The Vermont Teddy Bear Co., Inc.v.Build-A-Bear Workshop, LLC

Trademark Trial and Appeal Board

Dec 17, 2004

No. 91115198 (T.T.A.B. Dec. 17, 2004)

wellington Mailed: December 17, 2004
Opposition No. 91115198
THE VERMONT TEDDY BEAR
COMPANY, INC.
v.
BUILD-A-BEAR WORKSHOP, LLC
Before Simms, Quinn, and Chapman, Administrative Trademark
Judges.
By the Board:
On February 13, 1998, applicant filed an intent-to-use based
application1 to register a trademark which appears on the drawing
page as:
The proposed mark is described in the application as follows:

1 Application Serial No. 75434462.
UNITED STATES PATENT AND
TRADEMARK OFFICE
Trademark Trial and Appeal Board
P.O. Box 1451
Alexandria, VA 22313-1451
Opposition No. 91115198

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“The mark consists of a three-dimensional heart shaped object.
The outline of a teddy bear is used to signify the placement
of a heart shaped object inside a stuffed or plush toy animal;
the teddy bear design itself is not claimed as part of the
mark, as the heart shaped object may be placed in any stuffed
or plush toy animal.”
Applicant seeks to register the proposed mark for “plush animals
and stuffed toy animals” in International Class 28, and “retail
store services featuring plush toy animals, stuffed toy animals,
and accessories” in International Class 35.
Opposer timely filed its notice of opposition to registration
of applicant’s proposed mark under Section 2(d) of the Trademark
Act, 15 U.S.C. Section 1052(d), on the ground that applicant’s
mark, as applied to the goods, so resembles a trademark previously
used by opposer, as to be likely to cause confusion, mistake or
deception. Specifically, opposer alleges, inter alia, that it
markets various stuffed toys, including teddy bears, by mail order,
toll-free telephone numbers, retail stores and an online website;
that “one aspect of opposer’s business involves encouraging
customers to place a felt or brass heart within the chest of a
stuffed bear before the chest of the stuffed bear is closed with
thread or other fastening means”; that opposer “sells the concept”
of placing the heart in the stuffed teddy bear through “Make a
Friend For Life” toy animal kits that include a blueprint
instructing the customer to place the heart in the teddy bear; that
opposer also “markets this concept” within its retail stores and
retail stores of others, pursuant to an agreement with opposer,
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whereby opposer’s teddy bears can be assembled “including the step
of placing a felt or brass heart” inside the teddy bear; that
opposer has been “providing the service of permitting customers to
place a heart within the chest of stuffed animals and has been
providing stuffed animals with a heart placed within the chest
thereof continuously in interstate commerce since at least as early
as September, 1996”; that as a result of opposer’s continuous and
extensive use and promotion of the placement of a heart within the
chest of a stuffed animal before the chest is closed, “the trade
and consuming public have been led to believe that this concept
originates with opposer”; that opposer’s mark and applicant’s
proposed mark are “virtually identical, the only possible
difference being the particular materials from which the heart is
manufactured”; that applicant’s proposed mark “so resembles
opposer’s mark as to [be] likely when used in conjunction with
applicant’s goods to cause confusion or cause mistake or to
deceive”; and that opposer believes it has prior continuous use of
its mark.
In its notice of opposition, opposer also pleads ownership of
application Serial No. 757740772 for a mark which appears on the
application drawing page as follows:

2 The application was filed on August 12, 1999, and contains an
allegation of a date of first use anywhere and in commerce of
September 19, 1996 for all goods and services identified in the
application.
Opposition No. 91115198

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and contains the following description of the mark:
“[the mark] consists of a three-dimensional heart shaped
object. The outline of a teddy bear is used to signify the
placement of a heart shaped object inside a stuffed or plush
toy animal; the teddy bear design itself is not claimed as
part of the mark, as the heart shaped object may be placed in
any stuffed or plush toy animal.”
Opposer’s pleaded application covers “blueprints and catalogs” in
International Class 16, “plush animals and stuffed toy animals” in
International Class 28, and “retail store services and mail order
services featuring plush toy animals, stuffed toy animals, and
accessories therefor” in International Class 35.
This case now comes up on applicant’s motion (filed
June 15, 2004) for summary judgment.3 The parties have
briefed the motion. In order to expedite our decision, the
Board presumes familiarity with the issues presented and

3 We note that the motion is filed prior to applicant’s filing an
answer to the complaint. After the Board instituted this
proceeding, applicant filed numerous consented motions for
extensions of time to answer the opposition based on the
representation that the parties were engaged in settlement
negotiations. The Board granted these motions and suspended
proceedings on more than one occasion in view of the parties’
ongoing settlement negotiations.
Opposition No. 91115198

