Day-Timers, Inc.v.Medley & Associates, Inc.

Trademark Trial and Appeal Board

Apr 10, 2001

No. 91101705 (T.T.A.B. Apr. 10, 2001)

4/10/01
Paper No. 19
UNITED ST
Trad
M
to app
William G. Pecau a
LLP, for Day-Timer
Leroy D. Medley fo
Before Hairston, W
Judges.
Opinion by Bucher,
An applicatio
Inc. to register t
pad holder with il
during other times
Registration
the ground that ap
applicant’s goods,
and registered mar
1 Serial No. 74/686,
fide intention to usTHIS DISPOSITION IS NOT
CITABLE AS PRECEDENT
OF THE TTAB
DEB
ATES PATENT AND TRADEMARK OFFICE
________
emark Trial and Appeal Board
________
Day-Timers, Inc.
v.
edley & Associates, Inc.
_____
Opposition No. 101,705
lication Serial No. 74/686,830
filed on June 12, 1995
_____
nd Kelly D. Talcott of Pennie & Edmonds,
s, Inc.
r Medley & Associates, Inc.
______
endel and Bucher, Administrative Trademark
Administrative Trademark Judge:
n has been filed by Medley & Associates,
he mark NIGHT-TIMER for “cushioned note
luminated writing device for use in bed or
of darkness,” in International Class 16.1
has been opposed by Day-Timers, Inc. on
plicant’s mark, when applied to
so resembles opposer’s previously used
k DAY-TIMER, registered alone and in
830, filed on June 12, 1995, alleging a bona
e the mark in commerce.
Opposition No. 101,705
2
conjunction with other matter, for binders, fillers, writing
pads, note pads, organizers and other stationery, as well as
a wider array of other home and office supplies and
services, as to be likely to cause confusion, to cause
mistake or to deceive under Section 2(d) of the Trademark
Act. In addition to its trade name usage of Day-Timers, and
its common law rights, opposer pled ownership of the
following incontestable federal trademark registrations:
• DAY-TIMER, as shown below, for “binders and
fillers therefor” 2
• WEEKLY DAY-TIMER, for “binders and fillers
therefor” 3
• POCKET DAY-TIMER, as shown below, for “binders
and fillers therefor” 4
• DAY-TIMER TIME-SAVER, as shown below, for “blank
or partially printed forms – namely, letters,
memos, telephone pads, invoices, purchase orders,
receipts and record forms” 5
2 Reg. No. 706,673, issued on November 1, 1960; second
renewal.
3 Reg. No. 846,278, issued on March 19, 1968; renewed.
4 Reg. No. 873,025, issued on July 15, 1969; renewed.
5 Reg. No. 879,092, issued on October 21, 1969; renewed. The
term “time-saver” is disclaimed apart from the mark as shown.
Opposition No. 101,705
3
• DAY-TIMER TRACKER, for “blank and partially
printed forms” 6
and
• DAY-TIMER COMPANION, for “time planner book” 7
Applicant, in its answer, denied the salient
allegations of the notice of opposition.
The record consists of the pleadings; the file of the
involved application; the testimony, with exhibits, of
opposer’s vice president and general manager of the product
team, David K. Clark; and opposer’s notice of reliance on
seven federal registrations for DAY-TIMER marks, the
discovery deposition testimony of Leroy B. Medley and the
exhibits thereto, and certain of applicant’s responses to
opposer’s first set of interrogatories. Applicant neither
took testimony nor introduced any other evidence. Only
opposer filed a brief on the case and no oral hearing was
requested.
According to Mr. Clark, opposer’s vice president, Day-
Timers, Incorporated has been in business for more than
fifty years, and has been marketing a broad line of
planners, organizers and accessories under the DAY-TIMER
6 Reg. No. 1,411,294, issued on September 30, 1986; §8
affidavit accepted and §15 affidavit acknowledged.
7 Reg. No. 1,699,805, issued on July 7, 1992; §8 affidavit
accepted and §15 affidavit acknowledged.
Opposition No. 101,705
4
mark for more than forty years. As seen above, its federal
registrations also date back more than forty years.
We turn, then, to the issues of priority and likelihood
of confusion.
In view of opposer’s ownership of valid and subsisting
registrations for its pleaded marks, there is no issue with
respect to opposer’s priority. King Candy Co., Inc. v.
Eunice King’s Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108
(CCPA 1974).
Our determination under Section 2(d) of the Lanham Act
is based on an analysis of all of the facts in evidence that
are relevant to the factors bearing on the issue of
likelihood of confusion. In re E. I. du Pont de Nemours &
Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). The factors
deemed pertinent in this proceeding now before us are
discussed below.
We begin our analysis with the finding that opposer’s
DAY-TIMER mark is famous. As our primary reviewing court,
the Court of Appeals for the Federal Circuit, has stated on
a number of occasions, the 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). This is because
a mark with extensive public recognition and renown deserves
Opposition No. 101,705
5
and receives more legal protection than an obscure or weak
mark.
In the instant case, we find that opposer has
established the fame of its marks. The DAY-TIMER marks have
been used extensively throughout the United States for forty
years, the annual volume of sales is extremely large, and in
recent years, opposer has spent extensive amounts on
advertising and promotion, including an annual volume of
more than twenty-five million pieces of direct mail sent to
current and prospective customers. Finally, Mr. Clark’s
summary of the results of consumer surveys (conducted by
opposer through an independent research organization)
support our finding of fame.
We turn then to consider the relationship between
opposer’s and applicant’s goods, applying the following
general principles to this determination. It is not
necessary that these respective goods be identical or even
competitive in order to support a finding of likelihood of
confusion. Rather, it is sufficient that the goods 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
Opposition No. 101,705
