itote Inc.v.totes Isotoner Corporationtotes Isotoner Corporation v. itote Inc.

Trademark Trial and Appeal Board

Jul 19, 2006

No. 92041389 (T.T.A.B. Jul. 19, 2006)

Mailed:
July 19, 2006

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
______

itote Inc.
v.
totes Isotoner Corporation
_____

Opposition No. 91121054
to application Serial No. 75714429
filed on May 26, 1999

Cancellation No. 92040619
to Registration No. 1138767
issued August 19, 1980

Cancellation No. 92040732
to Registration No. 1154884
issued May 19, 1981

Cancellation No. 92041389
to Registration No. 2305847
issued January 4, 2000
_____

totes Isotoner Corporation
v.
itote Inc.
_____

Opposition No. 91155989
to application Serial No. 78018951
filed on July 30, 2000
_____

Joseph F. Nicholson of Kenyon & Kenyon for itote Inc.

THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT
OF THE TTAB
Opposition No. 91121054, et al.
2
Gregory F. Ahrens of Wood, Heron & Evans, L.L.P. for totes
Isotoner Corporation
______

Before Seeherman, Hairston and Kuhlke, Administrative
Trademark Judges.

Opinion by Kuhlke, Administrative Trademark Judge:

In these consolidated proceedings itote, Inc.
(hereinafter Itote), as plaintiff in Opposition No.
91121054, seeks to prevent totes Isotoner Corporation
(hereinafter Totes) from registering the mark TOTES (in
standard character form) for backpacks, day packs, belt
bags, all purpose sports bags, duffle bags, and briefcases,1
and as plaintiff in Cancellation Nos. 92040619, 92040732 and
92041389, seeks to cancel Totes’ registrations for TOTES (in
standard character form) for carrying cases and pouches for
overshoes, raincoats and umbrellas;2 TOTES (in standard
character form) for fabric carryalls with umbrella storage
compartment;3 and TOTES SPORT (in standard character form,
SPORTS disclaimed) for backpacks, carryall bags, duffel
bags, and fanny packs.4

1 Serial No. 75714429, filed May 26, 1999. The application is
based on use under Trademark Act Section 1(a), 15 U.S.C.
§1051(a), alleging 1981 as the date of first use and first use in
commerce.

2 Registration No. 1138767, issued August 19, 1980, renewed.

3 Registration No. 1154884, issued May 19, 1981, renewed.

4 Registration No. 2305847, issued January 4, 2000.
Opposition No. 91121054, et al.
3
Itote has brought the notice of opposition and the
petitions for cancellation on the grounds that (1) TOTES is
the generic term for the goods identified in Totes’
application and registrations, and (2) fraud.
Totes, in its answers, denied the salient allegations
of the notice of opposition and petitions to cancel, and in
Opposition No. 91121054 alleged affirmatively that its mark
TOTES is famous as used with a “variety of goods.”
Totes, as plaintiff in Opposition No. 91155989, seeks
to prevent Itote from registering the mark ITOTE PC (in
standard character form, PC disclaimed) for “carrying cases,
backpacks, carry on bags, school bags, tote bags, travel
bags and briefcases, all specifically designed to carry and
transport portable computers” in International Class 9, and
“carrying cases, backpacks, carry on bags, school bags, tote
bags, travel bags and briefcases” in International Class
18.5 In the notice of opposition, Totes alleges that ITOTE
PC is confusingly similar to Totes’ various previously used
and registered TOTES marks. In its answer, Itote denies the
salient allegations and asserted various “affirmative
defenses.”6

5 Serial No. 78018951, filed July l30, 2000. The application is
based on a bona fide intention to use the mark in commerce under
Trademark Act Section 1(b), 15 U.S.C. §1057(b).

6 To the extent the answer sets forth affirmative defenses (e.g.,
estoppel or unclean hands) these affirmative defenses were not
pursued at trial or in the brief other than to reargue Itote’s
Opposition No. 91121054, et al.
4
The record consists of the pleadings, the files of the
opposed applications and the subject registrations, the
testimony depositions with accompanying exhibits of Michael
Katz, a senior vice president with Totes, taken on October
14, 2004 (Katz I) and December 2, 2004 (Katz II), Adam
Bennett, president and CEO of Itote, taken on October 29,
2004 (Bennett I) and February 10, 2005 (Bennett II), and
Bradford E. Phillips (Phillips), prior owner of Totes, taken
on October 14, 2004. In addition, Itote has submitted four
notices of reliance upon various items. Totes has objected
to various portions of the evidence and testimony and we
will address these objections below. Briefs have been filed
but an oral hearing was not requested.
Evidentiary Issues
Totes objects to the Internet printouts marked as
exhibit nos. 3-12 during the Katz I deposition for lack of
foundation and authentication. Itote took this deposition
by subpoena and Totes did not produce these printouts to
Itote. Rather, Itote presented these Internet printouts to
Mr. Katz. Moreover, Totes argues that Itote's counsel “did
not lay any foundation regarding Mr. Katz’s personal
knowledge or familiarity with Exhibits 3-12” and requests
that the Board exclude Mr. Katz’ testimony regarding exhibit
nos. 3-12. Itote argues that in view of Totes’ failure to

contentions regarding the issues of genericness and fraud
Opposition No. 91121054, et al.
5
object at the time of the deposition the objections have
been waived. While we agree that the objection is untimely,
in view of the manner in which these Internet printouts were
introduced, although of record, they have little probative
value. The testimony elicited with regard to these
printouts concerns the witness’s own perception of the bags
in the pictures; the testimony is not directed to the
public’s understanding of or exposure to these bags and how
they are described on the website, nor do they prove that
the bags are actually for sale or were being advertised at
the time of the deposition.
In addition, Totes objects to the Internet printouts
submitted under notice of reliance. Itote again responds
that Totes’ objection is untimely inasmuch as Totes did not
file a motion to strike. Itote argues that had Totes filed
a timely objection, Itote “would have had sufficient time to
depose the person who performed the Internet searches, thus
authenticating the documents.” Br. p. 11. It is well
settled that Internet printouts are not self-authenticating
and are “not proper subject matter for introduction by means
of a notice of reliance under Trademark Rule 2.122(e).”
Plyboo America Inc. v. Smith & Fong Co., 51 USPQ2d 1633,
1634 n.3 (TTAB 1999). See also Michael S. Sachs Inc. v.
Cordon Art B.V., 56 USPQ2d 1132, 1134 (TTAB 2000); Raccioppi

