Child’s Play (International), Ltd.v.Justin Products Inc.

Trademark Trial and Appeal Board

Jan 25, 1999

No. 91090054 (T.T.A.B. Jan. 25, 1999)

Paper No. 38
BAC
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB JAN. 25, 99
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
_____
Trademark Trial and Appeal Board
______
Child’s Play (International), Ltd.
v.
Justin Products Inc.
_____
Opposition No. 90,054
to application Serial No. 74/159,425
filed on April 22, 1991
_____
Steven J. Soucar of Wood, Phillips, VanSanten, Clark &
Mortimer for Child’s Play (International), Ltd.
David A. Einhorn of Anderson, Kill, Olick & Oshinsky, P.C.
for Justin Products Inc.
______
Before Quinn, Hohein and Chapman, Administrative Trademark
Judges.
Opinion by Chapman, Administrative Trademark Judge:
Justin Products Inc. has filed an application to
register the mark shown below
Opposition No. 90054
2
for “radios, phonographs, compact disc players, audio
cassette players, walkie talkies and calculators” in Class
9.1
Child’s Play (International), Ltd. has opposed the
application, alleging that since June 17, 1976 it has
continuously used the mark CHILD’S PLAY for “a variety of
goods including books, card games, and prerecorded audio and
video tapes featuring children’s stories”; and that
applicant’s mark, when used on its goods, so resembles
opposer’s previously used and registered mark, CHILD’S PLAY,
for “prerecorded audio and video tapes featuring children’s
stories” in Class 9,2 and for “children’s books” in Class 16
and “deck of cards sold as a unit for playing a card game”
in Class 28,3 as to be likely to cause confusion, mistake or
deception.

1 Application Serial No. 74/ 159,425, was filed on April 22,
1991, based on an alleged bona fide intent to use the mark in
commerce. During the ex parte prosecution of the application,
the Office accepted applicant’s amendment to allege use, which
claims dates of first use and first use in commerce of January
31, 1992. Applicant has disclaimed the term “electronics”.
2 Reg. No. 1,638,928, issued March 26, 1991, Section 8 affidavit
accepted, Section 15 affidavit acknowledged. The claimed dates
of first use and first use in commerce are December 6, 1988.
3 Reg. No. 1,091,403, issued May 16, 1978, Section 8 affidavit
accepted, Section 15 affidavit acknowledged, renewed. The
Opposition No. 90054
3
Applicant has denied the salient allegations of the
notice of opposition, and affirmatively pleaded that
opposer’s rights are narrow in scope in view of numerous
third-party uses and registrations for identical and similar
marks.
The record consists of the pleadings; status and title
copies of opposer’s pleaded registrations submitted under a
notice of reliance; the declaration4 of Neil Burden5,
opposer’s director and general manager; opposer’s notices of
reliance on certain of applicant’s answers and supplemental

claimed dates of first use and first use in commerce for both
classes are June 17, 1976.
4 On May 19, 1994 the parties filed a stipulation pursuant to
Trademark Rule 2.123(b) that testimony could be submitted by
affidavit, and specifically agreed that the parties did not
waive the right to object to any affidavit testimony (or
exhibit) “on grounds of relevance or materiality.”
5 Opposer submitted the declaration of Neil Burden and a notice
of reliance (both filed on May 19, 1994) under seal. The Burden
declaration is stamped “confidential” on each page, and the
notice of reliance is stamped “confidential” only on the pages
of Exhibit B (applicant’s supplemental answer to opposer’s
interrogatory No. 6) and Exhibit C (applicant’s second
supplemental response to opposer’s document request No. 12).
The Board is at a loss to understand why opposer’s brief on the
case was not filed as “confidential”, and opposer referred to
the information in these materials throughout its brief when
these materials had been filed as confidential. Moreover, it is
clear that much of the material submitted under seal is not
“confidential” business information, such as opposer’s first use
information, references to opposer’s pleaded registrations and
copies of advertisements for opposer’s goods. Trademark Rule
2.27 provides that trademark records are to be public, except
for material properly filed under seal pursuant to a proper
protective order. The rule further provides that when a party
protected by the protective order voluntarily discloses the
material, then the material shall not be kept as confidential.
In this case, opposer has voluntarily disclosed the involved
material in its brief on the case. Applicant has made no
statement regarding this material. Based on the above, the
Board will not treat either the declaration of Mr. Neil Burden,
Opposition No. 90054
4
answers to opposer’s first set of interrogatories, certain
of applicant’s second supplemental answers to opposer’s
first set of requests for documents, and certain of
applicant’s responses to opposer’s second set of requests
for documents; the affidavit of Leonard Kaye, applicant’s
chairman of the board; the affidavit of Sheila Gonzalez, one
of applicant’s employees; applicant’s notice of reliance on
four third-party registrations; applicant’s notice of
reliance on certain of opposer’s answers and supplemental
answers to applicant’s first set of interrogatories, certain
of opposer’s answers, third supplemental answers and fourth
supplemental answers to applicant’s first set of document
requests6; opposer’s rebuttal notice of reliance on certain
official records from the Code of Federal Regulations and
from the Assignment Branch of this office; opposer’s
rebuttal notice of reliance on certain of its supplemental
answers to applicant’s first set of interrogatories; and the

