George H. Fuller & Son Co.v.Thomas A. Wheeler

Trademark Trial and Appeal Board

Dec 14, 1999

No. 91104859 (T.T.A.B. Dec. 14, 1999)

Paper No. 21
BAC
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB DEC. 14, 99
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
_____
Trademark Trial and Appeal Board
______
George H. Fuller & Son Co.
v.
Thomas A. Wheeler
_____
Opposition No. 104,859
to application Serial No. 75/023,839
filed on November 24, 1995
_____
Roberta Jacobs-Meadway of Panitch Schwarze Jacobs & Nadel,
P.C. for George H. Fuller & Son Co.
R. John Bartz, Esq. for Thomas A. Wheeler.
______
Before Hanak, Chapman and Bucher, Administrative Trademark
Judges.
Opinion by Chapman, Administrative Trademark Judge:
Thomas A. Wheeler filed an application to register the
mark shown below
for “hand crafted jewelry and custom designed jewelry.”
Applicant claimed a date of first use and first use in
commerce of May 1991.
Opposition No. 104859
2
George H. Fuller & Son Co. has opposed registration of
the mark, alleging that opposer “is and for many years has
been engaged in the manufacture and sale of jewelry
findings” (paragraph 2); that opposer owns Registration No.
1,751,189 for the mark shown below
for jewelry findings1; that opposer has used its “F and
design” mark continuously since 1892; and that applicant’s
mark, when used in connection with his goods, so resembles
opposer’s previously used and registered mark, as to be
likely to cause confusion, mistake, or deception.
Applicant denied the salient allegations of the notice
of opposition.
The record consists of the pleadings2; opposer’s
notices of reliance on a status and title copy of its
pleaded registration prepared by the Patent and Trademark
Office, photocopies of several third-party registrations,
and applicant’s responses to certain of opposer’s discovery
requests; and applicant’s notices of reliance on a status

1 Reg. No. 1,751,189 issued February 9, 1993. The claimed dates
of first use and first use in commerce are 1892 and 1906,
respectively.
2 Opposer attached its company brochure as Exhibit A to the
notice of opposition. The exhibit is not evidence on behalf of
opposer and was not considered by the Board. See Trademark Rule
2.122(c) and TBMP §705.01.
Opposition No. 104859
3
and title copy of his registration prepared by the Patent
and Trademark Office for the mark shown below
for “hand crafted opal jewelry”3, photocopies of two third-
party registrations, one printed publication, and
applicant’s responses to certain of opposer’s discovery
requests.
Both parties filed briefs on the case, and neither
party requested an oral hearing.
Opposer’s pleaded and proved registration on the
Principal Register constitutes prima facie evidence of
opposer’s use of the mark shown therein for the goods
identified in the registration as of the filing date of the
application which matured into the registration. See
Liberty & Co., Ltd. v. Liberty Trouser Co., Inc., 216 USPQ
65 (TTAB 1982); and Hyde Park Footwear Company, Inc. v.
Hampshire-Designers, Inc., 197 USPQ 639 (TTAB 1977).
Further, the registration is entitled to the statutory
presumptions of Section 7(b) of the Trademark Act,

3 Reg. No. 1,952,641 issued January 30, 1996. The claimed dates
of first use and first use in commerce are August 1984. The term
“opal” is disclaimed. The registration includes the following
statements: “The mark is lined for the colors blue, green,
yellow, red and brown. The mark consists of an oval design
within which is a rainbow forming the border of the oval. Within
the rainbow border is a rising sun and the words “opal fields”
superimposed on the sun.”
Opposition No. 104859
4
specifically, the validity of the registration, opposer’s
ownership of the mark, and opposer’s exclusive right to use
the mark in connection with the goods recited in the
registration. Thus, in this case opposer is entitled to the
presumption that it has used the mark shown below
for jewelry findings since January 14, 1991.
Through applicant’s answers to certain of opposer’s
discovery requests which have been submitted as evidence
herein, the record shows that applicant first used his
involved mark (described by applicant as consisting of the
letters “O F”) in May 1991; that his mark is an abbreviation
of his business name, OPAL FIELDS; that he sells his goods
in a single small retail jewelry store in Honolulu, Hawaii;
that he makes custom ordered jewelry, mainly with boulder
opal, which is special ordered by purchasers over-the-
counter in his retail jewelry store; and that he promotes
his mark through local advertising. Further, this record
also shows that before he filed his application, a trademark
search of “O F and design” was conducted which did not
reveal opposer’s registration; and that he is aware of no
instances of actual confusion.
Opposition No. 104859
5
As noted above, opposer has filed a status and title
copy of its pleaded registration.4 In view of opposer’s
ownership of a valid and subsisting registration for its
mark for jewelry findings, the issue of priority does not
arise. See King Candy Company v. Eunice King’s Kitchen,
Inc., 496 F.2d 1400, 182 USPQ 108 (CCPA 1974); and Carl
Karcher Enterprises Inc. v. Stars Restaurants Corp., 35
USPQ2d 1125 (TTAB 1995). Moreover, opposer’s first use, as
established in this case, is January 14, 1991, whereas
applicant’s established first use is May 1991.
Thus, the sole issue before the Board is likelihood of
confusion. Our determination of likelihood of confusion
must be based on our analysis of all of 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).