pertaining to Totes’ marks and registrations.
Opposition No. 91121054, et al.
6
v. Apogee Inc., 47 USPQ2d 1368, 1370 (TTAB 1998). Thus,
Totes’ objection is sustained. See Original Appalachian
Artworks Inc. v. Streeter, 3 USPQ2d 1717, 1717 n.3 (TTAB
1987) (party may not reasonably presume evidence is of
record when that evidence is not offered in accordance with
the rules); and Colt Industries Operating Corp. v. Olivetti
Controllo Numerico S.p.A., 221 USPQ 73, 74 n.2 (TTAB 1983)
(objection raised in brief that items submitted by notice of
reliance were neither official records nor printed
publications sustained). We hasten to add that even if we
considered these exhibits, as with the printouts attached to
the Katz I deposition, these printouts have little probative
value. We further note that all of the Internet printouts,
including the exhibits attached to the Katz I deposition,
are from one website and “totes” is used only three times in
headers for pages with various bags (e.g., double handle
tote, attachable shoulder tote). While the website
apparently displays various designer’s bags it is not known
if the use of the word tote in connection with various types
of bags is the designer’s designation or from the website
itself. Moreover, there is nothing in the record to
indicate the extent to which consumers have been exposed to
this one website.
Totes also objects to various items marked as exhibits
during the Bennett II deposition. Specifically, Totes
Opposition No. 91121054, et al.
7
argues that Itote failed to authenticate exhibit nos. 5-7
and 11, and failed to lay a foundation and failed to
authenticate exhibit nos. 8 and 12. These exhibits comprise
photographs of products, hangtags, and receipts for Totes’
products. The products were not purchased by the witness,
nor was the purchaser identified, nor is there testimony to
verify that the photographs are a fair and accurate
representation of the actual products, hangtags, and
receipts. However, other than exhibit no. 12, Totes has not
argued that these are not hangtags from Totes’ products. In
response to the objection, Itote argues that during the
deposition Totes did not object to exhibit nos. 5, 6 and 12
for lack of authentication; that Mr. Bennett’s testimony
that he had hired someone to make the purchases and that Mr.
Bennett had sent the receipts to the Board with the pleading
was sufficient to lay a foundation; and that exhibit no. 8
was “real evidence which does not rely on a witness’s
testimony.” We note that the exhibits in question appear to
pertain to purchases made in 2001. Mr. Katz, a Totes’
senior vice president, had already, in a declaration dated
July 3, 2001 and attached as exhibit no. 1 to the Katz I
deposition, addressed the photographs of the products and
stated the following:
I am aware that Itote Inc. has attached
photographs of products purportedly purchased at a
Opposition No. 91121054, et al.
8
totes7 outlet store that are identified as a tote,
a tote bag, an umbrella tote and a computer tote.
This labeling is not approved totes labeling as
totes does not and never has sold any tote bags
under the TOTES mark...The identification of the
products as a tote, tote bag, umbrella tote or
computer tote was a mistake.

Mr. Katz further testified in the Katz II deposition
that:
What had happened was some of the bags that were
sold in our retail stores, which also had the
totes trademark, those carryall bags were also
marked as a tote, t-o-t-e, and that was
inappropriate labeling because those bags did not
satisfy our internal definition of what a tote bag
is. And it was an error that was brought to our
attention. It was corrected and we made sure we
do not mislabel any of our goods that carry the
totes trademark. Katz II p. 16.

We further note that no objection has been made to
exhibit nos. 13 and 14, which are photographs of similar
hangtags to those reproduced in exhibit nos. 5-8 and 11 but
were purchased by Mr. Bennett in 2005. Inasmuch as Totes
has substantively addressed the subject matter of the
exhibits in question through the testimony of its senior
vice president, Totes’ objections are overruled and the
exhibits remain of record.
Finally, Totes’ objection to the evidence attached to
Itote’s brief is sustained. Evidence submitted for the

7 We note that Totes’ corporate name is depicted as “totes”
without capitalization, and therefore, in the testimony that is
quoted throughout this opinion we have shown the name “totes” in
this format.
Opposition No. 91121054, et al.
9
first time with a brief will not be considered.8 Angelica
Corp. v. Collins & Aikman Corp., 192 USPQ 387, 391 n.10
(TTAB 1976).
Opposition No. 91121054 and Cancellation Nos. 92040619,
92040732, and 92041389

We first address the four proceedings in which Itote is
in the position of plaintiff and Totes is in the position of
defendant, and involve the common issues pertaining to the
alleged genericness of Totes’ marks and the alleged fraud
committed in filing, obtaining and/or maintaining the
application and registrations.
Itote has sufficiently established that it has standing
to bring these proceedings inasmuch as it has shown that it
is a potential competitor in the same market as Totes. See
Bennett I p. 7 (“Itote Inc., is a start-up that has been
involved in the design and development of computer cases,
primarily for the Apple market.”) PlybooAmerica, Inc. v.
Smith & Fong Co., supra. We also note that Totes has not
disputed Itote's standing.

8 We note Totes’ further objection “to other deposition exhibits
and documents that itote submitted, but did not cite in the
‘Description of the Evidence of Record.’” Br. p. 2 fn. 5. Totes
has not specified what exhibits were purportedly not indicated in
the Description of the Record, and the Board generally will not
consider such a vaguely worded objection as that raised by Totes
herein. In any event, while a listing in the brief of the
materials that are of record is helpful to the Board, identifying
all materials is not a requirement to their being considered.
Otherwise, a party could presumably avoid having a negative
testimony deposition considered simply by not listing it. Thus,
we have considered all properly introduced evidence for its
appropriate probative value.
Opposition No. 91121054, et al.
10
Claim of Genericness
In order to prevail on the ground of genericness the
plaintiff must establish genericness by a preponderance of
the evidence. Magic Wand Inc. v. RDB Inc., 940 F.2d 638, 19
USPQ2d 1551, 1554 (Fed. Cir. 1991). The critical issue in
determining genericness is whether members of the relevant
public primarily use or understand the designation sought to
be registered or that is already registered to refer to the
genus or category of goods in question. H. Marvin Ginn
Corp. v. Int’l Association of Fire Chiefs, Inc., 782 F.2d
987, 228 USPQ 528, 530 (Fed. Cir. 1986).
Making this determination “involves a two-step inquiry:
First, what is the genus of goods or services at issue?
Second, is the term sought to be registered ... understood
by the relevant public primarily to refer to that genus of
goods or services?” Marvin Ginn, supra, 228 USPQ at 530.
The correct legal test for genericness, as set forth in
Marvin Ginn, “requires evidence of ‘the genus of goods or
services at issue’ and the understanding by the general
public that the mark refers primarily to ‘that genus of
goods or services.’” In re American Fertility Society, 188
F.3d 1341, 51 USPQ2d 1832, 1836 (Fed. Cir. 1999). That is,
do the members of the relevant public understand or use the
term sought to be protected to refer to the genus of the
goods and/or services in question?
Opposition No. 91121054, et al.
11
The genus or category of goods involved in these cases
are those goods set forth in the various identifications.
Magic Wand, supra, 19 USPQ2d at 1552. Applicant attempts to
redefine the genus, arguing that a genus is a class of
objects divided into subordinate species and in these
proceedings “tote” is the genus and the goods identified in
the application and registrations are species of that genus.
However, the various dictionary definitions of record do not
support such a categorization:
Tote v. 1. to carry by hand: bear on the person:
lug, pack 2. haul convey. Merriam-Webster’s
Collegiate Dictionary (10th ed. 1998);