nor the material in opposer’s May 19, 1994 notice of reliance,
as confidential.
6 Both opposer and applicant have submitted notices of reliance
on certain documents produced by the other party in response to
document requests. Trademark Rule 2.120(j)(3)(ii) provides that
responses to document production requests cannot be made of
record by notice of reliance unless the documents could be made
of record by notice of reliance under Trademark Rule 2.122(e).
Documents are also generally admissible if produced in response
to an interrogatory. See Trademark Rule 2.120(j)(3)(i). To the
extent any submitted documents are not admissible by way of
notice alone, they have not been considered. See also, TBMP
§711. We add that even if the otherwise inadmissible documents
submitted by both parties were considered, the result reached
herein would be the same.
Opposition No. 90054
5
rebuttal affidavit of Steven J. Soucar, one of opposer’s
attorneys.7
Only opposer filed a brief on the case8. Neither party
requested an oral hearing.
Opposer has filed status and title copies of its two
pleaded registrations.9 Because opposer owns valid and

7 In a letter dated February 6, 1995 opposer listed four
objections to testimony and documents submitted by applicant
(i.e., the affidavit testimony of both Kaye and Gonzalez as
hearsay; and certain documents submitted by applicant by way of
notice of reliance). Opposer specifically stated in the letter
that it was not requesting a decision on the objections, but
rather was preserving its right to present arguments in its
brief. Subsequently, in opposer’s brief on the case, opposer
stated that it “will brief its objections only if Applicant
attempts to use the objected to testimony.” (Opposer’s Brief,
p.11.)
Opposer’s vague statements and conditional objections are not
an appropriate way to raise objections to any particular matter
offered into the record. Opposer’s objections are considered
waived. (We reiterate, as stated in footnote 6, that of course,
any of the documents offered by applicant which were
inappropriate for introduction by way of notice of reliance
under Trademark Rule 2.120(j)(3)(ii), have not been treated as
of record. Regarding opposer’s objections to certain Bates-
numbered documents offered by applicant, the parties are advised
that many of the Bates numbers on the involved documents are
completely illegible.)
8 In its brief opposer asserted that applicant’s amendment to
allege use (filed February 25, 1992) contained “inconsistencies”
which would “jeopardize the validity of the application or any
resulting registration.” Specifically, opposer referred to
applicant’s claimed type of commerce and failure to use the mark
on all of the goods listed in the application, and concluded
that applicant “has failed to properly comply with §2.76(c).”
(Opposer’s brief, pp. 11-12.) The validity of applicant’s
amendment to allege use is not a pleaded issue in this case, and
opposer did not otherwise support or pursue this matter. Thus,
the Board will not further consider the validity of applicant’s
amendment to allege use in this case.
9 Opposer’s pleaded Registration No. 1,091,403, issued on May
16, 1978 in Classes 16 and 28. The status and title copy of
opposer’s registration submitted with the notice of reliance was
prepared by the Patent and Trademark Office in June 1994, and
thus, does not include information as to the renewal, which was
due on May 16, 1998. The records of this Office indicate that
Opposition No. 90054
6
subsisting registrations for its pleaded mark, the issue of
priority does not arise with respect to the goods recited
therein. See King Candy Company v. Eunice King’s Kitchen,
Inc., 496 F.2d 1400, 182 USPQ 108(CCPA 1974); and Humana
Inc. v. Humanomics Inc., 3 USPQ2d 1696 (TTAB 1987).
Thus, the only issue before the Board is likelihood of
confusion. Based on the record before us in this case, we
find that confusion is likely.
In the declaration of Neil Burden, opposer’s director
and general manager, he avers that since June 17, 1976
opposer has continuously used the mark CHILD’S PLAY for
books, card games, board games, soap and prerecorded audio
and video tapes for children; that until April 1991 opposer
distributed its goods in the United States through
Playspaces International, Inc. and thereafter opposer
shifted to direct distribution of its goods; and that

