Houdini, Inc.v.Metrokane, Inc.

Trademark Trial and Appeal Board

May 1, 2008

No. 92044725 (T.T.A.B. May. 1, 2008)

Mailed: May 1, 2008

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

Houdini, Inc.
v.
Metrokane, Inc.
_____

Cancellation No. 92044725
_____

Edward R. Schwartz of Christie, Parker & Hale, LLP for
Houdini, Inc.

Lee A. Goldberg and Nathaniel B. Buchek of Pearl Cohen Zedek
Latzer, LLP for Metrokane, Inc.
_____

Before Seeherman, Cataldo and Ritchie de Larena,
Administrative Trademark Judges.

Opinion by Cataldo, Administrative Trademark Judge:

Houdini, Inc. (“petitioner”) has petitioned to cancel
Registration No. 2687530 for the mark HOUDINI, owned by
Metrokane, Inc. (“respondent”).1 The registration issued on
February 11, 2003 on the Principal Register. The goods are
identified therein as "corkscrews," in International Class
21.

1 Application Serial No. 78081594, which matured into the
registration at issue, was filed on August 29, 2001.

THIS OPINION IS NOT A
PRECEDENT OF
THE T.T.A.B.
Cancellation No. 92044725
2
In its amended petition for cancellation, petitioner
asserts that since prior to respondent’s first use of its
mark, petitioner has continuously used in commerce the mark
HOUDINI in connection with gift baskets containing a variety
of products, including corkscrews. Petitioner further
asserts that it is the owner of two trademark applications
for the mark HOUDINI, respectively for: “gift baskets and
gift packages containing food, beverages and/or household
items, namely, corkscrews, coasters, wine glasses, mugs,
dishes, cutting boards, cheese spreaders, bath brushes and
bath sponges;” and “gift baskets and gift packages
consisting primarily of wine.”2 Petitioner asserts in
addition that its applications have been refused
registration by the Trademark Examining Operation under
Section 2(d) of the Trademark Act on the basis that
petitioner’s marks are likely to cause confusion with the
mark in respondent’s Registration No. 2687530. Petitioner
alleges that by virtue of its use of the mark HOUDINI it has
built up valuable goodwill therein which would be
jeopardized by the continued registration of respondent’s
HOUDINI mark. Petitioner further alleges that “as stated by
the Trademark Office in refusing Petitioner’s ‘517
Application and ‘512 Application,” (amended notice of

2 Application Serial Nos. 78655512 and 78655517 were filed on
June 21, 2005.

Cancellation No. 92044725
3
opposition, p. 2) respondent’s mark so resembles
petitioner’s previously used mark as to be likely, when
applied to the parties’ respective goods, to cause confusion
or to cause mistake or to deceive.
Respondent’s amended answer consists of a general
denial of the allegations in the petition for cancellation.
In addition, respondent asserts the affirmative defense of
laches.
The Record
The record in this case consists of the pleadings and
the file of the involved registration. In addition, during
its assigned testimony period, petitioner took the testimony
deposition, with accompanying exhibits, of the following
individuals: its President and founder, Timothy J. Dean;
its Senior Sales Manager, Joe Weschler; its Chief Financial
Officer, Daniel J. Maguire; and Stacy-Ann Goodwin, a
paralegal with counsel for petitioner. In addition,
petitioner submitted a notice of reliance upon the file
histories of its asserted applications; the file history of
application Serial No. 78552461, owned by respondent;
certain of petitioner’s written discovery requests to
respondent; and respondent’s responses thereto.
During its assigned testimony period, respondent took the
testimony deposition of its Chief Financial and Operations
Officer, Joel Grossman; and its Marketing Director, Robert
Cancellation No. 92044725
4
Larimer. In addition, respondent filed a notice of reliance
pursuant to Trademark Rule 2.122(e) upon certain of its
written discovery requests to petitioner and petitioner’s
responses thereto. Respondent also relies upon a copy of
the declaration of Daniel M. Maguire which was filed in
support of petitioner’s motion for summary judgment.
However, copies of papers filed in Board proceedings are not
“official records” that may be introduced by notice of
reliance. See, for example, Weyerhaeuser Co. v. Katz, 24
USPQ2d 1230, 1232 (TTAB 1992). See also generally TBMP
§704.07 (2d ed. rev. 2004) and the authorities cited
therein. Furthermore, petitioner did not treat this
evidence as being of record. Accordingly, this exhibit is
not properly of record and will be given no further
consideration.3
Petitioner and respondent filed main briefs on the
case, and petitioner filed a reply brief.
The parties have designated substantial portions of the
record, as well as portions of their briefs on the case, as
“confidential.” While we will attempt to avoid divulging
truly confidential material in our opinion and will refer to
it only in general fashion, we will not be hampered in our