Tote n. 2. tote bag. Merriam-Webster’s
Collegiate Dictionary (10th ed. 1998);

Tote bag. n A large 2-handled open-topped bag (as
of canvas). Merriam-Webster’s Collegiate
Dictionary (10th ed. 1998);

Tote transitive verb. toted, toting, totes. 1. To
haul; lug. 2. To have on one’s person; pack;
toting guns. noun 1. A load; burden 2. A tote bag.
The American Heritage Dictionary (2d College ed.
1991);

Tote bag. A large handbag or shopping bag. The
American Heritage Dictionary (2d College ed.
1991);

Tote bag. A woman’s large handbag used esp. for
carrying small packages. Webster’s Third New
International Dictionary (1964).

Notably, these definitions do not include the
identified goods. More specifically, none of the goods
listed in the application and registrations is a tote bag,
Opposition No. 91121054, et al.
12
shopping bag or handbag. We are therefore not persuaded by
Itote’s argument.9
The next question we must address is whether the
relevant purchasers for the identified goods would
understand TOTES to refer to the genus. Because the goods
are consumer items, the relevant purchasers would be the
general public.
“Evidence of purchaser understanding may come from
direct testimony of consumers, consumer surveys, dictionary
listings, as well as newspapers and other publications.”
Magic Wand, supra, 19 USPQ2d at 1553. See also In re
Merrill Lynch, Pierce, Fenner, and Smith Inc., 828 F.2d
1567, 4 USPQ2d 1141, 1143 (Fed. Cir. 1987), and In re
Northland Aluminum Products, Inc., 777 F.2d 1556, 227 USPQ
961, 963 (Fed. Cir. 1985).
Itote argues that “the target purchaser for these
goods comprise men and women who want a container for
carrying and transporting items and perceive of [sic] the
word ‘tote’ or ‘totes’ as applied to these goods as generic
–- not as an indicator of a single source.” Br. pp. 19-20.

9 We note that a definition for “carryall,” discussed infra, from
the WordNet Dictionary, lists “tote” and “tote bag” as synonyms
for a “carryall,” and “carryall bags” is one of the goods listed
in the registration for TOTES SPORT. However, this single
listing is not sufficient for us to find that “tote” is the genus
for Totes’ identified goods in the TOTES SPORT registration. We
discuss, infra, whether the record supports a finding that the
public would perceive TOTES as a generic term for “carryall
bags.”

Opposition No. 91121054, et al.
13
In support of its position that the relevant public
understands Totes’ marks to primarily refer to the various
goods listed in the application and registrations, Itote
submitted articles from several printed publications.10 A
sample of relevant excerpts are set forth below (emphasis
added):
Whatever your budget, Hindmarch thinks women need
three basic bags: First, a day-to-day work tote,
which should be durable, scratch-resistant and
have separate pockets for private things and work
things...Next, you’ll need a nighttime party bag
that’s small, flirty ...Then there’s the in-
between bag – preferably with the new baguette
shape, which sits just under the arm...New York
Daily News (March 12, 2000);

Snakeskin and patent leather evening bags in red
and black...are marked down...Her classic shoulder
totes in Napa leather will be slashed...New York
Daily News (October 22, 2000);

Items needed include trash bags, storage totes,
toilet paper...Chicago Daily Herald (July 17,
2001);

Now, her company manufactures several different
pet totes for use around town or in the air.
Chicago Sun-Times (April 24, 2001);

The portly pepperpot’s line of handbags and totes
is available exclusively through her perky pink-
and-green Web site... New York Post (September
20, 1999);

I’ve tried everything: Duffels, old bowling bags,
totes, suit bags, bags with four wheels, bags with
two wheels, bags with no wheels. Austin American-
Statesman (September 5, 1999);

10 A few of the articles were from foreign publications and are of
no probative value as to the U.S. public’s understanding of the
designations.
Opposition No. 91121054, et al.
14
A look at new rules for fans attending Ohio State
games: ...No backpacks, fanny packs, cooler, bags,
containers of any size, chair-back seats, seat
cushions, cameras or radios. No bags or totes
containing clothing items. Akron Beacon Journal
(October 3, 2001);

The $1 million campaign from TBWA/Chiat/Day, Los
Angeles, connotes celebrity status for the upscale
Samsonite 735 Series, an assortment of tote,
computer, garment and wheeled bags that
accommodate laptop computers, suits, and other
necessities for business trips. Brandweek
(September 13, 1999);

Webvan couriers bring totes, which customers
empty. (Or, you can keep the totes for a
deposit.) Peapod delivers some items in totes
(again, if you keep them, you pay a deposit) but
most products arrive in paper and plastic bags you
can unpack at your leisure. Chicago Tribune
(January 17, 2001);

First down the lane was Miuccia Prada’s version.
Her semi-circle-shaped carry-all is bigger than a
baguette, more ladylike than a tote and not as
pricey as a Hermes Kelly...Of course, this
designer clearly knows what women want in a bag –
those black nylon totes everyone lugged throughout
the ‘90s were popularized by Prada. New York
Daily News (June 4, 2000);

It’s All Greek To Me is a supplier of plush
products to the gift industry, while Toppers Inc.
supplies sports bags, totes, luggage, briefcases,
portfolios, caps, golf... Gifts & Decorative
Accessories (July 1, 1999);

They travel lightly; nylon gum bags, soft canvas
totes, comfy leather briefcases, maybe a dark
shoulder bag where a flat dress suit waits for its
moment in the sun. Chicago Tribune (August 12,
1999);

Sack sale Soco, the Nolita store specializing in
French handbags, is having a sale on its totes,
bags and purses until Jan. 6. A leather ostrich-
embossed bowling bag in tan, purple or red with
gold piping has been reduced from $235 to $188.
Opposition No. 91121054, et al.
15
Larger versions have been reduced from $265 to
$210. Tiger-print shoulder bags have had $15
knocked off their original price and are now
available for $170, as have the canvas messenger
bags and shopping totes, now $50 and $60,
respectively. Large weekend duffel bags in red,
purple or green are down from $130 to $100. New
York Daily News December 17, 2000);

Totes, hobo bags, garment bags, pocket books,
shoulder bags, change purses, fanny packs,
eyeglass and cosmetic cases, checkbook
covers...Chicago Tribune (May 7, 2001);

When it comes to bags, spring’s winners can be
compartmentalized into one carryall: totes...Tote
bags, though, are carrying increases and being
reordered in droves for spring 2002. DSN
Retailing Today (August 20, 2001);

Totes are like T-shirts—the perfect union of
practicality and chic...If you rely on your tote
as an organizer too, you’ll be happy to know
there’s one for every sorting style. Some totes
have a pouch sized for quick access to a cell
phone or a PDA, and some have one for an
umbrella...You can even get a tote with a
removable zippered pouch should you need a secure
zone within your open-top tote. InStyle Magazine
(October 1, 2000);

The line has a variety of totes, handbags, gym
bags, travel bags and accessories... Daily News
Record (June 9, 2000);

Personalized photos can adorn T-shirts, jackets,
canvas totes, gym bags or pillows or lap quilts.
Intelligencer Journal, Lancaster, PA (February 2,
2001);

She helped coordinate a drive throughout the
school to collect small suitcases, duffel bags,
backpacks and totes. Allentown Morning Call
(March 8, 2001).

