Walden Book Co., Inc. and Kroch’s & Brentano’s, Inc.v.Brenntano Co., Ltd.

Trademark Trial and Appeal Board

Dec 29, 1997

OPP (T.T.A.B. Dec. 29, 1997)

THIS DISPOSITION IS NOT CITABLE
AS PRECEDENT OF THE TTAB DEC 29, 97
Hearing: Paper No. 66
March 25, 1997 JQ
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
_____
Trademark Trial and Appeal Board
______
Walden Book Company, Inc. and Kroch’s & Brentano’s, Inc.
v.
Brenntano Co., Ltd.
_____
Opposition No. 85,214
to application Serial No. 73/781,475
filed on February 13, 1989
Cancellation No. 23,187
Harold J. Fassnacht of Bullwinkel Partners, Ltd. for Walden
Book Company and Kroch’s & Brentano’s, Inc.
Richard L. Kirkpatrick and Susan T. Brown of Cushman, Darby
& Cushman for Brenntano Co., Ltd.
______
Before Rice, Cissel and Quinn, Administrative Trademark
Judges.
Opinion by Quinn, Administrative Trademark Judge:
This consolidated case involves Walden Book Company,
Inc.’s (hereinafter “Walden”) opposition to an application
filed by Brenntano Co., Ltd.,(hereinafter “Brentanno”) and
Walden’s and Kroch’s & Brentano’s, Inc.’s petition for
cancellation of a registration owned by Brenntano. The
application is for the mark BRENNTANO for “men’s, women’s
Opposition No. 85,214
2
and children’s clothing, namely, suits, skirts, sportcoats,
overcoats, jackets, sweaters, dress and sports shirts,
jumpers, sports uniforms, stockings, socks, trousers, vests,
blouses, undershirts, neckties, hats and headbands.”1 The
registration is for the mark shown below
for “men’s suits; men’s, women’s and children’s clothing,
namely, skirts, sportcoats, overcoats, jackets, sweaters,
dress and sport shirts, jumpers, sport uniforms, stockings,
socks, trousers, vests, blouses, undershirts, neckties,
hats, and headbands.”2
Both the notice of opposition and the petition for
cancellation are based on priority and likelihood of
confusion under Section 2(d) of the Act. Walden owns a
concurrent use registration, namely, Registration No.
1,493,633 for the mark BRENTANO’S for “retail book store
services” for the entire United States with the exception of
the states of Illinois, Indiana, Wisconsin and Michigan.3

1 Application Serial No. 73/781,475, filed February 13, 1989,
claiming a right of priority under Section 44(d) based on Korean
application no. 1988-25492.
2 Registration No. 1,809,257, issued December 7, 1993.
3 This registration issued June 21, 1988 under Section 2(f);
combined Sections 8 and 15 affidavit filed.
Opposition No. 85,214
3
The excepted user is the other plaintiff in this case,
Kroch’s & Brentano’s, Inc.
Brenntano, in its answer, denied the salient
allegations of likelihood of confusion.
The record in these consolidated proceedings consists
of the pleadings; the files of the involved application and
registration; trial testimony, with related exhibits, taken
by both sides;4 copies of third-party registrations,
excerpts from printed publications, including dictionary
listings, and a certified copy of an official record, all
introduced by way of Walden’s notices of reliance; and
portions of a discovery deposition and exhibits, and
Walden’s responses to certain discovery requests, made of
record in Brenntano’s notice of reliance. Both parties
filed briefs on the case and both were represented by
counsel at an oral hearing before the Board.
Walden, a wholly owned subsidiary of Border’s Inc.,
operates a chain of sixty retail book stores under the mark
BRENTANO’S. Walden has positioned these stores as
“upscale”, with enhanced customer service, nicer furnishings
and literary titles that appeal to a more affluent customer.
Use of the mark dates back to 1933. In 1933, Walden’s
predecessor in interest entered into an agreement with

