American Maze Co.v.Shady Brook Farm, Inc.

Trademark Trial and Appeal Board

Apr 19, 2001

No. 91110278 (T.T.A.B. Apr. 19, 2001)

4/19/01
Paper No. 31
Bottorff
UNITED STATES PATENT AND TRADEMARK OFFICE
_____
Trademark Trial and Appeal Board
______
American Maze Company
v.
Shady Brook Farm, Inc.
_____
Opposition No. 110,278
to application Serial No. 75/226,922
filed on January 17, 1997
_____
Andrea L. Calvaruso and Marya Lenn Yee of Donovan & Yee LLP
for American Maze Company.
Shady Brook Farm, Inc., pro se.
______
Before Hohein, Walters and Bottorff, Administrative
Trademark Judges.
Opinion by Bottorff, Administrative Trademark Judge:
Applicant seeks registration on the Principal Register
of the mark AMAIZEING CORN MAZE, in typed form,1 for
services recited in the application as “conducting
entertainment exhibitions in the nature of a maze made of
1 As originally filed, the drawing page of the application
depicted the mark, in typewritten letters, as “aMAIZEing CORN
MAZE.” The Trademark Examining Attorney required applicant to
submit either a proper typed-form drawing which depicts the mark
entirely in capital letters or, if applicant was claiming special
form, a proper special form drawing. In response, applicant
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF
THE TTAB
Opposition No. 110,278
2
corn.” In the application, applicant alleged use of the
mark since March 1, 1996. Applicant has disclaimed the
exclusive right to use CORN MAZE apart from the mark as
shown.
Opposer filed a timely notice of opposition to
registration of applicant’s mark, alleging as grounds
therefor that applicant’s mark, as applied to applicant’s
services, so resembles opposer’s mark THE AMAZING MAIZE
MAZE, which opposer has used since 1993 in connection with
cornfield maze entertainment services and related
promotional goods,2 as to be likely to cause confusion, to
cause mistake, or to deceive. See Trademark Act Section
2(d), 15 U.S.C. §1052(d). Applicant filed an answer to the
notice of opposition, by which it admitted opposer’s
allegations regarding opposer’s prior use of opposer’s mark,
but denied opposer’s allegations regarding likelihood of
confusion.
At trial, opposer presented the testimony of its
principal, Donald B. Frantz, with accompanying exhibits, as
well as notices of reliance on various official records.
submitted an amended drawing depicting its mark as a typed-form
drawing, entirely in capital letters.
2 Opposer has pleaded ownership of Registration No. 2,221,411,
issued February 2, 1999, of a mark consisting of the words THE
AMAZING MAIZE MAZE and a circular maze design upon which three
ears of corn are superimposed. The registration is for goods
identified as clothing, namely, caps, t-shirts and sweatshirts.
Opposer submitted status and title copies of this registration at
trial.
Opposition No. 110,278
3
For its part, applicant presented the testimony of its
principal, David Fleming, Jr., with accompanying exhibits.
Opposer and applicant submitted main trial briefs, but
opposer did not file a reply brief. Neither party requested
an oral hearing.
Based on the evidence submitted by opposer and on the
admissions contained in paragraphs 1 and 3 of applicant’s
answer to the notice of opposition and at page 33 of its
trial brief, we find that opposer began using its mark THE
AMAZING MAIZE MAZE in connection with its entertainment
services in 1993, some three years prior to applicant’s
first use in 1996 of applicant’s mark AMAIZING CORN MAZE,
and that opposer’s use of its mark has not been abandoned.
We therefore conclude that opposer has established both its
standing to bring this opposition and its priority under
Trademark Act Section 2(d).4 Thus, the only remaining issue
3 The pages of applicant’s trial brief are not numbered. The
Board has deemed the title page of the brief to be page 1, the
first page of text as page 2, etc. Our references in this
opinion to the page numbers in applicant’s brief are based on
this numbering system.
4 Because opposer has made of record a status and title copy of
its registration covering clothing items in Class 25, opposer
need not prove priority of use as to those goods. See King Candy
Co. v. Eunice King’s Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108
(CCPA 1974). Opposer’s Class 25 registration also suffices to
establish opposer’s standing. However, opposer’s arguments in
support of its Section 2(d) claim in this case are based almost
exclusively on its use of its mark in connection with its
entertainment services, not on its use or registration of the
mark for clothing goods. Opposer does not own a registration
covering its entertainment services. Therefore, to the extent
that opposer’s Section 2(d) claim is based on its use of its mark
Opposition No. 110,278
4
is whether a likelihood of confusion exists.
Our likelihood of confusion determination under Section
2(d) is based on an analysis of all of the probative facts
in evidence that are relevant to the factors bearing on the
likelihood of confusion issue. See In re E. I. du Pont de
Nemours and Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973).
In considering the evidence of record on these factors, we
keep in mind that “[t]he fundamental inquiry mandated by
§2(d) goes to the cumulative effect of differences in the
essential characteristics of the goods [and/or services] and
differences in the marks.” Federated Foods, Inc. v. Fort
Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA
1976).
