E. I. duPont de Nemours and Co.v.duPont Publishing, Inc.

Trademark Trial and Appeal Board

Sep 27, 2001

No. 91109415 (T.T.A.B. Sep. 27, 2001)

9/27/01

Hearing: Paper No. 69
April 12, 2001 PTH

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
______

E.I. duPont de Nemours and Company
v.
duPont Publishing, Inc.
_____

Opposition No. 109,415
to application Serial Nos. 75/094,850; 75/100,959;
75/123,644; and 75/128,916
filed on April 26, 1996; May 1, 1996; June 21, 1996; and
July 2, 1996, respectively.
_____

Dickerson M. Downing and Kathryn E. Diaz of Morgan &
Finnegan, L.L.P. and David J. Gould for E.I. duPont de
Nemours and Company.

J. Douglas Baldridge of Howrey Simon Arnold & White, LLP
for duPont Publishing, Inc.
______

Before Hohein, Hairston and Holtzman, Administrative
Trademark Judges.

Opinion by Hairston, Administrative Trademark Judge:

duPont Publishing, Inc. (applicant) has filed four
applications to register the following marks:
(1) DUPONT REGISTRY in typed capital letters for
“magazines advertising the goods and services
of others featuring a wide variety of
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Opposition No. 109,415
2
collectible, customized luxury services,
consumer products and real estate properties”
in class 16 and “computer services, namely,
providing on-line serial magazine featuring
collectible, customized luxury services,
consumer products and real estate properties
provided on-line by means of a global computer
information network” in class 42;1

(2) DUPONT REGISTRY in typed capital letters for
“promoting the goods and services of others
by preparing and placing advertisements in an
electronic magazine accessed by a global
computer network, and promoting the goods and
services of others through the distribution
of serial magazines on the topic of luxury,
collectible and customized services, items
and properties” in class 35;2

(3) DUPONT REGISTRY and design as shown below,

for “all purpose sport bags” in class 18;
“non-metal key chains” in class 20; “coffee
mugs” in class 21; “T-shirts, caps” in
class 25; and “golf balls and golf tees”
in class 28;3 and

(4) DUPONTREGISTRY.COM in typed capital letters

1 Serial No. 75/094,850, filed April 26, 1996, alleging dates of
first use of January 10, 1985.
2 Serial No. 75/100,959, filed May 1, 1996, alleging dates of
first use of January 10, 1985. The application was subsequently
amended to seek registration under the provisions of Section
2(f) of the Trademark Act.
3 Serial No. 75/123,644, filed June 21, 1996, alleging dates of
first use of January 10, 1985.
Opposition No. 109,415
3
for “promoting the goods and services of others
by preparing and placing advertisements in an
electronic magazine accessed through a global
computer network” in class 35; “electronic

transmission of data and documents via computer
terminals and electronic mail service” in
class 38; “dissemination of educational
materials in the fields of automotive mechanics,
vehicle restoration and repair, vehicle driving
instruction, fitness instruction, yachting,
airplane flight and navigation instruction,
antiques and antique exhibitions, fashion,
wine and wine festivals, sports instruction,
namely, golf and golf exhibitions, tennis and
tennis exhibitions, polo and polo exhibitions,
gemology and jewelry, art and art
exhibitions, dissemination of educational
materials on the subject of horse showing,
breeding and training, dog showing, breeding
and training” in class 41; and “providing
information on a wide range of subjects via
a global computer network” in class 42.4

Registration of each of applicant’s marks has been
opposed by E.I. duPont de Nemours and Company (opposer).
In the amended notice of opposition, opposer alleges that
for many years it has used the trade name and mark DUPONT
and variations thereof for the manufacture, sale and
distribution of a wide variety of products, including
chemicals, fibers, polymers, powders and petroleum
products for end-use applications in virtually every type
of industry; that as a result of extensive use and
promotion, opposer’s DUPONT marks have become famous;
that opposer is the owner of a number of federal
Opposition No. 109,415
4
registrations for such marks; that applicant’s use of its
marks for the involved goods and services is likely to
cause confusion with opposer’s previously used and
registered marks; and that applicant’s use of its marks
will dilute opposer’s DUPONT marks.
Applicant, in its answer, has denied the salient
allegations of the amended notice of opposition5 and
asserts the affirmative defenses of laches, acquiescence,
and equitable estoppel.6 Further, applicant asserts that
refusing to register its marks would interfere with
applicant’s fair use of its marks which incorporate the
surname of Thomas L. duPont, applicant’s president and
chief executive officer.

