Corning Inc.v.Vitrocrisa S.A. de C.V. Company

Trademark Trial and Appeal Board

Mar 14, 2005

No. 91119107 (T.T.A.B. Mar. 14, 2005)

Hearing: Mailed:
February 2, 2005 March 14, 2005

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
______

Corning Incorporated

v.

Vitrocrisa S.A. de C.V. Company
_____

Opposition No. 91119107
to application Serial No. 75590697
filed on November 13, 1998.
_____

Mark D. Robins of Nixon Peabody LLP for Corning
Incorporated.

James E. Shlesinger and Daniel T. Earle of Shlesinger,
Arkwright & Garvey, LLP for Vitrocrisa S.A. de C.V. Company.
______

Before Seeherman, Quinn and Walters, Administrative
Trademark Judges.

Opinion by Seeherman, Administrative Trademark Judge:

Corning Incorporated has opposed the application of
Vitrocrisa S.A. de C.V., a Mexican corporation, to register
PYR-O-REY for “ovenware, namely glass casseroles and
bakeware.1 As grounds for opposition, opposer has alleged

1 Application Serial No. 75590697, filed November 13, 1998,
pursuant to Section 44(e) of the Trademark Act, based on a
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF
THE TTAB
Opposition No. 91119107
2
that since prior to any date of use upon which applicant can
rely, opposer has used PYREX and related terms as trademarks
for glass baking ware and related goods; that opposer owns,
inter alia, registrations for PYREX, including Registration
No. 153430 for glass baking ware and Registration No. 317096
for glass baking ware and covers; that PYREX has become a
very distinctive and famous mark; that as early as 1984,
when opposer first learned of applicant’s intent to use PYR-
O-REY, opposer has consistently advised applicant that it
viewed PYR-O-REY as infringing PYREX in the Untied States
and Canada; that in June 1984 applicant agreed not to sell
PYR-O-REY products in the Untied States and Canada; that in
June 1995, after receiving objections from opposer,
applicant informed opposer that it would not export PYR-O-
REY products to the United States and Canada; that
applicant’s mark so resembles opposer’s previously used and
registered mark so as to be likely, when applied to the
goods identified in applicant’s application, to cause
confusion, mistake or deception; that applicant made its
application in bad faith and in an attempt to cause
confusion and trade off of the fame and good will associated

Mexican registration which issued on October 3, 1958. It is
noted that this registration expired on November 17, 2003.
Therefore, should applicant ultimately be successful in this
proceeding, the application will be remanded to the Examining
Attorney, pursuant to Trademark Rule 2.131, to determine whether
the foreign registration has been renewed. See TMEP
§1004.01(a)(3d ed., rev. May 2003).
Opposition No. 91119107
3
with opposer’s mark; and that applicant’s use of PYR-O-REY
will cause dilution of opposer’s mark.
Applicant has admitted that there was correspondence
between Crisa, a division of Vitro S.A., and Corning
Consumer Products, Co. in 1995 in reference to the mark PYR-
O-REY, and has admitted that it is not using PYR-O-REY in
interstate commerce, and otherwise has denied the salient
allegations in the notice of opposition.
The record includes the pleadings; the file of the
opposed application; the testimony deposition, with
exhibits, of opposer’s witness, Paul Burke, and the
deposition on written questions of applicant’s witness, Luis
Miranda Bonilla. Opposer has submitted, under notice of
reliance, applicant’s responses to opposer’s interrogatories
and requests for admission, and certain printed
publications, and applicant has submitted, also under notice
of reliance, copies of third-party registrations taken from
the official records of the U.S. Patent and Trademark
Office, and certain dictionary definitions.
The proceeding has been fully briefed, and both parties
attended an oral hearing before the Board.2
Both parties have raised objections to certain of the
other’s exhibits and testimony in connection therewith.