opposer timely filed a renewal affidavit, and that said renewal
was accepted by this Office.
Opposer’s pleaded Registration No. 1,638,298, issued on March
26, 1991 in Class 9. The status and title copy of opposer’s
registration submitted with the notice of reliance was prepared
by the Patent and Trademark Office in June 1994, and thus, does
not include information as to the Section 8 affidavit, which was
due on March 26, 1997. The records of this Office indicate that
opposer timely filed a combined Section 8 and 15 affidavit, and
that said combined affidavit was accepted by this Office.
(footnote continued)
When a registration owned by a party has been properly made of
record in an inter partes case, 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 will take
judicial notice of, and rely upon, the current status of the
registration as shown by the records of the Patent and Trademark
Office. See TBMP §703.02(a), at page 700-10, and the cases
Opposition No. 90054
7
opposer distributes its goods through, inter alia, Discovery
Toys, a home-party company with over 10,000 representatives,
and School Book Fairs, which distributes opposer’s and
others’ products at local school book fairs. Opposer sells
to retailers, wholesalers, mail-order companies and other
trade customers through a sales office and warehouse in
Maine, utilizing a network of approximately 20 independent
representatives serving over 10,000 independent retailers;
that opposer’s goods are available in such stores as Walden
Books, FAO Schwarz, and Imaginarium; that opposer annually
distributes approximately 60,000 to 90,000 of its own
catalogs in the United States; that opposer attends the New
York Toy Fair (annually since 1977), the American
Booksellers’ Association Conference Exhibition (annually
since 1982), and the American Library Association Exhibition
(sporadically since 1980); that opposer’s customers include
stores, wholesalers, buyers, catalog distributors, teachers,
principals, librarians, day care providers, parents and
other relatives of children, children and anyone interested
in children's education; and that opposer’s goods are
intended for children from infancy to 15 years of age.
Mr. Burden further avers that opposer’s goods vary in
cost from about $3.00 to $16.00; that since 1991 opposer has
spent approximately $62,000 annually on advertising; that