3 We hasten to add that even if such exhibit were of record, it
would not change the result in this case. Evidence substantially
similar to that contained therein was submitted by petitioner
through testimony and exhibits.

Cancellation No. 92044725
5
discussion by the parties’ overly broad designation of
material as confidential. We note in that regard that by
designating as confidential unduly expansive portions of the
record and briefs, the parties risk disclosure of certain of
those materials in this order. We note in addition that it
is the policy of this tribunal that proceedings be public,
and parties to Board proceedings may not subvert that policy
by overly broad designations of materials submitted therein
as confidential. Inasmuch as respondent’s brief in
particular contains excessive designations of confidential
materials, the parties are hereby ordered to submit, within
thirty days from the mailing date of this decision, redacted
copies of their briefs in which only truly confidential
materials are so designated.
Findings of Fact
Petitioner has been in the business of making gift
baskets since 1984.4 Petitioner designs, promotes and
delivers gift baskets to wholesale and retail customers.
Petitioner creates various themed baskets, including wine
themed gift baskets, that may contain gourmet food, cheese
plates, wine, wine accessories, wine glasses, wine chillers,
cutting boards and/or corkscrews.5 Petitioner markets such
baskets under the trademark HOUDINI, as well as other
trademarks including HOUDINI NORTHWEST BASKET and HOUDINI

4 Dean Testimony, p. 4-5.
Cancellation No. 92044725
6
WALL BASKET. Petitioner initially sold its gift baskets to
liquor and wine stores, and has expanded its customer base
to include wineries as well as wholesale clubs and
retailers, including Pace Wholesale (now Sam’s Club),
Costco, Cost Plus, Target, Wal-Mart, Bed, Bath & Beyond, and
B-J’s.6 Petitioner’s wholesale customers then resell the
baskets to the general public.7
Petitioner markets and promotes its gift baskets at the
National Association of Specialty Food Retailers trade show
and over the Internet at houdiniinc.com.8 Petitioner is the
second largest gift basket company in the United States,
with annual sales of approximately one million baskets
generating considerable income.9
Respondent has been in the business of providing
beverage, bar-ware accessory and house wear products since
1983.10 In 1997, respondent developed a “lever pull”
corkscrew which it first sold in 2000 under the trademark
RABBIT.11 After the success of its RABBIT corkscrew, and in
order to compete with cheaper imitation products, respondent
introduced the less expensive HOUDINI corkscrew in April

5 Dean Testimony, p. 9; Maguire Testimony, p. 11.
6 Id. at 6-7.
7 Maguire Testimony, p. 12.
8 Dean Testimony, p. 17-17, 64; Maguire Testimony, p. 22, Exhibit
24.
9 Dean Testimony, p. 21-22.
10 Larimer Testimony, p. 7.
11 Id.; Grossman Testimony, p. 6.
Cancellation No. 92044725
7
2002.12 Since that time, revenue from sales of respondent’s
corkscrews under the HOUDINI mark has been considerable, and
respondent has experienced substantial increases in sales
each year since the introduction thereof. Respondent
markets its HOUDINI corkscrews primarily through large
national retailers and wine and liquor chains, including
Target, Bed, Bath & Beyond, and Beverages & More.13
Petitioner’s Standing
In view of the refusal to register petitioner’s pleaded
applications, copies of which were made of record, based
upon a likelihood of confusion with respondent’s involved
registration, petitioner’s standing has been established.
See Lipton Industries, Inc. v. Ralston Purina Co., 670 F.2d
1024, 213 USPQ 185 (CCPA 1982); Cerveceria Modelo S.A. de
C.V. v. R.B. Marco & Sons Inc., 55 USPQ2d 1298 (TTAB 2000);
and Hartwell Co. v. Shane, 17 USPQ2d 1569 (TTAB 1990). We
note in addition that respondent does not dispute
petitioner’s standing to bring this proceeding.
Laches
Prior to our consideration of petitioner’s pleaded
claim of priority and likelihood of confusion, we must first
address respondent’s affirmative defense of laches to
determine whether petitioner’s claim is barred thereby.

