Message in a Bottle, Inc. f/k/a Gold Shells, Inc.v.Keith Cangiarella

Trademark Trial and Appeal Board

Jun 15, 2010

No. 91162780 (T.T.A.B. Jun. 15, 2010)

Mailed:
June 15, 2010

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

Message in a Bottle, Inc. f/k/a Gold Shells, Inc.

v.

Keith Cangiarella
_____

Opposition No. 91162780
to application Serial No. 78229875
filed on March 25, 2003
_____

Peter H. Smith, Esq. for Message in a Bottle, Inc. f/k/a
Gold Shells, Inc.

Keith Cangiarella, pro se.
_____

Before Seeherman, Cataldo and Taylor, Administrative
Trademark Judges.

Opinion by Seeherman, Administrative Trademark Judge:

This proceeding involves an opposition initially
brought by Gold Shells, Inc., which company, during the
course of this proceeding, changed its name to Message in a
Bottle, Inc. Opposer opposes the registration of Keith
Cangiarella’s application to register MESSAGE IN A BOTTLE in
typed form as a mark for goods identified as:
Novelty, favor, and souvenir bottle
[sic] containing messages and greetings,
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Opposition No. 91162780
2
invitations, promotional materials of
others, and advertising materials of
others; Kits comprised of bottles, paper
for creating promotional messages,
advertising messages, greetings,
messages and invitations and packaging
and boxes for mailing.

The application was filed on March 25, 2003, is based on use
in commerce (Section 1(a) of the Trademark Act), and claims
first use on March 10, 1998 and first use in commerce on
June 10, 1998.
One of the grounds for the opposition is likelihood of
confusion, in connection with which opposer has alleged
ownership of Registration No. 2243269, issued May 4, 1999,
for MESSAGE IN A BOTTLE in typed form (with MESSAGE
disclaimed), from an application filed January 6, 1997, for
“receiving communications from others, recording such
communications in written or printed form, and transmitting
such communications to others.”1 Mr. Cangiarella has
counterclaimed to cancel this registration. Although the
roles of the parties are reversed in connection with the
opposition and the counterclaim for cancellation, for ease
of reference we will use the term “opposer” to refer to
Message in a Bottle, Inc. (or, as appropriate, it and its
predecessor-in-interest), and we will refer to Mr.
Cangiarella as “applicant.”

1 Section 8 affidavit accepted; Section 15 affidavit received;
renewed.

Opposition No. 91162780
3
In its notice of opposition, in addition to claiming
ownership of its pleaded registration, opposer has alleged
that the registration was assigned to opposer on October 5,
2004 by its predecessor-in-interest, Roger Rojas, who is
opposer’s Chief Executive Officer; that since October 16,
1999, opposer or its predecessor has continuously used the
MESSAGE IN A BOTTLE mark in connection with the services
identified in the registration and for novelty, favor and
souvenir bottles containing messages and greetings; that
opposer has used or has made constructive use of its mark
through the filing of its underlying application since prior
to any date on which applicant can rely; that because the
marks are identical and the goods and services of the
parties are substantially similar, applicant’s mark so
resembles opposer’s mark as to be likely to cause confusion
or mistake or to deceive; and that
in view of the fact that Applicant’s
mark is identical to Opposer’s
designation, and in view of the
substantially similar nature of the uses
thereof, it is alleged that Applicant’s
mark consists of and comprises matter
that may disparage and falsely suggest a
connection with Opposer, and therefore
is not registrable under Section 2(a) of
the Lanham Act (¶ 5).2

2 Opposer also alleged, as paragraph 6 of the notice of
opposition, that “Opposer is informed and believes and therefore
alleges that Applicant’s application is not supported by actual
use of the mark on the goods described in the application, and
that Applicant’s specimens submitted in support of his
application are not genuine samples of uses of the mark which
have been made in commerce.” Opposer did not refer to such
Opposition No. 91162780
4

In his answer3 applicant has admitted that he did not
use the mark MESSAGE IN A BOTTLE prior to the January 6,
1997 filing date of the application which matured into the
registration claimed by opposer, and asserted, as part of
his counterclaim, that his first use of the mark was March
10, 1998 and his first use in commerce was June 10, 1998.
He otherwise denied the salient allegations of the notice of
opposition. Applicant also asserted various affirmative
defenses, including unclean hands and that opposer lacks
standing, and asserted a counterclaim for cancellation based
on the ground of fraud. The counterclaim consists of eight
pages with 25 numbered paragraphs, and we will not burden
this opinion by reciting all of the allegations.
Essentially, he alleges that the registration pleaded by
opposer was registered to and remains in the name of Roger
Rojas; that during the prosecution of the underlying
application Mr. Rojas intentionally mischaracterized and
misclassified his goods as telecommunications services
instead of goods in order to avoid a potential
descriptiveness refusal and to mislead potential third-party
opposers, including applicant, as to the nature of the

ground in its briefing of the case, and we therefore treat this
ground as waived.
3 At the time applicant filed his answer he was represented by
counsel. His counsel withdrew (with consent) from representation
on May 18, 2006.