cited therein. The Board hereby takes judicial notice of the
current status of opposer’s two pleaded registrations.
Opposition No. 90054
8
opposer’s sales in the United States of goods bearing the
mark CHILD’S PLAY were $547,662 (for the ten-month period
ending March 31, 1992) and $790,925 (for 1993); and that
opposer has successfully opposed three separate entities and
prevented them from registering marks confusingly similar to
opposer’s mark.
Applicant’s answers to interrogatories, relied upon by
opposer, show that applicant’s goods come directly from Hong
Kong to major retail stores and catalog houses in the United
States, are sold throughout the United States, and are
intended for “boys and girls, ages 4 and up”.
Applicant’s chairman of the board of directors, Leonard
Kaye, avers that applicant uses the mark CHILD’S PLAY
ELECTRONICS and design on alarm clocks, “sing-a-long”
cassette players, walkie talkies, intercoms, AM-FM radios,
calculators and walk-along cassette players; that he is
aware of no actual confusion; that he believes there is no
likelihood of confusion between these involved marks; and
that he is aware of numerous third parties using the mark
CHILD’S PLAY (or a similar mark) for goods and services
aimed at children.
Sheila Gonzalez, an employee of applicant, stated in
her affidavit that she “personally investigated the use of
the mark CHILD’S PLAY throughout the United States”; and
that she verifies the mark is being used by ten different
Opposition No. 90054
9
companies for a variety of goods, such as, candy, a
children’s clothing store, “different licensed merchandise”,
periodical newsletters, and toys and games.
Applicant also submitted a notice of reliance on four
third-party registrations to show that other marks are
registered for “CHILD’S PLAY or a close variation thereof,
for children’s goods”.
In the rebuttal affidavit of opposer’s attorney, Steven
J. Soucar, he offered three exhibits into evidence, each
consisting of correspondence between opposer and various
third parties regarding the third-parties’ possible
cessation of use of the mark CHILD’S PLAY or similar marks.
In determining the issue of likelihood of confusion, we
must base our analysis of all the probative facts in
evidence that are relevant to the factors bearing on the
likelihood of confusion issue. See In re E. I. du Pont de
Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973).
Turning first to the marks, opposer’s mark is CHILD’S
PLAY and applicant’s mark is CHILD’S PLAY ELECTRONICS (in
stylized lettering) enclosed in a broken-line rectangle.
Generally the word portion of a mark, i.e., the portion
utilized in calling for the goods, is most likely to be
impressed in the purchaser’s memory and to serve as the
indicium of origin. See Consumers Building Marts, Inc. v.
Mr. Panel, Inc., 196 USPQ 510 (TTAB 1977). The only spoken
Opposition No. 90054
10
portion of the marks are CHILD’S PLAY and CHILD’S PLAY
ELECTRONICS. In this case, both applicant’s mark and
registrant’s mark include the identical wording, CHILD’S
PLAY. Applicant’s addition of the descriptive word
“ELECTRONICS” and a simple background rectangular outline is
not sufficient to distinguish the marks since, even if
consumers noted the additional word and design element, they
would be likely to think that opposer was using the CHILD’S
PLAY ELECTRONICS mark for a line of electronic goods for
children. That is, consumers may see applicant’s mark as a
mere variation of opposer’s mark, CHILD’S PLAY. Applicant
has merely added non-distinctive matter to opposer’s mark,
which is insufficient to distinguish the marks. See Spoons
Restaurants Inc. v. Morrison Inc., 23 USPQ2d 1735 (TTAB
1991), aff’d unpub’d, Appeal No. 92-1086 (Fed. Cir. June 5,
1992); In re Denise, 225 USPQ2d 624 (TTAB 1985); and Proctor
& Gamble Company v. Glamorene Products Corporation, 188
USPQ2d 704 (TTAB 1975), aff’d, 190 USPQ2d 543 (CCPA 1976).
Moreover, the differences in the marks are not likely
to be recalled by purchasers seeing the marks at separate
times. The emphasis in determining likelihood of confusion
is not on a side-by-side comparison of the marks, but rather
must be on the recollection of the average purchaser, who
normally retains a general rather than a specific impression
of the many trademarks encountered; the purchaser’s
Opposition No. 90054
11
fallibility of memory over a period of time must also be
kept in mind. See Grandpa Pidgeon’s of Missouri, Inc. v.
Borgsmiller, 477 F.2d 586, 177 USPQ 573 (CCPA 1973); and
Edison Brothers Stores v. Brutting E.B. Sport-International,
230 USPQ 530 (TTAB 1986).
The marks are highly suggestive, with a double entendre
connoting the idea that the goods are intended for children
to play with, or that the products are simple and easy to
understand and use as in, “child’s play.” Thus, both marks
connote the same idea.
The marks are similar in sound, appearance and
connotation. A purchaser familiar with opposer’s goods sold
under the registered mark would, upon seeing applicant’s
mark on its goods, assume that applicant’s goods come from
the same source as opposer’s goods.
Applicant’s evidence regarding third-party uses and
registrations is not convincing that opposer’s mark is a
weak mark in its field. First, the affidavit of Sheila
Gonzalez merely states that she “investigated the use of the
mark CHILD’S PLAY throughout the United States and verified
that this mark is currently being used by the following
individuals or companies....” There is no information in
her affidavit as to how her investigation was accomplished.
Nor has she provided any information as to the extent of
such uses, e.g., amount of sales, or areas in which goods
Opposition No. 90054
12
are sold. Second, the goods as listed in Ms. Gonzalez’
affidavit include a wide variety of items, such as, candy,
sweaters, inflatable toys, toys and games, and periodical
newsletters. Many of the goods of the third parties listed