12 Id. at 12, 14; Id. at 8.
13 Petitioner’s Notice of Reliance, Exhibit 5.
Cancellation No. 92044725
8
It is settled that laches generally is available
against a Section 2(d) claim of likelihood of confusion.14
See National Cable Television Association Inc. v. American
Cinema Editors Inc., 973 F.2d 1572, 19 USPQ2d 1424 (Fed.
Cir. 1991), in which the defense of laches was considered in
connection with a cancellation proceeding brought under
Section 2(d); and Christian Broadcasting Network Inc. v.
ABS-CBN International, 84 USPQ2d 1560 (TTAB 2007) (because
defense of laches found to apply, petition to cancel brought
under Section 2(d) dismissed).
In order to prevail on the affirmative defense of
laches, a defendant must establish that there was undue or
unreasonable delay by the plaintiff in asserting its rights,
and prejudice to the defendant resulting from the delay.
See Bridgestone/Firestone Research Inc. v. Automobile Club
de l'Ouest de la France, 245 F.3d 1359, 58 USPQ2d 1460, 1462
(Fed. Cir. 2001). “Mere delay in asserting a trademark-
related right does not necessarily result in changed
conditions sufficient to support the defense of laches.
There must also have been some detriment due to the delay.”
Id., 58 USPQ2d at 1463. With regard to delay, the focus is

14 The only exception is when confusion is inevitable, because
any injury to the defendant caused by the plaintiff’s delay is
outweighed by the public’s interest in preventing confusion. See
Turner v. Hops Grill & Bar Inc., 52 USPQ2d 1310 (TTAB 1999).
That is not the situation here, since there are differences in
the goods.

Cancellation No. 92044725
9
on reasonableness and the Board must consider any excuse
offered for the delay. See A. C. Aukerman Co. v. R. L.
Chaides Construction Co., 960 F.2d 1020, 22 USPQ2d 1321,
1329 (Fed. Cir. 1992). With regard to prejudice, there must
also have been some detriment due to the delay such as
evidentiary prejudice or economic prejudice, and respondent
must show that its prejudice resulted from the delay. Id.
The mere passage of time does not constitute laches. See
Aquion Partners L.P. v. Envirogard Products, Ltd., 43
USPQ2d 1371, 1373, citing Advanced Cardiovascular Systems v.
SciMed Life Systems, 988 F.2d 1157, 26 USPQ2d 1038, 1041
(Fed. Cir. 1993).
Respondent asserts that petitioner had notice of its
challenged registration since its date of issuance; and
that, although the registration for its HOUDINI mark issued
on February 11, 2003, petitioner delayed filing its petition
to cancel until July 13, 2005. Respondent has submitted
evidence that in 2003 it sold considerable numbers of
corkscrews under the HOUDINI mark and expended considerable
sums of money on advertising therefor.15 Respondent has
further shown that the number of corkscrews sold under the
HOUDINI mark essentially doubled in 2004 and again in 2005,
and the advertising expenditures therefor during that time
period were considerable. Respondent argues that “during

15 Grossman testimony, Confidential Exhibit 26.
Cancellation No. 92044725
10
the period of Petitioner’s delay, Metrokane has successfully
established the HOUDINI brand in connection with corkscrews
and it is currently one of the most successful premium wine
accessory brands in the United States.”16 Respondent
further argues that cancellation of its registration “would
destroy this significant investment and the goodwill that
Metrokane has established in the trademark.”17 Finally,
respondent argues that petitioner is silent as to the reason
for its delay in bringing this cancellation action.
In its reply brief, petitioner argues that respondent
has failed either to assert or introduce any evidence that
it “expended monies on advertising its HOUDINI corkscrews
because Houdini delayed in seeking cancellation of
Metrokane’s registration.”18 Petitioner further argues that
respondent’s advertising expenditures “between the date of
issue of its registration and before commencement of this
proceeding could not have been in reliance on Houdini’s
delay in seeking cancellation since Metrokane states that it
was not even aware of Houdini, Inc. during this time
period.”19
In this case, we find that petitioner had constructive
notice of respondent’s challenged registration as of the

