EuRex Inter-national, Inc.v.Pepin Mfg., Inc.

Trademark Trial and Appeal Board

Feb 18, 2004

No. 91116333 (T.T.A.B. Feb. 18, 2004)

Mailed:
February 18, 2004
Paper No. 38
Bucher
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
EuRex International, Inc.
v.
Pepin Manufacturing, Inc.
________
Opposition No. 91116333
to Application Serial No. 75691243
_______
William E. Johnson, Jr. of The Matthews Firm for EuRex
International, Inc.
Christopher A. Mitchell of Young & Basile P.C. for Pepin
Manufacturing, Inc.
_______
Before Hairston, Bucher and Drost, Administrative Trademark
Judges.
Opinion by Bucher, Administrative Trademark Judge:
Pepin Manufacturing, Inc. seeks to register the mark
HAIR BUSTER on the Principal Register for “adhesive rollers
for removing lint, hair, and other foreign particles from
clothing, furniture, and upholstery” in International Class
21.1
1 Application Serial No. 75691243 was filed on April 26, 1999
by Pepin Manufacturing, Inc., based upon applicant’s allegation
of a bona fide intention to use the mark in commerce. Applicant
has disclaimed the word “Hair” apart from the mark as shown.
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF
THE TTAB
Opposition No. 91116333
- 2 -
EuRex International, Inc. has opposed the registration
of applicant’s mark. In its notice of opposition, opposer
alleges that it has used the mark HAIRBUSTER in conjunction
with a “pet shedding comb and grooming device” since
February 1999. It also claims that it will be irreparably
damaged if applicant should be issued a registration given
the likelihood of confusion between these substantially
identical marks when used on these related goods. (Notice
of Opposition at pp. 1 – 2) Applicant denied the salient
allegations of the notice of opposition.
The record consists of the following items: the file
of the involved application; the trial testimony deposition
of opposer’s president and CEO, Haraldur Karlsson, with
accompanying exhibits; and applicant’s Notice of Reliance
upon opposer’s responses to certain of applicant’s
interrogatories. Both parties have filed briefs, but an
oral hearing was not requested.
Opposer does not allege ownership of a registration,
but relies upon its common law rights in the mark
“HairBuster” for a pet shedding comb and grooming device.
Hence, “the decision as to priority is made in accordance
with the preponderance of the evidence.” Hydro-Dynamics
Inc. v. George Putnam & Company Inc., 811 F.2d 1470, 1
USPQ2d 1772, 1773 (Fed. Cir. 1987).
Opposition No. 91116333
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Based upon Mr. Karlsson’s testimony, the record shows
that opposer entered into a “Confidentiality Agreement”
with a Chinese manufacturer, SinoPro International, on
January 17, 1999. (Karlsson dep. at pp. 15 – 16; Karlsson
exhibit #6) This executed document refers to HairBuster as
opposer’s trademark for these goods. While this document
makes it clear that opposer had adopted its trademark
sometime before January 1999, we agree with applicant that
this document does not constitute technical trademark use.
Moreover, the use of the term HairBuster in this document
with a potential future supplier of the goods certainly
does not qualify as use analogous to trademark use. See
T.A.B. Systems v. PacTel Teletrac, 77 F.3d 1372, 37 USPQ2d
1879, 1881 (Fed. Cir. 1996); Dyneer Corporation v.
Automotive Products, plc, 37 USPQ2d 1251 (TTAB 1995); and
Era Corp. v. Electronic Realty Associates, Inc., 211 USPQ
734, 745 (TTAB 1981).
During February 1999, opposer designed a two-page
flyer about its HairBuster product, although the flyer does
not identify opposer and contains no information about
purchasing the product (Karlsson exhibit #5). In fact, it
is clear that the product was not yet available at this
juncture. (Karlsson dep. at p. 61) Additionally, Mr.
Karlsson was unsure of how many of these flyers were
Opposition No. 91116333
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distributed. (Karlsson dep. at pp. 14, 61) Again, we find
that this effort has not been shown to have been of a
sufficient nature and extent as to create a public
identification of the term with opposer’s goods, and hence
does not qualify, for priority purposes, as use analogous
to technical trademark use. T.A.B. Systems, supra.
On February 22, 1999, the Chinese manufacturer issued
an invoice for the first fifty of the HairBuster combs and
shipped them to opposer in Kingwood, TX soon thereafter.2
(Karlsson dep. at pp. 19, 22, 59, 63; Karlsson exhibit #20)
This first shipment of products had no packaging, but
opposer did have his trademark in slightly-raised letters
on the red rubber sleeve intertwined through the tines of
the comb (although it is nearly impossible to even find
these slightly-raised, red-on-red letters):
While receipt of the manufactured goods is a necessary
predicate for later sales, the ordering of these goods by
2 The most significant entry on this invoice was the billing
for the injection molding tooling needed to manufacture the
rubber sleeves.
