Richard W. (Skip) Beall, IIIv.Kenneth Charles Zima

Trademark Trial and Appeal Board

Sep 6, 2001

No. 91108351 (T.T.A.B. Sep. 6, 2001)

Paper No. 26
9/6/01 TJQ

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
______

Richard W. (Skip) Beall, III
v.
Kenneth Charles Zima
_____

Opposition No. 108,351
to application Serial No. 75/132,499
filed on July 11, 1996
_____

Richard W. (Skip) Beall, III, pro se.

Kenneth Charles Zima, pro se.
______

Before Quinn, Hohein and Hairston, Administrative
Trademark Judges.

Opinion by Quinn, Administrative Trademark Judge:

An application has been filed by Kenneth Charles
Zima to register the mark shown below

THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Opposition No. 108,351
2
for “clothing, namely, men’s and women’s T-shirts,
shorts, swimwear, sweatshirts, sweatpants, wetsuits,
vests, shirts; and headwear, namely, visors, caps, and
hats; and footwear, namely, boots, shoes, sandals, and
slippers.”1
Registration has been opposed by Richard W. (Skip)
Beall, III under Section 2(d) of the Trademark Act on the
ground that applicant’s mark, when applied to applicant’s
goods, so resembles the following previously used and
registered marks as to be likely to cause confusion:

and

both for “clothing, namely men’s and women’s T-shirts,
sweatshirts, sweatpants, swimwear, knit shorts, walk-
shorts, pants, caps, hats, jackets, wetsuits; and
footwear, namely boots, shoes, sandals and slippers.”2

1 Application Serial No. 75/132,499, filed July 11, 1996, based
on an allegation of a bona fide intention to use the mark in
commerce.
2 Registration No. 1,785,640, issued August 3, 1993, Section 8
affidavit accepted, Section 15 affidavit acknowledged, and
Opposition No. 108,351
3
Applicant, in his answer, denied the allegations of
likelihood of confusion.
The record consists of the pleadings; the file of
the

Registration No. 2,004,146, issued October 1, 1996,
respectively.
Opposition No. 108,351
4
involved application; and certified copies of two of
opposer’s pleaded registrations that accompanied the
notice of opposition.3 Applicant neither took testimony
nor properly introduced any other evidence. After the
Board’s issuance of a show cause order under Trademark
Rule 2.128(a)(3) due to opposer’s failure to file a
brief, opposer requested that his “testimony” filed on
December 29, 1999 be considered as his brief on the case.
The Board, in an order dated December 9, 2000, discharged
the show cause order and stated that “opposer’s
submission of his testimony to be used also as his main
brief is noted.”4 Applicant did

3 A certified copy of opposer’s Registration No. 1,940,424 for
the mark GROOVY LONGBOARDS for “T-shirts, hats, shorts,
pullovers, jackets, shirts, sweatshirts, tank tops and
swimsuits” also accompanied the notice of opposition. A check
of Office records shows, however, that the registration was
cancelled on April 6, 2000 as a result of a final Board order
issued in Cancellation No. 28,812 on February 1, 2000. When a
Federal registration owned by a party has been properly made of
record in an inter partes proceeding, and there are changes in
the status of the registration between the time it was made of
record and the time the case is decided, the Board, in deciding
the case, will take judicial notice of, and rely upon, the
current status of the registration, as shown by the records of
the PTO. Royal Hawaiian Perfumes, Ltd. v. Diamond Head Products
of Hawaii, Inc., 204 USPQ 144 (TTAB 1979). See also, TBMP
§703.02(a).
4 To the extent that opposer would have us consider his
“testimony” as his brief, we decline to do so. This submission
is more in the nature of an evidentiary showing as opposed to
argument. Even if considered as a brief, however, exhibits and
other evidentiary materials attached to a party’s brief on the
case can be given no consideration unless they were properly
made of record during the time for taking testimony. TBMP
§705.02 and cases cited therein, e.g., Maytag Co. v. Luskin’s,
Opposition No. 108,351
5
not file a brief.
Before proceeding to the merits of the opposition,
the Board is compelled to comment on the slim record upon
which our decision must be based. The proceeding file is
full of evidentiary matter that was not properly
introduced at trial and, therefore, has not been
considered by us in reaching our decision. The
evidentiary problems undoubtedly were caused by the fact
that both parties acted pro se in this case.
As for opposer’s part, his “testimony” was submitted
essentially as a declaration with attachments. Such
testimony may be submitted, but only by written agreement
of the parties. Trademark Rule 2.123(b). No such
agreement is present here. The notice of reliance on
opposer’s registrations was superfluous, given that the
registrations were properly introduced with the notice of
opposition. Trademark Rule 2.122(d)(1). Lastly, the
notice of reliance on printed publications is defective
in that the materials sought to be introduced do not

