Fort James Operating Companyv.Royal Paper Converting, Inc.

Trademark Trial and Appeal Board

May 21, 2007

No. 91122964 (T.T.A.B. May. 21, 2007)

Mailed: May 21, 2007
PTH

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
______

Fort James Operating Company
v.
Royal Paper Converting, Inc.
_____

Opposition No. 91122964
to application Serial No. 75862409
filed on December 2, 1999
_____

David M. Kelly and Linda K. McLeod of Finnegan, Henderson,
Farabow, Garrett & Dunner, L.L.P. for Fort James Operating
Company.

Bernard R. Gans and Brian W. Kasell of Jeffer Mangels Butler
& Marmaro LLP for Royal Paper Converting, Inc.
______

Before Hairston, Kuhlke and Bergsman, Administrative
Trademark Judges.

Opinion by Hairston, Administrative Trademark Judge:

Fort James Operating Company (opposer) has filed an
opposition to the application of Royal Paper Converting,
Inc. (applicant) to register the design mark shown below for
“paper towels, paper face tissues, paper napkins, and toilet
THIS OPINION IS A
PRECEDENT OF THE TTAB
Opposition No. 91122964
2
paper.”

Application Serial No. 75862409, filed December 2,
1999, based upon an allegation of a bona fide
intention to use the mark in commerce. The
application does not contain a description of the
mark, but includes the following statement: “The
lining in the drawing is for shading purposes
only.”

As grounds for opposition, opposer alleges that
applicant’s mark, when applied to applicant’s goods, so
resembles opposer’s previously used and registered design
marks shown below, both for “paper towels,” as to be likely
to cause confusion under Section 2(d) of the Trademark Act.

Registration No. 2582685 issued June 18, 2002
under the provisions of Section 2(f) of the
Trademark Act. The registration contains the
Opposition No. 91122964
3
following description: “The mark consists of a
repetitive interlocking circle and square design.
The dotted lines shown on the borders of the
drawing are not a part of the mark. The stippling
shown in the drawing is a feature of the mark and
is not intended to indicate color.” This mark
will be referred to as opposer’s design mark “A”.

Registration No. 2582686 issued June 18, 2002
under the provisions of Section 2(f) of the
Trademark Act. The registration contains the
following description: “The mark consists of a
repetitive interlocking circle and tetragon
design. The dotted lines shown on the borders of
the drawing are not a part of the mark. The
stippling shown in the drawing is a feature of the
mark and is not intended to indicate color.” This
mark will be referred to as opposer’s design mark
“B”.

Applicant, in its answer, has denied the salient
allegations in the notice of opposition.
Briefs have been filed. The record is summarized at
pages 5 and 6 of opposer’s brief and pages 2 and 3 of
applicant’s brief.
Standing and Priority
Because opposer has submitted a notice of reliance upon
certified status and title copies of its pleaded
Opposition No. 91122964
4
registrations, we find that opposer has established its
standing to bring the opposition. See Cunningham v. Laser
Golf Corp., 222 F.3d 943, 55 USPQ 1842 (Fed. Cir. 2000);
Lipton Industries, Inc. v Ralston Purina Co., 670 F.2d 1074,
213 USPQ 185 (CCPA 1982). In addition, in view of opposer’s
ownership of valid and subsisting registrations of its
pleaded marks, there is no issue as to opposer’s priority.
See King Candy Co., Inc. v. Eunice King’s Kitchen, Inc., 496
F.2d 1400, 182 USPQ 108 (CCPA 1974).1
The Parties
Opposer is a leading consumer paper-products company
which sells, inter alia, paper towels, nationwide.
Opposer’s paper towels are sold under the marks BRAWNY,
MARDI GRAS, GREEN FOREST, and SO DRI. Opposer’s design
marks are embossed in a repeating pattern on the sheets of
its paper towels. Opposer’s design mark “A” appears on the
front of the sheets of opposer’s BRAWNY paper towels.
Opposer’s design mark “B” appears on the back of the sheets
of opposer’s BRAWNY paper towels and a smaller version