Opposition No. 91116333
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Mr. Karlsson, the shipment of these combs from SinoPro
International and the receipt of the goods by EuRex
International clearly does not involve use of the mark with
customers.
From opposer’s standpoint, the critical period for
establishing its first use is March and April of 1999 – a
period during which the record shows that the first sales
of these combs took place. On March 15, 1999, opposer sold
fifteen of these combs to Dieter Schaefer, described by
opposer as his “distributor” in Germany. (Karlsson dep. at
pp. 16 – 17, 57 – 59; Karlsson exhibit #7) Then on March
29, 1999, opposer sold ten combs to an acquaintance from
his hometown of Kingwood, Texas, who Mr. Karlsson had
bumped into at a social event. On April 2, 1999, Mr.
Karlsson sold three more combs to another acquaintance who
dropped by Mr. Karlsson’s house – a neighbor from several
doors down the street who had maintained Karlsson’s home
air conditioning system. (Karlsson dep. at pp. 21 – 23, 65
– 70; Karlsson exhibits ## 9 and 10) These three separate
sales of unpackaged combs constitute the only documented
sales of the product prior to applicant’s filing date.3
3 The record demonstrates sufficient public use of the mark
from July 1999 to the present. Specifically, according to Mr.
Karlsson, opposer’s marketing program for the HairBuster product
was “kicked off” at the Astro World Series of Dog Shows in July
1999. (Karlsson dep. at pp. 28 – 30; Karlsson Exhibit #15) The
Opposition No. 91116333
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As for the sale to Mr. Schaefer in Bad Munder,
Germany, applicant charges that this foreign trademark
usage is ineffectual to create trademark rights in the
United States, citing to La Societe Anonyme des Parfums Le
Galion v. Jean Patou, Inc., 495 F.2d 1265, 181 USPQ 545,
547, n.1 (2nd Cir. 1974); and Fuji Photo Film Company, Inc.
v. Shinohara Shoji Kabushiki Kaisha et al., 754 F.2d 591,
225 USPQ 540 (5th Cir. 1985). Moreover, applicant argues
that when the serendipitous manner in which opposer made
two token sales to opposer’s personal acquaintances in
Kingwood is combined with a total absence of any verifiable
advertising, these sales do not constitute bona fide events
in the ordinary course of trade, and that they consequently
failed to make use of opposer’s alleged mark “in a way
sufficiently public to identify or distinguish the marked
goods in an appropriate segment of the public mind as those
of the adopter of the mark.” Lucent Information
Management, Inc. v. Lucent Technologies, Inc., 986 F.Supp.
253, 45 USPQ2d 1019 (D. Del. 1997), aff’d 186 F.3d 311, 51
USPQ2d 1545 (3rd Cir. 1999); Natural Footwear Limited v.
Hart, Schaffner & Marx et al., 760 F.2d 1383, 225 USPQ 1104
first commercial promotion of the HairBuster product (e.g., in
newspapers, periodicals and electronic media) was initiated in
June and July of 1999 – all subsequent to applicant’s filing
date. (Opposer’s answers to applicant’s interrogatories ## 15 &
16)
Opposition No. 91116333
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(3rd Cir. 1985); ZazZu Designs v. L’Oreal, S.A., 979 F.2d
499, 24 USPQ2d 1828 (7th Cir. 1992); and Allard Enterprises
Inc. v. Advanced Programming Resources Inc., 146 F.3d 350,
46 USPQ2d 1865 (6th Cir. 1998).
Given how critical these sales are to establishing
opposer’s priority, we must examine them in greater detail.
We recognize that it would be a stretch to
characterize Mr. Karlsson’s sales to acquaintances in
Kingwood as intentional steps toward marketing a new
product under a well-considered business plan. If one
measures this use under the four-factor test of Natural
Footwear Ltd. v. Hart, Schaffner & Marx, 760 F.2d 1383, 225
USPQ 1104 (3rd Cir. 1985), as urged by applicant, these
sales to prior acquaintances do appear to be de minimis.
While these two sales are indeed minimal, we recognize that
opposer is not a large, established, national company.
Rather, Mr. Karlsson was operating out of his home a small,
start-up business having a pending patent application, a
Chinese manufacturer, and a German distributor. Between
March 15 and April 2, 1999, Mr. Karlsson sold through arms-
length transactions more than half of his first shipment of
fifty combs. We find that none of opposer’s activities
during this period have been shown to be merely for the
purpose of reserving rights in a trademark. Having
Opposition No. 91116333
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established these transactions by a preponderance of the
evidence, our precedent does not require that opposer meet
the test enunciated in Natural Footwear Ltd., supra.
