Holmes Mirror Co.v.Timothy’s Fine Art

Trademark Trial and Appeal Board

Feb 21, 2003

No. 92031610 (T.T.A.B. Feb. 21, 2003)

Paper No. 13
DEB
Mailed:
February 21, 2003
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
Holmes Mirror Company
v.
Timothy’s Fine Art d.b.a. Timothy’s Hardware Company
_____
Cancellation No. 31,610
to Registration No. 2,321,538
registered on February 22, 2000
_____
Cleveland R. Williams of the Law Offices of Cleveland R.
Williams for Holmes Mirror Company
S. Daniel Harbottle of Rutan & Tucker for Timothy’s Fine
Art d.b.a. Timothy’s Hardware Company
______
Before Cissel, Bucher and Drost, Administrative Trademark
Judges.
Opinion by Bucher, Administrative Trademark Judge:
On February 1, 2001, Holmes Mirror Company
(Petitioner) filed a petition to cancel Registration No.
2,321,538, owned by Timothy’s Fine Art d.b.a. Timothy’s
Hardware Company (Respondent). The registration, for the
mark Z-BAR, issued on February 2, 2000, as a result of an
application filed on March 1, 1999. The goods in the
registration are identified as “channel-locking metal bars
for hanging picture frames,” in International Class 6. The
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT
OF THE TTAB
Cancellation No. 31,610
- 2 -
registration alleges a date of first use and a date of
first use in commerce of November 1, 1995.
Petitioner claims that it used and promoted its Z-BAR
mark in connection with closely related, if not identical,
products, namely hanging devices, including channel-locking
metal bars for hanging mirrors and picture frames, at least
as early as 1987, and that there is a likelihood of
confusion when the identical mark is used on these goods,
and therefore, it seeks the cancellation of respondent’s
registration. In its answer, respondent denied the salient
allegations of the petition to cancel, and set out numerous
affirmative defenses. Both parties have filed briefs in
the case. No oral hearing was requested.
The record consists of the file of the involved
registration; respondent’s notice of reliance on portions
of the discovery deposition, with accompanying exhibits, of
Frederick Holmes, co-owner of petitioner, Holmes Mirror
Company; and respondent’s notice of reliance on the trial
testimony deposition, with accompanying exhibits, of Scott
Bozanic, a general partner of respondent, Timothy’s Fine
Art d.b.a. Timothy’s Hardware Company, a partnership
organized under the laws of the state of California.1
1 The abbreviated trial testimony of Mr. Bozanic merely
provides a foundation for the affected registration.
Cancellation No. 31,610
- 3 -
Petitioner attached exhibits to the petition to cancel and
to petitioner’s trial brief, but placed no evidence in the
record during its testimony period.
Petitioner, as plaintiff, bears the burden of proving
its case. Respondent is correct in pointing out that
allegations made in the pleading, and exhibits attached
thereto, are not evidence in plaintiff’s behalf. See
Perfect Film & Chemical Corp. v. Society Ordinastral, 172
USPQ 696 (TTAB 1972). Moreover, petitioner has taken no
testimony nor introduced any evidence of any kind into the
record herein during its testimony period.2 Accordingly,
petitioner cannot use its trial brief as a vehicle for the
introduction of evidence. See Hard Rock Cafe International
(USA) Inc. v. Elsea, 56 USPQ2d 1504 (TTAB 2000); TBMP
§705.02 and cases cited therein.3
On the other hand, as noted earlier, respondent has
properly placed into the record limited testimony as part
of its testimony-in-chief. For example, those portions of
Frederick Holmes’ discovery deposition made of record by
Accordingly, in the context of this decision, it offered nothing
relevant to the elements of petitioner’s burden of proof.
2 Additionally, as noted earlier, in its answer to the
petition to cancel, respondent has not admitted any salient
allegation of the complaint.
3 In light of this determination, we do not find it necessary
to respond to respondent’s other objections to these exhibits
grounded in the Federal Rules of Evidence and/or the Trademark
Rules of Practice.
Cancellation No. 31,610
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respondent in accordance with 37 CFR §2.120(j) may be
referred to by any party for any purpose permitted by the
Federal Rules of Evidence. See 37 CFR §2.120(j)(7); TBMP §
709 on Discovery Depositions; Chesebrough-Pond's Inc. v.
Soulful Days, Inc., 228 USPQ 954 (TTAB 1985); Andersen
Corp. v. Therm-O-Shield Int'l, Inc., 226 USPQ 431 (TTAB
1985); Anheuser-Busch, Inc. v. Major Mud & Chemical Co.,
221 USPQ 1191 (TTAB 1984); and Miles Laboratories, Inc. v.
SmithKline Corp., 189 USPQ 290 (TTAB 1975). However, only
those limited portions of Mr. Holmes’ discovery deposition
that respondent has properly made of record may be referred
to by any party, including petitioner, for any purpose
permitted by the Federal Rules of Evidence.
Accordingly, we turn to relevant portions of Mr.
Holmes’ discovery testimony to determine whether there is
any evidence in support of petitioner’s claim of likelihood
of confusion. The record establishes the following:
•= In the summer of 1987, Mr. Holmes designed a product
to hang heavy mirrors on the wall more securely than
with previous systems petitioner had used; he also
adopted and began using the term Z-BAR as his
trademark for this product (Holmes 14:24 to 18:14).
•= Petitioner began nationwide distribution of this
hanging product sold under the Z-BAR trademark; the
Z-BAR hanging product was sold in conjunction with
Cancellation No. 31,610
- 5 -
ninety percent of the mirrors petitioner sold; the
mark was used, for example, on hanging instructions,
but was never physically stamped or otherwise