by Ms. Gonzalez are less related to opposer’s goods than are
applicant’s. The information in the affidavit of Ms.
Gonzalez accordingly does not prove that opposer’s mark is
weak in its field.
Applicant’s notice of reliance on four third-party
registrations also does not prove that opposer’s mark is
weak. First, third-party registrations are not evidence of
use of the marks, or what happens in the marketplace, or
that consumers are familiar with the third-party marks. See
Olde Tyme Foods Inc., v. Roundy’s Inc., 961 F.2d 200, 22
USPQ2d 1542, 1545 (Fed. Cir. 1992); and Spoons Restaurants
Inc. v. Morrison Inc., supra, at 1740. Second, the four
registrations are for the following marks and goods: (1)
CHILDS PLAY for “children’s sweaters,” (2) CHILD’S PLAY for
“candy,” (3) CHILD’S PLAY and balloons design for
“children’s fragrance and daily needs line, namely, cologne,
shampoo, talc, body lotion,” and (4) KIDSPLAY (in stylized
lettering) for “retail toy catalog services.” Three of
these four third-party registrations indicate that the words
CHILD’S PLAY have been registered (sometimes with designs),
but the CHILD’S PLAY registrations are all for goods
Opposition No. 90054
13
unrelated to those sold by opposer; and the fourth
registration is for a different mark, KIDSPLAY (in stylized
lettering), and is registered for a service. Thus, the
registration evidence does not prove that opposer’s mark
CHILD’S PLAY used for opposer’s goods is a weak mark.
Even if applicant had proven that opposer’s mark is
weak, such marks are still entitled to protection against
registration by a subsequent user of the same or similar
mark for the same or closely related goods. See Hollister
Incorporated v. Ident A Pet, Inc., 193 USPQ 439 (TTAB 1976).
Turning then to a consideration of the goods, it is
well settled that goods need not be identical or even
competitive to support a finding of likelihood of confusion,
it being sufficient instead that the goods are related in
some manner or that the circumstances surrounding their
marketing are such that they would likely be encountered by
the same persons under circumstances that could give rise to
the mistaken belief that they emanate from or are associated
with the same source. See In re International Telephone and
Telegraph Corporation, 197 USPQ 910 (TTAB 1978); and In re
Peebles Inc., 23 USPQ2d 1795 (TTAB 1992).
Here, the goods in applicant’s application are “radios,
phonographs, compact disc players, audio cassette players,
walkie talkies and calculators”, while the goods covered by
opposer’s registrations are “prerecorded audio and video
Opposition No. 90054
14
tapes featuring children’s stories,” “children’s books,” and
“deck[s] of cards sold as a unit for playing a card game.”
In addition, the record shows that opposer also uses its
mark, CHILD’S PLAY, on board games and soap. Opposer argues
that it provides its goods “to educate and entertain
children” (Opposer’s Brief, p. 1); and maintains that
applicant sells its products to “educate and entertain
children” (Opposer’s Brief, p. 12).
In this case applicant’s “audio cassette players” and
opposer’s “prerecorded audio and video tapes featuring
children’s stories” clearly are complementary, closely
related products. Prerecorded audio tapes are played in
audio tape players. The relationship of audio tapes to
audio tape players seems obvious in that anyone using the
products must have an audio tape to play in an audio tape
player, and vice versa. The existence of one without the
other is inconceivable. See Data Packaging Corporation v.
Morning Star, Inc., 212 USPQ 109 (TTAB 1981) (holding
confusion is likely when there is use of similar marks on
audio tapes and on devices for handling and storing magnetic
tape used in audio equipment, such as cassettes and
cartridges); and Lexicon, Incorporated v. Lexicon Music,
Inc., 225 USPQ 201 (TTAB 1985) (holding confusion is likely
when there is use of similar marks on phonograph records and
tape recordings, on the one hand, and on audio equipment,
Opposition No. 90054
15
such as audio signal processors, digital delay processors,
on the other).
Applicant’s goods are not restricted in any way, but
could be used by children. Applicant’s exhibit attached to
the affidavit of Leonard Kaye (pictures of applicant’s
goods), as well as applicant’s answers to opposer’s
interrogatory Nos. 15 and 16 (made of record by opposer’s
notice of reliance), clearly establish that applicant’s
goods are directed to boys and girls ages 4 and up, and are
marketed as children’s products. Thus, the goods of both
parties would be encountered by purchasers in circumstances
that would give rise to the belief that both parties’ goods
come from or are associated with the same source. See Dan
Robbins & Associates, Inc. v. Questor Corporation, 599 F.2d
1009, 202 USPQ 100 (CCPA 1979).
The record shows that opposer markets its goods through
a wide variety of selling methods, including major retail
stores, mail-order catalogs, home parties, and wholesalers;
and that applicant sells its goods through major retail
stores and catalog sales. Inasmuch as some of the parties’
goods (applicant’s audio cassette players and opposer’s
prerecorded audio tapes) are complementary and closely
related, and both parties’ goods are sold through major
retail stores and catalogs, we find that the parties’ goods
travel in the same channels of trade to the same general
Opposition No. 90054
16
class of purchasers, i.e., persons purchasing goods for
children.
Because of the virtual identity of the marks; the close
relationship of some of the parties’ goods; and the
similarity of the trade channels and purchasers; confusion
is likely between applicant’s mark and opposer’s mark when
used on the respective goods of the parties.
Decision: The opposition is sustained, and
registration to applicant is refused.
T. J. Quinn
G. D. Hohein
B. A. Chapman
Administrative Trademark Judges,
Trademark Trial and Appeal Board