1 Contrary to applicant’s contention in its brief, where as here,
opposer has submitted certified status and title copies of its
pleaded registrations, opposer is not required to prove that the
marks in such registrations acquired distinctiveness prior to the
filing date of applicant’s application. Rather, priority is not
in issue. Applicant’s additional contentions in its brief that
opposer’s marks are functional, non-distinctive, and lack source-
indicating significance constitute an impermissible collateral
attack on opposer’s pleaded registrations. In the absence of a
counterclaim for cancellation, these arguments cannot be
considered. See Trademark Rule 2.106(b)(2)(ii) and TBMP §313.01
(2d ed. rev. 2004) and cases cited therein.
Opposition No. 91122964
5
appears on its MARDI GRAS, GREEN FOREST, and SO DRI paper
towels. Opposer refers to both design marks “A” and “B”
alternatively as “THIRSTY O’s” and “SCRUBBING CIRCLES.”
Opposer has continuously sold paper towels bearing its
design marks since at least April 1999.
Applicant also is a paper-products company that sells,
inter alia, paper towels. With respect to applicant’s
design mark, it is embossed in a repeating pattern on the
front and back of the sheets of applicant’s paper towels.
Although applicant filed its application under the intent-
to-use provisions, applicant subsequently first used its
design mark on paper towels in May or June 2000.
Likelihood of Confusion
Our determination of the issue of likelihood of
confusion is based on an analysis of all of the probative
facts in evidence that are 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
Co., Inc., 315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir. 2003).
We turn then to the factors bearing on our likelihood
of confusion determination in this case. We first consider
the similarity or dissimilarity of the parties’ goods,
channels of trade, and purchasers. Applicant concedes that
the goods are identical in terms of paper towels, and that
such goods are sold in the same channels of trade.
Opposition No. 91122964
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(Applicant’s brief at 8).2 Further, in view of the identity
of the goods and trade channels, the goods must be presumed
to be sold to the same class of purchasers. In re Smith and
Mehaffey, 31 USPQ2d 1531 (TTAB 1994). In this case, the
purchasers of the goods are ordinary consumers who would not
exercise a great deal of care in their purchasing decision.
Thus, these factors favor a finding of likelihood of
confusion.
We next consider the factor of fame, because fame of
the prior mark or marks, if it exists, plays a dominant role
in likelihood of confusion cases. Recot, Inc. v. M.C.
Becton, 214 F.3d 1322, 54 USPQ2d 1894 (Fed. Cir. 2000).
Opposer’s evidence on fame includes opposer’s revenues and
advertising expenditures for its paper towels for the years
1999-2003. This information has been submitted under seal
and will not be specified here. But we can say without
doubt that the numbers are extremely impressive. In
addition, opposer has extensively advertised and promoted
its paper towels in magazines and newspapers, in national
and local television commercials, by way of in-store
displays, coupons, circulars, NASCAR events and online
banner advertisements. Indeed, applicant does not contest

2 It is not necessary that opposer prove likelihood of confusion
with respect to all of the goods set forth in applicant’s
application. Squirtco v. Tomy Corp., 697 F.2d 1038, 216 USPQ 937
(Fed. Cir. 1983).
Opposition No. 91122964
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that opposer’s BRAWNY mark for paper towels is a strong
mark. (Applicant’s brief at 7).
In the recent decision of Bose Corp. v. QSC Audio
Products Inc., 293 F.3d 1367, 62 USPQ2d 1303 (Fed. Cir.
2002), our principal reviewing court considered the question
of whether the ACOUSTIC WAVE product mark (as opposed to the
BOSE house mark) was famous for a loudspeaker music system.
In finding that the ACOUSTIC WAVE product mark was famous
due to 17 years use, annual sales over $50 million, annual
advertising in excess of $5 million, and extensive media
coverage, the court also observed, at 62 USPQ2d 1306-07:
The record evidence demonstrates that the BOSE
house mark frequently appears in the advertising
and promotional materials. The product, however,
is prominently identified as trademarked in the
text of nearly every example of the record
evidence. In the direct mail advertising and
sales promotional material sent by Bose through
the mail, the portion of the communication that
calls for the order to be placed only refers to
the ACOUSTIC WAVE product with its trademark, with
no reference to Bose as a mark appearing on the
order form. The consumer, when placing a $1000
order, thus asks for the trademarked product. We
thus are not faced with a record on which
substantially every reference to the marked
product is joined with reference to the famous
house mark. Instead, the consumer is presented
through advertising and other promotional material
with frequent references to the marked product
standing alone and apart from the famous house
mark. This distinction between uniform coupling
of the famous house mark with the product marks
and communication to consumers that typically
gives significant independent reference to the
product apart from the house mark is important,
because in the latter instance the consumer has a
basis on which to disassociate the product mark
from the house mark.
Opposition No. 91122964
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In other words, in finding fame, the Court gave great
weight to the fact that the ACOUSTIC WAVE product mark was
used independently of the BOSE house mark in advertising and
promotion of the loudspeaker music system. As previously
noted, opposer’s paper towels are sold under the marks
BRAWNY, MARDI GRAS, GREEN FOREST, and SO DRI. While
opposer’s design marks are featured in opposer’s advertising
and promotional materials, the design marks generally are
joined with and overshadowed by one of opposer’s other
marks, most often the BRAWNY mark. For example, in the
left-hand portion of a newspaper advertisement, the BRAWNY
mark appears prominently in large bold letters with design
mark “B” featured in the “O’s” inset.

