Hasbro, Inc.v.Lisa Pinkett

Trademark Trial and Appeal Board

Jun 18, 2004

No. 91123661 (T.T.A.B. Jun. 18, 2004)

Mailed:
June 18, 2004
UNITED STATES PATENT AND TRADEMARK OFFICE
_____
Trademark Trial and Appeal Board
______
Hasbro, Inc.
v.
Lisa Pinkett
_____
Opposition No. 91123661
to application Serial No. 75462017
filed on April 3, 1998
_____
Kim J. Landsman and Estella J. Schoen of Patterson, Belknap,
Webb & Tyler LLP for Hasbro, Inc.
Charles A. Wilkinson, Esq. for Lisa Pinkett.
______
Before Seeherman, Hairston and Rogers,
Administrative Trademark Judges.
Opinion by Rogers, Administrative Trademark Judge:
Lisa Pinkett [applicant] has filed an application to
register the mark LIL' TIGER for a wide variety of goods in
four different classes, as follows:
Records, cassette tapes, video tapes, compact
discs, video discs, laser discs and computer
software, all featuring educational and adventure
themes for children; tape players, record players,
compact disc players, video disc players, in Class
9;
Stationery featuring educational and adventure
themes for children, in Class 16;
This Opinion is Not
Citable as Precedent
of the TTAB
Opposition No. 91123661
2
Clothing, namely, shirts, pants, t-shirts, sweat
shirts, sweatpants, sweaters, dresses, hats,
coats, jackets, caps, rain coats, belts, mittens,
gloves, shoes, sneakers, boots, slippers, sandals,
nightgowns, robes, pajamas, sleep wear, underwear,
socks, and swimwear, in Class 25; and
Toys, namely, board games, toy banks, puzzles,
squirt guns, toy phones, flying discs, skates,
doll houses, make-up kits, toy vehicles, building
blocks in the form of geometric shapes, toy
jewelry, swing sets and gymnastic apparatus, sand
boxes, toy swimming pools, toy wagons and toy
wheelbarrows, in Class 28.
The application is based on applicant's statement that
she has a bona fide intention to use the mark in commerce on
or in connection with each of these goods.1
The Pleadings
Hasbro, Inc. [opposer] has opposed registration of the
mark for any of the identified goods in each of the four
classes. In its notice of opposition, opposer asserts that
it "is the owner of the distinctive TIGER trademark,
Registration No. 1,696,222, which was registered on the
Principal Register on June 23, 1992 in International Class
28 for 'toys; namely, dolls; board games; electronic games;
battery operated, portable hand-held games with LCD
adapters; table-top games; toys with synthetic speech
capabilities; [and] educational games.'" Opposer also
1 Opposer, in the notice of opposition (¶ 3), appears to
acknowledge use by applicant of her mark as of January 1, 1997,
but the application was never amended to assert this or any date
of use and it is clear from the record there has been no use.
Opposition No. 91123661
3
asserts ownership of a dozen other trademarks that include
the term "Tiger"; that the filing date for each of the
applications that resulted in issuance of these
registrations is prior to the filing date of applicant's
application; that opposer has been using TIGER and
variations thereof continuously since September 25, 1979;
that opposer has sold a great number of toys and games under
its TIGER marks and extensively advertises its products;
that the goods on which applicant intends to use her LIL'
TIGER mark "are the same or substantially similar to" goods
opposer sells under its TIGER marks; that clothing and
stationery are the types of goods for which opposer could
easily license its toy marks; that opposer's and applicant's
goods are both intended "for the children's market" and are
expected to travel in the same channels of trade; and that
there is a likelihood that consumers will be confused,
mistaken or deceived about the source or sponsorship of
applicant's goods and wrongly conclude that they are
products of or authorized by opposer, all to opposer's
detriment.
In her answer, applicant admitted opposer's allegation
that opposer owns the TIGER trademark, Registration No.
1,696,222, and that opposer "owns various other
registrations." Applicant also admitted that she intends
to use her mark for goods recited by opposer in the notice
Opposition No. 91123661
4
of opposition and that some of these goods are intended for
children. Otherwise, applicant explicitly or effectively
denied the allegations of the notice of opposition.
Applicant included in her answer several paragraphs entitled
affirmative defenses; however, these are not true
affirmative defenses and amount to nothing more than
explanations of why applicant believes there is no
likelihood of confusion.