In determining the requisite quantum of use opposer
must demonstrate, the second part of the test set out by
our principal reviewing Court is whether these initial
sales were followed by activities proving a continuous
effort or intent to use the mark. See Avakoff v. Southern
Pacific Co., 765 F.2d 1097, 226 USPQ 435 (Fed. Cir. 1985)
(citing to Professor McCarthy’s treatise, now at 3 J.
Thomas McCarthy, McCarthy on Trademarks and Unfair
Competition, §19:114 n3 (4th ed. 2001)). Here again, the
record demonstrates that soon thereafter, opposer made
continuous commercial utilization that was sufficiently
public to identify and distinguish the marked goods in an
appropriate segment of the public mind as those of the
adopter of the mark. See Blue Bell, Inc. v. Farah Mfg.
Co., Inc., 508 F.2d 1260, 185 USPQ 1 (5th Cir. 1975). We
find that opposer has established that these shipments
constituted bona fide commercial transactions when combined
with the evidence in the record of subsequent events. See
Fort Howard Paper Co. v. Kimberly-Clark Corp., 390 F.2d
1015, 1017, 157 USPQ 55, 56 (CCPA), cert. denied, 393 U.S.
Opposition No. 91116333
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831, 159 USPQ 799 (1968); and Seiberling Rubber Co. v.
Dayton Rubber Co., 110 USPQ 556, 559 (Comm’r. Pats. 1956).
Accordingly, we find that opposer has demonstrated by
a preponderance of the evidence use of the mark HAIRBUSTER
as of March 29, 19994 – a date prior to applicant’s filing
date of April 26, 1999.
We turn then to the question of likelihood of
confusion. Our determination under Section 2(d) is based
upon an analysis of all of the probative 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). In any
likelihood of confusion analysis, two key considerations
are the similarities between the marks and the similarities
between the goods. Federated Foods, Inc. v. Fort Howard
Paper Co., 544 F.2d 1098, 192 USPQ 24 (CCPA 1976).
4 It is clear from this record that the March 1999 shipment
of the involved goods to opposer’s German distributor was not a
sham transaction, but rather comprised a bona fide shipment in
foreign commerce. Moreover, the shipment of these combs directly
to a customer in Germany constitutes a type of commerce that
Congress has the Constitutional authority to regulate, and hence
such a transaction would support a hypothetical application for
registration filed by opposer. However, in light of our findings
above as to opposer’s priority established by the two sales in
Kingwood, we need not reach the question of whether this shipment
to Germany, by itself, would support opposer’s priority under
Section 2(d) of the Lanham Act.
Opposition No. 91116333
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Opposer’s entire argument as to likelihood of
confusion is contained in a single paragraph toward the end
of its appeal brief:
The HAIRBUSTER trademark adopted by the
plaintiff, and used in commerce before the
filing date of the defendant’s Intent-To-Use
trademark application is spelled the same,
is pronounced the same and is the same. The
products manufactured and sold by the
plaintiff under the HAIRBUSTER trademark,
are for essentially the identical market
served by the defendant. This is a market
created by people having problems with pet
hair. The plaintiff’s product is used to
comb a dog’s hair and get rid of excess
hair. The defendant’s product is in the
form of a handheld roll which can be rolled
on furniture or clothes to get rid of dog
hair. This creates an obvious, tremendous
potential for confusion in the minds of the
purchasing public.
We agree with opposer that for our purposes, these
marks are substantially identical. Even more than would be
apparent from comparing the marks shown in all upper case
letters (e.g., applicant’s HAIR BUSTER versus opposer’s
HAIRBUSTER), opposer actually uses the mark with upper-case
letters “H” and “B” (i.e., HairBuster), creating the feel
of two distinct (albeit run together) words. As applied to
the respective goods, the connotations are also identical
(i.e., items for dealing with unwanted hair).
However, as to the relationship of the goods, we agree
with applicant that opposer has failed to place any
Opposition No. 91116333
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evidence into the record as to the relationship of the
parties’ respective goods. Opposer simply argues in a
conclusory manner that the parties’ respective goods would
be used by someone “having problems with pet hair.” Even
if true, this fact is insufficient to establish that the
goods are related. There is no evidence of record
supporting a conclusion that there is a commercial
relationship between a dog comb and a lint roller, or that
they generally emanate from the same source. Hence, we
find that opposer, as plaintiff in this action, has not
shown by a preponderance of the evidence that there is a
likelihood of confusion herein.
Decision: The opposition is dismissed and the
application will be forwarded for the issuance of a notice
of allowance.