Nation/Ruskin, Inc.v.Nice-Pak Products, Inc.

Trademark Trial and Appeal Board

Dec 21, 2005

No. 91124138 (T.T.A.B. Dec. 21, 2005)

Date: 12/21/2005

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
______

Nation/Ruskin, Inc.
v.
Nice-Pak Products, Inc.
_____

Opposition No. 91124138
to application Serial No. 75470709
filed on April 20, 1998
_____

Roberta Jacobs-Meadway and Troy E. Larson of Ballard Spahr
Andrews & Ingersoll for Nation/Ruskin, Inc.

Samantha M. Kameros of Lerner, David, Littenberg, Krumholz &
Mentlik for Nice-Pak Products, Inc.
______

Before Quinn, Drost and Walsh, Administrative Trademark
Judges.

Opinion by Quinn, Administrative Trademark Judge:

An application was filed by Nice-Pak Products, Inc. to
register the mark EZ ONES for “moist baby wipes.”1
Nation/Ruskin, Inc. opposed registration pursuant to
Section 2(d) of the Trademark Act on the ground that
applicant’s mark, if used in connection with applicant’s
goods, would so resemble opposer’s previously used and

1 Application Serial No. 75470709, filed April 20, 1998, based on
an allegation of a bona fide intention to use the mark in
commerce.
THIS DECISION IS NOT
CITABLE AS PRECEDENT
OF THE TTAB
Opposition No. 91124138
2
registered mark EZ-ONE for a variety of cleaning items,
including soft cleaning cloths, terry cloth towels,
cheesecloth, cleaning rags, chamois for cleaning, sponge
cloths, and detailing towels, as to be likely to cause
confusion.
Applicant, in its answer, denied the salient
allegations of likelihood of confusion.
The record consists of the pleadings; the file of the
involved application; testimony, with related exhibits,
taken by opposer; status and title copies of opposer’s
registrations, certain of applicant’s responses to opposer’s
discovery requests, and copies of third-party registrations,
all introduced by way of opposer’s notices of reliance.
Applicant neither took testimony nor offered any other
evidence at trial. Both parties filed briefs on the case.
An oral hearing was not requested.
Opposer has been engaged for over sixty years in
manufacturing, distributing and selling various house wares,
paint and sundry products, including wipes, cloth and sponge
cleaning items. Raymond Adolf, opposer’s president,
testified that opposer’s mark EZ-ONE was first used in 1984,
and he identified EZ-ONE as opposer’s signature brand under
which a wide range of wipes, rags, cloths, and sponges are
sold. Mr. Adolf estimated that opposer’s total sales in
2003 were $10 million, and that EZ-ONE brand products
Opposition No. 91124138
3
accounted for approximately 70% of opposer’s business.
Opposer’s EZ-ONE brand goods are sold in grocery stores,
drug stores, house ware stores and retail home centers.
Little is known about applicant’s business activities,
other than as revealed by certain of its answers to
discovery requests. Pages of applicant’s web site,
furnished by applicant in response to an interrogatory and
introduced by opposer in one of its notices of reliance,
indicate that applicant is a “global wet wipes supplier for
almost 50 years.” The web site also states the following:
“Through our Consumer, Institutional, PDI Healthcare and
Contract Divisions, we supply superior quality wet wipe
products to nearly every class of trade. From the softest,
gentlest baby wipe, to strong, effective infection control
wipes and germ-killing surface wipes, [applicant] is the
single source supplier to satisfy any need, at every price
point.” Applicant’s “Consumer” division, according to the
web site, “is the single source supplier for virtually every
need, whether at home or on the go,” taking care of “a vast
variety of wet wipe needs, from baby and facial wipes to
kitchen and bath surface wipes.” Applicant admitted that it
intends to sell its EZ ONES brand products “through stores
selling cleaning products for general cleaning purposes” and
that these products are intended to be “purchased by members
of the general public, including men.”
Opposition No. 91124138
4
Opposer introduced status and title copies of its five
EZ-ONE registrations covering a wide variety of cleaning
products, including cleaning cloths and rags, flannel
dusting cloths, polishing cloths, soft cloths used for
cleaning, terry cloth towels, genuine chamois skin and man-
made chamois towels for drying, hand-held sponges, and
cheesecloth.2
In view of opposer’s ownership of valid and subsisting
registrations, there is no issue regarding opposer’s
standing and priority. King Candy, Inc. v. Eunice King’s
Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108 (CCPA 1974).
Thus, the only issue to decide herein is likelihood of
confusion.
Our determination under Section 2(d) is based on an
analysis of all of the facts in evidence that are relevant
to the factors bearing on the likelihood of confusion issue.
In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177
USPQ 563 (CCPA 1973). The relevant du Pont factors in the
proceeding now before us are discussed below.
The first factor we consider is the similarity between
opposer’s mark EZ-ONE and applicant’s mark EZ ONES. The