2 Applicant’s request for an extension of time to file its brief
is granted.

Opposition No. 91119107
4
Opposer has objected to the questions (and therefore to the
answers) propounded to applicant’s witness in his testimony
deposition taken on written questions that refer to
information concerning markets outside of the United States.
The basis for this objection is that, during discovery,
applicant refused to answer any questions regarding any
markets outside of the Untied States. Applicant does not
deny that it refused to provide information concerning
markets outside the United States, but states that the
information presented in the witness’s testimony was simply
submitted as background information. As for information
concerning Canada, applicant states that it submitted this
testimony to rebut testimony submitted by opposer.
We agree with applicant that much of its witness’s
testimony referring to activities in Mexico is background
information, for example, in response to the question as to
when applicant first began using PYR-O-REY, the witness
stated that the company that began using the mark had
previously produced ovenware in Mexico. Moreover, applicant
did provide some information in discovery regarding its
activities in Mexico, for example, that PYR-O-REY products
are manufactured in Mexico, and that the mark was created in
Mexico. In addition, some of the testimony provided by
applicant’s witness was not the subject matter of a
discovery request, and therefore applicant cannot be accused
Opposition No. 91119107
5
of not providing such information (e.g., the countries where
PYR-O-REY is registered). However, with respect to specific
information as to applicant’s marketing plans in other
countries, we agree with opposer that, because applicant
refused to provide such information during discovery, it
should not be considered. As for testimony regarding
applicant’s application in Canada, this information was
initially made of record by opposer during the testimony
deposition of its witness, and such information was also the
subject matter of some of opposer’s cross questions.
Accordingly, we have considered the testimony relating to
applicant’s attempts to register its mark in Canada.
Opposer has also objected to certain questions (or more
particularly, the responses to the questions,) which opposer
characterizes as hearsay. This objection is overruled. It
is clear that the witness was testifying as to his own
understanding of what occurred, based on his knowledge of
the company’s activities. For the same reason, we overrule
opposer’s objections that claim the questions call for
speculation. In fact, some of the questions to which
opposer has objected actually include the phrases, “based on
your understanding” (Question No. 30) and “to the best of
your knowledge” (Question No. 34).
Opposer has also objected to the third-party
registrations referenced in applicant’s notice of reliance,
Opposition No. 91119107
6
stating that copies of such registrations were not attached
to the notice. In its brief, applicant asserted that it did
attach such copies, but on the possibility that, through
inadvertence, copies were not provided to opposer, it
furnished them to opposer with the service copy of its
brief. At the oral hearing, opposer stated that it was
maintaining its objection only if applicant had failed to
submit copies of the registrations with its notice of
reliance as filed with the Board. Because Board records
show that the exhibits were filed with the notice of
reliance, this objection is overruled.
Applicant has objected to Exhibit Nos. 10, 11 and 12 to
the deposition of opposer’s witness. Applicant also objects
to these same exhibits, marked as Exhibits F, G and H, which
were filed with the notice of reliance, as well as Exhibits
I through L, also submitted under notice of reliance.
These documents are all articles taken from the NEXIS
database, and therefore qualify as printed publications
under Trademark Rule 2.122(e). However, it is clear from
applicant’s comments that it is not asserting that such
documents are inappropriate for submission by notice of
reliance, but is criticizing their probative value because
they do not provide current information, and because they
are hearsay. In general, articles taken from periodicals
are not admissible for the truth of the statements contained
Opposition No. 91119107
7
therein, but only for the fact that the articles appeared.
With respect to the survey results reported in these
articles, opposer has argued that, because the surveys were
not conducted for the purposes of litigation, they have
sufficient indicia of reliability to qualify for admission
under Fed. R. Evid. 807 and 803(17). However, it is not the
surveys themselves which opposer seeks to introduce, but
articles reporting the results of the surveys. Therefore,
we have not considered the articles as establishing the
truth of the statements made therein, excerpt insofar as
those statements were confirmed by opposer’s witness.3 As
for the timeliness of the articles, and their consequent
probative value, we have, needless to say, taken into
consideration the dates the articles appeared in reaching
our decision.
Applicant has also objected to the exhibits that
opposer submitted for the first time with its brief,
pointing out that they were not properly made of record.
These exhibits consist, for the most part, of excerpts from
various dictionaries of the page on which “Pyrex” appears.
Applicant is correct that these exhibits are not of record.
However, the Board may take judicial notice of dictionary

3 To the extent the opposer’s witness was aware of survey
results from his knowledge of opposer’s business records, that
knowledge is not considered hearsay even if he was not aware of
the methodology of the surveys.