Opposition No. 91162780
5
goods; that in filing the Statement of Use in the underlying
application Mr. Rojas made intentionally false statements
regarding the date of first use and the manner and mode of
use with the intent of misleading the Patent and Trademark
Office and/or depriving third parties, including applicant,
of their opportunity to oppose such application; that
opposer’s predecessor made such misleading representations
to avoid a conflict based on applicant’s prior use of the
term MESSAGE IN A BOTTLE; and that Mr. Rojas knew at the
time of filing his application that third parties had rights
in the mark superior to his and, in failing to disclose
these facts to the Patent and Trademark Office, intended to
procure a registration to which he was not entitled.4

4 Applicant also asserted the ground of abandonment in the
counterclaim, alleging that Mr. Rojas knowingly consented to Gold
Shells, Inc. [the prior name of opposer Message in a Bottle,
Inc.,] describing itself as the owner of the mark MESSAGE IN A
BOTTLE since 2003, prior to the date the mark was assigned to
this company; and that after the filing of the application that
matured into the registration sought to be cancelled, Mr. Rojas
abandoned the mark for failure to use it in connection with his
products and services for at least two [sic] years. However,
applicant did not discuss such claims in his trial brief in
support of his counterclaim, listing only fraud as the issue to
be considered in connection with the counterclaim. See
applicant’s brief as plaintiff in the counterclaim, p. 6.
Accordingly, we consider the ground of abandonment to have been
waived. In addition, paragraph 24 of the counterclaim states
that “As alleged by the Opposer in its opposition herein,
Registrant’s [Mr. Rojas’s] mark caused consumers to make a false
connection with Applicant. Registrant’s mark falsely suggests a
connection with Applicant’s mark as barred by Lanham Act §2(a).”
Applicant did not mention a ground of false suggestion of a
connection in his brief, and therefore, to the extent that a
Section 2(a) ground was in fact pleaded, we treat this ground as
having been waived. We also point out that applicant has failed
to prove this claim; paragraph 8 of his own answer states that
“there is a myriad of adoptions and uses of the mark MESSAGE IN A
Opposition No. 91162780
6
Opposer has denied the salient allegations of the
counterclaim in its answer thereto.5
Record and Objections
The record includes the pleadings; the file of the
opposed application and the registration sought to be
cancelled, by operation of Trademark Rule 2.122(b); and the
testimony, with exhibits, of opposer’s witness, Roger Rojas.
Applicant has objected to Exhibits N, U, X, Y and Z, all of
which were submitted during Mr. Rojas’s deposition. With
respect to Exhibit N, he states that it is merely a printed
form signed by Roger and Adriana Rojas, but that there is
nothing in the document to show the authenticity of the date
of the document. The document itself was authenticated by
Mr. Rojas by his testimony. Therefore, the document is
admissible. As for the email communications that comprise
Exhibits U, X, Y and Z, Mr. Rojas also authenticated them
during his testimony deposition. Therefore, they are
admissible. The Board notes applicant’s unsupported comment
that he “doubts the veracity” of this evidence. Such a

BOTTLE,” and applicant states that he does business as “Dream
Weaver Studios.” In view of this, applicant has conceded that
MESSAGE IN A BOTTLE is not applicant’s “persona” and that the
term does not point uniquely to him. See discussion of
requirements to prove a false suggestion of a connection claim,
infra.
5 Opposer also asserted several affirmative defenses, as well as
statements that more fully expanded on its denials of the
allegations in the counterclaim. Because opposer did not address
the affirmative defenses in its brief, we treat them as having
been waived.

Opposition No. 91162780
7
comment goes to the probative value accorded the evidence,
not its admissibility. Applicant’s objections are
overruled.
Opposer has made of record, under a notice of reliance,
copies of certain official records and applicant’s responses
to opposer’s requests for admission and interrogatories.6
Applicant has also submitted two notices of reliance: The
first notice, filed May 27, 2008, made of record opposer’s
responses to applicant’s interrogatories (Ex. A) and
opposer’s responses to applicant’s requests for admission
(Ex. J). See Board order mailed May 17, 2009. Included
with the notice of reliance were documents from the file of
the registration sought to be cancelled (Exhibits H, I, and
a second Ex. J). As noted above, and in footnote 3 below,
the registration file is automatically of record. Finally,
on May 14, 2009, applicant submitted a second notice of
reliance, consisting of documents taken from the file of the
registration sought be cancelled, as well as what applicant
has characterized as printed publications. Again, the

6 Opposer also submitted with its first notice of reliance a
copy of opposer’s pleaded registration. That registration is
automatically of record by virtue of the counterclaim to cancel
that was filed by applicant. Opposer also filed a second notice
of reliance on July 17, 2009 merely stating that, in its position
as defendant in the counterclaim, it would rely on testimony and
evidence previously submitted with its first notice of reliance.
Applicant filed a similar notice of reliance on October 26, 2009.
Such filings were unnecessary; once evidence is properly made of
record, it is of record for all purposes and for use by all
parties.