Itote also submitted dictionary definitions for the
word carryall:
Opposition No. 91121054, et al.
16
Carryall – A light covered carriage, having four
wheels and seats for four or more persons, usually
drawn by one horse. Webster’s 1913 Dictionary;

Carryall – 2. a capacious bag or carrying case.
Merriam-Webster Online Dictionary, www.m-w.com;

Carryall – a capacious bag or basket Synonyms:
holdall, tote, tote bag. WordNet Dictionary,
www.webster-dictionary.org, and
www.hyperdictionary.com.

In addition, Itote submitted a photocopy of a book
entitled Terrific Totes & Carryalls (1st ed. 1998) which
contains sewing instructions for different types of bags.
Itote made of record the file of Registration No. 1042281,
owned by a third party. The underlying application for this
registration was filed on March 31, 1975 and included
several specimens of use consisting of catalogues. These
catalogues include references to various types of “totes,”
including “Striped Webbing Totes” referring to various types
of bags (one-handled, two-handled, zipped top, flap top,
etc.).
In arguing against Itote’s position that TOTES is
generic, Totes asserts that its mark is famous for use in
connection with a wide variety of goods and services. The
determination of whether the public will perceive a term as
generic or a trademark must take into consideration evidence
of trademark significance, so fame of the TOTES mark must be
considered as the ultimate showing of trademark
significance. In re Merrill Lynch supra, 4 USPQ2d at 1143
Opposition No. 91121054, et al.
17
(evidence does not clearly place appellant’s mark in the
category of a generic or common descriptive term where
evidence of record also showed source recognition of
record). In support of its position regarding the fame and
strength of its mark, Totes has submitted evidence, through
testimony and exhibits, that in the past ten years it “has
had sales of luggage and related bags of nearly $58
million,” and has spent over $18.5 million in advertising
TOTES branded products over the same time period. Katz II
pp. 10-11. In addition, the TOTES mark has been recognized
“as one of the top 10 brand names for accessory
merchandise.” Katz II exh. No. 2. Totes points to a
survey, known as the Fairchild 100, done by Fairchild
Publications “to assess the popularity and recognition of
apparel brands among consumers in the United States.” Katz
II p. 11. In 2000, the Fairchild 100 listed TOTES as third
in the accessories category, which could include some of
Totes’ bag products. Katz II p. 12. The survey conducted
by Fairchild is a “statistical survey of consumers across
the United States to rank overall brand awareness and
recognition” id. and “[i]n rank order out of the ten, number
1 was Nine West, 2 was Ray-Ban, 3 is Totes, 4 is Foster
Grant, 5 is Coach, 6 is Capezio, 7 is Kenneth Cole, and 10
was Louis Vuitton.” Katz II at 15. Further, Totes’
internal measurements of brand recognition “indicate that 85
Opposition No. 91121054, et al.
18
percent of the public recognizes the TOTES mark.” Br. p. 4;
Katz II p. 14. Finally, two of Totes’ registrations are
nearly 30 years old and, as stated in paragraph 2 of the
Katz declaration (exhibit 1 to Katz I), Totes uses the mark
TOTES in connection with a wide variety of goods and
services, and it owns a number of United States trademark
and service mark registrations on the TOTES mark.11
While this showing is not sufficient to establish fame
as contemplated in a Section 2(d) analysis, see infra, it
does affect our genericness determination and shows at the
very least that TOTES is recognized as a trademark in
connection with the identified goods.
Totes contends that Itote has not met its burden of
proving TOTES is a generic term, and points to the lack of a
consumer survey or any testimony regarding the public’s
understanding of the TOTES marks. It is Totes’ position
that there is no direct evidence regarding the public’s

11 We note that Totes is under the misconception that all 47 of
its pleaded registrations are of record. Itote took the
deposition of Mr. Katz (Katz I) and introduced a declaration by a
third party, Mr. Remaklus, which had been submitted by Totes in
response to an earlier motion for summary judgment. Attached to
the Remaklus declaration were copies of these 47 registrations.
The status and title copies were not attached to the Remaklus
declaration, nor attached as exhibits to the Katz I deposition,
nor did Mr. Katz testify to the status and title of the
registrations and, therefore, they are not of record. Although
in the Remaklus deposition there is a statement that status and
title copies of the registrations had been ordered and would be
submitted upon receipt (again in response to the motion for
summary judgment), these were never attached to the Katz I
deposition and the fact that these status and title copies may
Opposition No. 91121054, et al.
19
understanding. Totes also argues that the printed
publications do not “demonstrate the public’s relative
understanding of the term TOTES vis-à-vis the goods recited
in the application and registrations at issue.” Br. p. 13.
Finally, Totes states that using the word “tote” on hangtags
for certain products was an error that was subsequently
corrected internally, pointing to the following passage in
Mr. Katz’ testimony.
A. Internally we use a description of – or the
definition of a tote bag as a carryall made of
fabric with two handle straps and an open
compartment, with no zippered compartment
specifically. We’ve used that as an internal
guideline and definition, like I said, of a
specific tote bag. What had happened was some of
the bags that were sold in our retail stores,
which also had the totes trademark, those carryall
bags were also marked as a tote, t-o-t-e, and that
was inappropriate labeling because those bags did
not satisfy our internal definition of what a tote
bag is. And it was an error that was brought to
our attention. It was corrected and we made sure
we do not mislabel any of our goods that carry the
totes trademark. Katz II p. 16.