4 Serial No. 75/128,916, filed July 2, 1996, alleging dates of
first use of June 10, 1996.
5 We note that as a result of an inadvertence, applicant was not
allowed time to amend its answer in response to opposer’s
amended notice of opposition which added a claim of dilution.
However, inasmuch as applicant has contested the claim of
dilution on the merits, we deem applicant’s answer to be amended
to deny the allegations relating to the claim of dilution.
6 We note that applicant also asserts as an “affirmative
defense” that “[t]here is no likelihood of confusion between
Applicant’s marks as they are used in commerce and the alleged
marks of opposer as they are used in commerce.” Apart from the
fact that this is not a proper affirmative defense, it is
pointed out that, in determining likelihood of confusion with
respect to applications for and/or registrations of marks in
typed capital letters, we must consider all reasonable manners
in which the marks could be depicted, and not simply the manner
in which the marks are actually used. For applications and/or
registrations involving marks in a stylized format, we must
consider the marks as depicted therein.
Opposition No. 109,415
5
Finally, in paragraphs 14 and 15 of the answer,
applicant asserts that:
14. In the alternative, Applicant is at least
entitled to registration of the mark “DUPONT
REGISTRY” [in typed capital letters] for magazines
advertising the goods and services of others
featuring a wide variety of collectible,
customized luxury services, consumer products and
real estate in international class 16; and to
registration of “DUPONT REGISTRY” [in typed
capital letters] for promoting the goods and
services of others through the distribution
of serial magazines on the topic of luxury,
collectible and customized services, items
and properties in international class 45.

15. In the alternative, applicant is at least
entitled to registration of the stylized version
of the “DUPONT REGISTRY” mark, for magazines
advertising the goods and services of others
featuring a wide variety of collectible,
customized luxury services, consumer products
and real estate in international class 16; and
to registration of “DUPONT REGISTRY” for
promoting the goods and services of others
through the distribution of serial magazines
on the topic of luxury, collectible and
customized services, items and properties in
international class 35.7

The record includes the pleadings; the files of the
four involved applications; and the testimony, with
exhibits, of opposer’s witnesses Kathleen H. Forte,
Jeffrey Brown, James Moore, John Murray, Alfred Strolle,
Harry O’Neil, and Scott Gostyla. Opposer also submitted

7 With respect to paragraphs 14 and 15 of the amended notice of
opposition, we should point out that applicant subsequently
filed motions to formally amend Serial Nos. 75/123,644 and
75/128,916 to limit the identification of goods and services
therein. These motions will be discussed infra.
Opposition No. 109,415
6
by way of notices of reliance certified copies of the
over fifty registrations owned by opposer; excerpts of
printed publications; portions of the discovery
depositions of Kathleen H. Forte, John Murray and Weston
Anson; and copies of: The Congressional Record
Proceedings concerning the Federal Trademark Dilution Act
of 1995; 104th Congress,
Opposition No. 109,415
7
House of Representatives 1st Session 104-374 Report on
the Federal Trademark Dilution Act of 1995; New York
State Legislative Annual S.I. 1970, Pr. 3055, Mitchell
Ch. 630 (1954); and McKinney’s Session Laws of 1954,
Chapter 630.
Applicant submitted the testimony depositions, with
exhibits, of its witnesses Thomas L. duPont, Michael
Rappeport and Howard Shimmel. Applicant additionally
made of record by way of notice of reliance portions of
the discovery depositions, with exhibits, of Kathleen H.
Forte, James L. Moore, Alfred H. Strolle, Weston Anson,
John Murray and Thomas L. duPont; copies of printed
publications; certified copies of certain registrations
owned by applicant; and opposer’s responses to
applicant’s interrogatories.
Each party undertook a survey on likelihood of
confusion and introduced its own survey evidence.
Numerous objections have been raised by both parties
relative to the testimony and other evidence in this
case. Suffice it to say that these objections have been
taken into account during our determination of the issues
herein. Both parties
Opposition No. 109,415
8
filed briefs on the case8 and both participated in oral
argument.
THE PARTIES
Opposer
Opposer, E.I. duPont de Nemours and Company, was
founded by Eleuthére Iréneé duPont in 1802. It began as
a manufacturer of gunpowder, but has evolved into a world
leader in science and technology, with a product line
that includes chemicals, fabrics and fibers, polymers,
pigments, performance coatings, polyesters,
pharmaceuticals, agricultural and nutritional products.
It is the largest chemical company in the world with
92,000 employees worldwide and 54,000 in the United
States. Opposer has manufacturing and processing
facilities in forty countries. In 1998, opposer’s U.S.
sales revenue exceeded $13 billion and it ranked 16th on
the Fortune 500 list of America’s largest corporations.

8 We note applicant’s motion to strike opposer’s reply brief as
exceeding the 25-page limitation. Although opposer’s reply
brief is 25 pages, opposer filed along with its reply brief a 4-
page paper styled “Memorandum On Evidentiary Matters.” It is
applicant’s position that the evidentiary objections raised in
this memorandum should have been included in opposer’s reply
brief, and thus, “the true reply [brief] exceeds the page
limitation by 4 pages.” While a party may include evidentiary
objections in its brief, it is not prohibited from filing a
separate motion or paper detailing such objections. In view
thereof, applicant’s motion to strike opposer’s reply brief as
exceeding the 25-page limitation is denied.
Opposition No. 109,415
9
Kathleen Forte, opposer’s vice-president for global
public affairs, testified that since 1802 opposer has
used the name “DuPont” or “DuPont Company”. In addition,
since the early 1900’s, opposer has used the “DUPONT
Oval” mark shown below.