5
does not provide a complete recitation of the contentions
and evidence of each party.
In its motion, applicant argues that, based on the
facts and the documents, and even if all of opposer’s
assertions concerning its use of a heart object are taken as
true, opposer’s use of its alleged mark is merely
“ornamental or decorative” and that, as a matter of law,
cannot give rise to trademark rights. Applicant states that
based on “numerous interrogatories, interrogatory answers,
and several hundred documents” exchanged between the parties
during discovery, the undisputed facts demonstrate that
opposer’s alleged prior use of a three-dimensional heart
consists in actuality of the following: placing a brass
heart pendant around the neck of teddy bears, incorporating
a brass heart pendant with opposer’s teddy bear kits whereby
the pendant is to be placed around the teddy bear’s neck,
and “to the extent that [opposer] now claims that it
provided customers with the option of placing a brass
pendant inside the bear, the only evidence of such alleged
use is a single reference in [opposer’s] 1996 Holiday
catalog.” Applicant asserts that there is “no evidence that
[opposer] used a heart in any manner other [than] as mere
decoration for its bears” and, as a result, opposer cannot
possibly carry its burden of establishing priority, i.e.,
Opposition No. 91115198

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that opposer obtained trademark rights in its mark prior to
the filing date of applicant’s application.
In support of its argument that opposer’s prior use is
not trademark use as a matter of law, applicant makes
reference to the USPTO’s refusal to register opposer’s
pleaded mark, the subject of application Serial No.
75774077, on the basis that the proposed mark does not
function as a trademark or service mark, under Sections 1,
2, 3, and 45 of the Trademark Act. Applicant also cites the
decision by the United States Court of Appeals for the First
Circuit in Wiley v. American Greetings Corp., 762 F.2d 129,
226 USPQ 101 (1st Cir. 1985), which involved the use of a
heart-shaped object affixed to a teddy bear.
Applicant attached the following exhibits to its
motion: opposer’s pleaded application; copies of excerpts
from opposer’s “Holiday 1996 The Great American Teddy Bear”
catalog; a “blueprint” that was included with opposer’s toy
bear kits; copies of three Office actions (dated January 6
and 12, 2000 and September 1, 2000); copies of opposer’s
advertisements for its goods, including those for the “Happy
Anniversary” and “Pregnancy” toy bears; a copy of opposer’s
instructions contained in its toy bear kits; and copies of
opposer’s responses to applicant’s discovery requests.
In response to applicant’s motion for summary judgment,
opposer argues that the parties’ respective marks are
Opposition No. 91115198

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“identical in all respects” and applicant, in fact, “copied”
opposer’s mark; that opposer used its mark prior to the
filing date of applicant’s intent-to-use based application;
and that opposer’s prior use of its mark not only “goes well
beyond mere ornamental or decorative use,” but that its mark
is inherently distinctive. In clarifying its mark and
disputing applicant’s characterization of its mark, opposer
states that it does not claim trademark rights for placing a
heart-shaped object as a pendant on the outside chest of a
teddy bear; rather, opposer states that it “only claims as
its Trademark placement of the heart inside the stuffed
animal.” [Opposer’s Brief p. 4, underline provided by
opposer].
Opposer also attempts to distinguish its proposed
trademark from that in the Wiley case cited by applicant.
Opposer states that its mark consists of placement of a
heart inside the chest of a teddy bear during assembly and
argues that “this procedure is highly distinct from merely
sewing a heart on the chest or outside another portion of
the anatomy of a stuffed teddy bear or another stuffed
animal.” Opposer also argues that there is no evidence of
“any third parties consistently using as a trademark
placement of a heart within the chest of a teddy bear during
assembly.”
Opposition No. 91115198

