Mayer / Berkshire Corp.v.Noe-Equl Hosiery Corp.

Trademark Trial and Appeal Board

Apr 6, 1999

No. 91100060 (T.T.A.B. Apr. 6, 1999)

Paper No. 25
DEB
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB APRIL 6, 99
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
_____
Trademark Trial and Appeal Board
______
Mayer/Berkshire Corporation
v.
Noe-Equl Hosiery Corporation
_____
Opposition No. 100,060
to application Serial No. 74/626,075
filed on January 26, 1995
_____
Glenn Mitchell of Fross Zelnick Lehrman & Zissu, P.C. for
Mayer/Berkshire Corporation.
Donald C. Casey of Law Offices of Donald C. Casey for
Noe-Equl Hosiery Corporation.
______
Before Hanak, Walters and Bucher, Administrative Trademark
Judges.
Opinion by Bucher, Administrative Trademark Judge:
Noe-Equl Hosiery Corporation filed an application to
register the mark EBONIQUE on the principal register for
Opposition No. 100,060
2
“hosiery, pantyhose, and socks.”1 Mayer/Berkshire
Corporation filed a timely notice of opposition on December
15, 1995. As grounds for opposition, opposer asserted
prior use of the registered trademark EBONY RICH for
"pantyhose”2 and EBONY SUPREME for “pantyhose and hosiery.”3
Opposer asserted that it sells nearly identical items of
hosiery and that applicant's mark, as applied to
applicant's goods, so resembles opposer's marks that
confusion is likely under Section 2(d) of the Lanham Act.
Opposer also contends that the adoption and use of this
mark violates the terms of a since-terminated license
agreement between the parties. Finally, opposer contends
the timing of applicant’s filing of this trademark
application and the continuation of identical packaging
from applicant’s use as licensee of EBONY SUPREME to
EBONIQUE call into question applicant’s good faith adoption
of the EBONIQUE trademark.
Applicant's answer denied that confusion is likely.
The answer contends that opposer has abandoned its use of

1 Serial No. 74/626,075, in International Class 25, filed
January 26, 1995, based upon an allegation of a bona fide
intention to use the mark in commerce.
2 Registration No. 1,235,538, issued on the Supplemental
Register on April 19, 1983; §8 affidavit accepted.
3 Registration No. 1,887,209, issued on the Principal
Register on April 4, 1995, filed on November 19, 1991.
Opposition No. 100,060
3
EBONY SUPREME4. Then in two arguments made for the first
time in its brief, applicant argues that opposer is
actually estopped from bringing this opposition due to a
consent agreement between opposer and a third party,
Johnson Publishing Company, Inc., and that the instant
opposition should be dismissed as not being properly before
this Board because of an arbitration clause in the license
agreement.5
A trial was conducted and legal briefs have been
filed, but neither party requested an oral hearing.
The record includes the application of Noe-Equl
Hosiery Corporation, the discovery deposition, with
exhibits, of Mr. Arnold Bookoff, president of Noe-Equl
Hosiery Corporation, relied upon by opposer, applicant’s
discovery responses relied upon by opposer, opposer’s

4 “ 7. Upon Information and belief, Applicant alleges that
Opposer does not use the mark EBONY SUPREME and, thus, has
abandoned it.” (Applicant’s “Answer to Notice of Opposition,
p.2). While Applicant continues through its brief at trial to
argue EBONY SUPREME has been abandoned, we cannot entertain this
as an affirmative defense inasmuch as Applicant has not filed a
counterclaim to cancel that registration.
5 “ARGUMENTS:
I. Either Opposer has not been legally damaged and has no
standing to bring this action, or Opposer is estopped
to assert a likelihood of confusion based on its prior
agreement with Johnson Publishing Company.
II. This Opposition should be dismissed as merely a
subterfuge to avoid a prior contractual arbitration
agreement between Opposer and applicant.”
[Applicant’s Answer Brief, pp. 5,8].
Opposition No. 100,060
4
discovery responses relied upon by applicant,6 and certified
copies of the two relevant registrations of opposer for
hosiery and pantyhose. In addition, opposer submitted
notices of reliance on excerpts from the December 1996
issue of the Accessories magazine. The excerpts are
listings of trademarks in the accessories industry.
Arbitration Clause of Terminated License Agreement
Applicant argued at the time of the filing of briefs
in the instant case that opposer is precluded from bringing
this opposition due to the existence of an arbitration
clause in the now-terminated license agreement.7 On this
matter, we agree with opposer that inasmuch as this
argument was made for the first time so late in this
proceeding, we will not consider whether it would be well
taken if timely pleaded or tried by the parties. We do
find that applicant has submitted to the jurisdiction of
this Board in this matter by fully trying this case before
the Board prior to raising this issue.