We turn first to the issues of the similarity or
dissimilarity of the parties’ respective services. It is
not necessary that these services be identical or even
competitive in order to support a finding of likelihood of
confusion. Rather, it is sufficient that the services are
related in some manner or that the circumstances surrounding
their marketing are such that they would be likely to be
encountered by the same persons in situations that would
give rise, because of the marks used thereon, to a mistaken
belief that they originate from or are in some way
associated with the same producer or that there is an
in connection with entertainment services, opposer’s priority of
Opposition No. 110,278
5
association or connection between the producers of the
respective goods. See In re Melville Corp., 18 USPQ2d 1386
(TTAB 1991); In re International Telephone & Telegraph
Corp., 197 USPQ 910 (TTAB 1978).
It is apparent from the testimony of record and the
exhibits thereto, including the parties’ respective
advertisements, that applicant and opposer are using their
respective marks in connection with essentially identical
services, i.e., entertainment services in the nature of
walk-through cornfield mazes. Indeed, applicant has
conceded that “both Applicant and Opposer construct and
operate an outdoor maze for the purpose of entertainment.”
(Applicant’s brief, p. 6.) See also applicant’s answer to
the notice of opposition, wherein applicant admits that
opposer uses its mark “in connection with its cornfield
mazes” (Paragraph 1) and that applicant uses applicant’s
mark “in connection with identical services” (Paragraph 6).
In view of this evidence, we find that applicant’s and
registrant’s respective services are legally identical.
Applicant’s recitation of services includes no
limitations or restrictions as to trade channels or classes
of customers. Accordingly, and regardless of any
limitations or restrictions which might exist with respect
to applicant’s services as actually rendered, we must
use in connection with such services is an issue in this case.
Opposition No. 110,278
6
presume that applicant’s services are marketed in all normal
trade channels for such services and to all normal classes
of customers for such services. See Canadian Imperial Bank
of Commerce v. Wells Fargo Bank, 811 F.2d 1490, 1 USPQ2d
1813 (Fed. Cir. 1987); In re Continental Graphics
Corporation, 52 USPQ2d 1374 (TTAB 1999); In re Elbaum, 211
USPQ 639 (TTAB 1981). Inasmuch as applicant’s services, as
recited in the application, are legally identical to
opposer’s services, we find that the parties’ respective
trade channels and classes of customers are likewise legally
identical.5
The entertainment services involved in this case appear
on this record to be relatively inexpensive, and there is no
probative evidence in the record from which we might
conclude that purchasers are particularly knowledgeable,
careful or discriminating when it comes to identifying and
5 Applicant argues that there are specific differences between
the manner in which applicant and opposer offer their respective
services, i.e., that opposer constructs and operates its maze on
properties owned by third parties, while applicant constructs and
operates its maze on its own farm property; that opposer’s
“business purpose” is to provide an entertainment attraction and
to sell clothing and souvenirs to customers from around the
globe, while applicant’s “business purpose” is to promote its
harvest of corn, sell corn products, and provide instruction on
agricultural issues to a limited audience from applicant’s
surrounding community; and that opposer’s season begins in June
of each year while applicant’s season begins the last week of
September “when opposer’s season for business is substantially or
entirely completed.” (Applicant’s brief at p. 6.) These alleged
differences do not suffice to distinguish the parties’ respective
services for purposes of our likelihood of confusion analysis.
In any event, they are not reflected in applicant’s recitation of
services, and we accordingly cannot accord them any weight.
Opposition No. 110,278
7
distinguishing among the sources of such services, such that
they would be immune to source confusion. Applicant’s
argument to the contrary is not persuasive.
We turn next to the issue of whether applicant’s mark
and opposer’s mark, when compared in their entireties in
terms of appearance, sound, connotation, and overall
commercial impressions, are similar or dissimilar. 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 that confusion as to the source of the
services offered under the respective marks is likely to
result. The focus is on the recollection of the average
purchaser, who normally retains a general rather than a
specific impression of trademarks. See Sealed Air Corp. v.
Scott Paper Co., 190 USPQ 106 (TTAB 1975). Furthermore,
because applicant’s services are legally identical to
opposer’s services, the degree of similarity between the
marks that is required to support a finding of likelihood of
confusion declines. Century 21 Real Estate Corp. v. Century
Life of America, 970 F.2d 874, 23 USPQ2d 1698, 1700 (Fed.
Cir. 1992).
Applying these principles to the present case, we find
that applicant’s mark AMAIZEING CORN MAZE is confusingly
Opposition No. 110,278
8
similar to opposer’s mark THE AMAZING MAIZE MAZE. Although
applicant’s mark is not exactly identical to opposer’s mark
in terms of sight and sound, the differences between the
marks are inconsequential when the marks are viewed in their
entireties. The presence of the word THE in opposer’s mark,
and the absence of that word from applicant’s mark, is of
little or no significance in our comparison of the marks.