4 Opposer’s pleaded Registration No. 1,751,189 issued on March
February 9, 1993. The status and title copy of opposer’s
registration submitted with the notice of reliance was prepared
by the Patent and Trademark Office in August 1997, and thus, does
not include information as to the Section 8 affidavit, which was
due on February 9, 1999. The records of this Office indicate
that opposer timely filed a combined Section 8 and 15 affidavit,
and that said combined affidavit was accepted and acknowledged,
respectively, by this Office.
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 cited therein.
The Board hereby takes judicial notice of the current status of
opposer’s pleaded registration.
Opposition No. 104859
6
Based on the record before us in this case, we find that
confusion is not likely.
We turn first to a consideration of the similarity or
dissimilarity of the involved marks. While there is an
obvious similarity in that both marks include the letter
“F”; there are also obvious differences, specifically that
opposer’s mark consists of very sharp, thin, straight lines
forming the letter “F” within a perfect circle, whereas
applicant’s mark is a very thick-lined rough approximation
of a circle or an oval or the letter “O” with a similarly
rough-hewn, thick-lettered “F” contained therein. The
letter “F” could perhaps be spoken by consumers. “However,
the spoken or vocalizable element of a design mark, taken
without the design, need not of itself serve to distinguish
the goods. The nature of stylized letter marks is that they
partake of both visual and oral indicia, and both must be
weighed in the context in which they occur.” In re
Electrolyte Laboratories Inc., 913 F.2d 930, 16 USPQ2d 1239,
1240 (Fed. Cir. 1990).
The similarity or dissimilarity of some marks in
appearance and commercial impression ultimately comes down
to the “eyeball test.” This is explained by J. Thomas
McCarthy, at 2 McCarthy, McCarthy on Trademarks and Unfair
Competition, §23:25 (4th ed. 1999) as follows (footnote
omitted):
Opposition No. 104859
7
Because a picture is worth a
thousand words, there is little in the
way of guidelines to determine the
degree of visual similarity which will
cause a likelihood of confusion of
buyers. Obviously, for picture and
design marks (as opposed to word marks),
similarity of appearance is controlling.
There is no point in launching into a
long analysis of the judicial pros and
cons regarding visual similarity of
marks. Regarding visual similarity, all
one can say is ‘I know it when I see
it.’”
The stylization of applicant’s mark is distinctly
different from that of opposer’s mark. Moreover, opposer
did not submit any evidence that its mark appears directly
on the jewelry parts or, if so, that its mark remains
visible to the purchasers of finished jewelry items. We
find that these marks are not similar in appearance and
commercial impression. See Franklin Mint Corporation v.
Master Manufacturing Company, 667 F.2d 1005, 212 USPQ 233
(CCPA 1981).
Turning next to a consideration of the similarity or
dissimilarity of the goods, applicant’s goods are handmade,
custom designed jewelry. While there is no testimony or
other evidence explaining opposer’s goods, both parties have
referred to opposer’s “jewelry findings” as parts or
components of finished jewelry items. (opposer’s brief, p.
8; applicant’s brief, p. 5). The burden of proof to justify
that the relationship of the parties’ goods is such that
confusion would be likely rests on the opposer, and
Opposition No. 104859
8
opposer’s sparse record in this case does not meet that
burden. See Chase Manhattan Bank, N.A. v. Life Care
Services Corp., 227 USPQ 389 (TTAB 1985).5
Opposer argues that its goods are components of
finished jewelry products such as those made by applicant;
and that there is a common association between jewelry and
jewelry findings. Opposer submitted several third-party
registrations, all based on use in commerce, to show that
“..it is common for companies to register the same mark for
articles of jewelry and for findings” [opposer’s notice of
reliance under Trademark Rule 2.122(e)].6 This evidence is
entitled to some probative value to the extent that third-
party registrations suggest that the listed goods emanate
from a single source. See In re Albert Trostel & Sons Co.,
29 USPQ2d 1783 (TTAB 1993); and In re Mucky Duck Mustard
Co., Inc., 6 USPQ2d 1467 (TTAB 1988). Further, we
acknowledge that there is a relationship which is obvious in