Opposition No. 91162780
8
registration file is automatically of record, and the
repeated submission of documents from this file are
unnecessary.
Opposer has objected to Exhibits O, U, V, W, X and Y.
Applicant has responded by stating that Exhibit U is
admissible as a printed publication, in that it is an
excerpt from the “Orange County Register,” a daily newspaper
based in Santa Ana, CA. We agree, and this objection is
overruled. As for Exhibits O, V, W and Y, applicant has
addressed only opposer’s relevancy objection, and not
whether the exhibits constitute printed publications. We
find that the business wire and Dun & Bradstreet listings,
Exhibits W, X and Y, are not printed publications as
contemplated by Trademark Rule 2.122(e), and sustain
opposer’s objection to these exhibits.7 As for Exhibits O
and V, they appear to be taken from technical publications,
and therefore the exposure of the articles to the consuming
public for opposer’s and applicant’s goods and services must
be considered limited. The probative value of these
articles is therefore also limited, but they are admissible.
The opposition and the counterclaim have been fully
briefed. In fact, rather than filing a combined brief,
applicant submitted both a brief in opposition to the

7 Even if we had considered these exhibits, they would not
change our decision herein.

Opposition No. 91162780
9
opposer’s trial brief in the opposition and a brief as
plaintiff in the counterclaim, while opposer submitted a
reply brief in support of its opposition and a separate
brief in opposition to the counterclaim, rather than filing
a combined brief. However, because each party’s separate
briefs did not, together, exceed the page limitations for
briefs, see Trademark Rule 2.128(b), we have considered all
six briefs.
Standing
Opposer has submitted evidence that it is the record
owner of a registration for MESSAGE IN A BOTTLE for
“receiving communications from others, recording such
communications in written or printed form, and transmitting
such communications to others.” The application that
resulted in this registration was filed by Roger Rojas on
January 6, 1997, on the basis of intent-to-use, and after
Mr. Rojas filed a Statement of Use on January 28, 1999, the
registration issued to him on May 4, 1999. On July 7, 2003
Gold Shells, Inc. was incorporated in California. Mr. Rojas
and his wife are the sole shareholders of the corporation,
and Mr. Rojas is also the Chief Executive Officer. At the
same time that the business was incorporated, Mr. Rojas
licensed the Trademark MESSAGE IN A BOTTLE (“Trademark”
being defined as the words MESSAGE IN A BOTTLE used either
as a trademark or a service mark) for advertising, marketing
Opposition No. 91162780
10
and sale of products, the license agreement containing a
provision that all goods and services on which the mark is
used conform to the standards established by Mr. Rojas. On
October 5, 2004, Mr. Rojas assigned the registration and
marks (including the mark of a then-pending application, now
abandoned) to Gold Shells, Inc., and this assignment was
recorded at the U.S. Patent and Trademark Office on October
15, 2004. A change of name of Gold Shells, Inc. to Message
in a Bottle, Inc. was recorded at the Office on January 30,
2008.
Although the ownership of a registration of the
identical mark would normally be a sufficient basis to
demonstrate standing, applicant appears to claim that
opposer does not have standing to bring this opposition.
Applicant states that opposer “has its existence derived
from the Articles of Incorporation which bears a date [July
7, 2003] subsequent to the filing date of this application
and whose right to question this application accrued only on
a date subsequent to that on which the cause of action
arose,”8 does “not have a legal competency to question this
application.” Applicant’s brief as defendant in the
opposition, p. 10. It appears from this statement that

8 Applicant states that “The cause of action for filing the
opposition arose when the application of this Applicant for the
registration of his trade mark ‘Message in a Bottle’ was put for
opposition in the official gazette.” Applicant’s brief as
defendant in the opposition, p. 9.
Opposition No. 91162780
11
applicant believes that opposer had to have been in
existence prior to the filing of applicant’s application in
order to challenge the application or, perhaps, that the
pleaded mark and registration had to have been assigned to
opposer at the time that the application was published for
opposition on June 29, 2004.9 That is not correct. Section
13 of the Trademark Act provides that “any person who
believes that he would be damaged by the registration of a
mark” may file an opposition. As noted, opposer is the
record owner of the pleaded registration and was so at the
time it filed the notice of opposition; further, as of July
7, 2003, prior to the publication for opposition of
applicant’s mark and opposer’s filing of its requests for an
extension of time to oppose, opposer was licensed to use the
mark MESSAGE IN A BOTTLE. This is sufficient to show that
opposer had and has a reasonable basis for believing that it
will be damaged by the registration of applicant’s mark, and
that it is not a mere intermeddler. See Lipton Industries,
Inc. v. Ralston Purina Co., 670 F.2d 1024, 213 USPQ 185