The Record
The record consists of one notice of reliance filed by
each party and a testimony deposition with 11 accompanying
exhibits filed by opposer (with 10 of the exhibits
introduced during direct testimony elicited by opposer's
counsel and one exhibit introduced during cross
examination). Opposer's notice of reliance "introduces into
evidence copies of … official records of the Patent and
Trademark Office," specifically, copies of its pleaded
registrations; applicant's responses to opposer's
interrogatories numbered 1 and 2 (including all
subsections); and portions of the discovery deposition of
applicant.2 Applicant's notice of reliance seeks to
2 The notice of reliance also lists the testimony deposition of
Marc Rosenberg, opposer's witness, as "other evidence" on which
opposer relies. We note that a party is obligated to file the
transcript of testimony for any witness from whom testimony is
taken, and it is unnecessary for either party to expressly notice
reliance on all or any part of a testimony deposition. See
Opposition No. 91123661
5
introduce records from the USPTO trademark electronic search
system (TESS) regarding 45 third-party registrations for
marks including the term "Tiger."3
In one section of its brief, opposer summarizes "The
Current Proceedings" and closes its summary with a sentence
requesting that the Board disregard applicant's notice of
reliance as having been untimely filed. Specifically,
opposer notes that applicant's notice was filed more than a
month after the close of applicant's testimony period (i.e.,
during opposer's rebuttal period). Applicant, in her brief,
did not respond to opposer's request, which we grant as
conceded and well taken. See Trademark Rule 2.122(e), 37
C.F.R. § 2.122(e), and discussions in TBMP Sections 704.02
and 704.07 regarding time for filing notice of reliance on
official records. Therefore, we have not considered the
third-party registrations in reaching our decision herein.
The Parties
Applicant has not given direct testimony about her
plans for using the LIL' TIGER mark on or in connection with
the goods identified in her application. Nonetheless, by
Trademark Rules 2.123(h) and 2.125, 37 C.F.R. §§ 2.123(h) and
2.125, and TBMP Sections 703.01(l). See also Sports Authority
Michigan Inc. v. PC Authority Inc., 63 USPQ2d 1782, 1786 n. 4
(TTAB 2001).
3 Applicant lists 47 registration numbers in her notice of
reliance, but the attached copies of TESS records encompass only
45 registrations.
Opposition No. 91123661
6
referring to the excerpts of the discovery deposition of
applicant taken by opposer, we make the following findings
of fact regarding applicant's plans. She developed the idea
for an animated series featuring various characters,
including one that would be named LIL' TIGER, in 1997.
Pinkett discovery dep. pp. 35, 37. While applicant
apparently has consulted with others who might aid her in
creating the series, researched certain "animation houses,"
and consulted with others about how she might market the
series and collateral merchandise, she has never used her
mark. Id. at pp. 13-14, 17-18, 48-49, 57, 59-62. The
products identified in applicant's application generally
would be produced by licensees. Id. at p. 88.
Opposer acquired Tiger Electronics, Inc. in 1998, and
its operations have gradually been merged into opposer's.
Rosenberg testimony dep. p. 5. Tiger Electronics began
operations in 1979, first used its TIGER logo covered by
registration no. 1,696,222 in 19794, and has used it
continuously since then, perhaps with some variations in the
mark over time. Id. at pp. 7, 29. The company began in the
hand-held electronic games market, later added "electronic
4 The registered TIGER logo is shown below. The registration
issued June 23, 1992 and lists September 25, 1979 as the date of
first use and first use in commerce, of the registered mark.
Opposition No. 91123661
7
learning toys," plush toys and dolls, robotic and "virtual"
pets and eventually became "a full-service toy company,"
before being acquired by opposer. Id. at pp. 7-8. Opposer,
through its Tiger subsidiary and, subsequently, division,
has made toys under license from others and has licensed
others to make collateral merchandise related to some of
opposer's more successful toys and games. Id. at p. 8
(opposer has "made a lot of licensed learning toys with
companies like World Book"), and pp. 10-11, 28, 35 and 38-
39. Opposer does not license the registered TIGER logo for
use by itself, but the logo is required to be used by any
licensee that obtains a license involving a particular toy
from opposer's line or a character from one of opposer's
games. Id. at p. 43.
During both direct and cross examination, opposer's
witness was asked to focus on the class by class
identifications listed in applicant's application and to
highlight items that have been the subject of licenses
granted by opposer. Among the items said to have been
produced by third parties under license from opposer have
been phonograph players, videotapes, compact discs, tape
players and compact disc players, stationery, shoes,
sneakers, slippers, nightgowns, pajamas and t-shirts.