16 Respondent’s brief, p. 43.
17 Id.
18 Reply brief, p. 10.
19 Id.

Cancellation No. 92044725
11
February 11, 2003 date of issuance thereof. See Teledyne
Technologies, Inc. v. Western Skyways, Inc., 78 USPQ2d 1203
(TTAB 2006), aff'd, Teledyne Technologies, Inc. v. Western
Skyways, Inc., 208 Fed. Appx. 886, unpublished Nos. 2006-
1336, 2006-1367 (Fed. Cir. December 6, 2006). There is
nothing in the record to indicate that petitioner had actual
notice of the registration or respondent’s use of its
HOUDINI mark prior to this date. Nor does respondent so
allege. Thus, the length of petitioner’s delay in filing
the petition to cancel is just under two and one half years.
Because petitioner offers no explanation for its delay
in bringing the instant cancellation action, we are
precluded from finding that petitioner has a reasonable
excuse therefor. Nonetheless, we do not find that the delay
of two and one half years is of such length per se as to
compel a finding that petitioner unduly delayed in seeking
cancellation of respondent’s trademark registration. Cf.
Bridgeston/Firestone, supra, at 1362 (the passing of twenty-
seven years after registration, combined with the absence of
a reasonable excuse for petitioner’s inaction held to
constitute undue delay). In that regard, the fact that the
Trademark Act provides for cancellation of a registration
under Section 2(d) until such registration is five years old
suggests that petitioner’s delay of two and one half years,
Cancellation No. 92044725
12
i.e., half of the time provided by statute therefor, is not
per se unreasonable.
With regard to prejudice, respondent asserts economic
detriment and has submitted evidence regarding the increases
in its sales and advertising expenditures during the period
of the inaction.20 However, respondent has not demonstrated
that it expended such effort and funds promoting and
advertising its goods under the HOUDINI mark as a result of
petitioner’s inaction. In other words, respondent has
neither asserted nor introduced evidence that it changed its
position to its detriment regarding advertising and
promoting its HOUDINI corkscrews in reliance upon
petitioner’s delay. See Fishking Processors, Inc. v. Fisher
King Seafoods, Ltd., 83 USPQ2d 1762, 1766 (TTAB 2007). Cf.
Hemstreet v. Computer Entry Systems Corp., 972 F.2d 1290, 23
USPQ2d 1860, 1863 (Fed. Cir. 1992) (a nexus must be shown
between the patentee's delay in filing suit and the
expenditures; the alleged infringer must change his position
“because of and as a result of the delay.”) Indeed,
respondent’s own marketing director has testified that
respondent had not heard of petitioner prior to institution
of this cancellation action. As such, while respondent’s
evidence suggests that it has enjoyed a substantial measure

