Brown & Bigelow, Inc.v.William L. Commins, III

Trademark Trial and Appeal Board

Jan 11, 1999

No. 92025190 (T.T.A.B. Jan. 11, 1999)

Paper No. 14
DEB
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB JAN. 11, 99
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
_____
Trademark Trial and Appeal Board
_____
BROWN & BIGELOW, INC.
v.
WILLIAM L. COMMINS, III
_____
Cancellation No. 25,190
_____
Linda M. Bryne and Daniel M. Pauly, of MERCHANT GOULD SMITH
EDELL WELTER & SCHMIDT, P.A., for Brown & Bigelow, Inc.
William L. Commins, III, Pro Se.
_____
Before Simms, Walters and Bucher, Administrative Trademark
Judges.
Opinion by Bucher, Administrative Trademark Judge:
Brown & Bigelow, Inc. has petitioned to cancel the
registration owned by William L. Commins, III, for the mark
MAVERICK for "entertainment services in the nature of magic
Cancellation No. 25,190
2
acts.”1 As the ground for cancellation, petitioner alleges
priority of use and likelihood of confusion under Trademark
Act Section 2(d), 15 U.S.C. Section 1052(d). Petitioner
alleges that it is a leading manufacturer of playing cards
sold under the MAVERICK trademark, having extensively used
MAVERICK as a trademark in the United States since 1963.
Petitioner is also the owner of an incontestable
registration for the word MAVERICK for “playing cards.”2
In its answer to the petition to cancel, respondent
denied the salient allegations, especially those regarding
likelihood of confusion. However, respondent failed to
respond to further papers after providing his answer, and
filed no testimony, evidence or brief. Petitioner has
submitted the deposition testimony of Philip R. Jungwirth,
Senior Vice President of Administration for petitioner,
along with the attached exhibits including a status and
title copy of its pleaded registration; and, has relied on
petitioner’s requests for admission, along with its
statement that respondent failed to respond to this request.
Only petitioner has filed a brief. No oral hearing was

1 Registration No. 1,972,469, issued May 7, 1996 from an
application filed on December 6, 1994, which sets forth dates of
first use of July 24, 1991.
2 Reg. No. 786,728, issued on March 16, 1965, which sets
forth dates of first use of October 2, 1963; renewed.
Cancellation No. 25,190
3
requested. Based on the record before us, we grant the
petition to cancel.
PRIORITY
Petitioner has submitted a status and title copy of its
pleaded registration. Additionally, petitioner has taken
the deposition testimony of Philip R. Jungwirth, Senior Vice
President of Administration for petitioner, wherein he also
traced the history of the usage of MAVERICK on playing
cards, by petitioner and its predecessors, back to 1963.
This clearly precedes the filing date of respondent’s
registration, the date to which respondent is entitled in
the absence of evidence of use.
ISSUE: Likelihood of Confusion
The more difficult issue before this Board is whether
the facts of this case present a likelihood of confusion.
In the course of rendering this decision, we have followed
the guidance of In re E.I. DuPont DeNemours & Co., 476 F.2d
1357, 1362, 177 USPQ 563, 567-68 (CCPA 1973), which sets
forth the factors which, if relevant, should be considered
in determining likelihood of confusion.
Cancellation No. 25,190
4
While the marks herein are identical, the relationship
between petitioner’s playing cards and registrant’s
entertainment services is a more difficult question. In
spite of petitioner’s several arguments, one’s first
impression is that these two items are only tangentially
related. Petitioner argues correctly that playing cards are
used in magic shows and card tricks. Petitioner also argues
that at trade shows where petitioner appears, there will
often be magic acts elsewhere on the floor, or at times,
might be used specifically to draw customers to petitioner’s
booth.
However, at first blush, especially under the mark,
MAVERICK, it is not clear that consumers, upon seeing the
stage-name, MAVERICK, would immediately assume a connection
with, or sponsorship by, the owners of MAVERICK brand
playing cards, irrespective of how important card tricks may
be to respondent’s stage act. Using petitioner’s logic, any
number of other items routinely used by illusionists,
magicians, and others who perform tricks in public could be
found to be related to this entertainment service (e.g.,
boxes, trunks, saws, top hats, etc.).
However, petitioner did propound the following requests
for admission to respondent:
Cancellation No. 25,190
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9. Petitioner’s MAVERICK goods are related to
Registrant’s services, which are performed in
conjunction with the MAVERICK mark.
10. Petitioner’s MAVERICK playing cards could be
used in Registrant’s performances.
As petitioner points out, given Mr. Commins’ failure to
respond at all to this request, we are bound to accept the
requested admissions as admitted by respondent. See 37 CFR
§2.120(j)(3)(i) [A party may file a notice of reliance on
the requests for admission and a statement that its
adversary failed to respond to the requests for admission.]
Thus, in view of these admissions, we find respondent’s
services to be related to petitioner’s goods.
Turning to the other DuPont factors, there is nothing
in the record suggesting the mark MAVERICK is weak or in any
way diluted as applied to these or related fields.
Petitioner has pointed out its successful attempts to police
third party usage of this mark in the area of toys and
games. We also agree that the purchasers of these goods
would be exercising only the level of care of ordinary
customers of relatively inexpensive or “impulse” items.
Finally, any doubts about likelihood of confusion must
be resolved against the newcomer. See Crown Radio Corp. v.
Soundscriber Corp., 506 F.2d 1392, 1393, 184 USPQ 221, 223
Cancellation No. 25,190
6
(CCPA 1974) (doubt resolved against newcomer in cancellation
proceeding).
Given the conclusion that these goods and services are
related in the instant case, we have not felt compelled to
rule upon whether the MAVERICK mark is well-known or famous
as applied to playing cards. Nor have we placed much
significance on the fact that petitioner sells playing cards
specifically designed to be used in teaching one how to
perform basic magic tricks since they are sold under the
HOYLE trademark -- not the MAVERICK mark. Use of the
MAVERICK mark on these particular goods would certainly make
a stronger case for the relatedness of petitioner’s goods to
registrant’s services.
DECISION: Under the facts of this case as presented to
this Board, we find a likelihood of confusion and hence
grant the petition to cancel. Respondent’s registration
will be cancelled in due course.
R. L. Simms
C. E. Walters
Cancellation No. 25,190
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D. E. Bucher
Administrative Trademark
Judges, Trademark Trial and
Appeal Board