6 Applicant’s reliance on this discovery also brought into
evidence two exhibits discussed herein, namely, the trademark
license agreement between opposer and applicant, and the third-
party agreement between opposer and Johnson Publishing Co. [See
more about this agreement at footnote 24].
7 See Applicant’s Argument II, footnote 5, supra, and
Applicant’s Answer Brief (final trial brief), p. 8].
Opposition No. 100,060
5
ISSUE: Likelihood of Confusion
The sole issue before us is whether confusion is
likely. Priority is not in issue with respect to the marks
and goods shown therein in view of opposer’s valid and
subsisting registrations. See King Candy Co. v. Eunice
King’s Kitchen, 496 F.2d 1400, 182 USPQ 108 (CCPA 1974).
In the course of rendering this decision, we have
followed the guidance of In re E.I. du Pont DeNemours &
Co., 476 F.2d 1357, 1362, 177 USPQ 563, 567-68 (CCPA 1973),
that sets forth the factors which, if relevant, should be
considered in determining likelihood of confusion.
This evaluation leads us to conclude that applicant’s
mark, "EBONIQUE," as applied to applicant’s hosiery and
pantyhose, so resembles opposer’s "EBONY RICH" and "EBONY
SUPREME" marks for hosiery and pantyhose that confusion is
likely.
The parties’ goods are substantially identical
The “hosiery” and “panty-hose” items identified in the
application are identical to the same goods recited in both
of opposer’s pleaded registrations. Furthermore, the
evidence establishes that all relevant goods sold (or
intended to be sold) under these respective marks are sheer
hosiery directed to a discrete niche market. Applicant has
Opposition No. 100,060
6
recently sold under the mark EBONIQUE, similar, if not
identical goods, to those covered by opposer’s license. In
fact, for almost three years, applicant was opposer’s
exclusive licensee for these EBONY SUPREME hosiery items
which applicant targeted to African American women.8
Applicant has distributed sheer pantyhose having the same
characteristics (e.g., including size and denier) at
different times in substantially identical packaging under
both marks -- “EBONY SUPREME,” as opposer’s licensee, and
more recently, “EBONIQUE.”
Similarities of Marks
The word “Ebony” is the dominant portion of
registrant’s two claimed trademarks -- EBONY RICH and EBONY
SUPREME. The words “Rich” and “Supreme” are adjectives
modifying the word “Ebony.” In each of these marks, this
second word is merely descriptive, as both are laudatory
terms touting the quality of the goods. Similarly, “Ebony”
is highly suggestive in relation to these particular goods.9
Thus, we find the word “EBONY” to be the dominant portion
of each of opposer’s marks. Applicant’s mark, EBONIQUE,

8 Bookoff Deposition, pp. 21-23, 30.
9 We note, for example, that “EBONY RICH” is registered on
the Supplemental Register.
Opposition No. 100,060
7
uses the same root word, EBONY, and adds the suffix, “IQUE”
or “QUE,”10 while dropping the letter “Y.”11 We agree with
opposer that the “EBONY” portions of opposer’s marks and
the EBONI… portion of applicant’s mark are identical in
sound and substantially similar in appearance.
Trade Channels
Since the respective identifications of goods are
unrestricted, we must assume that the parties’ goods travel
in the same channels of trade. Furthermore, the evidence
in this case indicates that the trade channels for the
parties’ respective goods will, in fact, overlap. For
purposes of distribution, applicant appears to have in
place a group of wholesalers and retail chains12 it has
cultivated over a period of decades. This clearly includes
one national supermarket chain, Safeway, to which applicant
has distributed sheer hosiery throughout the Washington DC
and Baltimore areas. According to the testimony of