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At the end of its response to applicant’s motion,
opposer requests that the Board enter judgment in its favor,
citing TBMP § 528.08 (2d ed. rev. 2004) [entry of summary
judgment in favor of nonmoving party]. Opposer argues that
there is sufficient evidence for the Board to conclude that
opposer acquired prior rights in “the placement of a heart
in the chest of a teddy bear” and the record is “abundantly
clear and supports grant of summary judgment in favor of
opposer.”
In support of its response, opposer attached exhibits
that include several of the same exhibits filed by
applicant, but also include the following: copies of self-
described “pages evidencing the creation and mailing” of
opposer’s Holiday 1996 Catalog; printouts of pages from
opposer’s website; copies of correspondence between
opposer’s counsel and the Office concerning the prosecution
of opposer’s pleaded application; a copy of a discovery
deposition taken in this proceeding of Ms. Maxine Clark,
applicant’s president; a copy of a “cease and desist” letter
from applicant’s counsel to Children’s Concept, Inc.;
printouts from the TARR database for registrations owned by
opposer; and copies of charts concerning sales of opposer’s
goods.
Opposer also submitted the declarations of Robert
Patrick Burns, opposer’s Chief Executive Officer (1995-1997)
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and Elisabeth B. Robert, opposer’s Chief Executive Officer
(1997-present) with its response. Attached as exhibits to
the Burns declaration are: (1) a copy of a document that Mr.
Burns avers is dated May 1996 and “provides evidence
concerning the date of conception of this marketing idea”
and (2) a copy of opposer’s “blueprint” instruction sheet
(dated September 6, 1996) which Mr. Burns avers is “included
in [opposer’s toy bear kits], and that evidences the general
time period during which the idea for the [toy] kits was
created.” Attached as exhibits to the Robert declaration
are photographs that Ms. Robert avers show “[opposer’s]
teddy bear with a heart in its chest as assembled at
[opposer’s toy bear kit] station at its factory store”; and
that these photographs “depict the manner of use of the
heart as a trademark as it has been used by [opposer] since
[opposer’s] station opened at [opposer’s] factory store in
1996.”
In a reply brief, applicant contends that exhibits
submitted by opposer with its response were not properly
introduced and requests that the Board “take these
procedural deficiencies into consideration when examining
[opposer’s] alleged proof of use.” Applicant also argues
that the declarations submitted by opposer with its response
contain “inadmissible conclusions” and are “procedurally
deficient.”
Opposition No. 91115198

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Finally, after the filing of applicant’s reply brief,
opposer submitted a “notice of precedential decision”
wherein opposer states that it seeks to “[bring] to the
attention of the Interlocutory Attorney the decision of the
Trademark Trial and Appeal Board in In re Dell Inc., Serial
No. 75851765, dated August 12, 2004” because it “concerns
the types of specimens that are appropriate for
demonstrating trademark use.”4
A party moving for summary judgment has the burden of
demonstrating the absence of any genuine issue of material
fact, and that it is entitled to summary judgment as a
matter of law. Fed. R. Civ. P. 56(c). See also, Celotex
Corp. v. Catrett, 477 U.S. 317 (1986). When the moving
party’s motion is supported by evidence sufficient, if
unopposed, to indicate that there is no genuine issue of
material fact and that the moving party is entitled to
judgment, the nonmoving party may not rest on mere denials
or conclusory assertions, but rather must offer countering
evidence, by affidavit or as otherwise provided in Fed. R.
Civ. P. 56, showing that there is a genuine factual dispute
for trial. See Fed. R. Civ. P. 56(e), and Octocom Systems
Inc. v. Houston Computer Services Inc., 918 F.2d 937, 16
USPQ2d 1783 (Fed. Cir. 1990). In a motion for summary

4 The proper citation for the case is In re Dell, Inc., 71
USPQ2d 1725 (TTAB 2004).
Opposition No. 91115198

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judgment, the evidentiary record and all reasonable
inferences to be drawn from the undisputed facts must be
viewed in the light most favorable to the nonmoving party.
See Lloyd’s Food Products Inc. v. Eli’s Inc., 987 F.2d 766,
25 USPQ2d 2027 (Fed. Cir. 1993).
For purposes of the summary judgment motion, we
initially find it necessary to clarify the “trademark” upon
which opposer relies in this opposition and to make a
determination as to what trademark rights, if any, opposer
is entitled to protect. If opposer is unable to establish
trademark rights in its heart-shaped object, then opposer
will not be able to establish priority or prove its
likelihood of confusion ground as alleged in the notice of
opposition.
Based on all of the parties’ submissions, we find that
opposer seeks trademark protection for a procedure or step
in the assembly of its goods, namely, that of placing a
heart-shaped object in a stuffed toy animal.5 It is evident
from the exhibits submitted by both parties that opposer’s
alleged prior trademark use consists of advertising and
selling toy animals and toy animal kits, usually teddy
bears, that include a heart-shaped object and instructions

5 As noted previously in this order, applicant objected to the
authenticity and manner of introduction into evidence of certain
exhibits submitted by opposer with its response. These
objections are moot in view of our decision herein which was
reached after considering all of the parties’ submissions.
Opposition No. 91115198