Rosenberg dep. pp. 34-36 and 56-59. In addition, the
witness characterized applicant's Class 28 identification as
Opposition No. 91123661
8
"virtually off a licensing sheet from a master toy licensing
agreement. So it would be almost all of the same things
that we would look at doing." Id. at p. 36.
Arguments
The essence of opposer's argument is that it is the
prior user of a TIGER mark, specifically, its registered
TIGER logo already discussed herein; that the TIGER brand5
is distinctive and valuable; that opposer's other marks
including the term "Tiger" were adopted to capitalize on the
recognition and good will attributable to the logo mark;
that the TIGER trademark is inherently strong, because it is
arbitrary in relation to opposer's goods, and the mark is
famous among consumers of toys and games; that the goods
identified in opposer's TIGER logo registration and in
applicant's application overlap and are otherwise related;
that opposer has licensed use of its marks on other products
not listed in opposer's registration but which are the same
as or similar to various items listed in applicant's
application; that opposer and applicant will utilize the
same channels of trade and market their respective products
to the same classes of consumers; that these common
consumers will not be sophisticated and will often make
impulse purchases; that applicant was aware of opposer's
5 We have construed references by opposer to its TIGER trademark
to mean the TIGER logo.
Opposition No. 91123661
9
TIGER mark when she adopted her LIL' TIGER mark and may have
intended to capitalize on opposer's good will; and that,
after weighing all the evidence, the Board must find a
likelihood of confusion and sustain the opposition.
In her brief, applicant takes many liberties and cites
to purported facts that have no support in the record. For
example, applicant cites to portions of her discovery
deposition that are not in the record6, and she discusses
the "existence of various other 'tiger' characters [which]
should prevent Hasbro from expanding its rights to include
all uses of the term 'TIGER'…." We summarize here only
those arguments of applicant properly grounded in the
record.
Applicant admits that "[n]o issue of priority is
presented, since the 'TIGER & DESIGN' logo was registered in
1979 and has been maintained."7 Brief, p. 5. Nonetheless,
applicant asserts that that mark has distinctive design
6 A party generally may not put its own discovery deposition into
the record by notice of reliance. When, however, the party's
adversary has put portions of a discovery deposition into the
record, the deposed party may offer other portions needed to
provide proper context for the excerpts. See Trademark Rule
2.120(j)(4),37 C.F.R. § 2.120(j)(4). Here, portions of the
discovery deposition applicant has cited were not made of record
by either party.
7 Applicant's erroneous reference to opposer's TIGER logo mark
being registered in 1979 may have been adopted from opposer's
brief, which also states that the mark was registered in 1979.
The erroneous references by each party to the date of
registration for this mark have no bearing on applicant's
essential admission that the TIGER logo registration, whenever it
issued, has been maintained.
Opposition No. 91123661
10
elements and, because it is used always in that form, would
be distinguishable from applicant's mark. Applicant also
asserts that opposer's other marks including the term
"Tiger" would be distinguishable from applicant's mark
because they all contain a suffix after the term "Tiger" and
applicant's mark contains the prefix "Lil'." She argues
that opposer has presented no evidence of use of TIGER
alone, i.e., without either the design elements of its TIGER
logo or without a suffix term.
Applicant also argues there is insufficient evidence to
support opposer's claim that its TIGER mark is famous and
that it is more likely that opposer's sales success, for its
own or for licensed products, is reflective of recognition
of individual toy or game names rather than of the TIGER
logo mark. When applicant's series is successful, she
asserts, consumers will then recognize LIL' TIGER branded
products as coming from an entity other than opposer. In
any event, applicant asserts, even if opposer's TIGER logo
were considered famous, that mark and applicant's mark would
be distinguishable. Finally, applicant asserts that opposer
has not shown that its various marks including "Tiger" and a
suffix term constitute a family of marks, because there is
no evidence of promotion of the marks as a family.8
8 Applicant also argues that opposer's suggestion that applicant
does not have a bona fide intent to use the LIL' TIGER mark is
misplaced. Suffice it to say that opposer has not made much more
Opposition No. 91123661
11
Discussion
We agree with applicant that the record does not
support a Section 2(d) claim based on opposer's assertion
that it owns a family of registered "Tiger" marks. There is
no evidence in the record of promotion of "Tiger" as a
family name and mere ownership of a multitude of
registrations that include the same term does not establish
the existence of a family of marks. See Colony Foods, Inc.
v. Sagemark, Ltd., 735 F2d 1336, 222 USPQ 185 (Fed. Cir.