Considering all the evidence, and keeping in mind the
heavy burden a plaintiff faces in establishing that a mark
is or has become generic, we find that Itote has not met its
burden.
There is simply not sufficient evidence that, to the
relevant consumers, the primary significance of TOTES, used
in connection with Totes’ goods, would be the common name of

have been ultimately filed in response to the motion for summary
judgment does not make them of record for purposes of the trial.
Opposition No. 91121054, et al.
20
the goods rather than the source identifier. Here, we have
1) dictionary definitions for tote and tote bag that do not
include the goods identified in the application and
registrations, and 2) dictionary definitions for the word
carryall that do not include tote, totes or tote bag. The
Internet reference listing carryall as synonymous with tote
or tote bag also is not sufficient to constitute a
preponderance of the evidence to deem the marks in
Registration Nos. 1154884 and 2305847, which include
“carryalls with umbrella storage compartment” and “carryall
bags” in the identifications of goods, generic.
The articles from various publications show tote bag,
tote or totes used as a separate item in lists of goods that
include the specific goods identified in Totes’
registrations and application, e.g., backpacks, duffel bags,
carryall bags. This indicates that they are considered to
be different items from Totes’ identified goods.12 With
regard to the catalogue specimens in the third-party
registration file, there is no evidence as to their
distribution or their exposure to consumers. See Allied
Mills, Inc. v. Kal Kan Foods, Inc., 203 USPQ 390, 397 n. 11
(TTAB 1979) (specimens from third-party registration files

12 The only article that even appears to link one of the
identified goods – carryall bags -- with totes is in a trade
publication, DSN Retailing Today, that does not appear to be
distributed to the general public.
Opposition No. 91121054, et al.
21
are not evidence of the fact that the specimens filed in the
underlying applications or even with Section 8 affidavits
are in use today or that such specimens have ever been used
to the extent that they have made an impression on the
public).
The Internet printouts attached to the Katz I
deposition consist of several pages from one website,
ebags.com, that show bags apparently from different
designers either accompanied by the word “tote” (e.g.,
Kenneth Cole Reaction – Edge of Town Double Handle Tote,
Victorinox – Trek Pack Plus Attachable Shoulder Tote) or
under the page headings “New Totes Products” or “Top Ten
Totes Best Sellers.” As noted above, these printouts have
minimal probative value coming from one website and not
accompanied by testimony regarding its exposure to
consumers. In addition, none of the printouts refers to or
displays any of the goods listed in the registrations and
application. The sewing book, Terrific Totes & Carryalls,
underscores Totes’ argument that a tote and a carryall are
different items and that a tote refers specifically to a
canvas open-topped two handled bag, as distinguished from a
carryall which appears in a separate chapter.
We acknowledge that there are Totes’ labels where
TOTES, used in a prominent manner as a source indicator, is
juxtaposed against the word tote used in close proximity in
Opposition No. 91121054, et al.
22
a clearly generic manner with other descriptive wording,
e.g., computer tote. However, these examples do not
persuade us of a different result. At most these hangtags
present a case of mixed usage manifested in one location.
In re Merrill Lynch supra, 4 USPQ2d at 1143 (“The mixture of
usages unearthed by the NEXIS computerized retrieval service
does not show, by clear evidence, that the financial
community views and uses the term CASH MANAGEMENT ACCOUNT as
a generic, common descriptive term for the brokerage
services to which Merrill Lynch first applied the term”)
(footnote omitted). Moreover, Mr. Katz testified that these
labels were marked incorrectly. See Katz II p. 16.
Finally, as to TOTES SPORT we add that there is no evidence
of record showing use of the term TOTES SPORT in a generic
manner. See American Fertility, supra.
In reaching our conclusion that Itote has failed to
demonstrate that TOTES is generic for the identified goods,
we have considered the asserted admissions that Itote claims
Totes has made. We address each in turn. Totes in its
answer filed in Cancellation No. 92040619 stated,
“Respondent admits that the term ‘totes’ existed as a word
in the English lexicon during the years 1979 and 1982.”
Answer to Cancellation No. 92040619 p. 3 ¶11. We do not
regard this statement as an admission of genericness of the
Opposition No. 91121054, et al.
23
word totes as applied to the identified goods, nor, as
discussed infra, does it support a finding of fraud.
Itote has also asserted that Totes admitted, in
connection with the prosecution of the application that
became Registration No. 1154884, that “totes” is the plural
usage of “tote.” Statements made during examination of an
application may be considered as illuminative of shade and
tone in the total picture confronting the decisionmaker.”
Interstate Brands Corp. v. Celestial Seasonings, Inc., 576
F.2d 926, 198 USPQ 151, 154 (CCPA 1978). Totes’ statement
made in response to an office action reads, “The word TOTES
(note the plural usage) is certainly not the phrase or term
commonly used in the marketplace as a description of
applicant’s goods (namely, and as amended, ‘fabric carryalls
with umbrella storage compartment’) for which registration
is sought.” Bennett I, Exh. No. 24. This statement is
ambiguous at best and clearly Totes’ position was that the
term is not descriptive of its goods. Thus, we do not
regard it in any way as being an admission of genericness.
Itote also argues that, because Mr. Phillips stated in
his deposition that “bags and pouches would be included in
the meaning of the word ‘totes’” Totes has admitted this as
a fact. Totes argues that this statement cannot be an
admission because Itote “was seeking a legal conclusion
about the definition of the term ‘totes,’” and Mr. Phillips
Opposition No. 91121054, et al.
24
“was a fact witness and was not qualified to give a legal
opinion regarding the definition of the term ‘totes.’” Br.
p. 14. Further, Totes argues that Mr. Phillips “was not
testifying on behalf of totes during his individually-
noticed deposition.” Id. The testimony in question is
reproduced below.
Q. Prior to purchasing the company So-Lo works,
and you mentioned some of their goods were called
totes, had you heard the term “totes” used before?
A. I don’t remember.
Q. Do you think that the term “totes” denotes a
bag, any kind of handbag?
A. Are you talking about the brand itself or are
you talking about the word?
Q. No, just the term “totes,” the word “totes”?
Mr. Ahrens: Again, I’ll object to the extent it
calls for a legal conclusion or analysis.
Q. You can answer the question if you understand
it.
A. I think bags and pouches would be included in
the meaning of the word. Phillips pp. 31-32.