Opposition No. 85,214
4
Kroch’s & Brentano’s, Inc. wherein the predecessor retained
exclusive rights to the mark BRENTANO’S in the entire United
States except for the states of Illinois, Indiana, Wisconsin
and Michigan. Kroch’s and Brentano’s, Inc. was given, by
amended agreement, exclusive trademark rights in those four
states. These concurrent use rights are reflected in
Walden’s pleaded Registration No. 1,493,633. Walden’s sales
under the mark have increased from $3 million in 1984 to
over $70 million in 1990 (the most recent sales figures of
record). Walden has promoted its BRENTANO’S bookstores in
newspapers, yellow pages directories, catalogs, direct
mailings and on the radio. Advertising expenditures in 1994
exceeded $400,000.
Brenntano is a Korean corporation that has been selling
clothing in foreign markets. According to Yu Si Man,
Brenntano’s president, Brenntano has deferred using its mark
in the United States until after the present dispute is
resolved. Mr. Yu testified that the mark was selected to
suggest that Brenntano’s clothing has the look and flair of
Italian fashion styles.
Before turning to the merits of the likelihood of
confusion claim, we direct our attention to the other party
in these proceedings, namely, Kroch’s & Brentano’s, Inc.

4 The testimony includes affidavit and declaration testimony
pursuant to the parties’ stipulations. Brenntano Co., Ltd. also
took a testimony deposition upon written questions.
Opposition No. 85,214
5
Little was heard from this party after it joined Walden in
filing the petition for cancellation. What little we do
know is from Nasir M. Ashemimry, chairman of Businesship
International, Inc. In his affidavit testimony, Mr.
Ashemimry indicated that Kroch’s & Brentano’s, Inc. became a
wholly owned subsidiary of Businesship International, Inc.
in 1993 at a time when Kroch & Brentano’s, Inc. operated
seven book stores in the Chicago area. Mr. Ashemimry goes
on to testify that “Kroch’s & Brentano’s, Inc. filed a
petition in bankruptcy in June 1995, and does not currently
operate stores under the Kroch’s & Brentano’s name.”5
Kroch’s & Brentano’s, Inc. cannot prevail in the
cancellation proceeding. An essential element of proof in
any cancellation or opposition proceeding is that the
petitioner or opposer has standing to be heard on the
pleaded claim, that is, that the plaintiff possesses a “real
interest” in the proceeding. Lipton Industries, Inc. v.
Ralston Purina Co., 670 F.2d 1024, 213 USPQ 185 (CCPA 1982).
Further, in order to prevail on a claim of likelihood of
confusion, the plaintiff must establish priority of use. In
the present case, there is scant evidence on Kroch’s &

5 Mr. Ashemimry also asserted that his company purchased Kroch’s
and Brentano’s, Inc. because of the strong name recognition that
it had in the Chicago area, that the KROCH’S & BRENTANO’S
trademark remains a valuable asset of his company, and that
Businesship International, Inc. would consider requests to
license or sell the trademark.
Opposition No. 85,214
6
Brentano’s, Inc. use of the pleaded mark. In point of fact,
the company has gone bankrupt and has closed its stores.
Accordingly, Kroch’s & Brentano’s, Inc. has failed to prove
facts which satisfy the standing and the priority
requirements. No Nonsense Fashions, Inc. v. Consolidated
Foods Corporation, 226 USPQ 502 (TTAB 1985). Accordingly,
Kroch’s & Brentano’s petition must fail.6
Also as a preliminary matter, we note that there are
five evidentiary objections regarding the record in these
proceedings. At the oral hearing, the Board was given a
“stipulated summary of applicant/respondent’s objections and
petitioners’ responses to objections.”7 Objections one,
four and five are overruled, essentially for the reasons set
forth by Walden. However, with respect to objections two
and three, that is, the deficient introduction of Walden’s
pleaded registration and the irrelevancy of Brenntano’s
application for registration of a service mark,
respectively, see discussion, infra.
We first turn to the matter of priority of use.
Walden, during the September 22, 1995 testimony of Charles