1984).
Turning to the individual registrations, we begin by
noting that opposer has failed to put into the record copies
of its pleaded registrations prepared by the USPTO and which
show current status and title. The copies attached to
opposer's notice of opposition do not show current status
and title, nor do the copies submitted with opposer's notice
of reliance.
The notice of reliance refers to the registrations as
copies of "official records" not "status and title" copies
prepared by the USPTO. To be sure, "plain" copies of third-
party registrations qualify as copies of "official records"
than an off-hand reference to such possibility and we have not
considered this a true claim by opposer in this case. It was not
a claim pleaded in the notice of opposition and opposer has not
established that it was tried by express or implied consent of
the parties.
Opposition No. 91123661
12
and may be submitted under a notice of reliance. See, for
example, TBMP Section 704.03(b)(1)(B). When, however, a
party is utilizing a notice of reliance to put into the
record registrations that it owns, it must put in copies
prepared by the USPTO showing current status and title
information regarding the registrations, if the party is to
rely on the benefits provided by the Trademark Act that
inure to the owner of a registered mark. See Trademark Rule
2.122(d)(2), 37 C.F.R. § 2.122(d)(2), and TBMP Section
704.03(b)(1)(A). While in its brief opposer refers to the
copies submitted with its notice of reliance as "status
copies," merely calling them such does not change them from
plain copies into copies showing current status and title.
Copies of opposer's registrations were introduced as
exhibits to the testimony deposition of its witness, but the
witness did not testify as to current status and title. In
fact, when asked on cross examination whether opposer now
owned the registrations originally obtained by Tiger
Electronics, Inc., the witness testified "[t]hat would be a
question better answered by the lawyers…." Rosenberg dep.
p. 41.
Notwithstanding opposer's failure to make its pleaded
registrations of record with its notice of opposition, or
during its testimony period by appropriate testimony or by
notice of reliance, applicant has essentially acknowledged
Opposition No. 91123661
13
opposer's ownership of, and the current validity of, the
TIGER logo registration (Reg. no. 1,696,222). In its answer
to the notice of opposition, applicant admitted opposer's
ownership of this registration. Answer, ¶ 1. Further, in
its brief, applicant treats the registration as if it has
been properly maintained and put into the record. Brief, p.
5 (see supra, notes 5 and 7). Thus, we consider this
registration properly before us. See discussion in TBMP
Section 704.03(b)(1)(A). On the other hand, we do not find
applicant to have admitted both opposer's ownership of, and
the maintenance of, opposer's other pleaded registrations.9
9 We note that applicant's answer admits opposer owns certain
other registrations, and makes the admission in response to that
paragraph from the notice of opposition that lists opposer's
pleaded registrations in which "Tiger" is part of the registered
mark. In addition, applicant also discusses opposer's other
marks in terms of applicant's mark being distinguishable from
marks of opposer that include the term "Tiger" and another
suffix. On the other hand, applicant does not discuss the other
marks individually and it is not clear whether she is discussing
marks she considers to be registered and valid or marks that
opposer merely claims to use in addition to its TIGER logo. In
short, while it is absolutely clear that applicant has admitted
the validity of the TIGER logo registration, and that it is owned
by opposer, we do not view applicant as having clearly treated
opposer's other pleaded registrations as properly of record, so
as to obviate the need for opposer to properly put them into the
record.
We note, however, that even if we had considered these other
registrations to be properly of record, it would not change our
finding that opposer has not established the existence of a
family of marks. Nor would they change our decision, explained
herein, to sustain the opposition as to two classes but to
dismiss it as to the other two classes in applicant's
application. This is because all but one of the additional
registrations are for marks for electronic toys, games or
learning aids in Class 28, and the other one is for computer game
programs and manuals sold as a unit in Class 9. Thus, these
registrations would only provide additional support for our
decision to sustain the opposition as to Classes 9 and 28 but
Opposition No. 91123661
14
The focus of our discussion is now limited to the
question whether there is a likelihood of confusion between
opposer's registered TIGER logo mark and applicant's LIL'
TIGER mark. We analyze the issue of likelihood of confusion
using the factors that were articulated in the case of In re
E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177
USPQ 563, 567 (CCPA 1973). See also Recot, Inc. v. Becton,
214 F.3d 1322, 54 USPQ2d 1894, 1896 (Fed. Cir. 2000).
“The likelihood of confusion analysis considers all
DuPont factors for which there is evidence of record but
‘may focus ... on dispositive factors.’” Hewlett-Packard
Co. v. Packard Press Inc., 281 F.3d 1261, 62 USPQ2d 1001,
1003 (Fed. Cir. 2002) (citations omitted).
