, had not
pointed to any instances of actual confusion. Opposer thereupon
stated, in its reply brief, that the parties had agreed to the
stipulated facts in lieu of conducting discovery and presenting
testimony. Opposer further asserted that “applicant requested
the stipulation and summary judgment procedure, and may not now
assume facts not in evidence.” p. 2. Although applicant clearly
did have the right to bring in evidence either in opposition to
opposer’s motion for summary judgment or in support of its own
cross-motion (and the Board considered such evidence in its March
8, 2000 decision), it appears from the history of the motion that
opposer was under the impression that it could not submit
evidence with respect to the factor of actual confusion, or
evidence to rebut applicant’s assertions of 13 years of co-
existence. Thus, in the context of this proceeding, applicant’s
statement in its opposing brief that “The Opposer is its motion
for summary judgment brief can not point to even one instance of
actual confusion, over a 13 year period…,” p. 5, is somewhat
overstated.
Opposition No. 108,924
5
recognized that evidence of actual confusion is notoriously
difficult to obtain. Weiss Associates Inc. v. HRL
Associates Inc., 902 F.2d 1546, 14 USPQ2d 1840 (Fed. Cir.
1990); Helene Curtis Industries Inc. v. Suave Shoe Corp.,
13 USPQ2d 1618 (TTAB 1989); Henry I. Siegel Co. v. M&R
International Mfg. Inc., 4 USPQ2d 1154 (TTAB 1987).
Moreover, in this case, those of the parties’ goods which
are identical and those which are closely related (e.g., all
purpose cleaners, furniture polish, floor polish) are, by
their very nature, inexpensive products. Even if consumers
of such products were confused, they would be less likely to
complain of or report such confusion.
Each of the evidentiary factors set out in duPont,
supra, may, from case to case, play a dominant role. See
Kellogg Company v. Pack’em Enterprises, Inc., 951 F.2d 330,
21 USPQ2d 1142 (Fed. Cir. 1991). In this case, the factor
of the lack of evidence of actual confusion is outweighed by
the other duPont factors favoring opposer, particularly the
similarity of the marks and the fact that the goods are, in
part, legally identical and, in part, closely related.
Decision: The request for reconsideration is denied,
and our March 8, 2000 decision sustaining the opposition
stands.