Mont-gomery Ward & Co., Inc.v.KingKraft, Inc.

Trademark Trial and Appeal Board

Apr 5, 2001

No. 91113818 (T.T.A.B. Apr. 5, 2001)

04/05/01
Paper No. 16
HRW
UNITED STATES PATENT AND TRADEMARK OFFICE
_____
Trademark Trial and Appeal Board
______
Montgomery Ward & Co., Inc.
v.
KingKraft, Inc.
_____
Opposition No. 113,818
to application Serial No. 75/388,238
filed on November 12, 1997
_____
Jeffery A. Handelman and Scott J. Slavick of Brinks Hofer
Gilson & Lione for Montgomery Ward & Co., Inc.
Peter M. King for KingKraft, Inc.
______
Before Simms, Chapman and Wendel, Administrative Trademark
Judges.
Opinion by Wendel, Administrative Trademark Judge:
KingKraft Inc. filed an application to register the
mark SHIP ‘N’ SHORE for a “carryall bag.”1
Montgomery Ward & Co, Inc. has filed an opposition to
registration of the mark on the ground of priority and
likelihood of confusion under Section 2(d) of the Trademark
Act. Opposer alleges that opposer has used the mark SHIP ‘N
1 Serial No. 75/388,238, filed November 12, 1997, based on an
allegation of a bona fide intention to use the mark in commerce.
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Opposition No. 113,818
2
SHORE in connection with its retail store services as well
as for women’s apparel prior to the filing date of
applicant’s application; that opposer is the owner of
registrations for SHIP ‘N SHORE for retail store services in
the field of clothing2 and for various items of women’s
apparel3; that opposer’s mark SHIP ‘N SHORE has achieved
widespread recognition in the United States; that opposer’s
mark and applicant’s mark SHIP ‘N’ SHORE are visually and
“aurally” identical; and that applicant’s mark, when used in
connection with its goods, is likely to cause confusion on
the part of the purchasing public.
Applicant, in its answer, has admitted opposer’s
priority of use of its mark as well as the identical nature
of the two marks visually and “aurally.” Applicant has
denied the remainder of the allegations.
The Record
The record consists of the file of the involved
application; the testimony of the parties which by
stipulation was submitted in affidavit form and consists of
opposer’s affidavit, with accompanying exhibits, of Kurt
Ziegler and applicant’s affidavit, with accompanying
2 Registration No. 1,803,952, issued November 9, 1993, claiming
first use dates of March 12, 1993. This registration was
cancelled December 23, 2000 for failure to file a Section 8
affidavit.
3 Registration No. 1,779,703, issued June 29, 1993, claiming
first use dates of February 8, 1993; Section 8 & 15 affidavits
accepted and acknowledged, respectively.
Opposition No. 113,818
3
exhibits, of Ronald King; the status and title copies of
opposer’s pleaded registrations and applicant’s responses to
certain interrogatories and requests for admission, made of
record by means of opposer’s notice of reliance; and copies
of a portion of a patent owned by applicant for its bag and
applicant’s registration for the mark STRADDLE BAG, together
with opposer’s responses to certain interrogatories and
requests for admission, made of record by means of
applicant’s notice of reliance. Only opposer filed a brief
and no oral hearing was requested.
Opposer was founded in 1872 and is a major marketer of
general merchandise through retail stores.4 As part of its
sale of retail clothing opposer has sold a wide variety of
apparel items and related goods under its SHIP ‘N SHORE mark
since 1993. Opposer’s registration covers use of the mark
in connection with women’s apparel, specifically “shorts,
pants, slacks, jumpsuits, culottes, skirts, cardigans,
shirts, sweaters, knit tops, woven shirts and shells,
blouses, T-shirts, vests, jumpers, dresses, blazers, tunics,
jackets and halters.” Mr. Ziegler testified that the SHIP
‘N SHORE mark has also been used on handbags (Exhibit 4).
Opposer advertises its products by means of signage,
coupons, and print publications. Advertising expenditures
4 We note that this opinion has been written in accordance with
the evidence of record and does not necessarily reflect the
present day status of opposer.
Opposition No. 113,818
4
for opposer’s goods and retail store services related to the
mark SHIP ‘N SHORE for the period from January 1998 to
December 1999 were in excess of $2,350,000 and its sales
figures for these products and services were $47,000,000 in
1998 and $45,200,000 in 1999.
Applicant was founded in 1997 and is primarily involved
in the marketing and sale of its patented convertible
carryall bag.5 Applicant, since 1997, has used the mark
SHIP ‘N’ SHORE6 for one of the three models which make up
its STRADDLE BAG line of goods. Applicant has used its mark
in magazines, newspapers, mailings and on its web site to
advertise and inform consumers of its product.
The Opposition
Priority is not an issue here in view of opposer’s
submission of a certified status and title copy of its
pleaded Registration No. 1,779,703 for the mark SHIP ‘N
SHORE for various items of women’s apparel. See King Candy
Co., Inc, v. Eunice King’s Kitchen, Inc., 496 F.2d 1400, 182
USPQ 108 (CCPA 1974). (We note again that opposer’s other
5 As described in the abstract of applicant’s patent, the bag is
a lightweight, machine-washable, convertible organizer tote bag
with three carrying portions, namely, a central U-shaped
compartment and two side storage panels. The bag converts from
its tote bag configuration into a seat cover for chairs, chaises
and the like, providing easy accessibility to the items stored in
the side pockets.
6 We note that in its affidavit applicant refers to its mark as
SHIP ‘N SHORE, rather than SHIP ‘N’ SHORE, as presented in the
application. On the exhibits of record, the mark actually used
is “Ship-n-Shore.”
Opposition No. 113,818
5
pleaded registration has been cancelled since the filing of