5 The Board stated in Borg-Warner Chemicals, Inc. v. Helena
Chemical Company, 225 USPQ 222, 224 (TTAB 1983) as follows:
The Board in the past has found no
likelihood of confusion even with respect to
identical marks applied to goods and/or services
used in a common industry where such goods
and/or services are clearly different from each
other and there is insufficient evidence to
establish a reasonable basis for assuming that
the respective goods as identified by their
marks, would be encountered by the same
purchasers. (citations omitted.)
6 We note that one of the third-party registrations does not
include both jewelry and jewelry findings in the identification
of goods (Reg. No. 317,247--“jewelry for personal wear or
adornment, not including watches”).
Opposition No. 104859
9
that component parts of jewelry are an integral part of
finished jewelry. However, there is no rule that the parts
utilized to make the finished product and the finished
product are per se related products within the context of
trademark law. See e.g., In re Albert Trostel, supra
(wherein the Board found no likelihood of confusion between
PHOENIX for leather sold in bulk and PHOENIX for all-purpose
sports bags, luggage, attache cases, portfolio briefcases,
and handbags).
It is true that inasmuch as neither applicant’s
application nor opposer’s registration include any type of
restriction as to trade channels or purchasers, we must
presume that the involved goods are sold in all the normal
channels of trade to the usual classes of purchasers for
such goods. See Canadian Imperial Bank of Commerce, N.A. v.
Wells Fargo Bank, 811 F.2d 1490, 1 USPQ2d 1813 (Fed. Cir.
1987).
Applicant sells finished jewelry to the general public;
whereas, opposer sells component parts of jewelry to those
who assemble and finish pieces of jewelry. In our
consideration of the respective channels of trade and
respective purchasers, we consider the following statements
made by opposer in its brief on the case:
“Jewelry findings are sold to
individuals who assemble and finish pieces
of pieces of jewelry, for example, jewelry
manufacturers, wholesalers, retailers
Opposition No. 104859
10
and/or jewelry designers, who then sell
such jewelry items to jewelry distributors,
manufacturers, wholesalers, retailers, and
the general public. Individuals who make
and sell jewelry, and secure finished and
unfinished goods may encounter both jewelry
of the type encompassed by Applicant’s
identification of goods and [Opposer’s]
jewelry findings...” (brief, p. 9)
“Normal channels of trade for both
parties’ goods include retail stores,
wholesale distributors of jewelry, and any
other location where jewelry is sold and
repaired. Normal purchasers include
jewelry retailers, wholesalers, and others
who design, produce, sell and repair
jewelry.” (brief, p. 10).
Thus, according to opposer, the only common purchasers
are jewelry manufacturers, wholesalers, retailers, and/or
jewelry designers; and these purchasers of opposer’s goods
in turn sell the assembled and finished pieces of jewelry to
others. These potentially common purchasers of both
parties’ goods are knowledgeable about the products in this
field and their sources for such products. Therefore, the
likelihood that the common purchasers would be confused by
the use of these involved marks on the differing goods is
much less than if both marks were encountered by the
ultimate purchasers of applicant’s goods. See In re Albert
Trostel, supra.
Even if two parties conduct business in the same
fields, and even with some of the same companies, the mere
purchase of the goods by those companies does not, by
Opposition No. 104859
11
itself, establish similarity of trade channels or overlap of
customers. See Electronic Design & Sales, Inc. v.
Electronic Data Systems Corp., 954 F.2d 713, 21 USPQ2d 1388
(Fed. Cir. 1998) (reversing a Board finding of likelihood of
confusion between opposer’s registered mark EDS for computer
programming services in, inter alia, the medical field and
applicant’s mark E.D.S. for power supplies and battery
chargers, generally incorporated into medical instruments).
Based on this record, we find that there are generally
separate purchasers and separate channels of trade for
applicant’s and opposer’s respective goods. To whatever
extent there may be a few common purchasers, they are
knowledgeable regarding their sources and would not be
likely to be confused.
Opposer’s argument that its mark is “strong” and thus
is afforded a broader scope of protection is unsupported by
any evidence. See Fossil Inc. v. Fossil Group, 49 USPQ2d
1451 (TTAB 1998). Cf. Kenner Parker Toys Inc. v. Rose Art
Industries Inc., 963 F.2d 350, 22 USPQ2d 1453 (Fed. Cir.
1992).
The absence of any actual confusion is not a crucial
factor to our decision. The absence of confusion is not
surprising given the differences between the marks, and the
separate channels of trade to different purchasers.
Opposition No. 104859
12
Finally, the Trademark Act does not speak in terms of
remote possibilities of confusion, but rather, the
likelihood of such confusion occurring in the marketplace.
Our primary reviewing court has stated that more than a mere
possibility of confusion must be shown; instead, there must
be demonstrated a probability or likelihood of confusion.
See Electronic Design & Sales Inc. v. Electronic Data
Systems Corp., supra, quoting from Witco Chemical Company,
Inc. v. Whitfield Chemical Company, Inc., 418 F.2d 1403, 164
USPQ 43 (CCPA 1969) as follows: “We are not concerned with
mere theoretical possibilities of confusion, deception, or
mistake or with de minimis situations but with the
practicalities of the commercial world, with which the
trademark laws deal." See also, Triumph Machinery Company
v. Kentmaster Manufacturing Company Inc., 1 USPQ2d 1826
(TTAB 1987).
We conclude that prospective customers for applicant’s
goods are not likely to believe that applicant’s goods
emanate from the same source as opposer’s goods, nor that
they are approved or sponsored by opposer, nor that
applicant’s business is the business of, or is associated
with opposer. That is, under the du Pont test, we conclude
that confusion is unlikely in this case.
Opposition No. 104859
13
Decision: The opposition is dismissed.
E. W. Hanak
B. A. Chapman
D. E. Bucher
Administrative Trademark Judges,
Trademark Trial and Appeal Board