Dayton Hudson Corp.v.Greatland Corp.

Trademark Trial and Appeal Board

Oct 6, 1999

No. 91098231 (T.T.A.B. Oct. 6, 1999)

Paper No. 39
PTH
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB OCT. 6, 99
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
_____
Trademark Trial and Appeal Board
______
Dayton Hudson Corporation
v.
Greatland Corporation
_____
Opposition No. 98,231
to application Serial Nos. 74/546,560 and 74/546,586
filed on July 7, 1994
_____
L. Paul Burd, Robert W. Gutenkauf and Gina M. Tiefenthaler
of Burd, Bartz & Gutenkauf for Dayton Hudson Corporation.
Terence J. Linn and Timothy A. Flory of Van Dyke, Gardner,
Linn & Burkhart, LLP for Greatland Corporation.
______
Before Cissel, Quinn and Hairston, Administrative Trademark
Judges.
Opinion by Hairston, Administrative Trademark Judge:
Greatland Corporation has filed applications to
register the marks GREATLAND in typed form and
for the following goods and services:
Opposition No. 98,231
2
computer software and instructional manuals sold
as a unit for financial/banking and mortgage
institutions and accounting/tax, real estate
and legal fields; electronically created
documents in the form of computer software for
creating forms used in the financial/banking,
mortgage, accounting/tax and legal fields and
other regulated business applications, and
pre-recorded video and audio tapes and cassettes
relating to such fields in class 9;
printed informational publications for the
mortgage, financial/banking, accounting/tax,
real estate and legal fields, namely manuals,
brochures, leaflets, booklets, printed forms
for the financial/banking, legal, mortgage,
real estate, accounting/tax and other business
fields; printed receipts, envelopes, stationery,
printed advertising sheets distributed for use
by third parties; labels, cards for use in
business and folders in class 16; and
general printing services; direct and wholesale
distributorship services and mail order catalog
services for printed and electronically created
documents, forms and printed supplies, manuals,
informational brochures, booklets and leaflets,
and computer programs and software for the
fields of mortgage, financial/banking, accounting/
tax, legal, real estate and other regulated
businesses in class 42.1
Registration has been opposed by Dayton Hudson
Corporation under Section 2(d) of the Trademark Act on the
ground of likelihood of confusion between applicant’s mark
and opposer’s previously used and registered marks. Opposer
is the owner of valid and subsisting registrations for the
following marks: TARGET GREATLAND for “retail department

1 Serial Nos. 74/546,560 and 74/546,586 respectively, both filed
July 7, 1994 under Section 1(b) of the Trademark Act.
Opposition No. 98,231
3
store services”2; TARGET GREATLAND and design for “retail
department store services”3; GREATLAND for “thermally
insulated clothing, namely, underwear, socks, gloves and
mittens and boots”4; “propane camp stoves, propane camp
laterns and battery operated fluorescent laterns and
heaters”5; “tote bags and backpacks”6; “sleeping bags”7;
“tents”8; “thermally insulated coolers, vacuum bottles,
cooking pots, sheets, comforters, throws, blankets,
clothing, namely, thermal underwear, sweaters, sweatshirts,
gloves, hats, coats, jackets, jeans, nightshirts, footwear,
belts, shirts, scarves, hosiery, pet food”9; “artificial
Christmas trees”10; and “processed nuts, fruit juices and
fruit drinks”11.
Applicant, in its answer, denied the salient
allegations of the likelihood of confusion claim.

2 Registration No. 1,639,404 issued March 26, 1991; Sections 8 &
15 affidavit filed.
3 Registration No. 1,641,791 issued April 16, 1991; Sections 8 &
15 affidavit filed.
4 Registration No. 1,384,422 issued February 25, 1986; Sections 8
& 15 affidavit filed.
5 Registration No. 1,585,514 issued March 6, 1990; Sections 8 &
15 affidavit filed.
6 Registration No. 1,585,673 issued March 6, 1990; Sections 8 &
15 affidavit filed.
7 Registration No. 1,585,723 issued March 6, 1990; Sections 8 &
15 affidavit filed.
8 Registration No. 1,606,455 issued July 17, 1990; Sections 8 &
15 affidavit filed.
9 Registration No. 1,641,912 issued April 23, 1991; Sections 8 &
15 affidavit filed.
10 Registration No. 1,649,583 issued July 2, 1991; Sections 8 & 15
affidavit filed.
11 Registration No. 1,861,063 issued November 1, 1994.
Opposition No. 98,231
4
The record consists of the pleadings; the files of the
involved applications; testimony (with exhibits) taken by
both parties; and stipulated rebuttal testimony.12 The
following materials were submitted under notices of
reliance: status and title copies of opposer’s pleaded
registrations; opposer’s responses to applicant’s
interrogatories and requests for admissions; excerpts from
printed publications; and applicant’s responses to opposer’s
interrogatories and request for production of documents.
Both parties filed briefs on the case, but an oral hearing
was not requested.
Opposer, Dayton Hudson Corporation, is one of the
largest retail merchandisers in the United States. Since
1962 opposer has operated a chain of retail self-service
Target discount department stores which offer a variety of
products and services. In 1990 opposer developed new,
larger self-service discount department stores called TARGET
GREATLAND. According to opposer, the mark TARGET GREATLAND
was selected to differentiate the new stores from the
original Target stores. TARGET GREATLAND stores are larger,
with wider aisles, and offer more goods and services. As of
1996 there were 49 TARGET GREATLAND stores operating in 11
states. At both its Target and TARGET GREATLAND stores