9 It is possible that applicant, who is now acting pro se, has
taken this position based on statements made in his answer, which
was prepared by an attorney, and which were based on a belief
that Roger Rojas, and not opposer, was the owner of the
registration. However, in applicant’s response, also prepared by
his attorney, to Interrogatory No. 45, which asked the basis for
applicant’s denying that opposer is the owner of the pleaded
registration, he stated that he “does not presently deny that
Opposer is the owner by way of assignment of [the registration],”
explaining that at the time applicant had approved the draft of
the answer applicant “had no information or belief which would
suggest that such assignment had ever occurred.”
Opposition No. 91162780
12
(CCPA 1982). After considering the evidence and all of
applicant’s arguments, including those not specifically
discussed here, we find that opposer has established its
standing. As for applicant, its standing to bring the
counterclaim to cancel opposer’s registration is established
by the fact that opposer has opposed applicant’s application
on the basis of likelihood of confusion with its
registration.
Counterclaim
Applicant has counterclaimed to cancel opposer’s
pleaded registration. Whether or not opposer may rely on
its registration is crucial to the issue of priority in
connection with opposer’s pleaded ground of likelihood of
confusion, since when an opposer owns a registration
priority is not in issue. See King Candy Company v. Eunice
King’s Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108 (CCPA
1974). Moreover, in this case, opposer’s claim of priority
is dependent on its registration because opposer did not
commence use of its mark until after applicant’s date of
first use. Therefore, we first consider applicant’s
counterclaim to cancel that registration.
Applicant seeks to cancel opposer’s pleaded
registration on the ground of fraud. The fraud that
applicant alleges is that opposer misidentified its services
during the prosecution of its application. More
Opposition No. 91162780
13
specifically, based on applicant’s discussion of the
difference between a trademark and a service mark, it
appears that applicant is asserting that opposer’s
activities are more in the nature of offering goods rather
than services, and that opposer did not advise the Office
that it was transmitting messages using “novelty, favor and
souvenir bottles.” Request for admission No. 12. Applicant
also states that opposer is not rendering
“telecommunications” services and, in his response to
Interrogatory 26, which asked for applicant’s basis for
denying opposer’s registration was valid, stated that
“applicant has no information that would suggest that
Opposer or its predecessor has ever engaged in any services
that could properly or legally be characterized as
telecommunications services or which would otherwise be
properly classified within International Class 38.”
In the recently decided In re Bose Corp., 530 F.3d
1240, 91 USPQ2d 1938 (Fed. Cir. 2009), the Court reiterated
the requirements for proving fraud:
A third party may petition to cancel a
registered trademark on the ground that
the “registration was obtained
fraudulently.” 15 U.S.C. §1064(3).
“Fraud in procuring a trademark
registration or renewal occurs when an
applicant knowingly makes false,
material representations of fact in
connection with his application.”
Torres v. Cantine Torresella S.r.l., 808
F.2d 46, 48 (Fed. Cir. 1986). A party
seeking cancellation of a trademark
Opposition No. 91162780
14
registration for fraudulent procurement
bears a heavy burden of proof. W.D.
Byron & Sons, Inc. v. Stein Bros. Mfg.
Co., 377 F.2d 1001, 1004 (CCPA 1967).
Indeed, “the very nature of the charge
of fraud requires that it be proven ‘to
the hilt’ with clear and convincing
evidence. There is no room for
speculation, inference or surmise and,
obviously, any doubt must be resolved
against the charging party.” Smith
Int'l, Inc. v. Olin Corp., 209 USPQ
1033, 1044 (TTAB 1981).

As noted previously, the services in opposer’s
registration are identified as “receiving communications
from others, recording such communications in written or
printed form, and transmitting such communications to
others.” The crux of applicant’s position is that opposer
never rendered, or intended to render, “telecommunications
services,” which is the class heading for Class 38, as
listed in the international schedule of classes of goods and
services. See 37 C.F.R. §6.1. Applicant asserts that the
main component of opposer’s business is tangible goods, and
therefore opposer’s predecessor made a false statement in
characterizing his offerings as “services” and seeking
registration of a service mark in Class 38. Applicant also
appears to assert that, even if opposer’s activities
constituted a service, it would not be a telecommunications
service. Opposer explains, through the testimony of Mr.
Rojas, that at the time its underlying application was filed
the class heading was “Communications,” not
Opposition No. 91162780
15
“Telecommunications,” a statement that applicant disputes
(“Class 38 always had read as ‘telecommunication’ and never
has it read as ‘communication,’” brief as plaintiff in the
counterclaim, p. 16, although applicant has submitted no
evidence to support his statement).
As noted above, in order to prove fraud, a plaintiff
must show that a statement was false, that the falsity was
intentional, and that the false statements were material to
obtaining or maintaining a registration. Moreover, fraud
must be proven to the hilt. Applicant’s claims about the
misclassification of opposer’s services, even if true, fall
far short of establishing fraud. There is “a material legal
distinction between a ‘false’ representation and a
‘fraudulent’ one, the latter involving an intent to deceive,
whereas the former may be occasioned by a misunderstanding,
an inadvertence, a mere negligent omission, or the like.”
In re Bose Corp., supra, 91 USPQ2d at 1940, quoting Kemin
Indus., Inc. v. Watkins Prods., Inc., 192 USPQ 327, 329
(TTAB 1976). The explanatory notes for Class 38, even
today, state that “Class 38 includes mainly services
allowing at least one person to communicate with another by
a sensory means. Such services include those which …
transmit messages from one person to another.” Opposer has
submitted evidence that his activities involve receiving
messages from a party, transcribing the message on special
Opposition No. 91162780
16
paper, putting the message in a bottle and then sending it
to another party. Even if such services do not fall in
Class 38 (and applicant has not proved that they do not),
given the nature of opposer’s services and the explanation
of what services fall in Class 38, it cannot be said that
opposer’s predecessor made a knowingly false statement in
designating Class 38 when he filed the application. In
fact, his testimony that the heading of this class was
merely “Communications” at the time he filed the application
supports his good faith belief that his services belonged in
Class 38.
Nor can we find that the classification of the services
in Class 38 was material to the allowance of the
application. As applicant himself has recognized, opposer’s
specimen, a direct mail advertisement, submitted with the
Statement of Use, explains the nature of opposer’s services:
Our service is sending art quality
greetings in unique and distinctive
bottles to that someone special. You
let us know the communication you want
to send, and who you want it sent to,
and we will record your communication in
beautifully hand-written form, insert it
in a bottle, and transmit it for you.