10 Mr. Bookoff testified that in the mid-90’s, he and an
unnamed secretary collaborated in coming up with a new mark. He
settled on EBONIQUE because he wanted something that sounded
upscale, or “boutique-ish.” [Bookoff Deposition, pp. 42-49,
emphasis supplied].
11 If one were to add the “…IQUE” suffix to the word “EBONY,”
under the usual expectations of the English language, most of us
would anticipate that the “Y” would be dropped.
12 Bookoff Deposition, pp. 32-37.
Opposition No. 100,060
8
applicant’s president, when applicant was opposer’s
licensee, Safeway was a primary distribution channel for
EBONY SUPREME. Similarly, applicant’s president indicated
that Safeway would clearly continue to serve as such for
EBONIQUE goods.13
Conditions of Sale
While the record indicates that the parties’ goods are
in the medium price range among all hosiery,14 we point out
that there is no limitation in opposer’s registrations or
in applicant’s application as to the type or quality of the
pantyhose and hosiery. However, applicant’s president
himself admits that women often make an impulse purchase of
pantyhose based largely upon recognition of familiar trade
dress.15 Accordingly, on a “conditions of sale” continuum,
extending from sophisticated professionals buying expensive
items all the way to “impulse purchases” made by everyday
consumers, arguably the woman picking up a pair of

13 Bookoff Deposition, pp. 37, 60-61, 102-103.
14 Applicant’s president testified that all its hosiery is at
the midpoint on the range of retail price points (approximately
$1.50 to $4.00). The possible variations in the panty portion of
the goods noted above [see footnote 8], would, if anything, tend
to push the EBONIQUE hosiery to a somewhat lower retail price.
(Bookoff Deposition, pp. 39-41, 82, 105-106.)
15 Bookoff Deposition, pp. 110.
Opposition No. 100,060
9
pantyhose for $1.50 in an aisle of the local supermarket
falls toward the latter end of the spectrum.
Strength of Mark
Applicant argues that EBONY is a weak formative
deserving of limited protection.16 At the same time,
however, applicant’s president admits he does not know of
any other hosiery manufacturers currently using the “EBON-”
formative.17 Applicant’s answer in this opposition claims
that there are thirty-five pending trademark applications
or federal trademark registrations having the EBONY
formative.18 However, during this trial, applicant has
failed to introduce into evidence a single third-party
registration or evidence of third-party usage of marks
containing the word EBONY in connection with the same or
similar goods. Presumably if the federal trademark
registry were replete with third-party composite marks
including the term EBONY that had been registered for

16 Applicant’s “Answer to Notice of Opposition,” ¶¶10-11,
March 1, 1996.
17 Q: [Opposer’s Counsel] “Are you aware of any other marks
for hosiery products that include the letters E-B-O-N as part of
it?
A: [Arnold Bookoff, Applicant’s President] “No.”
Bookoff Deposition, pp. 119.
18 Applicant’s Answer to Notice of Opposition, ¶11.
Opposition No. 100,060
10
goods/services closely related to hosiery, applicant would
have brought those registrations to the Board’s attention.
Third-Party Consent Agreement
Applicant has made of record a consent agreement
between opposer and a third party, Johnson Publishing
Company, which formed the basis for the conclusion of a
cancellation proceeding not involving applicant.19

19 In April 1994, a cancellation petition before this Board
[Cancellation No. 21,469, Johnson Publishing Company, Inc.
(Petitioner) v. Mayer/Berkshire Corporation (Registrant)] was
dismissed WITH PREJUDICE as to the specific abandonment claim
pleaded and WITHOUT PREJUDICE in all other regards. Relevant
portions of the agreement on which the “Stipulation for
Dismissal” was based, are reproduced as follows:
“WHEREAS, Johnson is the owner of the mark EBONY for
magazines, books and other publications, for cosmetics,
toiletries and perfumes, for clothing of various types, and
for entertainment services of various types, and is the
owner of numerous variations therof, and has applied to
register the mark EBONY for a house mark for clothing,
which mark is the subject of a pending application in the
U.S. Patent and Trademark Office, serial number 74/020,396;
and
WHEREAS, the U.S. Patent and Trademark Office has
refused registration of Johnson’s application for EBONY on
the basis of Mayer/Berkshire’s registration for the mark
EBONY RICH, and has refused registration of
Mayer/Berkshire’s application for EBONY SUPREME on the
basis of Johnson’s application for EBONY; …”
WHEREAS, Johnson has petitioned to cancel
Mayer/Berkshire’s Registration No. 1,235,538 for EBONY RICH
on the ground of abandonment, Cancellation No. 21,469; and
WHEREAS, the parties believe that their respective
marks may continue to coexist, provided that the parties
maintain use of their respective marks in accordance with
this Agreement;
NOW, THEREFORE, the parties agree as follows:
(Note continued on the following page Å )
Opposition No. 100,060
11
Applicant contends that this agreement precludes opposer
from "using or registering any other mark confusingly
similar to the word ’Ebony’ for hosiery or related
products, and that use and registration of ’Ebony’ for
hosiery by another would not be likely to create
confusion." (Applicant’s brief, p. 2.) We note that the
facts of the Johnson Publishing v. Mayer/Berkshire case are
not before us. However, based solely upon the terms of the
consent agreement that have been made a part of this
record, we find applicant has overstated the obligations
placed upon opposer as a result of this third-party
agreement. Noting their long coexistence without
confusion, the parties therein agreed only that their
respective marks could continue to coexist provided that
they used their marks in accordance with the limitations
set out in the agreement. In this context, opposer agreed