The words CORN and MAIZE are cognates;6 applicant’s
substitution of CORN for MAIZE in its mark does little to
distinguish the two marks. This is especially so in light
of the fact that applicant reinserts the word MAIZE into its
mark via its misspelling of the word AMAZING.7 We also find
that the two marks have the same connotation or meaning,
given the essential equivalence of the words CORN and MAIZE
and of the words AMAZING and AMAIZEING.
In view of these similarities between the marks in
terms of sight, sound and connotation, we find that the
marks are more similar than dissimilar in terms of their
overall commercial impressions. Additionally, we find that
the commercial impressions of the two marks are highly
similar because the marks employ the same device or pun,
6 We take judicial notice that “maize” is defined as “Indian
corn.” Webster’s Ninth New Collegiate Dictionary (1990) at 718.
See generally TBMP §712.01.
7 Additionally, as noted supra at footnote 2, opposer’s
registered mark includes a design featuring three ears of corn
alongside the words THE AMAZING MAIZE MAZE, further cementing the
connection between CORN and MAIZE in purchasers’ minds.
Opposition No. 110,278
9
i.e., a conflation of the words “maize,” “maze” and
“amazing.” Even though the pun is constructed slightly
differently in the two marks, it is the pun itself that
purchasers who encounter the two marks at different times
are likely to recall, rather than any slight difference in
construction of the pun. The presence of the pun in both
marks contributes to the confusing similarity of the marks.
For all of these reasons, we find that applicant’s mark and
opposer’s mark, when viewed in their entireties, are similar
rather than dissimilar.8
There is no evidence in the record of any third-party
uses of similar marks in connection with similar services, a
fact which weighs in opposer’s favor in our likelihood of
confusion analysis under du Pont.
Opposer claims that its mark is famous, due to
substantial unsolicited national media coverage of its mazes
over the years and due to its own advertising and
promotional efforts. After careful review of opposer’s
evidence on this issue,9 however, we cannot conclude that
8 We reject applicant’s argument, at page 7 of its brief, that
the marks can be distinguished because applicant always uses its
trade name in conjunction with its mark. Our likelihood of
confusion determination must be made on the basis of applicant’s
mark as it appears on the drawing page of the application,
because that is the mark applicant seeks to register. See, e.g.,
In re Shell Oil Co., 992 F.2d 1204, 26 USPQ2d 1687, n.4 (Fed.
Cir. 1993).
9 It appears from the record that opposer’s multi-acre mazes,
said to be the world’s largest, have been featured in reports in
various national media, including on television programs such as
Opposition No. 110,278
10
opposer’s mark is a famous mark. Opposer’s mazes appear to
be a successful attraction, drawing nearly 500,000 visitors
between the years of 1993 and 1999, but the evidence of
record does not persuade us that opposer’s mark, per se, is
a famous mark that should be afforded an expanded scope of
protection. Cf. Kenner Parker Toys, Inc. v. Rose Art
Industries, Inc., 963 F.2d 350, 22 USPQ2d 1453 (Fed. Cir.
1992).
Opposer contends that instances of actual confusion
between opposer’s and applicant’s respective marks and
services have occurred. Opposer’s evidence on this issue is
largely anecdotal and hearsay in nature, however, and we
accord it no weight in our likelihood of confusion analysis.
Opposer also argues that applicant adopted its mark in bad
faith and with the intention of trading on opposer’s
goodwill. Applicant disputes this charge. We have
carefully considered the testimony and evidence on this
issue, and we are not persuaded of any bad faith adoption by
applicant.
“Good Morning America” and the “Today Show” and in national
publications such as The New York Times, The Wall Street Journal,
USA Today, National Geographic and People Magazine. The content
of the television reports is not apparent from the record; many,
if not most, of the print articles make at least passing
reference to the mark THE AMAZING MAIZE MAZE. Opposer currently
operates mazes at ten locations across the country, and opposer’s
annual advertising and promotional expenses are said to average
$40,000 per maze. There is no evidence as to opposer’s market
share in the walk-through maze industry, nor is the overall size
of that industry apparent from the record.
Opposition No. 110,278
11
We have reviewed all of the evidence of record
pertaining to the du Pont evidentiary factors, and we
conclude that a likelihood of confusion exists. The
parties’ respective marks, while not identical, are
sufficiently similar that confusion is likely to result from
their contemporaneous use in connection with the parties’
identical services, which we presume are offered in the same
trade channels to the same classes of purchasers. This is
especially so in view of the fact that the services are
inexpensive, and in view of the apparent absence of any use
by third parties of similar marks in connection with similar
services. Although we have found that opposer’s mark is not
famous, that there is no evidence of actual confusion, and
that applicant did not adopt its mark in bad faith, those
facts are insufficient to sustain a finding of no likelihood
of confusion in this case, given the substantial weight of
the evidence on the other du Pont factors which, as
discussed above, favor opposer in this case.
In summary, we find that opposer has established both
its priority and the existence of a likelihood of confusion,
and that opposer accordingly is entitled to prevail on its
Section 2(d) claim.
Decision: The opposition is sustained.