The examining attorney thus was well aware of the
nature of opposer’s services at the time the mark was
approved for registration in Class 38. If the examining
attorney believed that Class 38 was not acceptable, he could
have changed the classification. See TMEP § 1401.03(b): If
Opposition No. 91162780
17
the class number designated by an applicant is incorrect,
the Office will change the classification either during or
prior to examination.
Applicant’s claim that opposer’s predecessor
misdesignated the class for his application is part of
applicant’s larger point that opposer is not rendering
services at all, but is selling goods. This position is
based on his claim that selling bottles--goods--is the
primary object of opposer’s activities, and not services.
However, a business activity may be considered a service
even though it involves the sale of goods. For example,
retail store services for the sale of clothing is a service,
even though the primary object of the activity is to sell
goods, i.e., clothing. Thus, applicant has not proved that
opposer’s statements in the application and in the Section 8
affidavit that it was rendering services were false, much
less that the statements were intentionally false. We also
point out that opposer’s specimen, quoted above, clearly
states that opposer’s service involves sending “unique and
distinctive bottles.” The specimen submitted with opposer’s
Section 8 affidavit also emphasizes that opposer offers
bottles as part of its service:
the largest selection of decorative
bottles in the gift bottle industry so
that you’ll always have the appropriate
bottle for any occasion.

Opposition No. 91162780
18
The examiners who reviewed these papers were therefore aware
of the nature of opposer’s activities, and considered them
to be a service. Accordingly, we find that applicant has
failed to show that any false statements were made in
obtaining or maintaining the registration, or that the
examiners were misled as to the nature of opposer’s
activities.
After considering all the evidence of record, as well
as the arguments of the parties, including those not
specifically discussed herein, we find that applicant has
failed to prove that opposer (or its predecessor) committed
fraud in obtaining or maintaining its registration. The
counterclaim to cancel opposer’s registration is dismissed.
Opposition
Issues
Priority and Likelihood of Confusion
Because we have dismissed applicant’s counterclaim to
cancel opposer’s pleaded registration, opposer may rely on
that registration, and therefore priority is not in issue.
See King Candy Company v. Eunice King’s Kitchen, Inc.,
supra. Moreover, opposer is entitled to rely on the filing
date of the application that issued as that registration.
That date, January 6, 1997, is earlier than any date on
which applicant may rely; applicant did not submit any
evidence pertaining to his use of the mark, and he does not
Opposition No. 91162780
19
claim use earlier than the filing date of opposer’s
underlying application, stating in paragraph 2 of his
counterclaim that the first use date of his mark in
connection with his goods and services is March 10, 1998 and
his first use in commerce is June 10, 1998.
With respect to the issue of likelihood of confusion,
our determination is based on an analysis of all of the
probative facts in evidence that are relevant to the factors
set forth in In re E. I. du Pont de Nemours & Co., 476 F.2d
1357, 177 USPQ 563 (CCPA 1973). See also, In re Majestic
Distilling Co., Inc., 315 F.3d 1311, 65 USPQ2d 1201 (Fed.
Cir. 2003).
The first of these factors is the similarity of the
marks. The marks are identical, a fact that applicant
concedes. This du Pont factor strongly favors a finding of
likelihood of confusion. Where the applicant's mark is
identical to the opposer’s mark, as it is in this case,
there need be only a viable relationship between the
respective goods or services in order to find that a
likelihood of confusion exists. In re Opus One Inc., 60
USPQ2d 1812, 1815 (TTAB 2001).
Here opposer has certainly shown that relationship. It
is not necessary that the goods or services of applicant and
opposer be similar or competitive, or even that they move in
the same channels of trade, to support a holding of
Opposition No. 91162780
20
likelihood of confusion. It is sufficient that the
respective goods or services are such that they would or
could be encountered by the same persons under circumstances
that could, because of the similarity of the marks, give
rise to the mistaken belief that they originate from the
same producer. See In re International Telephone &
Telegraph Corp., 197 USPQ 910, 911 (TTAB 1978). Further,
likelihood of confusion must be found if there is likely to
be confusion with respect to any item that comes within the
identification of goods in the application. Tuxedo
Monopoly, Inc. v. General Mills Fun Group, 648 F.2d 1335,
209 USPQ 986, 988 (CCPA 1981).
Opposer’s services are identified as “receiving
communications from others, recording such communications in
written or printed form, and transmitting such
communications to others”; applicant’s goods are identified
as “novelty, favor, and souvenir bottle containing messages
and greetings, invitations, promotional materials of others,
and advertising materials of others; Kits comprised of
bottles, paper for creating promotional messages,
advertising messages, greetings, messages and invitations
and packaging and boxes for mailing.” As previously
discussed, opposer renders its services through placing
communications in novelty, favor or souvenir bottles, and
the description of services in its registration encompasses
Opposition No. 91162780
21
transmitting communications in this manner. It is settled
law that the likelihood of confusion may result from the use
by different parties of the same or similar marks in
connection with goods, on the one hand, and services which
deal with or are related to those goods, on the other. Wet
Seal Inc. v. FD Management Inc., 82 USPQ2d 1629, 1639-49
(TTAB 2007). The complementary nature of the opposer’s
services and applicant’s goods is obvious; the bottles are
used as a primary feature in the rendering of the services.
A consumer who is familiar with opposer’s services offered
under the mark MESSAGE IN A BOTTLE is likely to believe,
upon encountering a bottle in which communications may be
placed, offered under the identical mark, that this is a
product offered by opposer. This is particularly true since
opposer’s website which offers its services prominently
features different bottles, and the price of the service is
dependent on the price of the bottle. We find that the
parties’ goods and services are closely related, and this du
Pont factor favors a finding of likelihood of confusion.
As to channels of trade and classes of consumers,
applicant states that his goods are sold, inter alia,
through the Internet, at retail, through catalogs and
telephone sales, and that he advertises in magazines,
newspapers, brochures and through direct mail. Response to
interrogatory 17. His customers are “all consumers,
Opposition No. 91162780
22
including individuals, families, commercial entities and
merchants without any limitation.” Response to
interrogatory 21. Opposer offers its services through the
Internet, and has advertised through direct mail, Internet
ads and radio. Rojas test. pp. 24, 28. Its customers are
individuals from all over the United States. Response to
interrogatory 17. Because myriad goods and services are
offered through the internet, the mere fact that applicant’s
goods and opposer’s services are offered through this
channel of trade has limited effect. However, it is clear
that opposer and applicant offer their respective services
and goods to the same classes of consumers, and those
seeking to obtain such goods and services may do so by an
Internet search. This du Pont factor must be considered to
favor opposer.
With regard to the conditions of purchase, the
consumers for the parties’ services and goods are the
general public, who cannot be considered to be particularly
sophisticated as to the goods and services at issue.
Further, the goods and services are relatively inexpensive,
and they are of a nature that may be purchased on impulse.
This du Pont factor favors a finding of likelihood of
confusion.
Opposition No. 91162780
23
The fifth du Pont factor, fame, is not relevant to our
decision. Opposer has not argued that its mark is famous,
nor has it submitted evidence that would prove such fame.
With respect to the factor of third-party use of
similar marks on similar goods and services, applicant
points to opposer’s response to interrogatory 11, which
asked opposer to “identify each third party use, former use,
or claim of use of any term consisting of MESSAGE IN A
BOTTLE.” Opposer’s response was to provide a four-page list
consisting of two columns, one with a url and one with a
contact name. It is not clear whether each listing
represents a third-party use; for example, the first two
listings are for opposer’s website and applicant’s website.
Nor is it clear whether the entities listed use the specific
phrase MESSAGE IN A BOTTLE as a trademark or service mark or
merely in advertising or some other text, or, if as a
trademark, the extent of such usage, or whether the usage is
current or occurred at some point in the past. As the Court
pointed out in Palm Bay Imports Inc. v. Veuve Clicquot
Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d
1689, 1693 (Fed. Cir. 2005), a case relied on by applicant:
The probative value of third-party
trademarks depends entirely upon their
usage. E.g., Scarves by Vera, Inc. v.
Todo Imports, Ltd., 544 F.2d 1167, 1173
(2d Cir. 1976) (“The significance of
third-party trademarks depends wholly
upon their usage. Defendant introduced
no evidence that these trademarks were
Opposition No. 91162780
24
actually used by third parties, that
they were well promoted or that they
were recognized by consumers.”).