Opposer’s current company policy calls for the
“DUPONT oval” mark to be displayed, at least once, on all
company products and communication materials. Opposer
also uses the identifying phrase “Only From DuPont” on
certain product packaging, labeling and in advertising.
Opposer has over two-thousand products and owns over
fifty trademark registrations, dating from as early as
1922, for the “DUPONT oval” mark. These registrations
cover, inter alia, chemicals, pharmaceuticals,
construction materials, paints, measuring instruments,
machine parts, adhesives, film, fiber, acids, explosives,
pigment, fabrics, laminates, x-ray machines, and
biomedical devices. Opposer also owns several
registrations for the mark DUPONT REFINISH RACING and
Opposition No. 109,415
10
design for clothing, flags, banners, household utensils,
mugs, beverage containers and glasses. Each of opposer’s
registrations is valid and subsisting. A 1994 valuation
study conducted by Trademark Licensing Associates, Inc.
estimated the DuPont trade name and mark to be worth
between $11.3 and $15.1 billion.
Most of opposer’s products are sold “business-to-
business.” The “business-to-business” products that
opposer maintains are most relevant to this proceeding
include automotive paints, parts and safety devices;
paint, nylon, and boat hull material for the boating
industry; materials incorporated in clothing used in
sporting activities; and materials used in sporting goods
such as skis and tennis rackets. A few of opposer’s
products are sold directly to consumers and these brands
include TEFLON bakeware liners, DACRON and COMFOREL
pillows, COOLMAX fabric, TYVEK home insulation,
STAINMASTER carpet, and CORIAN solid surfaces. Since the
early 1900’s, opposer has owned The Hotel DuPont in
Wilmington, Delaware and opposer’s consumer brand
products are used in the hotel.
Opposer engages in two basic levels of advertising.
First, it has regularly promoted the overall DUPONT
“brand” in national broadcast and print advertising since
Opposition No. 109,415
11
the 1930’s. Second, opposer’s strategic business units
also engage in advertisements in selected media for their
respective product lines. Since 1985, opposer has spent
approximately $200-250 million on corporate advertising
and $1 to 1.5 billion on product advertising.
Opposer actively promotes the DUPONT mark and is a
current sponsor of NASCAR race car driver Jeff Gordon.
Opposer also sponsors an annual sailboat show in
Annapolis, Maryland and participates in boat shows
including the Fort Lauderdale International Boat Show.
From 1990-1997 opposer sponsored the Tour DuPont bicycle
race. According to Ms. Forte, opposer has sold DUPONT
branded merchandise such as T-shirts, caps, sport bags,
key chains, coffee mugs and the like.
Opposer has published a periodical known as DuPont
Magazine, at least four times a year, since 1913. The
purpose of the magazine is to describe the company’s
products and services and to promote the company’s
contributions to society. The magazine is distributed,
free of charge, to approximately 110,000 current and
former employees, and 125,000 additional individuals such
as corporate executives, federal, state and local elected
leaders, educators and members of the media.
Opposition No. 109,415
12
Applicant
Applicant, duPont Publishing, Inc., was founded in
1984 by Thomas L. duPont, who is a descendant of the
founder of opposer. Applicant’s business is the
publication of three magazines that primarily contain
pictorial advertising for automobiles, homes, and boats,
respectively. Applicant published its first magazine,
primarily devoted to automobiles, in March 1985.
Applicant subsequently expanded to separate magazines
devoted to luxury yachts and homes, and to internet
services and promotional items. The magazines are
available at newsstands and by subscription, and retail
for between $5.00 and $7.00 a copy. Applicant’s
magazines and services are directed to the high-end
market and indeed a readership study of its magazine
devoted to automobiles shows that the average reader is
male, has a net worth of $1.2 million and an annual
income of $172,000, and owns four vehicles.
Applicant has advertised in Playboy and Forbes
magazines. Applicant has engaged in the partial
sponsorship of golf tournaments and has participated at
various boat shows, including the same show in Fort
Lauderdale that opposer attends. Applicant sells and
distributes branded merchandise, such as T-shirts, caps,
Opposition No. 109,415
13
sports bags, coffee mugs and golf balls, under its DUPONT
REGISTRY marks.
PRIORITY
Because opposer has made of record certified copies
of the registrations upon which it relies, which show
such registrations to be subsisting and owned by opposer,
priority of use is not an issue in this proceeding. King
Candy Co. v. Eunice King’s Kitchen, Inc., 496 F.2d 1400,
182 USPQ 108 (CCPA 1974). Moreover, the record
establishes opposer’s priority with respect to use of the
DuPont trade name and “DUPONT oval” mark.
LIKELIHOOD OF CONFUSION
Our determination of likelihood of confusion under
Section 2(d) is based on 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. duPont 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.
Fame of Opposer’s Mark
The first relevant factor in this case is the fame
of opposer’s mark. Before discussing this factor,
however, we must address applicant’s contention that the
“DUPONT oval” is the only mark on which opposer may rely
Opposition No. 109,415
14
in this proceeding. Stated differently, applicant
contends that opposer is not entitled to rely on simply
the term DUPONT.
The record herein shows that opposer is the owner of