Opposition No. 91119107
8
definitions, and in this case we elect to do so. University
of Notre Dame du Lac v. J. C. Gourmet Food Imports Co.,
Inc., 213 USPQ 594 (TTAB 1982), aff’d, 703 F.2d 1372, 217
USPQ 505 (Fed. Cir. 1983). We do not, however, take
judicial notice of excerpts from volumes that do not appear
to be dictionaries or encyclopedias, specifically “The
Chicago Manual of Style.”
Opposer, either itself, its subsidiary Corning Consumer
Products Company, or its predecessors-in-interest, has used
the mark PYREX since 1915 when the glass, which can
withstand a certain level of heat, was created. The mark is
used on a variety of glass products, including oven bakeware
and measuring cups. The goods are sold throughout the
United States, in mass merchandising stores such as Wal-Mart
and Target, specialty kitchen shops, and factory outlet
stores. In 1996 sales of PYREX products were in the range
of $169 million, and opposer spent over $800,000 on
television advertising. In 1995 its sales were
approximately $125 million, and opposer had a $3 million
print and advertising budget. Opposer has advertised in
such magazines as “House Beautiful,” “Redbook, “Family
Circle” and Women’s Day.” Opposer also distributes a
housewares catalog featuring its PYREX products to the
buyers at retail merchants, and promotes its goods at trade
shows. It also provides displays and fixtures to retailers
Opposition No. 91119107
9
which are used to promote PYREX products to retail
customers. Opposer’s witness testified, based on his
knowledge of both internal and external surveys, that in
1994-95 PYREX had a 92% awareness, that is, that 92% of the
people surveyed had heard of the brand.
Applicant produces and sells products for the consumer,
food service, institutional and industrial markets. The
products include glassware, including tableware--dinnerware
such as table plates, bowls and cups; drinkware, such as
drinking glasses and cups; ovenware such as heat-resistant
glass plates, bowls and casseroles; barware and stemware,
including wine cups and ice trays; blender jars and coffee
carafes; microwave oven plates; ornamental glassware such as
glass candlesticks, figurines and oil lamps made of glass;
cutlery, including knives, forks and spoons; and disposable
products, including plastic cups, plates and flatware. In
the United States applicant sells glass tableware, including
drinking glasses, bakeware, dinnerware, coffee carafes,
stemware and microwave trays, for the retail, food service,
premium, industrial, floral, candle and OEM markets,
although none of these products are sold under the mark PYR-
O-REY.
The mark PYR-O-REY was first used for ovenware in 1958
by applicant’s predecessor-in-interest, and in 1959 by
applicant itself. The products were sold both in Mexico and
Opposition No. 91119107
10
in some European countries. The mark was chosen to indicate
that the glassware was produced in Monterrey, in the same
manner as other marks, such as CEL-O-REY, CERREY and PANEL-
REY, of companies located in Monterrey. Applicant has never
used the mark PYR-O-REY on products sold in the United
States.
There has been some history between the parties.
First, Applicant’s witness acknowledged that he was aware
that opposer sold products bearing the PYREX mark in the
United States since the 1930’s. In 1983, opposer objected
to a Canadian distributor’s soliciting sales for PYR-O-REY
products in Canada; and in 1985 Corning Glass Works filed an
opposition to the application of Vitrocrisa Crimesa S.A.,
to register PYR-O-REY in Canada. That application was
subsequently abandoned. There is some dispute as to why it
was abandoned, with opposer stating it was the result of its
protest, and applicant stating that it was the result of a
marketing department decision that it was not convenient at
that time to sell ovenware in that market under any of
applicant’s marks.
In the early 1990’s opposer and applicant created a
joint venture in which they set up two separate entities.
The U.S. entity, Corning Vitro, was controlled 51% by
opposer, and the Mexican company, Vitro Corning, was
controlled 51% by applicant. The purpose of this joint
Opposition No. 91119107
11
venture was to bring to opposer glass lines, such as
drinkware and vases, that it did not have, while applicant
was able to sell Corning ware in Mexico. Corning Vitro was
licensed by opposer to use the mark PYREX in the United
States, but PYR-O-REY was not allowed to be used in the
United States.
The joint venture was in existence for approximately
one and one half years, and after it was dissolved the
parties continued to interact to deal with marketplace
issues arising from the dissolution. In 1995 there was some
correspondence between them regarding the mark PYR-O-REY, in
which opposer made it clear that it considered the use of
PYR-O-REY in the United States as likely to cause confusion
and infringe opposer’s trademark. On the other hand,
applicant stated in correspondence that, although it had
“unilaterally decided,” for market reasons, not to export
products under the mark PYR-O-REY to the United States, it
was reserving the right to change that decision should
market conditions warrant.
Opposer has made of record status and title copies of
four registrations for the mark PYREX for “glass”;4 “glass
baking ware”;5 and the “following articles made from glass—