More importantly, although third-party use of a term
may show, as applicant recognizes, that customers have
become so conditioned by a plethora of similar marks so that
they have been educated to distinguish between different
such marks on the basis of minute distinctions, Palm Bay,
supra, 73 USPQ2d at 1694, here the marks are not merely
similar, they are identical. Thus, there are not even
minute differences between the marks that consumers could
use to distinguish them.
The next two du Pont factors relate to the existence or
absence of actual confusion. Opposer has submitted evidence
of what it characterizes as actual confusion, consisting of
emails that it received. The first, Rojas Ex. X, is a
May 21, 2004 email from an individual who states that she
saw the Message in a Bottle invitations on “your website,”
but now cannot find the bottles with confetti. Opposer does
not offer bottles with confetti, but applicant does. The
second, Rojas Ex. Z, is an August 31, 2007 email from an
individual regarding his order for wedding invitations,
which was sent to the attention of “Keith” and states that
the writer had spoken with Keith and gave him a credit card
number for a deposit on an order. Keith, of course, is the
first name of applicant. The third, Rojas Ex. Y, is a chain
Opposition No. 91162780
25
of emails on February 11, 2005 from a Ms. Kramer complaining
that she had recommended opposer’s website to three
coworkers, that they were victims of a bait and switch
shipping policy, and that she was going to put her complaint
on every consumer electronic bulletin board she could find.
Opposer responded that it did not offer free shipping so it
could not be opposer that they dealt with. Ms. Kramer then
responded that although she recommended opposer’s website,
the people she recommended it to “googled it or something”
and got applicant’s website. Mr. Rojas also testified that
“We have received phone calls in which the person indicates
that they had previously talked to Keith, and they wanted to
talk to Keith in connection with an order that they had
placed.” He gave no further details, did not specifically
say that he had personally spoken to these persons, and he
could not estimate how many times this had occurred.
When these pieces of evidence and testimony are
individually examined fault can be found with each. Mr.
Rojas’s testimony about phone calls is extremely vague. Ms.
Kramer’s email is, in effect, double hearsay. She was not
personally confused, but is merely reporting confusion of
co-workers, and reporting what she was told they did, with
even that being vague (“googled it or something”). The
email about bottles with confetti could refer to applicant’s
product, or might be another company that sends
Opposition No. 91162780
26
communications in bottles. As for the email about the
wedding invitations, it is not clear what caused the writer
to send the email to opposer, and whether it was because
applicant uses the same mark as opposer, or some other
reason.
We recognize that it is difficult to obtain evidence of
actual confusion. The evidence submitted by opposer,
although perhaps individually not sufficient to show actual
confusion, when taken together paints a circumstantial
picture that people consider applicant’s goods sold under
the mark MESSAGE IN A BOTTLE and opposer’s services rendered
under that identical mark to emanate from the same source.
However, we do not need such evidence in order to conclude
that applicant’s use of his mark for his identified goods is
likely to cause confusion with opposer’s mark, although the
evidence submitted by opposer reinforces that conclusion.
Quite simply, because of the identical marks of the parties,
and the closely related nature of the goods and services,
the general public who are the purchasers of these goods and
services are likely to be confused into believing that
applicant’s goods and opposer’s services come from a single
source.
Applicant has also discussed the remaining du Pont
factors, but we are not persuaded that these factors favor
applicant, or that they compel a finding of no likelihood of
Opposition No. 91162780
27
confusion. There is no market interface between the
parties, as that concept is explained in the du Pont
decision. Applicant appears to believe that he has the
prior right to use MESSAGE IN A BOTTLE for bottles, and that
opposer’s right to use the mark is limited to
“telecommunications services.” Opposer’s registration,
however, gives it the right to use its mark for the services
identified in that registration, namely, “receiving
communications from others, recording such communications in
written or printed form, and transmitting such
communications to others.” As explained previously, that
identification of services encompasses transmitting
communications in bottles.10 And as also explained
previously, because of the existence of that registration,
priority is not in issue. Thus, applicant’s arguments
regarding the du Pont factor of the extent to which
applicant has a right to exclude others from use of his mark
are not persuasive. As to the factor of the extent of
potential confusion, the extent of potential confusion is
high, since the goods and services are offered to the