over fifty registrations for the “DUPONT oval” mark.
Although opposer has made no registrations of record
which cover DUPONT alone, opposer’s witness testified
that opposer has used DuPont and DuPont Company as trade
names since well prior to applicant’s dates of first use.
Moreover, it is obvious that when the “DUPONT oval” mark
is spoken, it is simply DUPONT and not “DUPONT in an
oval.” The oval operates as a vehicle for display of
DUPONT. As used in the foregoing manners, DUPONT creates
a commercial impression separate and apart and thus
opposer has rights in DUPONT per se. Thus,
notwithstanding applicant’s arguments, we find that
opposer is also entitled to rely on DUPONT alone.
With the foregoing in mind, we turn to a
consideration of the fame of the DUPONT mark. Thomas L.
duPont, applicant’s Chairman and Chief Executive, has
acknowledged that the DUPONT mark is “well-known.” (Dep.
Page 35). However, applicant maintains that the DUPONT
mark’s fame is “limited”, i.e., it does not extend beyond
chemicals and ingredient-type products, and that
Opposition No. 109,415
15
consumers are not likely to be confused vis-à-vis
applicant’s DUPONT REGISTRY marks for magazines and
associated products and services which feature
collectible and luxury products and services.
Opposer, in discussing the fame of the DUPONT mark
in its brief, does not point to any particular products
for which the mark is famous. Rather, it is opposer’s
position that, because the DUPONT mark is used with an
extensive line of products and services “ranging from
bulk chemicals to a
luxury hotel” (Brief, p. 22), the fame of the mark
encompasses many different products, services and fields.
Opposer points to a 1997 Corporate Image Tracking
Study conducted by Opinion Research Corporation which
opposer maintains shows that the “aided awareness” of
DUPONT among upscale consumers is 100%. Further, opposer
argues that this same study shows that it has a leading
presence in a number of fields. The survey was based on
a total of 1,121 telephone interviews conducted among
upscale consumers, and influential individuals involved
in investment, government, business, media, and academia.
The upscale consumer audience, of which there were 612
persons, was defined as individuals who meet the
following minimum qualifications: 25 years of age,
Opposition No. 109,415
16
$50,000 household income and some college education. In
response to the question, “In which of the following
markets (listed below) do you feel DuPont has a leading
presence?”, the percentage of respondents saying “Yes”
was as follows:
Medical and Health 60%
Automotive 48%
Fashion/apparel 46%
Home furnishings 44%
Sports/equipment 37%
Printing/Publishing 20%
As further proof of the fame of the DUPONT mark,
opposer made of record three articles as examples of the
media attention which it receives. The first article is
titled “There Will Always Be A DuPont” from the October
13, 1997 issue of Forbes magazine. The article begins
with “Fortunes come and go, companies wax and wane, but
the DuPont company-almost alone in U.S. industry-has
managed to stay on top throughout this century.” Another
article, which appeared in the January 11, 1999 edition
of The Wall Street Journal, is titled “It Began With
Gunpowder,” and begins with “The history of DuPont speaks
volumes about the history of the modern corporation.” A
third article appeared in the May 11, 1998 issue of
Opposition No. 109,415
17
Barron’s magazine and featured on its cover a photograph
of opposer’s Chief Executive with the caption “THE NEW
DUPONT.”
Opposer’s witness, Ms. Forte, testified that the
DUPONT mark has been in use for well over 100 years and
the record establishes that the mark has been extensively
advertised and promoted throughout the U.S. since the
1930’s. Moreover, opposer owns over fifty registrations
for an array of products, with the first registration
being issued as early as 1922. We also note that in
the case of G. B. Kent Sons, Ltd. v. P. Lorillard Co.,
114 F.Supp. 62, 98 USPQ 404 (S.D.N.Y. 1953), “DuPont” was
characterized as a household name. Additionally, we note
that the legislative history of the recently enacted
Federal Trademark Dilution Act cites DUPONT as an example
of a famous mark.
We conclude that by virtue of its long use,
considerable advertising and promotion, the breadth of
products and services it covers, the extent of the sales
thereunder, and the substantial publicity it has
received, DUPONT is an exceptionally famous mark.
Contrary to applicant’s contention, this fame is not
“limited” to opposer’s principal products, i.e.,
chemicals and ingredient-type products, but extends to
Opposition No. 109,415
18
essentially all of its goods and related products. In
this regard, we are particularly mindful of our primary
reviewing court’s instruction in Recot, Inc. v. M. C.
Becton, 214 F.3d 1322, 54 USPQ2d 1894, 1897 (Fed. Cir.
2000), in its decision remanding that case to the Board
(footnotes omitted):
The Board erred when it limited the
weight accorded to the fame of the FRITO-LAY
mark. We think that the Board’s rule--that
the fame of the FRITO-LAY mark extends no
further than the products with which the
marks are currently used--undercuts the legal
standard of protection for famous marks.
Famous marks are accorded more protection
precisely because they are more likely to
be remembered and associated in the public
mind than a weaker mark. For this reason
this court emphasizes:
When an opposer’s trademark is a strong,
famous mark, it can never be “of little
consequence.” The fame of a trademark may
affect the likelihood purchasers will be
confused inasmuch as less care may be taken
in purchasing a product under a famous name.