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for the consumer to insert the object into the toy animal.
As to its services, we find that opposer also rendered
services at retail stores or stations where consumers could
assemble stuffed toy animals, including the step of
inserting the heart-shaped object inside the chest of the
toy animal. In other words, when consumers or potential
purchasers encountered opposer’s goods or services, the
heart-shaped object was not already inserted in the toy
animal’s chest but could be inserted by the consumer after
purchasing the toy animal kit.
For the reasons discussed below, we find the procedure
or step of placing the heart-shaped object in the toy
animal’s chest by the consumer cannot be construed as a
trademark nor accorded trademark protection under the
Trademark Act.
Section 45 of the Trademark Act defines a "trademark"
as follows:
any word, name, symbol, or device, or any combination
thereof -- (1) used by a person, or (2) which a person
has a bona fide intention to use in commerce and
applies to register on the principal register
established by this [Act], to identify and distinguish
his or her goods, including a unique product, from
those manufactured or sold by others and to indicate
the source of the goods, even if that source is
unknown.6 15 USC § 1127.

6 A “service mark” is defined identically as that of a
trademark, except that it is used to “identify and distinguish
the services of one person, including a unique service, from the
services of others and to indicate the source of the services,
even if that source is unknown.” 15 USC § 1127.
Opposition No. 91115198

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Opposer’s proposed mark fails to meet the definition of
a trademark or service mark and, thus, is not capable of
distinguishing opposer's goods or services. Opposer’s
proposed mark does not consist of any tangible “word, name,
symbol, or device, or any combination thereof” but merely of
an action to be performed by consumers of opposer’s goods
and services. Even under the concept of "trade dress,"
which expands the Trademark Act’s definition of a
“trademark,” trade dress is not so pliable as to give
exclusive rights for the concept of placing a heart inside a
stuffed animal. See 1 J. Thomas McCarthy, McCarthy on
Trademarks and Unfair Competition, § 8:6 (4th ed. 2001), and
cases cited therein, [mere marketing theme of a product or
style of doing business is not protectable trade dress].
To the extent that opposer is merely seeking protection
for the three-dimensional heart, itself, located inside the
chest of a toy animal (and not the step or procedure of
inserting the heart into the chest of the toy animal),
opposer has not submitted any evidence showing trademark use
of the heart, per se. And, even if opposer did submit
specimens showing such use, the evidence already submitted
by both parties clearly shows that the three-dimensional
heart is only placed in the toy animal’s chest by the
consumer after the product has been purchased (either the
kit or in person at retail stores). Opposer is essentially
Opposition No. 91115198

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relying on the consumer to prepare or create opposer’s
proposed trademark. Although opposer’s method of use is
different from that in the Wiley case, we find opposer’s use
and its reliance on the consumer to create the proposed
trademark as even less likely to be perceived as trademark
use. In Wiley, the plaintiff alleged common law trademark
rights in affixing a solid red heart to the left breast of
teddy bear and the court held that this carries no
distinctive message of origin to consumers and hence does
not serve to distinguish it from hearts on other stuffed
animals, such characteristics being commonly adopted and
well known forms of ornamentation. Wiley, 226 USPQ at 103.
Consequently, because opposer’s heart is not even visible
once it is placed inside the chest of the toy animal, this
can only decrease the possibility that it can be a source
indicator for the goods and/or services.
Finally, opposer’s reliance on the Board’s decision in
In re Dell, Inc., supra, is not well-founded. In this
decision, cited by opposer after the briefing period had
closed, the Board held that a printout of a page from Dell’s
website was tantamount to a display associated with the
goods and properly demonstrated trademark use of Dell’s
mark. In the matter at hand, opposer has submitted as
evidence of its use, printouts of web pages from its website
and, again, these web pages demonstrate nothing more than
Opposition No. 91115198

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that opposer sells goods whereby the consumer can insert a
heart into the chest of opposer’s teddy bears and other
stuffed animals. Opposer’s use certainly cannot be
construed as displays associated with the goods because
there is no trademark being prominently displayed.
In view of the above, we find that opposer’s use of a
heart does not constitute trademark use and is not
protectable under the Trademark Act. Drawing all factual
inferences tending to show triable issues in the light most
favorable to opposer, we find no genuine issue of material
fact exists as to whether opposer can demonstrate its
priority.
Accordingly, applicant’s motion for summary judgment is
granted and the opposition is dismissed.7 Applicant’s
application will be forwarded for the issuance of a notice
of allowance.8

7 Opposer’s request to have summary judgment granted in its favor
is denied.
8 Although the opposition is being dismissed, we note that this
does not mean the subject application will ultimately mature into
a registration. Should applicant file a statement of use and
specimens of use in support thereof (which is required for the
mark in the intent-to-use based application to be registered),
the USPTO examining attorney may at that point refuse
registration on various grounds, including failure to function as
a trademark under Sections 1, 2, 3 and 45 of the Trademark Act.