Hills Dept. Store Co.

Trademark Trial and Appeal Board

Jun 24, 1997

EX (T.T.A.B. Jun. 24, 1997)

THIS DISPOSITION IS NOT CITABLE
AS PRECEDENT OF THE TTAB June 24, 1997
Paper No.
BG/NSD
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Hills Department Store Company
________
Serial No. 74/451,449
_______
A. Yates Dowell, III of Dowell & Dowell for Hills Department
Store Company
Anthony R. Masiello, Trademark Examining Attorney, Law
Office 104 (Sidney I. Moskowitz, Managing Attorney)
_______
Before Rice, Hanak and Quinn, Administrative Trademark
Judges.
Opinion by Hanak, Administrative Trademark Judge:
Hills Department Store Company (applicant) seeks
registration of KITCHEN TRADITION for various kitchen
utensils including, among others, non-electric can openers
and spatulas. The intent-to-use application was filed on
October 26, 1993.
The Examining Attorney refused registration pursuant to
section 2(d) of the Lanham Trademark Act on the basis that
applicant's mark, as applied to applicant's goods, is likely
to cause confusion with the mark TRADITION and design,
Ser No. 74/451,449
2
previously registered in the form shown below for various
kitchen utensils including, among others, non-electric can
openers and spatulas. Registration No. 1,619,465.
When the refusal was
made final, applicant
appealed to the board. Applicant and the Examining Attorney
filed briefs. Applicant requested and later waived an oral
hearing.
During the examination process, applicant made of
record a letter from the owner of cited Registration No.
1,619,465 addressed to applicant. In that letter,
registrant's president not only agreed to allow the use and
registration of KITCHEN TRADITION by applicant, but in
addition, registrant's president stated that
"notwithstanding [registrant's] TRADITION trademark ... we
[registrant] feel that your [applicant's] use of the KITCHEN
TRADITION trademark will not create confusion in the minds
of the buying public." Also during the examination process,
applicant made of record a number of third-party
registration of marks for kitchen utensils (all owned by
different entities) which include the word TRADITION. Some
of these third-party marks are WALNUT TRADITION, LOVING
Ser No. 74/451,449
3
TRADITIONS, FAMILY TRADITIONS, HOLIDAY TRADITION, and SHARE
THE TRADITION.
Obviously, in this case some of applicant's goods and
some of registrant's goods are identical. However, the
marks are by no means identical. Moreover, the third-party
registrations made of record by the applicant, while not
demonstrating that the marks are in actual use, tend to
indicate that the term "tradition" has a certain positive
connotation when applied to kitchen utensils suggesting that
such utensils are long lasting. See also Webster's New
World Dictionary (2d ed. 1970).
However, the real key to this case is the
aforementioned consent made of record by the applicant. The
Examining Attorney is simply incorrect when he characterizes
this consent as being a mere "naked consent."
(Examining Attorney's brief page 10). A naked consent is
but "a mere consent allowing applicant to register the
mark." In re Four Seasons Hotels Ltd., 987 F.2d 1565, 26
USPQ2d 1071, 1074 (Fed. Cir. 1993). As previously noted,
the owner of the cited registration has not only consented
to the use and registration of KITCHEN TRADITION by
applicant, but in addition, the owner of the cited
registration has affirmatively stated that applicant's "use
of [applicant's] KITCHEN TRADITION trademark will not create
confusion in the minds of the buying public." This latter
statement by the registrant elevates the consent to a level
above that of a mere "naked consent."
Ser No. 74/451,449
4
While there can be no doubt that the consent given by
the registrant could have been more expansive, the consent,
coupled with the differences in the marks and the laudatory
nature of the term "tradition" as applied to kitchen
utensils, causes us to find that there exists no likelihood
of confusion.
Decision: The refusal to register is reversed.
J. E. Rice
E. W. Hanak
T. J. Quinn
Administrative Trademark Judges
Trademark Trial and Appeal Board
Ser No. 74/451,449
5