We are obliged, therefore, to accord the fame of
opposer’s DUPONT mark full weight in our likelihood of
confusion determination.
Before leaving this factor, two arguments made by
applicant require comment. First, applicant maintains
that the fame of the DUPONT mark emanates from the famous
duPont family and that there has been an understanding
for 200 years establishing the boundary between the
duPont family and opposer. Apart from the fact that
Opposition No. 109,415
19
applicant failed to present evidence regarding the “fame”
of the duPont family, the evidence herein establishes
that the DUPONT mark has become famous as result of
opposer’s extensive efforts. Moreover, it is well
settled that when one elects a family surname as a
trademark or as part of a trademark, the name, for that
purpose, is severed from the owner’s personality and
registrability thereof is subject to the same
consideration as other types of marks, including the
prohibition of Section 2(d) against the registration of
marks where confusion, mistake or deception is likely to
occur. See Ford Motor Co. v. Ford, 162 USPQ 418 (TTAB
1969).
Second, with respect to applicant’s argument that
its DUPONT REGISTRY marks are famous in their own right,
the record falls far short of demonstrating that
applicant’s marks are so well known as to be famous. Cf.
Kenner Parker Toys Inc. v. Rose Art Industries Inc., 963
F.2d 350, 22 USPQ2d 1456 (Fed. Cir. 1992).
Similarity/Dissimilarity of the Marks
The second relevant factor is the similarity or
dissimilarity of the parties’ marks. While the marks
must be compared in their entireties, it is nevertheless
the case that, in articulating reasons for reaching a
Opposition No. 109,415
20
conclusion on the issue of likelihood of confusion,
“there is nothing improper in stating that, for rational
reasons, more or less weight has been given to a
particular feature of a mark, provided [that] the
ultimate conclusion rests on consideration of the marks
in their entireties.” In re National Data Corp., 753
F.3d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985).
Applicant’s DUPONT REGISTRY, DUPONT REGISTRY and
design, and DUPONTREGISTRY.COM marks contain opposer’s
DUPONT mark in their entireties. The first word in each
of applicant’s marks is DUPONT and “it is often the first
part of the mark which is most likely to be impressed
upon the mind of a purchaser and remembered.” See Presto
Products, Inc. v. Nice-Pak Products, Inc., 9 USPQ2d 1895
(TTAB 1988). Moreover, in view of the fame which
opposer’s DUPONT mark has achieved, we think that it is
this well known term which the public would view as the
dominant part of applicant’s DUPONT REGISTRY, DUPONT
REGISTRY and design, and DUPONTREGISTRY.COM marks.
When considered in their entireties, applicant’s DUPONT
REGISTRY marks are similar in sound, appearance, and
commercial impression to opposer’s DUPONT mark. We
should add that the “.COM” portion of applicant’s
DUPONTREGISTRY.COM mark has no source-indicating
Opposition No. 109,415
21
significance and does not serve to distinguish the
parties’ marks.
With respect to opposer’s DUPONT mark and
applicant’s DUPONT REGISTRY and design mark in
particular, we note that when one of the marks comprises
both a word and a design, then the word is normally
accorded greater weight because it would be used by
purchasers to request the goods. See In re Appetito
Provisions Co., 3 USPQ2d 1553, 1554 (TTAB 1987); and
Kabushiki Kaisha Hattori Tokeiten v. Scuotto, 228 USPQ
461, 462 (TTAB 1985). Thus, in analyzing these marks, it
is appropriate to accord greater weight to the words
DUPONT REGISTRY because these words would be used by
purchasers to request applicant’s magazines, in
particular.
Third-Party Use
Where there is evidence of widespread and
significant use by third parties of marks containing
elements in common with marks being opposed, such
evidence has been considered by the Board to demonstrate
that confusion is not likely. In this case, the
overwhelming majority of the evidence relied on by
applicant falls far short of being accorded any probative
value. In particular, the search report listing of
Opposition No. 109,415
22
third-party registrations and purported common law uses
of “DuPont” identified in opposer’s interrogatory answers
is not competent to establish that the listed marks and
names are, or have been, in use. Similarly, the
telephone directory listings are not persuasive to show
any weakness of opposer’s DUPONT mark because this
evidence does not show the extent to which the various
names therein have been used. The remaining evidence,
i.e., a few DuPont classic automobiles; the use of the
mark S.T. DUPONT in a stylized format for lighters, pens
and the like (per an agreement with opposer); and a web
page for Dupont Associates for a consulting firm, do not
constitute widespread or significant third-party use such
that the strength of opposer’s mark, including its
particular fame as indicated above, is lessened.
Actual Confusion
Opposer offered evidence of asserted instances of
actual confusion. Opposer’s vice-president for global
affairs, Kathleen Forte, testified that opposer’s
telemarketing center receives several calls a week
intended for applicant and in some weeks receives as many
as ten such calls. Ms. Forte indicated that this
information was relayed to her by Cindi Hearn, the
supervisor at opposer’s corporate telemarketing center.
Opposition No. 109,415
23
Jim Moore, editor of opposer’s DuPont Magazine, testified
that he receives at least three or four calls a year from
persons who want to speak to someone from applicant
duPont Publishing, Inc. Further, Thomas duPont,
applicant’s Chairman and Chief Executive Officer,
testified that, among two million incoming calls over a
fifteen-year period, his employees had received seventeen
misdirected telephone calls.
Applicant has objected to the testimony of Ms. Forte
as inadmissible hearsay. As regards the other asserted
instances of actual confusion, applicant maintains that
they are insignificant in number. We agree with
applicant that the Forte testimony is hearsay. We note
in this regard that the information relating to the
telephone calls was gathered for the purposes of this
proceeding, and it does not appear that such information
was maintained in the regular course of business.
Moreover, as to the telephone calls received by the
editor of Dupont Magazine, it is not clear whether these
contacts were made on the basis of applicant’s trade
name, i.e., duPont Publishing, Inc., rather than on the
basis of applicant’s DUPONT REGISTRY marks. Further, as
to the telephone calls received by applicant, they are
insignificant in number. In short, we conclude that
Opposition No. 109,415
24
these asserted instances of actual confusion are of
little probative value.
Goods/Services
The parties have spent a considerable amount of time
during trial and in their briefs on the issue of the
relatedness of the involved goods and services.
Opposer’s position essentially is that the goods and
services listed in applicant’s applications either
overlap or are related to the extensive goods and
services which have been offered by opposer under the
DUPONT mark. Opposer argues that the parties’ goods and
services are related because opposer has been involved in
the primary product areas featured in applicant’s
magazines and on-line services, namely, autos, homes and
boats, for decades. In particular, opposer points to the
fact that a number of its products are used in autos,
homes and boats. Finally, opposer argues that both
parties distribute magazines and some of the identical
items of branded merchandise, namely, sports bags, T-
shirts, and caps.
Applicant, on the other hand, argues that the fact
that some of opposer’s ingredient-type products
ultimately make their way into automobiles, homes and
boats, i.e., the consumer products featured in
Opposition No. 109,415
25
applicant’s magazines, does not mean that opposer’s goods
and applicant’s magazines and associated goods and
services are closely related for likelihood of confusion
purposes.
There is no evidence in this record that opposer’s
principal products, namely, chemicals and ingredient-type
products and applicant’s type of magazines and associated
goods and services are offered by the same companies.
Nor is there evidence how these particular goods and
services would be encountered by the same classes of
purchasers. In this regard, we note that opposer’s
witness has acknowledged that most of opposer’s chemical
and ingredient-type products are sold “business-to-
business” and may be “invisible” to the ordinary
consumer. (Murray at 10). Thus, we cannot say on this
record that opposer’s chemicals and ingredient-type
products and applicant’s magazines and related goods and
service are closely related goods and services.
Nonetheless, the record does show that opposer uses
the DUPONT mark on an extensive line of products, several
of which are consumer products and several of which are
items of branded merchandise; that opposer distributes a
magazine under the name DuPont Magazine; and that opposer
operates a luxury hotel under the name Hotel DuPont.
Opposition No. 109,415
26
Survey Evidence
In support of its position that confusion is likely,
opposer offered the results of a consumer survey
commissioned by it for use in this case. The survey was
designed by and conducted under the direction of Harry
O’Neil, Vice-Chairman of the Roper Division of Roper
Starch Worldwide. It was a mall intercept survey of 209
respondents, all men, and its purpose was “to ascertain
whether and, if so, to what extent relevant consumers
might believe that the DUPONT REGISTRY magazines are put
out by [opposer].” The interviewer handed each
respondent an exhibit card with the words DUPONT REGISTRY
and asked question 1 as follows:
The name shown on this card is used on magazines
that advertise the goods and services of others
featuring automobiles, books, real estate, and
other luxury products and services.
From the name shown here [DUPONT REGISTRY – on
the exhibit card], what company would you say
puts out these magazines, or would you say you
don’t have any idea?”