(footnote from prior page)
1. Mayer/Berkshire may use and register its marks
EBONY RICH and EBONY SUPREME for pantyhose… (the
“Mayer/Berkshire goods”).
2. Mayer/Berkshire shall not adopt, use or seek to
register any other mark with the term EBONY or any
similar variations (e.g., EBENE, EBONE, etc.) for
the “Mayer/Berkshire goods,” or any other hosiery
or related products…
[Agreement of March 10, 1994, between Johnson
Publishing Company, Inc. and Mayer/Berkshire
Corporation, Exhibit G, on which opposer
submitted notice of reliance in the instant case
on November 24, 1997.]
Opposition No. 100,060
12
not to "adopt, use or seek to register any other mark with
the term EBONY or any similar variations. (E.g., EBENE,
EBONE, etc.) for [the instant opposer’s goods] or any other
hosiery or related products ..." This agreement does not
preclude opposer herein from preventing likelihood of
confusion between its marks and the marks of third parties.
Further, the above-quoted statement from the agreement is
clearly intended to be understood in the context of the
specific facts and terms contained in the agreement. Thus,
it does not evidence any admission by opposer that there is
no likelihood of confusion between its marks and third
party marks that include variations of EBONY in connection
with hosiery.
Actual Confusion / Trade dress
There is no evidence in the record of actual
confusion. However, this is hardly relevant as this
application to register EBONIQUE is based on intent to use,
and applicant’s president has characterized the volume of
sales under the mark EBONIQUE as “insignificant” and “less
than a thousand dollars.”20

20 Bookoff Deposition, pp. 61-62.
Opposition No. 100,060
13
As noted, Mr. Bookoff has admitted these are low-cost,
impulse items. Additionally, he states that packaging is
often more important than trademarks. Yet applicant
indicates it intends to sell its goods in packaging
identical to the EBONY SUPREME packaging. Granted, the
trade dress herein is not part of the registered marks or
the mark sought to be registered. Regardless of
applicant’s assertion that it owns a copyright for the
relevant trade dress,21 to the extent applicant uses
identical packaging with EBONIQUE as it used on EBONY
SUPREME, it certainly adds to the likelihood of confusion
in this case.
…Ordinarily, for a word mark we do not look to
the trade dress, which can be changed at any
time (cite omitted). But the trade dress may
nevertheless provide evidence of whether the
word mark projects a confusingly similar
commercial impression. Applicant's labels
support rather than negate that of which
opposer complains…
Specialty Brands, Inc. v. Coffee Bean Distributors, Inc., 748
F.2d 669, 223 USPQ 1281 (Fed. Cir. 1984).
Thus, given the similarities of these marks and the
identity of the goods, if applicant markets these goods in

