Diamond Brands Inc.

Trademark Trial and Appeal Board

Feb 13, 2001

No. 75476026 (T.T.A.B. Feb. 13, 2001)

2/13/01
Paper No. 11
HRW
UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Diamond Brands Incorporated
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Serial No. 75/476,026
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Paul M. Denk for Diamond Brands Incorporated.
Barney L. Charlon, Trademark Examining Attorney, Law Office
105 (Thomas G. Howell, Managing Attorney).
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Before Simms, Wendel and Bottorff, Administrative Trademark
Judges.
Opinion by Wendel, Administrative Trademark Judge:
Diamond Brands Incorporated has filed an application
to register the mark ROSE BUD for “safety matches.”1
Registration has been finally refused under Section
2(d) of the Trademark Act on the ground of likelihood of
confusion with the mark ROSE BUD which is registered for
“chewing tobacco.”2
1 Serial No. 75/476,026, filed April 29, 1998, claiming first use
dates of May 6, 1914 via a predecessor company.
2 Registration No. 882,744, issued December 23, 1969, Section 8 &
15 affidavits, first and second renewals.
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Ser No. 75/476,026
2
The refusal has been appealed and both applicant and
the Examining Attorney have filed briefs. An oral hearing
was not requested.
We make our determination of likelihood of confusion
on the basis of those of the du Pont3 factors which are
relevant in view of the evidence of record. Two key
considerations in any analysis are the similarity or
dissimilarity of the respective marks and the similarity or
dissimilarity of the goods with which the marks are being
used. See Federated Foods, Inc. v. Fort Howard Paper Co.,
544 F.2d 1098, 192 USPQ 24 (CCPA 1976); In re Azteca
Restaurant Enterprises, Inc., 50 USPQ 1209 (TTAB 1999).
The marks of applicant and registrant are identical.
Both marks consist of the term ROSE BUD and both are
presented in typed drawing form, permitting actual use in
any format including the same format. See Squirtco v. Tomy
Corp., 697 F.2d 1038, 216 USPQ 937 (Fed. Cir. 1983). As
noted by the Examining Attorney, the term appears to be
arbitrary as used with registrant’s chewing tobacco and
thus entitled to the full scope of protection. Applicant
has offered no evidence to the contrary.
3 In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ
563 (CCPA 1973).
Ser No. 75/476,026
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This identity of marks brings into play the well-
established principle that the greater the degree of
similarity in the marks, the lesser the degree of
similarity between the goods that is required to support a
holding of likelihood of confusion. If the marks are the
same, as is the case here, there need only be a viable
relationship between the goods to support such a holding.
See In re Concordia International Forwarding Corp., 222
USPQ 355 (TTAB 1983) and the cases cited therein.
The respective goods are applicant’s safety matches
and registrant’s chewing tobacco. The Examining Attorney
maintains that these goods are related in that they are
goods of the type which may emanate from a common source
and are marketed in the same channels of trade. To support
this position he has made of record copies of several
third-party registrations which show that the same
entities, many being tobacco or cigar companies, often
market both chewing tobacco and other tobacco products and
matches under a single mark.
Applicant insists that the goods are distinct, noting
particularly that matches are marketed in a variety of
places; that they may be either given away for advertising
purposes or purchased for flame ignition purposes; and that
matches and chewing tobacco are manufactured by different
Ser No. 75/476,026
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industries. Although acknowledging that matches may be
given away or sold at tobacco stores, applicant argues that
purchasers of chewing tobacco have no need for matches and,
even if they do use them for other purposes, chewing
tobacco is a more costly item and would be selected with
greater care.
As noted above, the only requirement is that a viable
relationship exists between the goods of applicant and
registrant. It is sufficient if the respective goods are
related in some manner and/or that the conditions
surrounding their marketing are such that they would be
encountered by the same persons under circumstances that
could, because of the similarity of the marks used thereon,
give rise to the mistaken belief that they emanate, or are
associated with, the same source. See In re Albert Trostel
& Sons Co., 29 USPQ2d 1783 (TTAB 1993) and the cases cited
therein.
Applicant has admitted that the products of applicant
and registrant may travel in the same channels of trade, in
that both may be encountered by purchasers in a tobacco
store. The Examining Attorney has produced more than
adequate evidence to establish that tobacco products,
including chewing tobacco, and matches are goods which may
be marketed by, and accordingly emanate from, a single
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entity. See In re Mucky Duck Mustard Co. Inc., 6 USPQ2d
1467 (TTAB 1988). We find it highly likely that when
purchasers in tobacco stores or other retail outlets for
these products encounter both chewing tobacco and matches
bearing the identical mark, ROSE BUD, these purchasers will
assume a common origin for the two products. Even though
the matches may have been manufactured by other than the
tobacco goods producer, it would be a reasonable assumption
on the part of purchasers that the tobacco producer is
disseminating the matches bearing its mark as a promotional
or accessory item. While the purchaser of chewing tobacco
may exercise care in selection of the tobacco and may not
need matches for use thereof, there is nothing to preclude
this same person from assuming that the producer of the
chewing tobacco is providing matches as an accessory item
for other tobacco products. Accordingly, we find a
sufficient relationship to exist between registrant’s
chewing tobacco and applicant’s matches that use of the
identical mark thereon would be likely to lead to confusion
as to source.
Applicant further argues that consideration should be
given to the facts that applicant, either directly or
through its predecessors, has been using its mark since
1914; that a registration was issued to applicant’s
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predecessor in 1915, although inadvertently allowed to
lapse in 1996; and that registrant’s registration issued in
1969 despite the long existing registration to applicant.
Applicant contends that it is not logical to now find
applicant’s mark unregistrable, when the Office in 1969
reached the opposite conclusion with respect to
registrant’s mark. Applicant also asserts that although
registrant claims a date of first use of 1912, and thus
there has been concurrent use of the marks for over eighty-
five years, there have been no instances of actual
confusion, at least to applicant’s knowledge.
While there may have been many years of
contemporaneous registration, we are not bound by the prior
Examining Attorney’s determination as to registrability.
See In re Perez, 21 USPQ2d 1075 (TTAB 1991). If nothing
else, we do not have the registration file before us and
are unapprised as to the circumstances surrounding the
issuance of registrant’s registration in 1969.
As for the lack of actual confusion despite the many
years of coexistence of the marks, we can only note that
this factor can be given little weight because registrant
has not had the opportunity to be heard from on this point.
See In re National Novice Hockey League Inc., 222 USPQ 638
(TTAB 1984). While evidence of long concurrent use without
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either party being aware of any instances of actual
confusion may be a significant factor in resolving
likelihood of confusion in an inter partes case, the very
nature of an ex parte case precludes application of similar
probative value to the mere assertion by an applicant of
the absence of actual confusion. See In re Sieber &
McIntyre, Inc., 192 USPQ 722 (TTAB 1976). Despite
applicant’s arguments to the contrary, a parallel cannot be
drawn to Barre-National Inc. v. Barr Laboratories Inc., 773
F. Supp. 735, 21 USPQ2d 1755 (D.N.J. 1991). That was an
infringement case and the presidents of both parties had
submitted affidavits that they knew of no instances of
actual confusion in at least sixteen years of concurrent
use of the marks. Here we have only the unverified
assertions of applicant and of applicant alone as to the
absence of confusion.
Accordingly, upon weighing all the relevant du Pont
factors, we find confusion likely.
Decision: The refusal to register under Section 2(d)
is affirmed.
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