4 Registration No. 115846, issued March 13, 1917 (with a filing
date of June 22, 1915); republished under Section 12(c); Section
8 & 15 affidavits accepted and acknowledged; 4th renewal.
5 Registration No. 153430, issued March 21, 1922 (with a filing
date of October 6, 1921); republished under Section 12(c);
Opposition No. 91119107
12
namely, lenses and glasses for illuminating, signaling, and
condensing apparatus; polished disks, reflector blanks,
cylinders, pipes, tubes, tubing, and fillings therefore;
gauge glass tubes and gauge protector glasses; dishes,
bowls, tubs, plates, and sheets; distilling, condenser, and
absorbing apparatus for use in various industrial arts, and
parts therefor; beakers, flasks, funnels, stop-cocks,
cascade dishes, drying trays, retorts, reagent bottles,
ampoules, bulbs, food and pharmaceutical containers,
pipettes, table and baking ware and covers therefor; utility
dishes, trays, tubing for gaseous discharge tubes”;6 and for
the mark PYREX PORTABLES for “bakeware with a
heating/cooling pad sold as a unit.”7

Section 8 & 15 affidavits accepted and acknowledged; 4th renewal.
(At the time the USPTO prepared the status and title copy during
opposer’s testimony period, the fourth renewal had not yet been
effected by the Office. In accordance with Board policy, we have
checked the updated Office records to ascertain that the
registration has been renewed and that the registration is still
in effect. See Time Warner Entertainment Co. v. Jones, 65 USPQ2d
1650 (TTAB 2002); TBMP §704.03(b)(1)(A) (2d ed. rev. 2004).
6 Registration No. 317,096, issued September 11, 1934;
republished under Section 12(c); Section 8 & 15 affidavits
accepted and acknowledged; 4th renewal. (At the time the USPTO
prepared the status and title copy during opposer’s testimony
period, the registration was not due for a fourth renewal. In
accordance with Board policy, as set forth in footnote 5, we have
checked the updated Office records to ascertain that the
registration has been renewed and that the registration is still
in effect.
7 Registration No. 2032882, issued January 21, 1997; Section 8 &
15 affidavits accepted and acknowledged. Again, at the time,
during opposer’s testimony period, that the Office prepared the
status and title copy of the registration, the Section 8
affidavit was not yet due. Accordingly, we have confirmed from
Office records that the Section 8 affidavit was accepted and the
Section 15 affidavit was received.
Opposition No. 91119107
13
Opposer also introduced, through the testimony of its
witness, Paul Burke, copies of additional registrations for
PYREX for glass products for scientific and electrical
usages.8 Mr. Burke testified to opposer’s ownership of
these registrations, and to their current status.9
In view of these various registrations, priority is not in
issue. See King Candy Company v. Eunice King’s Kitchen,
Inc., 496 F.2d 1400, 182 USPQ 108 (CCPA 1974). Moreover,
the record shows that opposer has been using the mark PYREX
for glass articles, including bakeware and ovenware, for
many decades prior to the filing date of applicant’s
application.
This brings us to a consideration of the issue of
likelihood of confusion. Our determination is based on an
analysis of all of the probative facts in evidence that are

8 Registration No. 195029 for condenser lenses, light filters,
navy sight glasses and vacuum pumps for laboratory use;
Registration No. 311001 for tubing for electrical fuses; No.
417987 for glass wool, namely fibres and filaments of glass;
Registration NO. 182301 for beakers, flasks, test tubes,
extraction tubes and apparatus, ignition tubes, centrifuge tubes,
evaporating dishes, distilling apparatus, condensers, volumetric
ware, funnels, stopcocks, tubing, tube joints, and fixtures,
cascade dishes, desiccators, drying trays, covers, retorts,
slight glasses and gauges, graduated ware, stoppers, graduated
seals for uniting glass parts of different composition, and sheet
glass for laboratory work.
9 Although opposer specifically referred to only Registrations
Nos. 153430 and 317096 in its notice of opposition, because the
notice of opposition indicated that opposer owned additional
registrations, and because applicant has not objected to their
consideration, we deem the pleadings to be amended pursuant to
Rule 15(b) of the Federal Rules of Civil Procedure to include the
additional registrations.