10 We recognize that opposer’s identification is very broad, and
that in some instances a restriction of the registration under
Section 18 would be appropriate. Here, however, any attempt by
applicant to restrict the registration would have been unavailing
because limiting the identification to the specific nature of the
services, i.e., transmitting communications to others in bottles,
would not avoid a finding of likelihood of confusion. See
Eurostar Inc. v. “Euro-Star” Reitmoden GmbH & Co. KG, 34 USPQ2d
1266 (TTAB 1994).

Opposition No. 91162780
28
general public, and even with the relatively limited sales
of both parties, there have been incidents of, at the very
least, misdirection of mail.
After considering all of the relevant du Pont factors,
and the evidence submitted and arguments made by the parties
in connection therewith, including those arguments not
specifically discussed herein, we find that applicant’s use
of the mark MESSAGE IN A BOTTLE for his identified goods is
likely to cause confusion with opposer’s mark MESSAGE IN A
BOTTLE for the services identified in its registration.
False Suggestion of a Connection and Disparagement
Although false suggestion of a connection and
disparagement are two separate grounds for opposition,
opposer has treated them as a single issue. “Whether
Applicant’s mark may disparage Opposer’s mark and falsely
imply a connection with Opposer.” Opposer’s brief as
plaintiff in the opposition, p. 7 and opposer’s reply brief,
p. 2. Opposer clearly is not placing great reliance on
these grounds. Although opposer devotes nine pages of the
argument in its brief to the ground of likelihood of
confusion, and sets out the thirteen du Pont factors, it has
discussed both the false suggestion of a connection and
disparagement grounds in three sentences.
Opposer’s argument for its claim of a false suggestion
of a connection is that “Opposer’s principal has testified
Opposition No. 91162780
29
to persons having called him and asking for Applicant, and
this is evidence of there being a false implication of a
connection between the parties, which again would seem to be
inevitable when the same mark is used.” Opposer’s brief as
plaintiff in the opposition, p. 23. In University of Notre
Dame du Lac v. J.C. Gourmet Food Imports Co., Inc., 703 F.2d
1372, 217 USPQ 505, 509 (Fed. Cir. 1983), the Court of
Appeals for the Federal Circuit discussed the basis for the
Section 2(a) prohibition of marks which falsely suggest a
connection with the plaintiff:
It is a right of this nature, a right to
control the use of one's identity, which
the University also asserts under
§ 2(a).

Under concepts of the protection of
one's “identity,” in any of the forms
which have so far been recognized, the
initial and critical requirement is that
the name (or an equivalent thereof)
claimed to be appropriated by another
must be unmistakably associated with a
particular personality or “persona.”
[footnotes omitted]

Thus, the Court stated that the mark, as used by the
defendant, must point uniquely to the plaintiff. In Buffett
v. Chi-Chi's, Inc., 226 USPQ 428, 429 (TTAB 1985), the Board
explained:
In accordance with those principles
[discussed in Notre Dame], the Board now
requires that a plaintiff asserting a
claim that a mark falsely suggests a
connection with persons, living or dead,
or institutions, demonstrate (i) that
the defendant's mark is the same or a
Opposition No. 91162780
30
close approximation of plaintiff's
previously used name or identity; (ii)
that the mark would be recognized as
such; (iii) that the plaintiff is not
connected with the activities performed
by the defendant under the mark; and
(iv) that the plaintiff's name or
identity is of sufficient fame or
reputation that when the defendant's
mark is used on its goods or services, a
connection with the plaintiff would be
presumed.