20 Respondent does not assert any evidentiary prejudice due the
passing of time, such as loss of documents, or the unavailability
or fading memory of witnesses, etc.
Cancellation No. 92044725
13
of success with the corkscrews marketed under its HOUDINI
mark and that it has incurred corresponding expenses in
advertising the same, such evidence does not support its
claim of detriment resulting from petitioner’s relatively
brief delay in bringing this proceeding. As a result,
respondent has failed to demonstrate a nexus between
petitioner’s delay in filing its petition for cancellation
and respondent’s financial expenditures to advertise and
market its corkscrews under its HOUDINI mark.
Accordingly, we find that respondent’s affirmative
defense fails for lack of proof.
We turn now to petitioner’s pleaded grounds.
Priority of Use
To establish priority on a likelihood of confusion
claim brought under Trademark Act §2(d), a party must prove
that, vis-à-vis the other party, it owns “a mark or trade
name previously used in the United States … and not
abandoned….” Trademark Act Section 2, 15 U.S.C. §1052. A
party may establish its own prior proprietary rights in a
mark through ownership of a prior registration, actual use
or through use analogous to trademark use, such as use in
advertising brochures, trade publications, catalogues,
newspaper advertisements and Internet websites which create
a public awareness of the designation as a trademark
identifying the party as a source. See Trademark Act §§2(d)
Cancellation No. 92044725
14
and 45, 15 U.S.C. §§1052(d) and 1127. See also T.A.B.
Systems v. PacTel Teletrac, 77 F.3d 1372, 37 USPQ2d 1879
(Fed. Cir. 1996), vacating Pactel Teletrac v. T.A.B.
Systems, 32 USPQ2d 1668 (TTAB 1994).
It is well settled that in the absence of any evidence
of earlier use, the earliest date upon which a respondent
may rely is the filing date of its underlying application.
See Trademark Act Section 7(c), 15 U.S.C. §1057(c). See
also Larami Corp. v. Talk to Me Programs, Inc., 36 USPQ2d
1840 (TTAB 1995). In this case, and as noted above, the
application that matured into the registration at issue
herein was accorded a filing date of August 29, 2001.
Inasmuch as respondent has neither alleged nor introduced
any evidence to support a finding that it made earlier use
of its mark, we find that August 29, 2001 is the earliest
date upon which respondent is entitled to rely for purposes
of priority.
Inasmuch as petitioner has not pleaded ownership of any
registered trademark, and further because its pleaded
applications were filed subsequent to the filing date of the
application that matured into respondent’s registration,
petitioner must rely on its common law use of HOUDINI, as
well as HOUDINI NORTHWEST BASKET and HOUDINI WALL BASKET, as
trademarks to prove priority. In order for a plaintiff to
prevail on a claim of likelihood of confusion based on its
Cancellation No. 92044725
15
ownership of common law rights in a mark, the mark must be
distinctive, inherently or otherwise, and plaintiff must
show priority of use. See Otto Roth & Co. v. Universal
Foods Corp., 640 F.2d 1317, 209 USPQ 40 (CCPA 1981).
Respondent has not questioned the distinctiveness of
petitioner’s HOUDINI, HOUDINI NORTHWEST BASKET, or HOUDINI
WALL BASKET marks; nor are there any other circumstances in
the case which would have put petitioner on notice of this
defense. As such, and particularly because respondent seeks
to register HOUDINI as a mark without benefit of Section
2(f), we find that petitioner’s marks are inherently
distinctive. See The Chicago Corp. v. North American
Chicago Corp., 20 USPQ2d 1715 (TTAB 1991). See also Wetseal
Inc. v. FD Management Inc., 82 USPQ2d 1629 (TTAB 2007).
Thus, in order to establish priority, petitioner must show
that it made common law use of its HOUDINI, HOUDINI
NORHTWEST BASKET and/or HOUDINI WALL BASKET mark prior to
August 29, 2001. In a case involving common law rights,
“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).
In support of its claim of priority, petitioner’s
president and founder, Timothy J. Dean, testified that since
1984 petitioner has used HOUDINI on and in connection with
Cancellation No. 92044725
16
gift baskets that include, inter alia, wine, cheese,
crackers, cutting boards, gourmet foods, chocolates, wine
glasses, wine accessories, corkscrews and cheese plates.21
Mr. Dean further testified that petitioner’s use of HOUDINI
on gift baskets includes the following:
In 1984, it would have been a sales sticker on the
back saying ‘Prepared by Houdini and Company.22

We produce sales sheets and present gift baskets
to our company and they’re all under the Houdini
mark. All our gifts are labeled Houdini.23

Q. Do the baskets – are the baskets identified in
any way as coming from Houdini?
A. At the retail level?
Q. Yes.
A. All of them have marks of Houdini on them.
When they’re, say, in a run of gift baskets at the
store level, they’ll be signs above them saying
Houdini gift packs and describing what’s in them
with a price on them.
Q. Have you ever been to a store where you saw
the sign that said Houdini?
A. Sure. Yes.
Q. Give an example.
A. I do store tours all the time, go into Sam’s or
Costco. You walk down the – they call them runs
where they have the price above the items, they’ll
say Houdini. They describe who the vendor is and
then they describe the item. And then they have
the price of the item on the signage.24

