Burkard Publishing Corp. and Eugene R. Burkardv.John A. Towsley

Trademark Trial and Appeal Board

Mar 31, 1998

No. 91101017 (T.T.A.B. Mar. 31, 1998)

Paper No. 9
CEW
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB MARCH 31, 98
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
_______
Trademark Trial and Appeal Board
_______
Burkard Publishing Corporation
and Eugene R. Burkard
v.
John A. Towsley
_______
Opposition No. 101,017
to application Serial No. 74/652,080
filed on March 27, 1995
_______
Neil F. Martin and Barry F. Soalt of Brown, Martin, Haller &
McClain for opposer
John A. Towsley, Pro Se
_______
Before Sams, Hairston and Walters, Administrative Trademark
Judges.
Opinion by Walters, Administrative Trademark Judge:
Burkard Publishing Corporation and Eugene R. Burkard
(opposers) filed their opposition1 to the application of
John A. Towsley to register the mark NICE BUN for “men’s and

1 The record contains no evidence regarding the relationship, if any,
between the two opposers in this case. The two opposers have filed all
papers jointly by making single filings on behalf of both opposers.
Nonetheless, standing and the merits of the opposition must be
established as to each opposer herein.
Opposition No. 101,017
2
women’s clothing, namely, jeans, slacks, shorts, underwear,
and swimwear.”2
As grounds for opposition, opposers assert that
applicant’s mark, when applied to applicant’s goods, so
resembles opposers previously used and registered mark BUNS
for “underwear pants for men and women”3 as to be likely to
cause confusion under Section 2(d) of the Trademark Act.
Opposers allege, further, that opposers have been engaged in
the clothing business since prior to applicant’s filing date
and have continuously used the mark BUNS on clothing
products, including underwear, since at least as early as
December 13, 1974; that BUNS is opposers’ principal mark in
connection with men’s and women’s underwear pants and is
well-known throughout the United States; that opposers have
adopted and are the owners of the registered marks WARM BUNS
for “hosiery” (Registration No. 1,360,748); SKI BUNS for
“men’s, women’s and children’s ski wear, namely, underwear
and pants” (Registration No. 1,504,938), and BUNDERWEAR for
“men’s, women’s and children’s underwear” (Registration No.
1,612,990).

2 Application Serial No. 74/652,080, filed March 27, 1995, in
International Class 25, based upon an allegation of a bona fide
intention to use the mark in commerce.
3 Registration No. 1,023,313, issued October 21, 1975, in International
Class 25. [Renewed for a term of ten years from October 21, 1995;
Sections 8 and 15 affidavits accepted and acknowledged, respectively.]
The registration issued, originally, to Brawn of California.
Opposition No. 101,017
3
Applicant, in his answer, denied the salient
allegations of the likelihood of confusion claim.
The Record
The record consists of the pleadings; the file of the
involved application; a certified copy of Registration No.
1,023,313, which shows that the registration is owned by
opposer Eugene R. Burkard; and opposers’ Request for
Admissions to applicant.4 Both the copy of the pleaded
registration and opposers’ Request for Admissions were
submitted by way of opposers’ notice of reliance. Applicant
did not take any testimony or submit any evidence during his
testimony periods. Only opposers filed a brief on the case.
Analysis
We begin by finding that the sparse record before us
contains no facts that would establish either the standing
of opposer Burkard Publishing Corporation or the merits of
the case with respect to opposer Burkard Publishing
Corporation. Thus, the opposition is dismissed as to
opposer Burkard Publishing Corporation due to a failure of
proof.