We agree that this statement cannot be considered an
admission by Totes, inasmuch as Mr. Phillips, who is
retired, is not a party to the proceeding and was not
representing a party. At most the testimony merely reflects
Mr. Phillips’s individual opinion and understandings.
Itote also argues that Totes has admitted “that ‘tote’
was being used by others to identify their own bags, pouches
and sacks.” Br. p. 13. Again the basis for this assertion
is testimony by Mr. Phillips and cannot be considered an
admission by Totes. Moreover, there is, at the very least,
ambiguity as to whether Mr. Phillips was discussing
Opposition No. 91121054, et al.
25
descriptive usage of the word totes, rather than generic
usage. The testimony as to Mr. Phillips’s knowledge with
regard to the use of the word totes for bags is reproduced
below.
Q. Well, my question, basically, in the ‘70s –
this is 1975 as I noted – do you recall there
being bags called totes handbags?
A. No. Phillips p. 34
...
A. Yeah. When we applied for that, I believe
that we – we were the sole user of that brand name
for the products that I was describing. I
certainly was aware that there are pouches and
bags and sacks around, but I did not see anybody
using those pouches, bags and describing those
pouches, bags and sacks by the – by a brand name
application, such as totes. There was – no one
was advertising totes for sale as a branded item.
Q. Was anyone calling their pouches or – or bags
or things that you mentioned, were they calling
them totes in general, not branded, just in
general?
A. They were described sometimes as totes, but
they were not described as a totes brand.
Phillips p. 4213

Itote argues that Mr. Katz admitted that “a tote bag
would be described as a fabric carryall.” The relevant
testimony is reproduced below.
Q. I want to know what exactly is your definition
of a tote, like totes bags?
Mr. Ahrens: Objection. Vague. Calls for legal
conclusion.
Q. You can answer, sir. Paragraph 10 is what I’m
referring to.

13 We note that in its brief Itote asserts that, in response to an
office action involving a Totes’ application which is not a
subject of these proceedings, Totes submitted examples from
catalogues or brochures that included products referred to as
totes. In fact, it appears these were submitted by the examining
attorney in making his initial refusal under Section 2(e)(1).
The underlying application subsequently issued as Registration
No. 1315771 under Section 2(f) of the Trademark Act.
Opposition No. 91121054, et al.
26
A. A tote bag would be described as a fabric
carryall.
Q. And a tote bag being a fabric carryall is that
your personal definition or is that, like, a totes
Corporation definition such as something you might
include in a license agreement if you have to have
someone make bags?
A. I don’t believe that term is – is defined in
that manner in a – in a licensing agreement of any
kind. It’s more of a personal understanding or
definition. Katz I p. 25
...
Q. Okay. And would you just describe sort of in
your own words what the circumstances were and
explain what actually happened and what you were
talking about in paragraph 10?
A. Sure. Sure. Internally we use a description of
– or the definition of a tote bag as a carryall
made of fabric with two handle straps and an open
compartment, with no zippered compartment
specifically. We’ve used that as an internal
guideline and definition, like I said, of a
specific tote bag. What had happened was some of
the bags that were sold in our retail stores,
which also had the totes trademark, those carryall
bags were also marked as a tote, t-o-t-e, and that
was inappropriate labeling because those bags did
not satisfy our internal definition of what a tote
bag is. And it was an error that was brought to
our attention. It was corrected and we made sure
we do not mislabel any of our goods that carry the
totes trademark. Katz II p 16.

Totes argues first that Mr. Katz was not acting as
Totes’ 30(b)(6) representative during the deposition and
second that Mr. Katz clarified that it was his personal
understanding or definition and not Totes’ definition.
While Rule 30(b)(6) is not relevant to a testimony
deposition, it is clear from the testimony that the passage
“a tote bag would be described as a fabric carryall” is Mr.
Katz’s personal understanding; furthermore, none of the
testimony specifically describes or denotes Totes’
Opposition No. 91121054, et al.
27
identified goods. Moreover, this testimony is conflicting
in view of the later statement that labeling a carryall bag
as a tote was inappropriate because it is not a tote bag.
Thus, even as to the “carryall bags” in Registration No.
2305847 and “carryalls with umbrella storage compartment” in
Registration No. 1154884, this testimony is, at best, mixed.
With regard to Registration No. 2305847 we also note that
the mark in that registration is the combined mark TOTES
SPORT. Finally, while it is the testimony of a witness who
is in the trade and presumably knowledgeable about the
products, this is not substantial evidence of the public’s
understanding.
Itote’s arguments regarding Totes enforcement of its
trademark rights against third parties have no relevance to
the question as to the primary significance of the term
“TOTES” used in connection with Totes’ identified goods.14
Itote’s argument that “a prospective purchaser seeing
the alleged mark TOTES on a pouch or carrying case would
know that it was for carrying something,” (br. p. 28) is an
argument for descriptiveness, i.e., is the mark descriptive
of a purpose or function of the goods, but the issue of

14 Generally, it is the lack of action against third parties using
a mark that would be relevant in a determination of genericness.
Opposition No. 91121054, et al.
28
descriptiveness is not before us, and these arguments are
unpersuasive in the context of the genericness claim.15
As noted by Itote, a product can have more than one
generic name. In re Recorded Books Inc., 42 USPQ2d 1275
(TTAB 1997). However, its primary meaning must be only as
the generic designation, i.e., that it has no other meaning
among the consuming public. On this record, Itote has not
shown that the term totes used in connection with Totes’
identified goods primarily signifies those specific goods.
The only item in Totes’ identification of goods where there
may be some question would be the carryalls with umbrella
storage compartment and carryall bags but all the record
contains is mixed testimony from Mr. Katz and an Internet
synonym reference. As to the remaining goods in the Totes’
application and registrations (backpacks; day packs; belt
bags; all purpose sports bags; duffle bags; briefcases;
carrying cases and pouches for overshoes, raincoats and
umbrellas) there is no evidence that TOTES would signify the
goods rather than the source to the relevant public. In
contrast, Totes has shown recognition of TOTES as a
trademark, as evidenced by nearly thirty years of trademark
use on these goods and significant sales, amounting to $58

15 In this connection, we note that Registration Nos. 1138767 and
1154884 are more than five years old, and therefore are not
subject to cancellation on the ground of mere descriptiveness.
Nor did Itote assert this ground in the petition to cancel
Registration No. 2305847 or in the opposition.
Opposition No. 91121054, et al.
29
million dollars over a ten year period. We further note
Totes’ ranking in the top ten brands in terms of consumer
recognition in the accessories category. While we do not
have the actual survey to analyze and therefore cannot
determine, for example, the number of consumers polled, we
have guarantees of its validity because the Fairchild survey
is considered an “important bellwether” of how a company is
doing.16 Katz II p. 13.
In conclusion, the record does not contain substantial
evidence to establish that TOTES, as used on the identified
goods, would be perceived by consumers as a generic
designation rather than as a source-indicating trademark.
Accordingly, we cannot say that Itote has met its burden for
demonstrating that TOTES is a generic term.
Fraud Claims
We now address Itote’s fraud claims. Fraud in
obtaining a trademark registration occurs “when an applicant
knowingly makes false, material representations of fact in
connection with his application.” Torres v. Cantine
Torresella S.r.l., 808 F.2d 46, 1 USPQ2d 1483, 1484 (Fed.
Cir. 1986); Mister Leonard Inc. v. Jacques Leonard Couture
Inc., 23 USPQ2d 1064, 1065 (TTAB 1992) (“Thus, according to
Torres, to constitute fraud on the PTO, the statement must
be (1) false, (2) a material representation and (3) made