6 We would point out that, in any event, the mark KROCH’S &
BRENTANO’S is less similar to Brenntano’s mark than is Walden’s
mark which we have found, as discussed infra, to be not
confusingly similar to Brenntano’s mark.
7 The evidentiary objections that are listed in the stipulation
are ones also raised in the briefs at final hearing. No other
objections have been considered. Reflange, Inc. v. R-Con
International, 17 USPQ2d 1125 (TTAB 1990).
Opposition No. 85,214
7
Guinta, a retired senior vice president for administration
at Walden, introduced into evidence a certified copy of the
registration file of Walden’s pleaded Registration No.
1,493,633 (Guinta dep., p. 23, ex. 4). However, as pointed
out by Brenntano’s, there is an absence of testimony
regarding the current status and title of this registration.
Indeed, given the fact that Mr. Guinta testified that he has
no present business relationship with Walden, his ability to
testify as to current status and title (of which,
presumably, he lacks personal knowledge) is highly
questionable.
The certified copy of Walden’s registration file, dated
December 5, 1994, does not reflect status and title. That
is to say, it is not a copy of the registration whereon the
Office has entered information regarding status and title.
Thus, this document does not establish current status and
title.
Notwithstanding the evidentiary problem with Walden’s
registration, we find that, in any event, Walden’s other
evidence establishes that it owns the BRENTANO’S mark and
has priority of use. The testimony and evidence show that
Walden’s use of the mark BRENTANO’S predates the earliest
date upon which Brenntano’s may rely in these proceedings.
We now turn to the merits of the likelihood of
confusion claim. Our determination under Section 2(d) of
Opposition No. 85,214
8
the Act is based on an analysis of all of the probative
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).
As dictated by the evidence, different factors may play
dominant roles in determining likelihood of confusion.
Kenner Parker Toys v. Rose Art Industries, 963 F.2d 350, 22
USPQ2d 1453, 1456 (Fed. Cir. 1992). The factors deemed
pertinent in the proceeding now before us are discussed
below.
With respect to the marks, BRENTANO’S and BRENNTANO are
virtually identical, the only differences being a possessive
letter “s” in Brentano’s mark and an additional letter “n”
in Brenntano’s mark. The marks look alike and are
indistinguishable in sound. Simply put, the marks convey
virtually identical overall commercial impressions. The
same is true with respect to Walden’s mark and Brenntano’s
mark BRENNTANO and design.
The crux of this case centers on the relatedness
between Walden’s retail book store services and Brenntano’s
clothing items. Walden highlights the fact that the
BRENTANO’S mark has appeared on non-book items such as
shirts worn by store personnel during store promotions and
on fabric tote bags. Walden also points out that
advertisements for its bookstores have appeared in print
Opposition No. 85,214
9
next to clothing ads. Walden essentially contends that it
has “bridged the gap” between book stores and clothing, and
that Walden’s BRENTANO’S mark is entitled to a wide scope of
protection which extends into the clothing field.
As indicated above, Walden has been engaged for many
years in rendering bookstore services under the mark
BRENTANO’S. Although the great majority of Walden’s sales
are for books, Amy Hancock, Walden’s merchandise manager for
store planning, testified that the bookstores also have sold
items such as audio recordings, puzzles, booklights, games,
maps, greeting cards and calendars. Ms. Hancock also
testified that there are plans to expand the sale of nonbook
items in BRENTANO’S stores, and that the sale of clothing
items cannot be ruled out, giving as examples jogging shorts
with a book about jogging and a handyman apron in connection
with a handyman book. Ms. Hancock went on to testify that
tote bags bearing the mark BRENTANO’S have been given away
at store openings, and that others have been sold. The only
sales figures given show that in an approximately six-month
period in 1995, Walden sold 887 tote bags for a total of
$733.