In many cases, two key, although not exclusive,
considerations are the similarities of the marks and the
similarities of the goods and services. See, e.g.,
Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d
1098, 192 USPQ 24, 29 (CCPA 1976)(“The fundamental inquiry
mandated by Section 2(d) goes to the cumulative effect of
differences in the essential characteristics of the goods
[and services] and differences in the marks”).
The similarity or dissimilarity of the marks is
assessed by comparing the marks as to appearance, sound,
would not alter our decision to dismiss the opposition as to
Classes 16 and 25.
Opposition No. 91123661
15
connotation and commercial impression. Herbko International
Inc. v. Kappa Books Inc., 308 F.3d 1156, 64 USPQ2d 1375,
1380 (Fed. Cir. 2002). Moreover, it is well-settled that
marks, when compared, must be considered in their
entireties, not simply to determine what points they have in
common or in which they may differ. Giant Food, Inc. v.
Nation’s Foodservice, Inc., 710 F.2d 1565, 218 USPQ 390, 395
(Fed. Cir. 1983). Nonetheless, “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
the ultimate conclusion rests on consideration of the marks
in their entireties.” In re National Data Corp., 732 F.2d
1056, 224 USPQ 749, 751 (Fed. Cir. 1985).
Applicant has applied to register her LIL' TIGER mark
in typed form, which means it could be displayed, when used,
in any form of lettering. Thus, in comparing applicant's
and opposer's marks in terms of appearance, we must consider
all reasonable forms of display for applicant's mark. See
Phillips Petroleum Co. v. C. J. Webb, Inc., 442 F.2d 1376,
170 USPQ 35 (CCPA 1971) and Jockey International Inc. v.
Mallory & Church Corp., 25 USPQ2d 1233 (TTAB 1992). It
would be entirely reasonable for applicant to use a type
font similar to that employed by opposer in its TIGER logo,
though it would not be reasonable for us to assume that
applicant would also present her mark with a tiger eyes and
Opposition No. 91123661
16
tail design. The TIGER logo and LIL' TIGER, presented in
similar fonts, would be visually similar to consumers, some
of whom might not notice the subtle design elements in
opposer's mark. We do not find the presence in applicant's
mark of LIL' to be a ready means of distinguishing the
marks, for in both opposer's demonstrated methods of use and
in applicant's projected method of use, TIGER would be the
dominant element of each mark.
Similarly, when the marks are articulated, the design
elements in opposer's mark would be irrelevant and the
diminutive LIL' in applicant's mark would not be stressed as
much as would the term TIGER. More importantly, the marks
would have the identical connotations of the mammal called a
"tiger." The focus of applicant's mark is the word TIGER;
LIL' merely is an adjective indicating the size of the
tiger.
We find that the overall commercial impressions of the
marks is very similar, particularly in view of the fallible
memories of consumers, who retain general impressions of
marks and cannot be presumed to have the luxury of being
able to compare applicant's and opposer's marks side-by-
side. Weiss Associates Inc. v. HRL Associates Inc., 902
F.2d 1546, 14 USPQ2d 1840 (Fed. Cir. 1990), and Spoons
Restaurants Inc. v. Morrison Inc., 23 USPQ2d 1735, 1741
(TTAB 1991), aff’d. No. 92-1086 (Fed. Cir. June 5, 1992).
Opposition No. 91123661
17
In terms of the similarity or relatedness of the
involved goods, channels of trade and classes of consumers,
we note that applicant's identification of goods is not
restricted in any way. Likewise, there is no restriction in
the identification of goods in opposer's TIGER logo
registration. Accordingly, we must consider that
applicant's and opposer's goods can be sold in all customary
channels of trade and to all possible consumers for the
identified goods. Octocom Systems, Inc. v. Houston
Computers Services Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787
(Fed. Cir. 1990) (“The authority is legion that the question
of registrability of an applicant’s mark must be decided on
the basis of the identification of goods set forth in the
application regardless of what the record may reveal as to
the particular nature of an applicant’s goods, the
particular channels of trade or the class of purchasers to
which the sales of goods are directed”). To the extent that
the goods overlap or are closely related, they would, then,
be expected to travel in the same channels of trade and to
the same classes of consumers.