In addition, Mr. Dean testified that the labels bearing
petitioner’s HOUDINI mark were “placed in a prominent
position, usually somewhere on the basket where the

21 Dean Testimony, p. 4-10.
22 Id. at 6.
23 Id. at 10.
24 Id.
Cancellation No. 92044725
17
customers could see it.”25 Petitioner has introduced as an
exhibit to Mr. Dean’s testimony printed copies of labels
placed on petitioner’s gift baskets, identifying the type of
basket, e.g., “Fetzer Two-Bottle Wine Basket,” Holiday Box
of Treats,” Tuscan Basket,” etc.26 Two of the submitted
labels contain the word “Houdini” as part of their title,
namely, “HOUDINI NORTHWEST BASKET” and “HOUDINI WALL
BASKET.”27 Mr. Dean testified that the submitted labels
were in use in 2000.28
Based upon the testimony of petitioner’s president, and
the documentary evidence in the form of labels from 2000
affixed to petitioner’s gift baskets, we find that
petitioner has proven by a preponderance of the evidence
that it made use of the HOUDINI mark, as well as the HOUDINI
NORTHWEST BASKET and HOUDINI WALL BASKET marks, on or in
connection with such gift baskets prior to respondent’s
constructive date of first use.29 Accordingly we find that
petitioner has proven its claim of priority.

25 Dean Testimony, p. 22-23.
26 Dean Testimony, p. 22-24, Exhibit 16.
27 Id.
28 Id. at 23. Petitioner introduced additional examples of use of
HOUDINI as a mark, including labels for use with various baskets,
all of which prominently display HOUDINI along with the name and
contents thereof, and the notation “Packed by Houdini Inc.
Fullerton CA 92835; and screen shots from its Internet website
displaying HOUDINI in connection with various gift baskets.
However, these examples of use of the HOUDINI mark were
subsequent to respondent’s constructive first use date, and as
such they do not support petitioner’s claim of priority.
29 Inasmuch as petitioner has proven prior use of HOUDINI and
HOUDINI-formative marks as trademarks, we need not consider
Cancellation No. 92044725
18
Respondent argues that petitioner’s testimony does not
support petitioner’s claim of priority because it is self-
serving, and fails to demonstrate that petitioner uses
HOUDINI as a mark in connection with any goods, but rather
“establishes that Petitioner provides gift basket design
services….”30 However, “[o]ral testimony, if sufficiently
probative, is normally satisfactory to establish priority of
use in a trademark proceeding.” Powermatics, Inc. v. Globe
Roofing Products Co., 341 F.2d 127, 144 USPQ 430, 432 (CCPA
1965). See also National Bank Book Co. v. Leather Crafted
Products, Inc., 218 USPQ 826, 828 (TTAB 1993) (oral
testimony may be sufficient to prove the first use of a
party’s mark when it is based on personal knowledge, it is
clear and convincing, and it has not been contradicted);
Liqwacon Corp. v. Browning-Ferris Industries, Inc., 203 USPQ
305, 316 (TTAB 1979) (oral testimony may be sufficient to
establish both prior use and continuous use when the
testimony is proffered by a witness with knowledge of the
facts and the testimony is clear, convincing, consistent,
and sufficiently circumstantial to convince the Board of its
probative value); GAF Corp. v. Anatox Analytical Services,
Inc., 192 USPQ 576, 577 (TTAB 1976) (oral testimony may
establish prior use when the testimony is clear, consistent,