4 Opposers state, in the notice of reliance, that applicant did not
respond or object to the requested admissions. Thus, opposers’
requested admissions are deemed to be admitted by applicant since
applicant neither responded to opposers’ request nor objected thereto
within thirty days after the date of service of opposers’ request for
admissions. See, FRCP 36(a) and Trademark Trial and Appeal Board Manual
of Procedure (TBMP), Section 411.01.
Opposition No. 101,017
4
Our discussion turns now to consideration of the merits
of this opposition with respect to Eugene R. Burkard
(opposer). Inasmuch as a certified copy of the pleaded
registration for the mark BUNS is of record, and that copy
shows title to the registration in the name of Eugene R.
Burkard, there is no issue with respect to opposer’s
priority. King Candy Co., Inc. v. Eunice King’s Kitchen,
Inc., 496 F.2d 1400, 182 USPQ 108 (CCPA 1974).
Our determination of likelihood of confusion under
Section 2(d) must be 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.
duPont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA
1973). Two key considerations in this case are the
similarities between the goods and the similarities between
the marks. Federated Foods, Inc. v. Fort Howard Paper Co.,
544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976). This is
especially true in cases where, as here, there is little
evidence bearing on the other factors enumerated in the
duPont case.5
With respect to the goods and services of the parties,
we observe that at least two facts deemed admitted by

5 In his notice of opposition, opposer made a number of allegations
regarding, inter alia, use of his mark BUNS, the renown of that mark,
and that he owns several other specified registrations. These
allegations are not established by the record and, thus, are not
considered in our determination herein.
Opposition No. 101,017
5
applicant due to his failure to respond to opposer’s Request
for Admissions are relevant. Applicant is deemed to have
admitted, inter alia, that the channels of trade are the
same for applicant’s goods identified by the mark NICE BUN
and opposer’s goods identified by the mark BUNS; and that
the products in connection with which the parties’
respective marks are used are substantially the same type of
products. Further, the identification of goods in the
application includes “underwear” which is substantially the
same as the recited goods in the pleaded registration.
Thus, we conclude that the goods of the parties are
identical and closely related.
Not only is applicant deemed to have admitted that the
trade channels for the parties’ goods are the same, but, in
view of the broad wording of both identifications of goods,
we must presume that the goods and services of applicant and
opposer are sold in all of the normal channels of trade to
all of the normal purchasers for goods of the type
identified. See Canadian Imperial Bank v. Wells Fargo, 811
F.2d 1490, 1 USPQ2d 1813 (Fed. Cir. 1987). That is, we must
presume that the goods of applicant and opposer are sold
through the same channels of trade to the same classes of
purchasers.
Turning to the marks, while we must base our
determination on a comparison of the marks in their
Opposition No. 101,017
6
entireties, we are guided, equally, by the well-established
principle that, in articulating reasons for reaching a
conclusion on the issue of confusion, “there is nothing
improper in stating that, for rational reasons, more or less
weight has been given to a particular feature of a mark,
provided the ultimate conclusion rests on consideration of
the marks in their entireties.” In re National Data Corp.,
732 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985). In this
regard, we find that BUN is the dominant portion of
applicant’s mark NICE BUN, as NICE is an adjective that
merely modifies and describes the noun BUN. As such, the
dominant portion of applicant’s mark is substantially
similar to opposer’s mark BUNS. The fact that applicant’s
BUN is singular and opposer’s mark BUNS is plural does not
distinguish these terms. The test of likelihood of
confusion is not whether the marks can be distinguished when
subjected to a side-by-side comparison. The issue is
whether the marks create the same overall commercial
impression. Visual Information Institute, Inc. v. Vicon
Industries Inc., 209 USPQ 179 (TTAB 1980). In this case, we
find that when opposer’s and applicant’s marks are
considered in their entireties, they create substantially
similar overall commercial impressions. Because applicant’s
mark essentially encompasses opposer’s mark and merely
modifies it with the adjective NICE, it is likely that, when
Opposition No. 101,017
7
considered in relation to the respective goods of the
parties, consumers may mistakenly believe that applicant’s
goods are a specialty line of clothing from opposer.
Therefore, we conclude that in view of the substantial
similarity in the commercial impressions of opposer’s mark
BUNS in Registration No. 1,023,313 and applicant’s mark NICE
BUN, their contemporaneous use on the identical and closely
related goods involved in this case is likely to cause
confusion as to the source or sponsorship of such goods.
Decision: The opposition is sustained as to Eugene R.
Burkard. The opposition is dismissed as to Burkard
Publishing Corporation.
J. D. Sams
P. T. Hairston
C. E. Walters
Administrative Trademark Judges,
Trademark Trial and Appeal Board