Brown & Williamson Tobacco Corp.

Trademark Trial and Appeal Board

Jul 22, 1997

EX (T.T.A.B. Jul. 22, 1997)

THIS DISPOSITION IS NOT CITABLE
AS PRECEDENT OF THE TTAB JULY 22, 97
Hearing: Paper No. 20
December 12, 1996 RLS/LCB
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Brown & Williamson Tobacco Corporation
________
Serial No. 74/451,409
_______
Amy B. Berge of Middleton & Reutlinger for applicant.
Amos T. Matthews, Trademark Examining Attorney, Law Office
108 (David Shallant, Managing Attorney)
_______
Before Simms, Hanak and Hairston, Administrative Trademark
Judges.
Opinion by Simms, Administrative Trademark Judge:
Brown & Williamson Tobacco Corporation (applicant) has
appealed from the final refusal to register the mark shown
below

Serial No. 74/451,409
2
for cigarettes.1 The Examining Attorney has refused
registration under Section 2(d) of the Act, 15 USC §1052(d),
on the basis of the registered mark shown below, for
cigarettes.2

Applicant and the Examining Attorney have submitted
briefs and an oral hearing has been held.
The Examining Attorney argues that the respective marks
are substantially similar in appearance and project the same
commercial impression. Although the Examining Attorney
concedes that applicant's mark is a closed design of six
sides while registrant's is an "open" design of five sides,
the Examining Attorney contends that the only real
difference is that applicant's mark has "closed" corners.

1 Application Serial No. 74/451,409, filed October 20, 1993,
based upon applicant's allegations of use and use in commerce
since at least as early as December 31, 1980. In the
application, applicant claims ownership of Registration No.
1,388,505.
2 Registration No. 1,752,003, issued February 9, 1993.
Serial No. 74/451,409
3
Final refusal, April 4, 1995, p. 2. Noting that the goods
of applicant and registrant are identically described, the
Examining Attorney argues that, in view of the fallibility
of memory and considering the fact that the respective marks
may be viewed without an opportunity for side-by-side
comparison, confusion is likely.
Applicant, on the other hand, contends that
registrant's mark is a stylized five-pointed star or
starburst design within an open-cornered pentagon while
applicant's mark is a hexagon with two sets of completely
solid lines. According to applicant, in addition to the
distinction between registrant's pentagonal and applicant's
hexagonal design, the marks convey noticeably different
images. Applicant also notes that geometric and other
common shapes have not generally been accorded a wide scope
of protection and have been characterized as relatively weak
marks in terms of their inherent distinctiveness. In this
regard, applicant has referred us to language from the
Board's decision in Guess ? Inc. v. Nationwide Time Inc., 16
USPQ2d 1804, 1806 (TTAB 1990):
[C]ommon basic shapes such as circles,
diamonds, triangles, squares, ovals,
arrows and the like have been so
commonly adopted as marks or as a part
of marks for a variety of products in a
variety of fields that whatever rights
one possesses in such a design are
confined to the particular design and
cannot serve to preclude the subsequent
registration of a similar yet readily
distinguishable design for the same or
similar goods.
Serial No. 74/451,409
4
Applicant also argues that the registered mark is not
famous; rather, according to applicant's attorney and a
declaration submitted during the prosecution of this case,
applicant's GPC brand used with applicant’s design is now
the second leading cigarette brand in the United States with
many millions of dollars in sales per year and over $50
million in promotional and advertising expenses over the
last five years. Applicant has also attested to the fact
that there have been no instances of actual confusion
despite over four years of co-existence of the respective
marks. Finally, applicant points to the manner of
application of registrant's mark (only on cigarette tipping
paper or the tip of the cigarette) so that consumers do not
see registrant's mark until after purchase, and applicant's
ownership of other registrations which include the mark
herein sought to be registered. In this regard, applicant
argues that the Office's treatment of those applications
(now registrations) vis-a-vis the cited mark has been
inconsistent with the treatment of this application.3
Finally, applicant's attorney and the Examining
Attorney have discussed a number of cases involving design

3 Those registered marks are reproduced below:
Serial No. 74/451,409
5
marks. Among those are Daimler-Benz A.G. v. Ford Motor
Company, 143 USPQ 453 (TTAB 1964), finding no likelihood of
confusion between the following marks:
Applicant’s Mark Registered Marks
Daimler-Benz Aktiengesellschaft v. Chrysler Corporation, 169
USPQ 686 (TTAB 1971), finding no likelihood of confusion
among the following marks:
and Daimler-Benz Aktiengesellschaft v. Nissan Jidosha
Kabushiki Kaisha, 179 USPQ 182 (TTAB 1973), finding no
likelihood of confusion among the following marks:
Applicant’s Mark Registered Marks
In cases involving the issue of likelihood of confusion
between different design marks, the Board has noted that the
Serial No. 74/451,409
6
"eyeball" test involved in such determinations is relatively
subjective. This case is a case in point. Upon careful
consideration of the arguments of the attorneys, we conclude
that applicant's mark is sufficiently different from the
registered mark that, even on identical products such as
cigarettes, confusion is not likely. We believe that
registrant's mark would clearly be remembered as a pentagon
(or perhaps a starburst design surrounded by broken lines),
while applicant's mark is clearly a different figure
projecting a different image and commercial impression.4
Decision: The refusal of registration is reversed.
R. L. Simms
E. W. Hanak
P. T. Hairston
Administrative Trademark Judges
Trademark Trial and Appeal Board

4 Other arguments of applicant are unpersuasive, however. For
example, the fact that registrant has indicated in its
application that it applies its mark by affixing it to cigarette
tipping paper is not persuasive. We must consider registrant's
mark as applied to cigarettes or the packaging therefor,
irrespective of the particular means of affixation set forth in
registrant's application. Also, because applicant's other
registrations are for different marks with different elements,
albeit including a hexagonal design, we do not agree with
applicant's assessment that the Office treatment of this
application is necessarily inconsistent with its treatment of
the other applications. However, that point is largely
irrelevant.