Eighty-eight (88) respondents, or 42%, answered DUPONT or
stated a response that contained the word DUPONT. These
88 respondents were then asked:
Why do you think (answer to Q. 1) is the
company that puts out the magazines with this
name. (PROBE) What else?

Opposition No. 109,415
27
The most frequently given reasons to this question
were because it says DuPont (37 respondents or 42%) and
that DuPont is the name of the magazine (11 respondents
or 13%).
In order to determine if these “DUPONT” responses
were merely recitations of the word on the exhibit card
or were meant to indicate opposer, the two questions
below (nos. 3 and 4) were asked of the 88 respondents.
The responses which are designated with an asterisk(*)
are considered to indicate that the respondents were
referring to opposer.
What, if anything, can you tell me about DuPont,
that is, what kind of company is it? (PROBE):
What else?

Kind of Company __%__ _No._

*Chemical company 33 33

*Make paint 33 33

*Plastics 16 16

*Make synthetics 7 7

*Aluminum 5 5

*Rubber 4 4

*Household products 4 4

*Textiles/Fabrics 3 3

*Sponsors car racing 3 3

*Nylon 2 2

Opposition No. 109,415
28
*Research and development 2 2

Metal 2 2

Don’t know 9 9

Other 15 15

What other products or services, if any, do you
associate with DuPont? (PROBE): What else?

Other Products & Services __%__ No.

*Paint 12 12

*Chemicals 9 9

*Plastics 8 8

Magazines 4 4

*Carpets 3 3

*Cleaning Products 3 3

*Resins 2 2

*Rubber 2 2

*Household products 2 2

*Kitchenware 2 2

*Sponsors race cars 2 2

Cosmetics 2 2

Other 16 16

Nothing else 21 21

Don’t know 28 28

Of course, with respect to questions three and four
above, some respondents gave multiple responses. The
Opposition No. 109,415
29
responses were “netted” and it was determined that 85% of
these respondents and 40% of the total survey respondents
gave a response that “relates to [opposer].” It was Mr.
O’Neil’s opinion that this survey is “convincing evidence
that among relevant consumers, a significant portion
believe that the source of magazines using the DUPONT
REGISTRY name is E.I. DuPont [opposer].” (Survey
summary, p. 5.)
Applicant, during its testimony period, introduced
its own survey conducted by R. L. Associates under the
supervision of Dr. Michael Rappaport. This was also a
mall intercept survey and 200 individuals were
interviewed. Respondents were shown four magazines, one
being applicant’s DUPONT REGISTRY magazine featuring
automobiles. The respondents were given time to look
through each magazine, and in connection with the DUPONT
REGISTRY magazine, the respondents were asked the
following questions?
Question 1: Who do you think puts out this
magazine?