Opposer has not explained how its evidence meets the
above requirements for proving a false suggestion of a
connection. As noted, opposer states in its brief only that
“opposer’s principal has testified to persons having called
him and asking for applicant.” The actual testimony
consists of the following:
Q: Have you had other instances of
actual confusion with Mr. Cangiarella
[in addition to emails] come to your
attention?

A: Yes. We have received phone calls
in which the person indicates that they
had previously talked to Keith, and they
wanted to talk to Keith in connection
with an order that they had placed.

Q: Do you have any estimate as to how
many times this has occurred over the
years?

A: No.

This evidence goes to the issue of likelihood of confusion,
but is insufficient to prove a false suggestion of a
connection. In particular, opposer has not shown that
MESSAGE IN A BOTTLE points uniquely to opposer’s persona or
Opposition No. 91162780
31
identity. There is a distinction between a term being
perceived as a company’s trademark and being a company’s
persona. Opposer’s own website indicates that others may be
using the term “Message in a Bottle.” For example, it
includes the statement, “Although it is said imitation is
the sincerest form of flattery, Message in a Bottle.com
wants to assure you that we are the only company legally
registered to sell and distribute the Message in a Bottle ®
service and product. And on several of its webpages it
states, “Look for our signature ‘Gold Shells from Carmel’
logo to ensure it’s a real Message in a Bottle®.” Rojas Ex.
V. Such statements detract from any claim that MESSAGE IN A
BOTTLE points uniquely to opposer. Nor has opposer shown
that its name or identity is of sufficient fame or
reputation that when applicant’s mark is used on his goods
or services, a connection with opposer would be presumed.
As for the ground of disparagement, opposer relies on
Ms. Kramer’s email (Rojas ex. Y), which it claims is
“evidence of consumer hostility having been visited on
Opposer when intended for Applicant,” and that “if Applicant
is allowed to register Opposer’s mark for Applicant’s
recited goods, more such disparagement of Opposer’s mark can
be expected.” Brief as plaintiff in the opposition, p. 23.
As discussed previously, the email in question complains
that opposer is engaging in a bait and switch shipping
Opposition No. 91162780
32
policy by advertising free shipping and then charging for
it, and threatens to expose this conduct on electronic
bulletin boards.
Section 2(a) of the Trademark Act prohibits
registration of a mark that “consists of or comprises …
matter which may disparage … persons, living or dead,
institutions, beliefs, or national symbols, or bring them
into contempt, or disrepute.” The Board has stated that
there are two elements of a claim of commercial
disparagement: 1) that the communication reasonably would be
understood as referring to the plaintiff; and 2) that the
communication is disparaging, that is, would be considered
offensive or objectionable by a reasonable person of
ordinary sensibilities. Greyhound Corp. v. Both Worlds
Inc., 6 USPQ2d 1635, 1639 (TTAB 1988). Disparagement, thus,
relates to a problem with the defendant’s mark per se, e.g.,
that the mark both points to the plaintiff and that the mark
communicates something offensive or objectionable about the
plaintiff. Opposer has pointed to no cases in which
disparagement has been found because of complaints about the
services provided by the defendant under the mark and,
again, such damage would appear to go to a claim of
likelihood of confusion, not disparagement.
Opposition No. 91162780
33
Accordingly, we dismiss the opposition with respect to
opposer’s claims of false suggestion of a connection and
disparagement.
Fraud
In its briefs opposer has asserted that one of the
issues is “Whether Applicant’s application should be
rejected due to Applicant’s fraud through untrue statements
in the application.” Brief as plaintiff in the opposition,
p. 7, reply brief, p. 2. Opposer did not plead fraud as a
ground for its notice of opposition, nor do we find that the
issue of fraud was tried by consent. Opposer refers, in
connection with the ground of fraud, to applicant’s
admissions that prior to the filing of his application he
knew that goods or services featuring the mark MESSAGE IN A
BOTTLE had been sold by someone else and that he knew that
Roger Rojas, opposer’s predecessor-in-interest, had obtained
a registration for the mark. However, requests for
admission to such effect could have gone to the ground of
likelihood of confusion as showing bad faith intent in
adopting the mark, and therefore applicant, in responding to
the admissions request, cannot be said to have consented to
trial of the issue of fraud.11 Accordingly, we have given
the claim of fraud no consideration.

11 We also point out that in the Board order issued on May 5,
2009, more than one year after both opposer’s submission of the
notice of reliance containing applicant’s discovery responses and
Opposition No. 91162780
34
Decision
Applicant’s counterclaim to cancel opposer’s
Registration No. 2243269 is denied. Opposer’s opposition to
the registration of applicant’s mark is granted solely with
respect to the issue of likelihood of confusion.

opposer’s taking of the testimony deposition of its witness, the
Board, in summarizing the grounds on which the notice of
opposition was brought, did not list fraud as one of the grounds.
Despite that, opposer did not file a motion to indicate that it
believed that the ground of fraud had been tried by consent and
should be considered by the Board.