Inc., 228 USPQ 747 (TTAB 1986). Further, factual statements
made in a party’s brief on the case can be given no
consideration unless they are supported by evidence properly
introduced at trial. Statements in a brief have no evidentiary
value, except to the extent that they may serve as admissions
against interest. TBMP §706.02. In the present case, none of
opposer’s “testimony,” including the attached materials, were
properly made of record (see discussion, infra) and, thus, any
Opposition No. 108,351
6
constitute “printed publications” as contemplated by
Trademark Rule 2.122(e). See: TBMP §708 and cases cited
therein, including Glamorene Products Corp. v. Earl
Grissmer Co., 203 USPQ 1090 (TTAB 1979); Wagner Electric
Corp. v. Raygo Wagner, Inc., 192 USPQ

factual statement made on the basis of those materials could not
be considered.
Opposition No. 108,351
7
33 (TTAB 1976); Andrea Radio Corp. v. Premium Import Co.,
191 USPQ 232 (TTAB 1976); and Minnesota Mining &
Manufacturing Co. v. Stryker Corp., 179 USPQ 433 (TTAB
1973).
The only matter submitted by applicant was a
document captioned “Discovery” with several attachments.
This matter was filed outside of the time for taking
testimony and, moreover, none of the materials was
introduced in accordance with the Trademark Rules of
Practice.
Realizing the shortcomings of the record due to the
parties’ unfamiliarity with the rules, we now turn to the
merits of the notice of opposition.
In view of opposer’s ownership of valid and
subsisting registrations for its marks, there is no issue
with respect to opposer’s priority. King Candy Co. v.
Eunice King’s Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108
(CCPA 1974).
Our 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. In re E. I. du Pont de Nemours & Co.,
476 F.2d 1357, 177 USPQ 563 (CCPA 1973). In any
likelihood of confusion analysis, two key considerations
Opposition No. 108,351
8
are the similarities or dissimilarities between the marks
and the similarities or dissimilarities between the
goods. Federated Foods, Inc. v. Fort Howard Paper Co.,
544 F.2d 1098, 192 USPQ 24 (CCPA 1976).
Turning first to the goods, the items in the
identifications are, in large part, identical, and
otherwise closely related. Opposer’s registrations and
the involved application list T-shirts, shorts, swimwear,
sweatshirts, sweatpants, wetsuits, caps, hats, boots,
shoes, sandals and slippers. Further, the vests and
shirts in the application are very similar to opposer’s
clothing items. In cases such as this involving
identical goods, “the degree of similarity [between the
marks] necessary to support a conclusion of likely
confusion declines.” Century 21 Real Estate Corp. v.
Century Life of America, 970 F.2d 874, 23 USPQ2d 1698,
1700 (Fed. Cir. 1992).
Further with respect to the goods, the parties’
clothing items must be assumed to be of all such types,
including inexpensive items. Given the relatively
inexpensive nature of items such as T-shirts, caps, hats
and slippers, and the fact that the parties’ clothing
items are subject to frequent replacement, ordinary
consumers are not likely to exercise any great care in
Opposition No. 108,351
9
purchasing these goods. See: Specialty Brands, Inc. v.
Coffee Bean Distributors, Inc., 748 F.2d 669, 223 USPQ
1281, 1282 (Fed. Cir. 1984). This factor weighs in favor
of finding a likelihood of confusion.
With respect to the marks, we find that opposer’s
marks LONGBOARD and design and LONGBOARDS RULE and design
are sufficiently similar to applicant’s mark TOES OVER
ONLY ON A LONGBOARD and design that, when applied to the
same relatively inexpensive clothing items, consumers are
likely to be confused. Based on the evidence of record,
the term “LONGBOARD” would appear to be, at worst,
suggestive when applied to clothing that might be worn by
surfers. The inclusion of LONGBOARD in applicant’s mark
creates a similar overall commercial impression with
opposer’s marks, both of which are dominated by LONGBOARD
or LONGBOARDS. Although we have considered the
prominently displayed TOES OVER in applicant’s mark, we
do not view this portion of the mark to sufficiently
distinguish the mark from opposer’s mark.
To the extent that the differences between the
parties’ marks cast any doubt on our finding of
likelihood of confusion, we resolve that doubt, as we
must, in favor of the prior registrant. Giant Food, Inc.
Opposition No. 108,351
10
v. Nation’s Foodservice, Inc., 710 F.2d 1565, 218 USPQ
390, 395 (Fed. Cir. 1983).
Decision: The opposition is sustained, and
registration to applicant is refused.