6
association or connection between the producers of the
respective goods. See In re Melville Corp., 18 USPQ2d 1386
(TTAB 1991); and In re International Telephone & Telegraph
Corp., 197 USPQ 910 (TTAB 1978).
While many of opposer’s partially printed filler pages
comprise time management forms, the Day-Timers’ catalogues
made a part of this record during the testimony of Mr. David
K. Clark reveal the wide variety of largely blank pages
marketed by opposer. While most fillers are designed to fit
the binders originally purchased for time management
purposes, opposer markets note pads and note pad holders
having purposes ranging from general note-taking to some
very specific uses (e.g., keeping track of daily exercise,
dietary habits, insurance information, inventories of
household contents, etc.). Products are specifically
designed for professionals to use in their working lives,
for adults in their private lives, for students in recording
assignments or even for busy families in staying organized.
The note pad holders range from simple desk-top holders and
portable binders to elaborate multi-purpose travel systems.
Some even incorporate electronic gadgets like clocks, alarms
and calculators.
Except for the fact that it will provide its own source
of illumination, applicant’s note pad holder would
necessarily be quite similar to opposer’s goods, especially
Opposition No. 101,705
7
its binders, fillers, writing pads and note pads. The year-
to-year changes in its catalogues demonstrate that opposer
is constantly adding new items to its product line.
According to opposer’s vice president, opposer conducts
extensive market research among members of the purchasing
public in order to discover what new kinds of products its
customers might want. Hence, if there is a market for
illuminated note pad holders, adding a source of
illumination to its existing note pads would certainly be a
logical zone of expansion for opposer. Moreover, given the
variety of sizes of note pads put out by opposer, one or
more of opposer’s DAY-TIMER note pads could certainly be
used with applicant’s NIGHT-TIMER note pad holder.
Accordingly, we find that these products are complementary
and otherwise very closely related items.
As to channels of trade, applicant has included no
restriction to trade channels or purchasers in its
identification of goods. Thus, the Board must consider that
the parties’ respective goods could be offered and sold to
the same class of purchasers through all normal channels of
trade, including direct mailings, stationery supply
catalogues, and in side-by-side displays in retail stores.
See In re Smith and Mehaffey, 31 USPQ2d 1531 (TTAB 1994);
and In re Elbaum, 211 USPQ 639 (TTAB 1981). In fact, in
considering the class of purchasers at issue herein,
Opposition No. 101,705
8
applicant’s representative testified that applicant intended
to seek out “the motivational self-help market.” That would
appear to be a precise description of a key segment of
opposer’s established market. Finally, nothing in this
record persuades us that purchasers of the types of goods
identified in the application and in the registrations are
necessarily sophisticated purchasers who might well be
immune to source confusion when faced with similar marks on
the related goods involved in this case. See Refreshment
Machinery Incorporated v. Reed Industries, Inc., 196 USPQ
840 (TTAB 1977).
We turn next to a determination of whether applicant's
mark and the registered mark, when viewed in their
entireties, are similar in terms of appearance, sound,
connotation and commercial impression. 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).
Opposition No. 101,705
9
The marks DAY-TIMER and NIGHT-TIMER have the same
number of syllables and are constructed identically (i.e.,
the single syllable word DAY or NIGHT, followed by a hyphen
and then the word TIMER). The ideas of day and night are
logically related and the words are combined in a variety of
ways within a single expression in everyday language.
Hence, these combined terms have similar connotations.
Despite the differences in appearance and sound, we find
that these two marks have very similar overall commercial
impressions.
Furthermore, night is inextricably related to day.
Even those buyers or prospective purchasers of note pads and
note pad holders who may notice the differences between
applicant’s NIGHT-TIMER mark and any of opposer’s DAY-TIMER
marks could still reasonably assume that applicant’s NIGHT-
TIMER note pad holder constitutes a new or companion product
line from the same source as the DAY-TIMER products with
which they are acquainted or familiar. This would be
especially true for those knowing that over the years, many
of opposer’s DAY-TIMER time management devices have been
expanded beyond the traditional work-day hours (e.g., 7:00
AM to 6:00 PM) to include evening hours through 11:00 PM,
and even a growing line of twenty-four hour ("midnight to
midnight") formats.
Opposition No. 101,705
10
Accordingly, upon weighing all of the relevant du Pont
factors, and particularly on the basis of the fame of
opposer’s mark, the similarity of the marks and the close
relationship of the goods upon which the marks are being, or
will be, used, we find the balance to fall in opposer’s
favor. If any doubt remains, this also must be resolved in
favor of opposer as the senior user of its famous mark and
against applicant as the newcomer. See TBC Corp. v. Holsa,
Inc., 126 F.3d 1470, 44 USPQ2d 1315 (Fed. Cir. 1997); and
San Fernando Electric Mfg. Co. v. JFD Electronics Components
Corp., 565 F.2d 683 , 196 USPQ 1 (CCPA 1977). We find that
there is a likelihood of confusion if applicant were to use
his mark NIGHT-TIMER in connection with illuminated memo pad
holder, in view of opposer’s use of the mark DAY-TIMER on
its closely related items.
Decision: The opposition is sustained.