whether petitioner has made prior use of HOUDINI as a trade name
or prior use that is analogous to trademark use.
30 Brief, p. 21.
Cancellation No. 92044725
19
convincing, and uncontradicted). While the only documentary
evidence supporting the testimony regarding petitioner’s
prior use of HOUDINI as a trademark is a set of labels from
2000, the testimony of its president was clear, convincing,
consistent and sufficiently circumstantial to persuade us of
its probative value.
Likelihood of Confusion
Our likelihood of confusion determination under Section
2(d) is based on an analysis of all of the facts in evidence
that are relevant to the factors bearing on the likelihood
of confusion issue. See In re E. I. du Pont de Nemours &
Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). See also Palm
Bay Imports, Inc. v. Veuve Clicquot Ponsardin Maison Fondee
En 1772, 396 F.3d 1369, 73 USPQ2d 1689 (Fed. Cir. 2005); In
re Majestic Distilling Company, Inc., 315 F.3d 1311, 65
USPQ2d 1201 (Fed. Cir. 2003); and In re Dixie Restaurants
Inc., 105 F.3d 1405, 41 USPQ2d 1531 (Fed. Cir. 1997). We
will concentrate our discussion of the issue of likelihood
of confusion on that mark of petitioner’s which is closest
to the mark in the challenged registration, namely,
petitioner’s HOUDINI mark.
The Marks
We turn to the first du Pont factor, i.e., whether
respondent’s and petitioner’s marks are similar or
dissimilar when viewed in their entireties in terms of
Cancellation No. 92044725
20
appearance, sound, connotation and overall commercial
impression. See Palm Bay Imports, Inc. v. Veuve Clicquot,
supra. The test, under the first du Pont factor, 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 terms of their overall commercial
impression that confusion as to the source of the goods
and/or services offered under the respective marks is likely
to result.
As noted, petitioner has proven by credible testimony
that it has made prior common law use of HOUDINI as a
trademark. Such mark is identical to respondent’s HOUDINI
mark in every respect.
Furthermore, there is no evidence of record of third-
party use of HOUDINI for related, or even unrelated, goods
or services. Nor is there evidence that HOUDINI is
suggestive of petitioner’s goods. As such, we find no
evidence that HOUDINI is a weak mark or that it should be
afforded only a narrow scope of protection. On the
contrary, HOUDINI appears to be a strong, if not arbitrary,
mark as applied to petitioner’s goods.
In short, we find that respondent’s mark is identical
to petitioner’s HOUDINI mark. This du Pont factor heavily
favors petitioner.
Cancellation No. 92044725
21
The Goods
With respect to the goods, it is well-established that
the goods or services of the parties need not be similar or
competitive, or even offered through the same channels of
trade, to support a holding of likelihood of confusion. It
is sufficient that the respective goods or services of the
parties are related in some manner, and/or that the
conditions and activities surrounding the marketing of the
goods or services are such that they would or could be
encountered by the same persons under circumstances that
could, because of the similarity of the marks, give rise to
the mistaken belief that they originate from the same
source. See Hilson Research, Inc. v. Society for Human
Resource Management, 27 USPQ2d 1423 (TTAB 1993); and In re
International Telephone & Telegraph Corp., 197 USPQ 910, 911
(TTAB 1978). The issue, of course, is not whether
purchasers would confuse the goods or services, but rather
whether there is a likelihood of confusion as to the source
thereof. In re Rexel Inc., 223 USPQ 830 (TTAB 1984).
As identified in its registration, respondent’s goods
are corkscrews. Petitioner has introduced testimony and
evidence that it uses the identical HOUDINI mark on gift
baskets, including wine-themed gift baskets that contain
corkscrews, as well as wine glasses, cheese boards, wine
coolers and, of course, wine. Thus, respondent’s goods are
Cancellation No. 92044725
22
included among the type of goods that petitioner places in
its wine-themed gift baskets. Petitioner has introduced
further evidence in the form of photographs of its gift
baskets31 showing that the contents thereof are arranged in
such a manner as to be clearly visible to prospective
purchasers. As such, a purchaser of petitioner’s wine-
themed gift baskets sold under its HOUDINI mark would see
the corkscrews contained therein. Because corkscrews are a
significant component of the gift baskets, the relatedness
of corkscrews and gift baskets containing corkscrews is
obvious. Consumers of gift baskets, upon encountering
respondent’s corkscrews sold under the identical mark, would
be likely to mistakenly assume a common source or
sponsorship.
We note that respondent’s corkscrews are “lever pull”
corkscrews and that petitioner’s gift baskets contain
smaller sommelier-type corkscrews. However, in making our
determination regarding the relatedness of the parties’
goods, we must look to the goods as identified in the
involved registration. See Octocom Systems, Inc. v. Houston
Computers Services Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787
(Fed. Cir. 1990). Inasmuch as respondent’s goods are
identified as corkscrews without any limitation as to type,
they must be presumed to include all types of corkscrews,