21 We make no finding regarding such copyright ownership
herein. However, we note that, by the terms of the license
agreement between opposer and applicant, applicant was required
to submit all packaging designs and advertising to opposer for
approval.
Opposition No. 100,060
14
packages having identical trade dress, as contemplated, the
likelihood of confusion increases.
License Agreement
What exactly should be the impact of paragraph 11 of
the now expired license agreement of May 8, 1992 on our
determination of likelihood of confusion? This agreement
covered the mark EBONY SUPREME where opposer was the
licensor and applicant was the licensee. Opposer’s rights
are made clear from the following provisions of this
license agreement:
11. OWNERSHIP OF TRADEMARK Licensee hereby
acknowledges the ownership of the EBONY SUPREME mark
by Licensor and agrees not to contest such ownership,
or the ownership by Licensor of the marks EBONY RICH
and LADY SUPREME. All use of the EBONY SUPREME mark
by Licensee shall inure to the benefit of Licensor.
All rights in the EBONY SUPREME mark other than those
specifically granted in this Agreement are reserved by
Licensor for its own use. Licensee shall not, either
during or after the term of this Agreement, adopt, use
or seek to register any trademark incorporating the
word EBONY or the word SUPREME without the prior
written permission of Licensor. [emphasis supplied].
Given our disposition of this case, we find it
unnecessary to determine whether this provision provides a
separate ground for this opposition. However, considering
paragraph 11 of this agreement in the context of our
determination of likelihood of confusion, it would be
illogical to suggest that this contract language in any way
Opposition No. 100,060
15
enlarges applicant’s rights in the mark EBONIQUE beyond
that which it would have had as an unrelated, third party
(i.e., under the common law and/or under Section 2(d) of
the federal Trademark Act). Rather, the licensee
(applicant herein), who is certainly a willing contract
partner in 1992, promised even beyond the term of this
license, not to “adopt, use or seek to register” any
trademark incorporating the word “EBONY.” In this regard,
applicant states in its brief (p. 6):
…The Applicant’s license agreement merely
specified that upon termination, under
paragraph 11, Applicant would not adopt, use
or seek to register any mark incorporating
the marks “Ebony” or “Supreme” but there was
no prohibition in that agreement of the use
of any confusingly similar version of those
marks. Applicant therefore did not agree
not to adopt or use any confusingly similar
mark in that license agreement.
Applicant’s argument is not well taken as we are compelled
in this proceeding to determine the question of likelihood
of confusion.
Under the “similarities of the marks” prong of the
traditional §2(d) likelihood of confusion analysis, we have
concluded that these two formulations -- EBONY and the
EBONI… portion of EBONIQUE –- are similar in sound and
appearance. If applicant had considered formulations like
EBONY-IQUE, EBONYIQUE, or EBONIQUE, it seems like sophistry
Opposition No. 100,060
16
to suggest that the first two might violate the
understanding of the license (to say nothing of the rules
of the English language), while the third is acceptable
under the parties’ expired contract.
Intent
Mr. Arnold Bookoff, President of applicant, sent a
letter to opposer on February 24, 1995, notifying opposer
of his intention to terminate the license.22 Opposer argues
that the fact applicant filed the instant ITU application
four weeks prior to giving notice of termination of the
contract reflects bad faith, i.e., that applicant’s actions
are probative of an intent to trade on opposer’s goodwill
in its trademark. We find the record in this case
insufficient to warrant a conclusion of bad faith on
applicant’s part. However, applicant clearly intended to
continue selling the same type of goods through identical

22 Section 18.1 of the license agreement speaks to TERMINATION
BY LICENSEE: “Licensee shall have the right to terminate this
Agreement for any reason, upon one hundred twenty (120) days
prior written notice to Licensor.”
The contents of Mr. Bookoff’s letter of February 24, 1995
are as follows: “I decided not to renew license agreement for
Ebony Supreme after long deliberation. I appreciated courtesies
extended to me and thank you for all past favors.” Opposer’s
Exhibit 3. The parties do not dispute the propriety of
applicant’s termination of the license agreement in accordance
with the explicit terms of that agreement.
Opposition No. 100,060
17
trade channels –- planning to use the same packaging design
as used by applicant when it was opposer’s licensee. Under
these circumstances, applicant had an extra responsibility,
upon choosing a new mark, to avoid a likelihood of
confusion with opposer’s pre-existing registered marks.
Decision
Therefore, in view of the substantial similarity
between the parties’ marks and goods, and the identity of
the trade channels, we find that confusion is likely in
this case.
Finally, "[a]ny doubts about likelihood of confusion …
must be resolved against applicant as the newcomer." In re
Hyper Shoppes (Ohio), Inc., 837 F.2d 463, 464-65, 6 USPQ2d
1025, 1026 (Fed. Cir. 1988). See also Crown Radio Corp. v.
Soundscriber Corp., 506 F.2d 1392, 1393, 184 USPQ 221, 223
(CCPA 1974) (doubt resolved against newcomer in
cancellation proceeding).
Opposition No. 100,060
18
Accordingly, the opposition is hereby sustained and
the application for EBONIQUE is refused.
E. W. Hanak
C. E. Walters
D. E. Bucher
Administrative Trademark
Judges, Trademark Trial and
Appeal Board