Question 2: Do you think there is any other
company that is involved with putting out or
sponsoring this magazine?

Question 3: What is the name of that company?

Opposition No. 109,415
30
The table below shows the percentage of respondents
who indicated that the DUPONT REGISTRY magazine is put
out and/or sponsored by a company that has the word
“DUPONT” in its name.
DUPONT 48%
DUPONT REGISTRY 9%
DuPont family/ The DuPonts/ Thomas I. DuPont
6%
DuPont Publishing 3%
DuPont Company/DuPont Chemical/The financial
Part of the DuPont Company 3%

DuPont car company 1%

Net any mention “DUPONT” in Question 1
Or Question 3 70%

No mention of DUPONT” in Question 1 or
Question 3 30%

All respondents who gave an answer that included the
word “DUPONT” in response to either Question 1 or
Question 3 were then asked the closed-ended follow-up
question below:
Question 4 Although you may have already said this,
which one or more of these, if any, do you think
DUPONT REGISTRY is published by:

The table shows the results:

No mention of “DUPONT” in Question 1 or
Question 3 30%

Net any mention “DUPONT” in Question
Opposition No. 109,415
31
1 or Question 3 70%

Member of the family that started DuPont
company that makes chemicals 21%

DuPont company that makes chemicals 16%
Person named duPont who is not part of
the family that started DuPont company
that makes chemicals 16%

None of these 16%

Don’t know 7%

As a “control”, all 200 of the respondents were then
asked questions identical to those above with respect to
the Robb Report magazine and a fictitious company with
the name Robb Telecommunications Company. Based on the
responses to these questions, it was determined that
there was a 13% level of noise in the study. This 13%
was subtracted from the 16% (DuPont company that makes
chemicals) responses in the previous table. It was
concluded from this survey that 3% of all respondents
believed the DUPONT REGISTRY magazine was put out and/or
sponsored by the DuPont company that makes chemicals,
i.e., opposer. In particular, the survey states its
conclusion as “no meaningful proportion of consumers are
likely to be confused into believing that DUPONT REGISTRY
magazine is published and/or sponsored by opposer.”
(Study, p. 11).
Opposition No. 109,415
32
Not surprisingly, each party has raised a number of
objections and perceived flaws regarding its adversary’s
survey. As regards applicant’s survey, opposer has
alleged that an improper stimulus was used because
respondents were presented with the mark DUPONT REGISTRY
in a stylized format when two of the applications
involved in this proceeding are for the mark DUPONT
REGISTRY in typed capital letters; that the survey
population was inappropriate in that it included too many
women (i.e., 39.5%) when, according to applicant’s
readership survey, women constitute only 3% of its
readership; and that the follow-up question, “Do you mean
the DuPont Company that makes chemicals?”, was
prejudicial and limiting because it foreclose respondents
who may associate opposer with other products.
Applicant takes issue with the universe of
respondents in opposer’s survey and argues that there was
a failure to determine that the respondents were upscale
consumers which is the audience for applicant’s
magazines. Further, applicant criticizes the fact that
the respondents were not shown any of applicant’s
magazines or given an accurate description of the
magazines. In addition, applicant maintains that no
controls were used to eliminate guessing in the survey
Opposition No. 109,415
33
and that one of the interviewers was being less than
forthright in filling out the questionnaires.
Surveys are statistical evidence that can be an aid
to the Board. It must be kept in mind, however, that
survey evidence is only one factor to be considered in
the overall determination of likelihood of confusion. We
find both Messrs. O’Neil and Rappeport to be qualified as
survey experts. In this case, both parties, with
significant merit, have perceived flaws in the other’s
survey. Our skepticism about the reliability of the
parties’ surveys in this case is fueled by the virtually
opposite results reached by each party, namely a
confusion rate of forty percent (opposer’s) versus three
percent (applicant’s). In view of the flaws noted above
and the wide disparity in these surveys which purport to
determine essentially the same thing, we find that
neither survey is particularly reliable. All in all,
neither survey is of any particular assistance to the
Board in resolving the issue of likelihood of confusion.
Laches, Estoppel and Acquiescence
Applicant maintains that Thomas Murray, opposer’s
former brand manager, knew of applicant’s magazines and
related activities; encouraged applicant in its
activities; knew that applicant intended to register the
Opposition No. 109,415
34
DUPONT REGISTRY mark; and indeed “ceded to registration
of the DUPONT REGISTRY mark.” (Brief, p. 36 ).
Applicant’s President and
Chief executive officer, Thomas duPont, testified on
direct examination that Mr. Murray had knowledge of
applicant’s magazines for some time, that Mr. Murray
never objected to applicant’s use of “duPont REGISTRY”;
and that Mr. Murray “encouraged me in my endeavors and
congratulated me on an attractive, upscale, high quality
book”. (pp. 202-203).
On cross-examination, Mr. duPont testified that he
had “dozens” of conversations with Mr. Murray regarding
applicant’s magazines, the first having occurred during
the initial year of publication; and that he sent copies
of the magazines to Mr. Murray. On further questioning,
Mr. duPont testified as follows:
Q. Did you ever tell Mr. Murray that the company
planned to seek to register the words “duPont
REGISTRY” in block print as a trademark in
the United States Patent and Trademark Office?