The record also includes the testimony of Robert
Childs, Walden’s manager of store operations, budget and
expense control, and Beth Ann Koehler, a merchandise buyer
for Walden. Their testimony reveals that bookstore
Opposition No. 85,214
10
employees have worn, at times, shirts bearing the name
BRENTANO’S. In this connection, Ms. Koehler testified about
the use of BRENTANO’S on polo shirts in 1987-1990 and on t-
shirts in 1990-1992. In some instances, the shirts were
part of a dress code for store employees (numbering about
100) so that they could be easily identified by customers.
Both Mr. Childs and Ms. Koehler stated that none of the
shirts was ever sold to the public.
In addition to the above, Ms. Koehler testified that
caps and shirts bearing the mark BORDER’S (another chain of
retail bookstores owned by Walden) are sold at BORDER’S
bookstores.
We find, on the record before us, that the connection
between Walden’s retail bookstore services on the one hand,
and Brenntano’s clothing items on the other hand, is too
tenuous upon which to base a finding of likelihood of
confusion. With one exception (the BORDER’S example), there
has been no evidence of a practice in the bookstore trade to
sell clothing or to license a bookstore mark for use on
clothing. More specifically, Walden’s has not sold any
clothing items in its BRENTANO’S bookstores. And, although
Walden’s has sold a variety of goods other than books in its
BRENTANO’S stores, these goods, by and large, are book-
related items (as, for example, booklights, bookmarks, etc.)
Opposition No. 85,214
11
or items commonly found in bookstores (as, for example,
calendars, maps, etc.).
To the extent that Walden’s emphasizes its use of
BRENTANO’S on tote bags, we would point out that these bags
are not clothing items. Instead, they are mere promotional
items for the retail bookstore services. The tote bags were
sold only in Walden’s stores, and typically at store
openings. As shown by Brentanno’s evidence, it is not
uncommon for non-clothing stores to sell tote bags
displaying the stores’ service mark.
Further, Brenntano’s has introduced copies of third-
party registrations showing that registrations for the same
or similar marks have been issued to two different entities
for clothing and bookstore services. Such evidence would
tend to suggest that consumers may be accustomed to
distinguishing source based on the differences between
clothing and bookstore services.
Simply put, we find that consumers familiar with
Walden’s BRENTANO’S bookstores, wherein clothing has never
been sold (but, admittedly, has been used in a promotional
manner), would not expect that BRENNTANO’S clothing found in
another store (perhaps even in the same shopping mall)
emanated from the same source. Marshall Field & Co. v. Mrs.
Fields Cookies, 25 USPQ2d 1321, 1332 (TTAB 1992).
Opposition No. 85,214
12
Another factor concerns the fame of Walden’s BRENTANO’S
mark. There is no question but that Walden (and/or its
predecessors) have enjoyed success in their retail bookstore
services rendered under the BRENTANO’S mark. Although
Brenntano’s suggests that Walden’s BRENTANO’S stores are on
the decline, the sales and advertising figures of record are
nevertheless impressive. The mark has been in use for many
years and, further, the record is devoid of any third-party
uses of BRENTANO’S in any field.
While we find that Walden’s mark is a strong and
distinctive mark for retail bookstore services, we do not
view the mark in the same fashion in relation to non-book
items such as clothing. Walden has neither marketed
clothing to purchasers nor registered its mark for clothing.
There is no evidence on which we can find that Walden’s
registered mark for retail bookstore services is so strong
and distinctive that the strength and distinctiveness
carries over to non-book items such as clothing. There
simply is no evidence establishing public awareness and
transference of the service mark function of Walden’s mark
to clothing items by virtue of the strength of Walden’s mark
for retail bookstore services. G.H. Mumm & Cie v. Desnoes &
Geddes Ltd., 917 F.2d 1292, 16 USPQ2d 1635, 1639 (Fed. Cir.
1990); Levi Strauss & Co. v. Genesco, Inc., 742 F.2d 1401,