Opposition No. 91119107
14
relevant to the factors set forth in In re E. I. du Pont de
Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). See
also, In re Majestic Distilling Company, Inc., 315 F.3d
1311, 65 USPQ2d 1201 (Fed. Cir. 2003).
We begin with the factor of fame since fame of the
prior mark plays a dominant role in cases featuring a famous
or strong mark. Kenner Parker Toys Inc. v. Rose Art
Industries Inc., 963 F.2d 350, 22 USPQ2d 1453 (Fed. Cir.
1992). As a mark's fame increases, the Act's tolerance for
similarities in competing marks falls. Id., 22 USPQ2d at
1456. Applicant has acknowledged that opposer’s mark PYREX
is a strong mark and “may be considered to be well known.”
Brief, p. 22. We agree with applicant that opposer’s mark
is strong, and further, we find that it is a famous mark.
The extraordinary amount of time that it has been used for
cookware products, the amount of sales and the expenditures
on advertising, the strong brand awareness, and household
penetration, all go to demonstrate the fame of the mark.10
Moreover, the dictionary definitions of which we take
judicial notice identify PYREX as a trademark, e.g., “a
trademark applied to a variety of glasses and glassware
usually resistant to heat, chemicals, or electricity; hence

10 Much of the information that demonstrates the fame of
opposer’s mark is found in Exhibit 18, which was filed under
seal. Accordingly, we have not set forth these figures in our
opinion.

Opposition No. 91119107
15
[sometimes not cap.], glass or glassware bearing this trade-
mark.”11 See also, “Pyrex: a trademark for any of various
types of heat-resistant and chemical-resistant glass.”12
When a trademark attains dictionary recognition as a part of
the language, we take it to be reasonably famous. B.V.D.
Licensing v. Body Action Design, 846 F.2d 727, 6 USPQ2d
1719, 1720 (Fed. Cir. 1988). This duPont factor strongly
favors opposer.
With respect to the goods, they are, in part,
identical. Applicant has identified its goods as glass
casseroles and bakeware; opposer’s Registration No. 153430
is for “glass baking ware” and its Registration No. 317096
includes “baking ware and covers therefor”. Because the
goods are legally identical, they must be presumed to travel
in the same channels of trade to the same classes of
customers. In this case, opposer’s evidence shows that the
trade channels would include mass merchandisers, specialty
kitchen stores and outlet stores, and the customers would
include virtually anyone who cooks. The factors of the
similarity of the goods and of the trade channels favor
opposer.

11 Webster’s New International Dictionary of the English
Language, 2d ed. unabridged.
12 The American Heritage Dictionary of the English Language,
© 1973.

Opposition No. 91119107
16
There is some argument between the parties as to the
factor of the conditions under which and buyers to whom
sales are made. There is no evidence as to the cost for
either party’s products, but it is common knowledge that
glass casseroles and bakeware can be relatively inexpensive
items. The fact that opposer sells its products through
mass merchandisers such as K-Mart and Target supports this
view. Applicant acknowledges that “the price of Applicant’s
and Opposer’s goods are not extreme.” Brief, p. 20. These
goods can also be purchased by anyone who cooks, which would
include both serious cooks and those who simply need a
container in which to heat up food in a microwave oven. The
latter group is not likely to exercise a great deal of care
in the selection of cooking products, or to research such
products before purchasing them. Rather, such a consumer
may simply see a glass baking dish during a trip to a
supermarket or retail store, realize that he or she has a
use for it, and purchase it without giving it a great deal
of thought or examination. In this respect, at least some
of the sales of the identified goods fall into the category
of impulse purchasing, and this factor therefore favors
opposer.
We turn next to a consideration of the marks, keeping
in mind that, when marks would appear on virtually identical
goods or services, the degree of similarity necessary to
Opposition No. 91119107
17
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). Although, as
applicant has pointed out, there are specific differences
between the marks, "a purchaser is less likely to perceive
differences from a famous mark." B.V.D. Licensing v. Body
Action Design, supra, 846 F.2d at 730, 6 USPQ2d at 1722
(Nies, J., dissenting)(emphasis in original), and quoted
with approval in Kenner Parker, supra. Both marks begin
with the letters PYR, and because of the fame of opposer’s
PYREX mark, many consumers are likely to see these beginning
letters and not look beyond them. Although we acknowledge
that there are differences in the appearance and
pronunciation of the marks, these differences fade in light
of the fame of opposer’s mark, the legally identical goods,
and the fact that the goods may be purchased without care or
deliberation. Moreover, in some respects the connotation of
the marks can be considered the same. Applicant has pointed
out that the term PYREX can be seen as being composed of the
Greek word for “fire” and the Latin word for “king,” and the
etymology of PYREX given in Webster’s dictionary, supra,
(“Gr. pyr fire + L. rex king”) supports this view. The
literal translation of applicant’s mark, as applicant has
stated in its response to Interrogatory No. 2, is “Fire of
the King.” Although we believe that opposer’s mark has
Opposition No. 91119107
18
become so famous that it will be regarded solely as the
trademark PYREX, without any other meaning, to the extent
that consumers do engage in analyzing the marks they will
conclude that they have the same meaning.
We have taken into consideration applicant’s argument
that there are numerous third-party registrations of marks
beginning with the letters “PYR.” These registrations do
not, of course, show that the marks are in use and, indeed,
we note that many of them have expired or have been
cancelled. Most are also for goods very different from
glass bakeware. The fact that these “PYR” marks were
adopted for goods such as convection furnaces, heaters and
industrial burners indicates that the marks may have been
adopted because they suggest the dictionary meaning of the
prefix “PYRO-” as “fire or heat.”13 However, even if we
accept that there is some suggestive connotation to the PYR
portion of opposer’s mark PYREX, the mark in its entirety
has achieved such fame that it is entitled to a broad scope
of protection. In this respect, the present situation is
different from those in the cases cited by applicant in
support of its argument that “in cases where the common
elements of the marks include highly suggestive terms, the
Board has taken particular note of the dissimilarity and the
overall commercial impression of the marks, in finding no