A. Quote-unquote, no.

Q. Did you ever tell Mr. Murray that the company
planned to register “duPont REGISTRY” in any
format in the United States Patent and
Trademark Office?

A. I’m certain that I told Mr. Murray we were
going to register the trademark.

Q. When did that conversation occur?
Opposition No. 109,415
35

A. I have no recollection about when that was.

Q. But you are sure it took place?

A. I’m certain.

Q. Where did it take place?

A. I don’t know.

Q. What did Mr. Murray say?

A. I don’t recall.

Q. What exactly did you say.

A. I don’t recall exactly what I said. That’s
what I said; I don’t recall exactly.

It is essentially opposer’s position that it did not
know of applicant’s intent to register the DUPONT
REGISTRY mark in typed capital letters; and that it never
consented to the use or registration of the DUPONT
REGISTRY mark in typed capital letters. Opposer admits
that Mr. Murray and some other DuPont representatives did
see some of applicant’s magazines at some point.
However, according to opposer, these individuals saw the
“composite mark” depicted on the magazines; e.g., DUPONT
REGISTRY and the phrase “A Buyer’s Gallery of Fine
Automobiles” along with a steering wheel design on the
automobile magazine.
Opposition No. 109,415
36
It is well settled that when the right to register
is at issue, the affirmative defenses of laches, estoppel
and acquiescence do not begin to run until the
applications are published for opposition. National
Cable Television Association, Inc. v. American Cinema
Editors, Inc., 937 F.2d 1572, 19 USPQ2d 1424, 1431-1432
(Fed. Cir. 1991) and DAK Industries, Inc. v. Daiichi
Kosho Co., Ltd., 25 USPQ2d 1622 (TTAB 1992). In this
case, opposer timely filed oppositions to the involved
applications after publication of the marks, and thus,
the defenses of laches, estoppel and acquiescence are not
available to applicant here.
As regards applicant’s contention that opposer
consented to registration of the DUPONT REGISTRY mark,
the testimony of Mr. duPont regarding his conversations
with Mr. Murray lacks sufficient detail for us to
conclude that Mr. Murray “ceded” to registration of the
mark.
DECISION
After careful consideration of all the evidence of
record bearing on the relevant duPont factors, we
conclude that confusion is likely to result from the
contemporaneous use of opposer’s DUPONT mark and
applicant’s DUPONT REGISTRY marks on the parties’
Opposition No. 109,415
37
respective goods and services. In particular, we believe
it likely that persons familiar with opposer’s DUPONT
mark, would be likely to believe that opposer is
connected to applicant, in some way, if not directly,
then by authorizing or sponsoring applicant’s activities.
We reach this conclusion by giving heaviest weight to the
exceptional fame of the DUPONT mark and the fact that
opposer uses its mark on a wide variety of goods and
services. An additional factor which weighs in favor of
this conclusion is the similarity in commercial
impression of opposer’s DUPONT mark and applicant’s
DUPONT REGISTRY marks. While we recognize that other
than the items of branded merchandise, e.g., T-shirts,
sport bags, and caps, none of the parties’ goods and
services are identical or closely related, we are mindful
of our primary reviewing court’s further instruction in
Recot, supra at 1897 (emphasis added):
[The] reasoning [that famous marks are
accorded more protection precisely because
they are more likely to be remembered and
associated in the public mind than a weaker
mark] applies with equal force when
evaluating the likelihood of confusion between
marks that are used with goods that are not
closely related, because the fame of a mark
may also affect the likelihood that consumers
will be confused when purchasing these
products.

Opposition No. 109,415
38
Further, to the extent that we have any doubt on the
question of likelihood of confusion, we must resolve that
doubt against the newcomer inasmuch as the newcomer has
the opportunity of avoiding confusion and is obligated to
do so.
See TBC Corp. v. Holsa Inc., 126 F.3d 1470, 44 USPQ2d
1315 (Fed. Cir. 1997); and In re Hyper Shoppes (Ohio)
Inc., 837 F.2d 840, 6 USPQ2d 1025 (Fed. Cir. 1988).
In view of our decision finding a likelihood of
confusion, we need not decide the issue of dilution.
Finally, as noted in footnote no. 7, applicant filed
motions to amend the identification of goods in Serial
Nos. 75/123,644 and 75/128,916. In addition, applicant
filed motions to amend the dates of first use in Serial
Nos. 75/094,850; 75/123,644; and 75/100,959. In view of
our decision herein, the motions are moot. It is noted,
however, that the evidence at trial supports the
amendments to the dates of first use.
Decision: The opposition is sustained and
registration to applicant is refused in each application.

Opposition No. 109,415
39