this opposition and hence that registration has been given
no consideration). In addition, Mr. Ziegler testified that
opposer has sold products under the SHIP ‘N SHORE mark
continuously since 1993, a date well prior to applicant’s
filing date of its intent-to-use application, namely,
November 12, 1997. Finally, applicant has admitted
opposer’s priority of use in its answer.
Thus, we turn to the issue of likelihood of confusion,
making our determination on the basis of those of the
du Pont7 factors which are relevant in view of the evidence
of record. Two key considerations in any such analysis are
the similarity or dissimilarity of the respective marks and
the similarity or dissimilarity of the goods or services
with which the marks are being used. See Federated Foods,
Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24
(CCPA 1976); In re Azteca Restaurant Enterprises, Inc., 50
USPQ2d 1209 (TTAB 1999).
Insofar as the respective marks are concerned,
applicant has admitted that opposer’s SHIP ‘N SHORE mark and
its SHIP ‘N’ SHORE mark are visually and “aurally”
identical. Clearly, the presence of an additional
7 In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ
563 (CCPA 1973).
Opposition No. 113,818
6
apostrophe in applicant’s mark, as presented in the
application, has little or no effect on the overall
commercial impressions created by the marks. For purposes
of determining likelihood of confusion, the marks are
virtually identical. Although applicant has noted in its
affidavit that its SHIP ‘N’ SHORE mark is used as a
subordinate mark to its STRADDLE BAG or KINGKRAFT marks, the
mark which applicant seeks to register is SHIP ‘N’ SHORE in
itself, and this is the mark which we must take under
consideration in making our determination of likelihood of
confusion.
Before considering the respective goods, we would note
that this high degree of similarity of the marks brings into
play the recognized standard that the greater the degree of
similarity in the marks, the lesser the degree of similarity
that is required between the goods and/or services on which
the marks are being used to support a holding of likelihood
of confusion. If the marks are the same or almost so, as is
the case here, it is only necessary that there be a viable
relationship between the goods and/or services to support a
holding of likelihood of confusion. See In re Concordia
International Forwarding Corp., 222 USPQ 355 (TTAB 1983).
Here opposer’s registration covers use of the mark SHIP
‘N SHORE on various items of women’s apparel, many of which
could readily be described as sportswear. Opposer has
Opposition No. 113,818
7
introduced testimony that opposer has also specifically used
the mark on handbags. Applicant’s “carryall bag” is without
limitation in the application as to specific purpose or
design of the bag. Thus, applicant’s carryall bags would
encompass items similar to the handbags of opposer. Even if
construed as being different in styling and purpose from the
handbags sold by opposer, applicant’s carryall bags would
still fall within the category of sportswear accessories.
Although perhaps sold in a different department from
sportswear attire, the bags might well be purchased in the
same retail outlets by the same customers on a single
shopping trip for use in connection with the same sports
activities. Cf. In re Melville Corp., 18 USPQ2d 1386 (TTAB
1991)(sufficient relationship found to exist between women’s
shoes and women’s pants, blouses, shorts and jackets which
might well be purchased on a single shopping trip for use
together). Regardless of the particular design of
applicant’s bags, we believe a sufficient relationship
exists between the goods that purchasers would be likely to
be confused as to source upon encountering the respective
goods bearing the virtually identical SHIP ‘N SHORE (SHIP
‘N’ SHORE) marks.
Furthermore, since there are no limitations in the
identification of goods in either the application or the
pleaded registration as to the channels of trade, we must
Opposition No. 113,818
8
assume that the goods of both would travel in all the normal
channels of trade and be sold to all the usual purchasers
for goods of this nature. See Canadian Imperial Bank v.
Wells Fargo Bank, 811 F.2d 1490, 1 USPQ2d 1813 (Fed. Cir.
1987). Accordingly, as argued by opposer, the goods may
well be encountered by the same purchasers in the same
retail outlets and purchased at the same time. In addition,
we would agree with opposer that these are relatively
inexpensive items which would be purchased by ordinary
consumers without the exercise of any degree of extra care.
Opposer has also raised the factor of the strength of
its mark, arguing that its SHIP ‘N SHORE mark has achieved
the status of a strong, well-known mark as a result of its
distinctive nature and its extensive use and promotion.
Thus, opposer argues, its mark is entitled to a broad scope
of protection.
Although opposer has not broken down its advertising
and sales figures into those applicable only to its products
(the only ones to be taken under consideration), we find
this evidence adequate to show that opposer has strongly
promoted its mark and has had substantial sales of its
products under the mark in recent years. Although clearly
insufficient to establish that opposer’s mark has attained
any high degree of fame, we find the evidence of record,
taken together with the distinctive nature of the mark,
Opposition No. 113,818
9
fully adequate to demonstrate that opposer’s mark is
entitled to the scope of protection accorded to a strong
mark.
Accordingly, upon balancing all of the relevant du Pont
factors and particularly upon considering the virtual
identity of the marks and the strength of opposer’s mark, we
find a likelihood of confusion.
Decision: The opposition is sustained and registration
is refused to applicant.