Both applicant and opposer identify goods in Class 28.
Specifically, opposer's registration, in Class 28 alone,
covers dolls, while applicant's Class 28 identification
includes dollhouses; and both opposer and applicant list
board games amongst their Class 28 products. In addition,
Opposition No. 91123661
18
applicant identifies "toy phones" among its Class 28
products and we find these within the natural zone of
expansion for opposer's mark, which is registered and used
for electronic toys. In fact, exhibit one to the Rosenberg
deposition shows various children's phones among opposer's
1999 TIGER product line. See Mason Engineering & Designing
Corp. v. Mateson Chemical Corp., 225 USPQ 956, 962 (TTAB
1985) (First user of a mark in connection with particular
goods possesses superior rights "as against subsequent users
of the same or similar mark for any goods or services which
purchasers might reasonably expect to emanate from it in the
normal expansion of its business under the mark").
Given opposer's historical focus on hand-held
electronic toys and games, we also find some of the items
listed in applicant's Class 9 identification to be within
the natural zone of expansion of opposer's use of its mark.
For example, we consider tape players and compact disc
players within opposer's natural zone of expansion and, in
fact, a tape recorder and player is featured in opposer's
1999 catalog of TIGER products.
In contrast, we do not find the Class 16 stationery and
the Class 25 clothing items to be within opposer's natural
zone of expansion. While opposer's witness has testified
about licensing of its FURBY character in conjunction with
such products, the testimony is somewhat vague and general.
Opposition No. 91123661
19
The witness does not testify when licensing would have been
done or provide the names of licensees, and the testimony is
not supported by any corroborating evidence of showing
actual licensed products and how they might display the
TIGER mark, as opposed to the FURBY character mark.
Finally, we contrast the testimony with opposer's notice of
opposition, which states that opposer "is not currently
using the TIGER mark in a trademark sense on clothing or
stationery…." Notice of opposition, ¶ 7.
The fame of a plaintiff's mark, when fame is shown in
the record, is never an unimportant factor, for a famous
mark deserves a broad scope of protection. Kenner Parker
Toys, Inc. v. Rose Art Industries, Inc., 963 F.2d 350, 22
USPQ2d 1453 (Fed. Cir. 1992); The Nasdaq Stock Market, Inc.
v. Antartica, S.R.L., 69 USPQ2d 1718 (TTAB 2003). In this
case, however, evidence of the fame of opposer's TIGER logo
is extremely limited. In essence, it consists of the self-
serving testimony of opposer's witness and a curt summary,
assertedly prepared from opposer's business records, of
gross sales figures and advertising/promotion/marketing
expenditures from 1998 to 2001. Rosenberg dep. exh. 7. The
figures are very substantial, but entirely devoid of
context. We have no way of knowing whether, for example,
the advertising and promotion dollars were spent on ads
touting individual products, i.e., individual toys and
Opposition No. 91123661
20
games, under their own product marks, or were spent on ads
touting opposer's TIGER logo house mark. Nor do we know the
relative percentage of these expenditures spent for print
ads, television, radio, internet advertising or any other
form of promotion. Further, we do not have a single
advertisement or piece of promotional material that a
consumer would be likely to see.10 Finally, we note that
both the sales and advertising figures have declined
significantly during the four-year period covered by
opposer's exhibit. We are not persuaded by this scant
evidence, devoid of context, that opposer's TIGER logo has
attained the status of a famous mark.
Even though we do not consider opposer's TIGER logo
mark to be famous, for purposes of our likelihood of
confusion analysis, we find that the balance of the DuPont
factors tips in favor of finding a likelihood of confusion,
in regard to applicant's Class 9 and Class 28 goods. On the
other hand, the record created by opposer does not persuade
us that there would be a likelihood of confusion if
applicant were to use her mark for the identified Class 16
and Class 25 goods.
10 Exhibits 1 and 2 to the Rosenberg deposition, catalogs showing
TIGER brand products, are "basically a selling tool for all of
our salesmen," according to the witness, not catalogs for
consumers.
Opposition No. 91123661
21
Decision: The opposition brought under Section 2(d) of
the Trademark Act is dismissed as to Classes 16 and 25 of
the involved application, but is sustained as to Classes 9
and 28.