222 USPQ 939 (Fed. Cir. 1984); and Bausch & Lomb Inc. v.
Opposition No. 85,214
13
Leupold & Stevens Inc., 6 USPQ2d 1475 (TTAB 1988). Thus, to
the extent that any fame can be accorded to Walden’s mark
BRENTANO’S, the fame is confined to retail bookstore
services, and does not extend to non-book items such as
clothing.
Further, the fact that Brenntano’s mark may call to
mind Walden’s mark is not dispositive. Likelihood of
confusion under Section 2(d) means more than the likelihood
that the public will recall a mark on seeing the same or
similar mark used by another. It must also be established
that “there is a reasonable basis for the public to
attribute the particular product or service of another to
the source of the goods or services associated with the
famous mark.” University of Notre Dame Du Lac v. J.C.
Gourmet Food Imports Co., Inc., 703 F.2d 1372, 217 USPQ 505,
507 (Fed. Cir. 1983), aff’g 213 USPQ 594 (TTAB 1982). See
also: Jacobs v. International Multifoods Corp., 668 F.2d
1234, 212 USPQ 641, 642 (CCPA 1982), aff’g 211 USPQ 165
(TTAB 1981); In re Ferrero, 479 F.2d 1395, 178 USPQ 167
(CCPA 1973); Original Appalachian Artworks, Inc. v.
Streeter, 3 USPQ 1717 (TTAB 1987); and American Express Co.
v. Payless Cashways, Inc., 222 USPQ 907 (TTAB 1984). Here,
the record falls short of establishing the reasonable basis
contemplated by the Court.
Opposition No. 85,214
14
In reaching our decision, we have considered Walden’s
argument that owners of well known trademarks often use or
license the use of their marks on clothing. See, e.g., In
re Phillips-Van Heusen Corp., 228 USPQ 949 (TTAB 1986). For
the reasons set forth by Brenntano in its brief (pp. 33-34),
the cases principally relied upon by Walden are
distinguishable from the present case. Suffice it to say
that the evidence of record bearing on Walden’s own
marketing practices and those in the industry simply does
not establish the proposition urged by Walden.
Based on the record before us, we see the likelihood of
confusion claim asserted by Walden as amounting to only a
speculative, theoretical possibility. Language by our
primary reviewing court is helpful in resolving the
likelihood of confusion controversy in this case:
We are not concerned with mere
theoretical possibilities of confusion,
deception, or mistake or with de minimis
situations but with the practicalities
of the commercial world, with which the
trademark laws deal.
Electronic Design & Sales Inc. v. Electronic Data Systems
Corp., 954 F.2d 713, 21 USPQ2d 1388, 1391 (Fed. Cir. 1992),
citing Witco Chemical Co. v. Whitfield Chemical Co., Inc.,
418 F.2d 1403, 1405, 164 USPQ 43, 44-45 (CCPA 1969), aff’g
153 USPQ 412 (TTAB 1967).
As a final note, Walden has expressed, in arguing that
confusion is likely, great concern about Brenntano’s
Opposition No. 85,214
15
proposed use of the mark BRENNTANO in connection with retail
clothing store services.8 Whether or not Brenntano’s use of
BRENNTANO as a service mark for retail clothing stores is
likely to cause confusion with Walden’s use of its mark for
retail bookstore services is irrelevant to this proceeding.
Here Brenntano is seeking to register its trademark for
clothing items, and our determination in these proceedings
must be based on a consideration of the identified goods in
the involved application and registration, and not whether
confusion is likely in connection with activities listed in
an application not presently before us. Saks & Co. v. Snack
Food Association, 12 USPQ2d 1833, 1836 (TTAB 1989). The
dismissal of the present cases in no way precludes the Board
from reaching a different result, based on a different
record, if the parties were to litigate Brenntano’s right to
registration of BRENNTANO’S as a service mark for retail
clothing stores.
Decision: The opposition and petition for cancellation
are dismissed.
J. E. Rice
R. F. Cissel

8 Brenntano owns application serial no. 74/500,143 for the
service mark BRENNTANO and design. The mark was published for
opposition, and when no opposition was filed, a notice of
allowance issued. The application currently is under an
extension of time to file a statement of use.
Opposition No. 85,214
16
T. J. Quinn
Administrative Trademark
Judges, Trademark Trial
and Appeal Board