31 Dean Testimony, Exhibit 20.
Cancellation No. 92044725
23
including the sommelier corkscrews contained in petitioner’s
gift baskets.
In view of the related nature of the parties’ goods,
this du Pont factor also favors petitioner.
Channels of Trade
Respondent argues that its goods move in different
channels of trade from those in which petitioner’s gift
baskets are encountered. However, the testimony and
evidence adduced at trial demonstrates that petitioner
markets its gift baskets to liquor and wine stores, wineries
and wholesale clubs and retail stores, including Sam’s Club,
Costco, Cost Plus, Target, Wal-Mart, Bed, Bath & Beyond, and
B-J’s.32 Respondent markets its corkscrews primarily
through large national retail and wine and liquor chains,
including Target, Bed, Bath & Beyond, and Beverages &
More.33 Thus, from the testimony and evidence at trial, it
is clear that not only do the parties market their goods
through channels of trade that are identical in part, i.e.,
wine and liquor stores and national chains, but that they in
fact market their goods to some of the same stores,
including Target and Bed, Bath & Beyond.
As a result, this du Pont factor also favors
petitioner.

32 Id. at 6-7.
33 Petitioner’s Notice of Reliance, Exhibit 5.
Cancellation No. 92044725
24
Conditions of Sale
The next du Pont factor discussed by the parties is
that of the conditions of sale. Respondent asserts that
petitioner’s gift baskets are marketed to wholesalers who
resell its baskets to retail consumers; and that such
wholesalers are careful and sophisticated users. However,
the ultimate purchasers of petitioner’s gift baskets, as
resold by wholesalers, retail stores, and wine and liquor
stores, are the general public, who may not be particularly
discriminating purchasers. Indeed, for the general
consumer, gift baskets containing corkscrews and corkscrews
per se might well be the subject of impulse purchases made
without a great deal of deliberation. In addition, even if
some degree of care were exhibited in making the purchasing
decision, petitioner’s HOUDINI mark is identical to that of
respondent so that even careful purchasers are likely to
assume that the marks identify goods emanating from a single
source. As a result, we find this du Pont factor also to
favor petitioner.
Actual Confusion
The final du Pont factor discussed by the parties is
the lack of instances of actual confusion despite over five
years of use by the parties of their respective marks.
Respondent asserts that the absence of actual confusion
suggests no likelihood of confusion. However, it is not
Cancellation No. 92044725
25
necessary to show actual confusion in order to establish
likelihood of confusion. See Weiss Associates Inc. v. HRL
Associates Inc. 902 F.2d 1546, 223 USPQ 1025 (Fed. Cir.
1990). Thus, while evidence of actual confusion strongly
supports a finding of likelihood of confusion, the absence
thereof does not require a finding of no likelihood of
confusion. See In re Majestic Distilling Company, Inc., 315
F.3d 1311, 65 USPQ2d 1201, 1205 (Fed. Cir. 2003) (“The lack
of evidence of actual confusion carries little weight.”)
Accordingly, this du Pont factor must be considered to
be neutral or to favor respondent only slightly.
Conclusion
We have carefully considered all of the testimony and
evidence pertaining to priority of use and the relevant du
Pont factors, as well as all of the parties’ arguments with
respect thereto, including any evidence and arguments not
specifically discussed in this opinion.
We conclude that petitioner has established priority of
use and that consumers familiar with petitioner’s goods
under its common law HOUDINI mark would be likely to
believe, upon encountering respondent’s HOUDINI mark for its
corkscrews, that the parties’ goods originate with or are
associated with or sponsored by the same entity. In making
our determination, we have balanced the relevant du Pont
factors. The factors of the identity of the marks and the
Cancellation No. 92044725
26
relatedness of the goods weigh strongly in petitioner’s
favor.
DECISION: The petition to cancel is granted, and
Registration No. 2687530 will be cancelled in due course.