affixed directly onto the metal product (Holmes
23:15 to 24:23).
•= Mr. Holmes is uncertain as to what percentage of
petitioner’s undisclosed gross revenues in any given
year were derived from the sale of the involved
goods herein (Holmes 33:11 to 39:14).
•= Petitioner has no evidence of any misdirected
communications intended for respondent (47:15 to 48-
12).
•= Petitioner has no explanation for the delay of one
year from the time of learning of respondent’s
federal registration until the filing of the instant
petition to cancel (50:13 to 54:12).
•= On behalf of petitioner, Mr. Holmes knew of
respondent’s use of the mark Z-BAR in connection
with the resale of petitioner’s items within the
picture frame industry. When respondent
discontinued its purchase of petitioner’s goods,
petitioner was upset that respondent continued to
use petitioner’s trademark on similar goods; but
prior to filing the instant petition to cancel,
there is no evidence in the record that petitioner
had ever objected to any type of use of Z-BAR by
respondent (54:25 to 58:18).
•= Mr. Holmes characterized petitioner’s sales of this
product to the picture framing industry as being
“pretty insignificant,” although he speculated that
the percentage share of petitioner’s business
Cancellation No. 31,610
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devoted to the picture frame industry was ten
percent (71:7 to 72:4).
•= Petitioner erroneously used the designation “patent
pending” on the involved product prior to actually
filing a patent application with the United States
Patent and Trademark Office (83:10 to 85:23).
•= Abbey Schaefer Associates, a picture framing sales
representative in Southern California, was for a
period a sales rep for petitioner’s Z-BAR hangers in
the picture framing industry.
It is undisputed that petitioner has established its
standing to bring this action and has a priority of use as
to the term Z-BAR for channel-locking metal bars. However,
in determining whether this record shows a likelihood of
confusion, we must rely solely on those portions of Mr.
Holmes’ discovery testimony relied upon by respondent.
In the course of rendering this decision, we have
followed the guidance of In re E. I. du Pont de Nemours &
Co., 476 F.2d 1357, 1362, 177 USPQ 563, 567-68 (CCPA 1973).
The du Pont case sets forth the factors that should be
considered, if relevant, in determining likelihood of
confusion.
It is clear that the marks herein are virtually
identical –- a factor clearly favoring petitioner.
Cancellation No. 31,610
- 7 -
We turn next to the du Pont factors dealing with the
similarity or dissimilarity and nature of the parties’
respective goods and the similarity or dissimilarity of
established, likely-to-continue trade channels.
Mr. Holmes testified that petitioner sells its Z-BAR
hangers to the picture framing industry. That would
support a conclusion that channel-locking metal bars used
for hanging mirrors can be used interchangeably with
channel-locking metal bars used for hanging picture frames
[Holmes deposition, 71:7 to 72:4]. Moreover, the history
of petitioner’s and respondent’s respective dealings with
Abbey Schaefer Associates [Holmes deposition, p. 87]
supports a conclusion that the goods of both parties move
in the same channels of trade to the same ultimate
customers.
As to the du Pont factor dealing with the nature and
extent of any actual confusion, Mr. Holmes confirmed that
petitioner has no evidence of instances of actual
confusion. [Holmes deposition, 47:15 to 48-12]. Of
course, evidence of actual confusion is notoriously
difficult to obtain, so we cannot conclude from the lack of
such evidence that confusion is not likely to occur. This
is a neutral factor in this case.
Cancellation No. 31,610
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We turn to a brief comment on another potentially
relevant du Pont factor. The previous market interface
between petitioner and respondent is not detailed in the
evidence of record. Nonetheless, respondent argues in its
brief that petitioner had consented to respondent’s
proprietary use of petitioner’s mark. However, we note
that one can read the portions of Mr. Holmes’ testimony
that respondent has placed into the record as establishing
that respondent bought a large volume of petitioner’s
products bearing the mark over a period of years, and
resold them, through its picture framing business, to
respondent’s retail customers. We find that respondent’s
distributor relationship with petitioner prior to 1999
cannot be accurately described as a transfer of
petitioner’s common law intellectual property rights based
solely upon Mr. Holmes’ ambiguous testimony on this
subject, or by conclusions drawn therefrom by respondent’s
counsel.
Finally, we turn to another relevant du Pont factor
herein, namely, the strength of petitioner’s claimed mark.
Although respondent has raised as an “affirmative defense”
that this term is “in the public domain” (perhaps
suggesting genericness), this issues has not been tried by
the parties to this action. On the other hand, there is
Cancellation No. 31,610
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certainly no evidence as to the strength of this mark that
would favor petitioner. Hence, this too is a neutral
du Pont factor in this case.
Accordingly, in evaluating the evidence of record
herein in light of the relevant du Pont factors, we find
that the marks are identical, the goods are closely
related, if not overlapping, and we find that both parties
have marketed their respective goods through identical
channels of trade.
Decision: The petition to cancel is granted, and the
above-identified registration will be cancelled in due
course.