12 Applicant has stipulated that opposer offers photofinishing
services which include the printing of calendars and greeting
cards featuring photographs.
Opposition No. 98,231
5
opposer sells and provides many and varied goods and
services such as are normally sold and provided in discount
department stores, including many under the mark GREATLAND.
Opposer promotes its retail stores and the goods and
services offered therein in newspapers, advertising
circulars, and on television and radio. In 1995 sales of
GREATLAND merchandise totaled over $250 million.
Applicant is a national supplier of computer software
and printed documents in the fields of finance, mortgages,
tax and accounting. Applicant’s products and services are
mostly compliance-based products for regulated fields or
industries and are sold through catalog orders, phone sales
or personal contact by a sales representative. Applicant’s
customers are professionals and businesses within the
financial, mortgage and accounting and tax industries.
Inasmuch as status and title copies of opposer’s
registrations are of record, 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).
We turn our attention then to the issue of likelihood
of confusion. It is opposer’s position that confusion is
likely because the respective marks are identical and/or
substantially similar and the respective goods/services are
closely related. Applicant, on the other hand, while
Opposition No. 98,231
6
conceding that its mark GREATLAND in typed capital letters
has some similarity to opposer’s marks, argues that
confusion is not likely because of the differences in the
parties’ goods and services.
With respect to the marks, we agree with opposer that
its marks TARGET GREATLAND and GREATLAND are identical or
otherwise substantially similar in sound, appearance and
commercial impression to applicant’s marks GREATLAND and
GREATLAND and design.
With respect to the goods and services, opposer
acknowledges that its goods/services and the goods/services
in connection with which applicant intends to use its mark
are not similar. (Brief, p. 12.) However, opposer
maintains that the conditions surrounding the marketing of
the parties’ goods and services would give rise to public
confusion.
First, opposer notes that “[it] sells thousands of
third-party (marked) goods at its Target and TARGET
GREATLAND stores” which are “identical in kind and nature”
to those specified in applicant’s application. (Brief, p.
12-13). In particular, opposer points to computer software
and instructional manuals for tax preparation, pre-recorded
video and audio tapes and cassettes, printed informational
publications, envelopes, stationery and folders. The
problem with this argument, however, is that in our analysis
Opposition No. 98,231
7
of likelihood of confusion, we must compare opposer’s goods
and services offered under the marks TARGET GREATLAND and
GREATLAND, not the goods and services of third parties which
are offered under different marks, with the goods and
services named in applicant’s application. As opposer has
acknowledged, its goods and services and those set forth in
applicant’s applications are not similar.
Also, opposer notes that applicant’s applications
include “general printing services” and that it provides
general printing services in the form of photofinishing
services, which include custom printing of calendars and
greeting cards featuring photographs. While we recognize
that photofinishing services may encompass the printing of
some materials, this is insufficient to establish that
general printing services and photofinishing services are
related services.
Further, opposer points out that applicant offers mail
order catalog services and argues that mail order catalog
services are within the scope of natural expansion of
opposer’s retail department store services. However,
opposer has ignored that applicant’s mail order catalog
services are for products used in the fields of mortgages,
financial/banking, accounting, tax, legal, real estate and
other regulated businesses. There is nothing in this record
to indicate that mail order catalog services in these types
Opposition No. 98,231
8
of goods are within the scope of natural expansion of retail
department store services. Also, it is obvious that the
products applicant intends to sell by mail order are unlike
the consumer items which are sold by department stores by
mail order.
In this case, it is apparent that opposer and applicant
operate in distinct fields and their respective goods and
services are very different on their faces. Moreover,
opposer has failed to show that the parties’ goods and
services are related in any meaningful way. Likelihood of
confusion must be established on sound, viable, grounds
rather than on supposition and surmise. As the Court stated
in Witco Chemical Co. v. Whitfield Chemical Co., 418 F.2d
1403, 1405, 164 USPQ 43, 44-45 (CCPA 1969):
We are not concerned with the mere theoretical
possibilities of confusion, deception, or
mistake or with de minimis situations, but
with the practicalities of the commercial
world with which trademark laws deal.
Thus, notwithstanding the identity/similarity between
the parties’ marks, we find that there is no likelihood of
confusion in this case.
Finally, although opposer has contended that its marks
are famous, the evidence falls short of establishing the
fame of opposer’s TARGET GREATLAND and GREATLAND marks.
While it appears that opposer has enjoyed some success with
its TARGET GREATLAND and GREATLAND stores and merchandise,
Opposition No. 98,231
9
we cannot conclude, based on the present record, that the
marks have become famous. Compare: Kenner Parker Toys v.
Rose Art Industries, 963 F.2d 350, 22 USPQ2d 1453, 1456
(Fed. Cir. 1992).
Decision: The opposition is dismissed.
R. F. Cissel
T. J. Quinn
P. T. Hairston
Administrative Trademark Judges
Trademark Trial and Appeal Board