16 We address Totes’ allegation of fame infra in connection with
Opposition No. 91121054, et al.
30
knowingly.”). See also Medinol Ltd. v. Neuro Vasx Inc., 67
USPQ2d 1205 (TTB 2003) (“A trademark applicant commits fraud
in procuring a registration when it makes a material
representation of fact in its declaration which it knows or
should know to be false.”).
Fraud must be proven with clear and convincing
evidence, and any doubt must be resolved against a finding
of fraud. See Giant Food, Inc. v. Standard Terry Mills,
Inc., 229 USPQ 955, 962 (TTAB 1986) and cases cited therein.
Furthermore, fraud will not lie if it can be proven that the
statement, though false, was made with a reasonable and
honest belief that it was true. See Woodstock’s Enterprises
Inc. (California) v. Woodstock’s Enterprises Inc. (Oregon),
43 USPQ2d 1440 (TTAB 1997).
Itote presents three different sets of circumstances in
support of its claim of fraud. In Cancellation No. 92040619
Itote brings its claim of fraud based on an allegedly false
date of first use. However, the critical question is
whether the mark was in use in connection with the
identified goods as of the filing date of the use-based
application. If the mark was in use at that time, then the
first use, even if false, does not constitute fraud because
the first use date is not material to the decision to
approve a mark for publication. See Standard Knitting, Ltd.

its claim of likelihood of confusion in Opposition No. 91155989.
Opposition No. 91121054, et al.
31
v. Toyota Jidosha Kabushiki Kaisha, 77 USPQ2d 1917 (TTAB
2006); Colt Industries Operating Corp. v. Olivetti Controllo
Numerico S.p.A., 221 USPQ 73, 76 (TTAB 1983) (“The Examining
Attorney gives no consideration to alleged dates of first
use in determining whether conflicting marks should be
published for opposition.”).
In addition, Itote alleges that Totes committed
“further fraud in the procurement by failing to state in its
application that the alleged first use of the mark in 1949
for the identified good was by a predecessor, not by
[Totes]. Had [Totes] been forthcoming, the Office would
have required evidence of uninterrupted use of the mark and
passage of title from that date.” Br. pp. 32, 33. These
allegations also do not state a claim of fraud inasmuch as
they are also tied to use prior to the filing date of the
underlying application and are, thus, not material to the
procurement of the registration. For a representation to be
material it must be something that would have prevented
issuance of the federal registration. See Morehouse Mfg.
Corp. v. J. Strickland & Co., 407 F.2d 881, 160 USPQ 715
(CCPA 1969). See also Colt Industries Operating Corp. v.
Olivetti Controllo Numerico S.p.A., supra.
With regard to Opposition No. 91121054 and Cancellation
Nos. 92040732 and 92041389, Itote argues that Totes
committed fraud when in its declarations submitted as part
Opposition No. 91121054, et al.
32
of the applications it “claimed that it had the exclusive
rights to use the alleged mark TOTES for its totes” and
Totes “knew, or at least should have known, since at least
as early as 1968 that the term ‘totes’ was widely used by
third parties as a generic name to describe the exact goods
for which [Totes] claims exclusive rights -- totes.” Br.
pp. 34-35. Further, Itote continues that “it is clear that
[Totes] knowingly made false statements to the Office when
Totes asserted it had exclusive rights to the term ‘totes.’
[Totes] knew that the term ‘totes’ was generic and in
widespread use by third parties to describe all sizes and
shapes of totes.” Br. p. 35. As support for this argument
Itote points to Exhibit No. 3 submitted under Itote’s notice
of reliance and the deposition of Michael Katz (Katz II).
This exhibit is a book published in 1998 titled “Terrific
Totes & Carryalls” and is a compilation of sewing
instructions for various types of bags. Itote also points
to the testimony of Mr. Phillips, reproduced in part above,
pertaining to Mr. Phillips’s knowledge of the use of the
term totes at the time he signed the applications.
The declarations in Totes’ application Serial No.
75714429 and the underlying application for Registration No.
2305847 were signed by Harlen Kent, Totes’ vice president at
that time, and the underlying applications for Registration
Opposition No. 91121054, et al.
33
Nos. 1138767 and 1154884 were signed by Mr. Phillips.
However, the wording in the declaration is as follows:
...he believes applicant to be entitled to use
such mark in commerce; to the best of his
knowledge and belief no other person, firm,
corporation, or association has the right to use
the above identified mark in commerce, either in
the identical form thereof or in such near
resemblance thereto as to be likely, when used on
or in connection with the goods/services of such
other person, to cause confusion, or to cause
mistake, or to deceive.

In order to establish fraud in this situation, Itote
must prove that Totes had no reasonable basis to believe
TOTES and TOTES SPORT were marks. Itote must prove that at
the time of signing the declarations Totes knew that the
terms TOTES and TOTES SPORT were the generic terms for the
goods identified in the application and registrations. See
Bart Schwartz Intern. Textiles Ltd. v. F.T.C., 289 F.2d 665,
129 USPQ2d 258, 262 (CCPA 1961). In view of our finding
that TOTES and TOTES SPORT are not generic for the goods
identified in the respective application and registrations,
this claim must fail. Moreover, the statements made by the
declarants do not represent a “conscious effort to obtain
for his business a registration to which he knew it was not
entitled.” Metro Traffic Control, Inc. v. Shadow Network
Inc., 104 F.3d 336, 41 USPQ2d 1369, 1373 (Fed. Cir. 1997).
In view of the above, Itote has failed to meet its
burden on the genericness and fraud claims brought in
Opposition No. 91121054, et al.
34
Opposition No. 91121054 and Cancellation Nos. 92040619,
92040732, and 92041389.
Opposition No. 91155989
We now turn to Totes’ opposition to Itote’s
registration of the mark ITOTE PC (in standard character
form, PC disclaimed) for “carrying cases, backpacks, carry
on bags, school bags, tote bags, travel bags and briefcases,
all specifically designed to carry and transport portable
computers” in International Class 9 and “carrying cases,
backpacks, carry on bags, school bags, tote bags, travel
bags and briefcases” in International Class 18. In bringing
the opposition Totes alleges that as applied to Itote’s
goods, the mark so resembles Totes’ previously used and
registered TOTES and TOTES formative marks for a wide
variety of “retail consumer goods,” including carrying cases
and pouches for overshoes, raincoats and umbrellas,
carryalls with umbrella storage compartment, and backpacks,
as to be likely to cause confusion, to cause mistake, or to
deceive under Trademark Act Section 2(d), 15 U.S. C.
§1052(d). Among the registrations pleaded in the notice of
opposition are the three registrations which were the
subject of the cancellation proceedings. In view of our
decision that the petitions to cancel these registrations
must be dismissed, we accord these registrations full effect
in this opposition proceeding.
Opposition No. 91121054, et al.
35
Totes has sufficiently established its standing.
Priority is not in issue in Opposition No. 91155989 by
virtue of the three pleaded registrations which are the
subject of the consolidated cancellation proceedings, and
which are therefore of record in this consolidated
proceeding. See King Candy Co., Inc. v. Eunice King’s
Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108 (CCPA 1974).
Moreover, Totes has also established its standing and
priority through the testimony of Mr. Katz as to Totes’
sales of luggage and related bags under the TOTES mark. See
Katz II pp. 9-10.
Likelihood of Confusion under Section 2(d)
Totes’ registrations which are of record, and are in
full force and effect and owned by Totes, are summarized as
follows:
Registration No. 1138767, which is for the mark
TOTES (in standard character form) for “carrying
cases and pouches for overshoes, raincoats and
umbrellas” in International Class 18, issued on
August 19, 1980;