13 Webster’s, supra.
Opposition No. 91119107
19
likelihood of confusion….” Brief, p. 18. In the three
cases cited by applicant--Hard Rock Café Licensing Corp. v.
Elsea, 48 USPQ2d 1400 (TTAB 1998); General Mills Inc. v.
Health Valley Foods, 24 USPQ2d 1270 (TTAB 1992); and Red
Carpet Corp. v. Johnstown American Enterprises Inc., 7
USPQ2d 1404 (TTAB 1998)—opposer was not able to establish
that it had a famous mark. Moreover, in the General Mills
case, there was evidence of numerous third-party uses of the
element FIBER which was common to both marks, and a finding
that FIBER is a generic term in the food industry.
The sixth duPont factor is the number and nature of
similar marks in use on similar goods. Applicant has
acknowledged that there is no evidence of use of any such
marks, and therefore this factor favors opposer, in that it
provides further support that opposer’s mark is a strong
mark.
The factors regarding actual confusion or the lack
thereof must be considered neutral in view of the fact that
applicant has not used its mark in the United States.
With one exception, we will mention only briefly the
remaining duPont factors. With respect to the factor of the
variety of goods on which opposer uses its mark, although
applicant asserts that the mark is used only on goods
related to the glass industry, we find that the mark is used
on a variety of cookware and kitchen items and that, because
Opposition No. 91119107
20
these are the same items for which applicant seeks to
register its mark, this factor must either be viewed as
favoring opposer or being neutral; it does not favor
applicant. The factor of the extent of potential confusion
favors opposer, since the parties’ goods are, in part,
identical and because bakeware is an item bought by millions
of consumers.
The prior history between the parties falls under both
the factor of market interface and of “any other established
fact.” Applicant has admittedly known of opposer’s use of
PYREX since the 1930s. Applicant has also had a business
relationship with opposer, and has been aware of opposer’s
view that applicant’s use of PYR-O-REY on glass products in
the United States is likely to cause confusion. Despite
this, applicant decided to apply for registration of this
mark in the United States. Although it is our view, after
considering the various duPont factors, that confusion is
likely, to the extent that any doubt exists, this history
reinforces that we should apply the well-established
principle that doubt must be resolved in favor of opposer,
as the registrant and prior user of the famous PYREX mark.
See In re Pneumatiques, Caoutchouc Manufacture et Plastiques
Kleber-Colombes, 487 F.2d 918, 179 USPQ 729 (CCPA 1973).
In view of our finding that opposer has established
that it is entitled to judgment on the ground of likelihood
Opposition No. 91119107
21
of confusion, we elect not to consider opposer’s additional
ground of dilution.
Decision: The opposition is sustained. As noted in
footnote 1, should applicant ultimately prevail in this
proceeding, the application will be remanded to the
Examining Attorney to determine whether the Mexican
registration upon which it is based has been renewed.