Similarly, in an advertisement in a NASCAR-related
publication, the BRAWNY mark appears prominently in bold
letters emblazoned across the hood of a race car along with
Opposition No. 91122964
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a photograph of several packages of opposer’s paper towels
with one of opposer’s design marks featured in an inset on
the packages.

Unlike in Bose, the record herein shows that the vast
majority of the references to opposer’s design marks in
advertising and promotional materials are joined with and
are subordinate to a reference to one of opposer’s other
marks, most often the BRAWNY mark. Opposer’s design marks
are simply overshadowed by the other marks which are almost
always featured in a far more prominent manner than the
design marks. This is not a case where consumers are
presented through advertising and other promotional material
with repeated references to opposer’s design marks
Opposition No. 91122964
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independent of opposer’s other marks. Thus, notwithstanding
opposer’s substantial sales and advertising, we are unable
to conclude that opposer’s design marks have achieved the
renown associated with a famous mark. See Jockey
International Inc. v. Mallory & Church Corp., 25 USPQ2d
1233, 1237 (TTAB 1992) [Plaintiff did not meet its burden of
showing that its ELANCE mark was famous, notwithstanding
that the sales and advertising of underwear displaying the
mark was extensive, because “in most instances, the ELANCE
mark is overshadowed by the clearly famous mark JOCKEY,
which is almost always featured on the products and in
advertising in a far more prominent manner than the
‘secondary’ mark ELANCE”]. In reaching our finding, we are
cognizant of the fact that purchasers of opposer’s paper
towels are “exposed” to opposer’s design marks many times
since the marks are embossed on the paper towel sheets.
However, in the absence of significant advertising and
promotional materials which independently feature opposer’s
design marks, we are not convinced that opposer’s design
marks have reached the status of famous marks. In sum, we
find that opposer has not met its burden of showing that its
design marks are famous. The factor of fame, therefore, is
neutral.
The next factor we consider is the similarity or
dissimilarity of the marks. In doing so, we are mindful of
Opposition No. 91122964
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the proposition that when marks appear on virtually
identical or closely related goods, the degree of similarity
of the marks necessary to support a finding of likely
confusion is not as great as when the goods are different.
See Century 21 Real Estate Corp. v. Century Life of America,
970 F.2d 874, 23 USPQ2d 1698, 1701 (Fed. Cir. 1992).
Further, in the case of design marks, the question of
likelihood of confusion must be decided on the basis of the
visual similarity of the marks. See In re ATV Network
Limited, 552 F.2d 925, 193 USPQ 331 (CCPA 1977). By
definition, this is a subjective determination and must take
into account the overall commercial impressions created by
the marks rather than any detailed analysis thereof. See In
re Joseph Lieberman and Sons, Inc., 156 USPQ 700 (TTAB
1968); and Hupp Corporation v. AER Corporation, 157 USPQ 537
(TTAB 1968).
The parties’ design marks are shown below:

Applicant’s mark

Opposition No. 91122964
12

Opposer’s marks
Applying these principles to the parties’ marks, we
find that applicant’s design mark is highly similar in
overall commercial impression to each of opposer’s design
marks, and is likely to cause confusion when used in
connection with identical goods. As indicated, both
parties’ marks are embossed designs on paper towel sheets.
The marks consist of circular-shaped designs that are
repeated in an evenly-spaced pattern on the paper towel
sheets. Moreover, the smaller interlocking designs in the
parties’ marks are identical/similar in shape.
In arguing that the parties’ design marks are
dissimilar, applicant contrasts the specific features of
each mark in terms of the “composition,” the “alignment,”
and “grouping” of the “units.” There is no doubt but that
if opposer’s design marks and applicant’s design mark are
placed side-by-side, certain differences between them,
including those enumerated by applicant, would be
discernible. However, we are not convinced that purchasers
Opposition No. 91122964
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will undergo such a detailed analysis of the marks. 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 their entireties that
confusion as to the source of the goods 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). In this case, we find that purchasers are unlikely
to notice the slight differences in opposer’s and
applicant’s design marks in the normal environment of the
marketplace where purchases of paper towels are actually
made. We find therefore that the factor of the similarity
or dissimilarity of the marks favors a finding of likelihood
of confusion.
The next factor we consider is the number and nature of
similar marks in use on similar goods. In this regard,
applicant submitted third-party evidence in the nature of
five sample paper towels sheets and a photocopy of the
product packaging for paper towels. However, as noted by
opposer, the probative value of this evidence is very
limited because applicant presented no evidence concerning
the extent to which these third-party embossed designs are
used in commerce. See Palm Bay Imports Inc. v. Veuve
Opposition No. 91122964
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Clicquot Ponsardin, 396 F.3d 1369, 73 USPQ2d 1689 (Fed. Cir.
2005). Moreover, a review of the third-party designs
reveals that none is similar to the designs at issue in this
case. Thus, applicant’s evidence does not establish that
there is widespread use of similar designs on paper towels
such that opposer’s design marks are weak and entitled to
only a narrow scope of protection. This factor, therefore,
is neutral in our likelihood of confusion analysis.
There is no evidence of actual confusion between
opposer’s and applicant’s design marks. However, that kind
of evidence is extremely difficult to acquire and, in any
event, such evidence is not required in order to establish
likelihood of confusion. See Weiss Associates Inc. v. HRL
Associates Inc., 902 F.2d 1546, 14 USPQ2d 1840 (Fed. Cir.
1990; Gillette Canada Inc. v. Ranir Corp., 23 USPQ2d 1768
(TTAB 1992); and Guardian Products Co. Inc. v. Scott Paper
Co., 200 USPQ 738 (TTAB 1978). Further, the absence of
evidence of actual confusion herein may be explained by the
fact that applicant has used its mark for a relatively short
period of time. Under the circumstances, we find that this
factor is neutral.
Two additional matters require comment. First,
applicant argues that opposer’s marks are always used in
conjunction with other trademarks (e.g. BRAWNY), thereby
eliminating the likelihood that purchasers would be
Opposition No. 91122964
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confused. It is true that in the exhibits made of record,
additional trademarks do appear on opposer’s products. As
the Board indicated in The Procter & Gamble Company v.
Keystone Automotive Warehouse, Inc., 191 USPQ 468, 474, “it
is settled that a product label can bear more than one
trademark without diminishing the identifying function of
each portion.” The issue of likelihood of confusion in this
case involves the marks shown in opposer’s registrations and
the mark shown in applicant’s application. See Hat Corp. of
America v. John B. Stetson Co., 223 F.2d 485, 106 USPQ 200
(CCPA 1955); and ITT Canteen Corp. v. Haven Homes Inc., 174
USPQ 539 (TTAB 1972). Thus, in reaching our determination
herein, we have not considered the additional marks that
appear on opposer’s products.
Second, applicant’s contention that opposer had ample
opportunity to conduct consumer surveys regarding potential
confusion is unpersuasive. Surveys in this regard are not
required in Board proceedings which determine the right to
register only. See Hilson Research, Inc. v. Society for
Human Resources Management, 27 USPQ 1423 (TTAB 1993).
Based on the identity of the goods, trade channels and
purchasers; and the similarity in opposer’s design marks and
applicant’s design mark, we find that confusion is likely.
Decision: The opposition is sustained and registration
to applicant is refused.