Registration No. 1154884, which is for the mark
TOTES (in standard character form) for “fabric
carryalls with umbrella storage compartment” in
International Class 18, issued on May 19, 1981;
and

Registration No. 2305847, which is for the mark
TOTES SPORT (in standard character form) for
“backpacks, carryall bags, duffel bags, and
fanny packs” in International Class 18, issued
on January 4, 2000.

Opposition No. 91121054, et al.
36
Our likelihood of confusion determination under Section
2(d) 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 and 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 first address Totes’ allegation, argument and
supporting evidence that its TOTES and TOTES formative marks
are famous. “[T]he fame of a mark may be measured
indirectly, among other things, by the volume of sales and
advertising expenditures of the goods traveling under the
mark, and by the length of time those indicia of commercial
awareness have been evident.” Bose Corp. v. QSC Audio
Products, Inc., 293 F.3d 1367, 63 USPQ2d 1303, 1305 (Fed.
Cir. 2002). While the record shows substantial sales of
Totes’ luggage and related bags under the TOTES marks, Totes
has not provided advertising expenditures specific to these
goods, or evidence of the extent of the advertising (e.g.,
which markets, how frequently the advertisements appear,
over what time period). There is nothing in the record to
establish a sustained and continuing advertising program.
Further, the Fairchild survey upon which Totes’ relies has
limited probative value as to the element of fame inasmuch
as it provides information as to brand recognition for only
one year.
Opposition No. 91121054, et al.
37
As stated by the Board in Blue Man Productions Inc. v.
Tarmann, 75 USPQ2d 1811, 1819 (TTAB 2005), “In view of the
extreme deference that is accorded to a famous mark in terms
of the wide latitude of legal protection it receives, and
the dominant role fame plays in the likelihood of confusion
analysis, we think that it is the duty of a plaintiff
asserting that its mark is famous to clearly prove it.” On
this record, we cannot say that Totes has provided
sufficient evidence about the extent of its use of the mark,
or its sales under the mark such that we can conclude that
Totes’ TOTES or TOTES SPORT marks can be considered famous
marks in the context of a Section 2(d) claim. See Kenner
Parker Toys Inc. v. Rose Art Industries Inc., 963 F.2d 350,
22 USPQ2d 1453 (Fed. Cir. 1992).
Turning now to consider the goods identified in Totes’
registrations and Itote’s application, we find the goods to
be identical or otherwise related. In particular, with
regard to Registration No. 1138767, Itote’s “carrying cases”
in International Class 18 encompass Totes’ carrying cases
and pouches for overshoes, raincoats and umbrellas, and as
such are legally identical goods. With regard to
Registration No. 2305847, Itote’s backpacks are identical to
Totes’ backpacks.
In addition, inasmuch as there are no limitations in
the applicant’s identification of goods we presume that the
Opposition No. 91121054, et al.
38
trade channels overlap, and that the goods would be offered
to all normal classes of purchasers. See Octocom Systems
Inc. v. Houston Computer Services Inc., 918 F.2d 937, 16
USPQ2d 1783 (Fed. Cir. 1987); Hewlett-Packard Co. v. Packard
Press Inc., 281 F.3d 1261, 62 USPQ2d 1001 (Fed. Cir. 2002).
We now turn to the first du Pont factor, i.e., whether
Itote’s mark and Totes’ marks are similar or dissimilar when
compared in their entireties in terms of appearance, sound,
connotation and commercial impression.
TOTES and TOTES SPORT are highly suggestive of the
goods and as such we accord these marks a very narrow scope
of protection. Because of the highly suggestive meaning of
“TOTES,” we find that the other elements in Itote’s mark are
sufficient to distinguish ITOTE PC from TOTES and TOTES
SPORT. Itote’s mark is pronounced differently and the
elements of the “I” preceding TOTE and “PC” succeeding TOTE,
besides changing the appearance of the mark, present a
connotation of the user carrying a PC, certainly when used
in connection with the International Class 9 goods, bags
specifically designed for computers. In contrast, TOTES
does not present the same connotation. We find that ITOTE
PC creates a different commercial impression from TOTES and
TOTES SPORT. Overall, and given the weakness of the common
element, we find the differences in the marks outweigh the
similarities. King Candy Co. v. Eunice King’s Kitchen,
Opposition No. 91121054, et al.
39
Inc., supra, 182 USPQ at 110 (confusion unlikely when marks
are of such non-arbitrary nature that the public easily
distinguishes slight differences in the marks under
consideration). See also Colgate-Palmolive Co. v. Carter-
Wallace, Inc., 432 F.2d 1400, 167 USPQ 529 (CCPA 1970)
(because common element in marks is a common noun or
adjectival word of everyday usage in the English language
and has a laudatory or suggestive indication, PEAK PERIOD
for personal deodorants is not confusingly similar to PEAK
for dentifrice); and Sure-fit Products Co. v. Saltzson
Drapery Co., 254 F.2d 158, 117 USPQ 295 (CCPA 1958) (where a
party has a weak mark, competitors may come closer to the
mark than would be the case with a strong mark without
violating the party’s rights; marks SURE-FIT and RITE-FIT,
both for slip-covers, held not confusingly similar). In
view of the above, we find, as to each of Totes’
registrations, that the parties’ marks are not similar.
We conclude that the evidence of record as it pertains
to the relevant du Pont factors does not support a finding
of likelihood of confusion as to any of Totes’
registrations. We find that the dissimilarity of the marks
simply outweighs the other relevant du Pont factors.
Kellogg Co. v. Pack’em Enterprises Inc., 14 USPQ2d 1545
(TTAB 1989), aff’d, 951 F.2d 330, 21 USPQ2d 1142 (Fed. Cir.
1991).
Opposition No. 91121054, et al.
40
Decision: Opposition No. 91121054 and Cancellation
Nos. 92040619, 92040732 and 92041389 are dismissed as to all
claims. Opposition No. 91155989 is dismissed.