2 Registration Nos. 1359255; 1467193; 2221346; 2287667; and
2864393. Office records show that opposer owns all
registrations, and all are valid and subsisting. Two of the
registrations, namely, Registration Nos. 1467193 and 2287667,
include design features, and the later registration also includes
the words “POCKET RAGS.”
Opposition No. 91124138
5
marks are virtually identical in terms of sound and
appearance. Applicant’s mark is merely the plural form of
opposer’s mark, minus the hyphen. As to meaning, the marks
have the same connotation, that is, that the products sold
thereunder are easy ones to use. When the marks are applied
to the respective parties’ products, the marks engender
virtually identical commercial impressions.
In finding that the marks are similar, we have
considered, of course, the suggestiveness of the marks. As
noted above, however, the marks suggest the same thought.
We further note that the record is devoid of any third-party
uses or registrations of marks that are the same as or
similar to opposer’s EZ-ONE mark.
The virtual identity between the marks EZ-ONE and EZ
ONES weighs heavily in opposer’s favor.
The crux of this controversy centers on the similarity
between the parties’ goods. With respect to the goods, it
is well established that the goods of the parties need not
be similar or competitive, or even that they are offered
through the same channels of trade, to support a holding of
likelihood of confusion. It is sufficient that the
respective goods of the parties are related in some manner,
and/or that the conditions and activities surrounding the
marketing of the goods are such that they would or could be
encountered by the same persons under circumstances that
Opposition No. 91124138
6
could, because of the similarity of the marks, give rise to
the mistaken belief that they originate from the same
source. See Hilson Research, Inc. v. Society for Human
Resource Management, 27 USPQ2d 1423 (TTAB 1993); and In re
International Telephone & Telephone Corp., 197 USPQ 910, 911
(TTAB 1978). The issue, of course, is not whether
purchasers would confuse the goods, but rather whether there
is a likelihood of confusion as to the source of the goods.
In re Rexel Inc., 223 USPQ 830 (TTAB 1984).
In comparing the goods, we initially note that where
virtually identical marks are involved, as is the case here,
the degree of similarity between the parties’ goods that is
required to support a finding of likelihood of confusion is
less. In re Shell Oil Co., 992 F.2d 1204, 26 USPQ2d 1687,
1688-1689 (Fed. Cir. 1993); NASDAQ Stock Market Inc. v.
America S.r.l., 69 USPQ2d 1718, 1733 (TTAB 2003); and Time
Warner Entertainment Co. v. Jones, 65 USPQ2d 1650, 1661
(TTAB 2002).
Opposer claims that its “wipes, cloths, towels,
sponges, in addition to being used for cleaning counters,
bathrooms, tools and cars can also be used for personal use,
wiping hands and the like” and that applicant’s moist baby
wipes “can, of course, be used for wiping hands as well as
babies, and for cleaning otherwise.” Opposer’s cleaning
towels, cloths, rags and sponges are distinctly different
Opposition No. 91124138
7
from applicant’s moist baby wipes. Having said this,
however, some of opposer’s specific products, as for
example, “soft cloths used for cleaning” and “terry cloth
towels” could be employed for personal use like cleaning a
baby or wiping one’s hands. And, indeed, moist baby wipes
could be used for cleaning one’s hands.
Opposer has introduced two use-based third-party
registrations (Registration Nos. 2579046 and 2716561)
listing cleaning cloths and wipes, as well as baby wipes,
for which the same mark was adopted by a single entity.3
This evidence has probative value to the extent that the
registrations serve to suggest that such goods are of a type
that emanates from the same source. In re Infinity
Broadcasting Corp. of Dallas, 60 USPQ2d 1214, 1218 (TTAB
2001); and In re Albert Trostel & Sons Co., 29 USPQ2d 1783,
1785 (TTAB 1993). Further, as shown by the record,
applicant itself sells both types of products (albeit under
different marks); that is, applicant’s products include both
baby wipes and personal hygiene wipes as well as general
household cleaning wipes.
In sum, the totality of the evidence shows that the
goods are commercially related. The similarity between the

3 A third registration, Registration No. 2679620, is based on a
foreign filing. In addition, the other three third-party
registrations relied upon by opposer do not cover the goods
involved herein. Accordingly, these four registrations are
immaterial to our decision.
Opposition No. 91124138
8
goods is a factor that favors a finding of likelihood of
confusion in this case.
In the absence of any limitations in the parties’
identifications of goods, we must presume that the goods
move through all reasonable trade channels for such goods.
Schieffelin & Co. v. Molson Companies Ltd., 9 USPQ2d 2069,
2073 (TTAB 1989); Morton-Norwich Products, Inc. v. N.
Siperstein, Inc., 222 USPQ 735, 736 (TTAB 1984); and In re
Elbaum, 211 USPQ 639, 640 (TTAB 1981)[“[W]here the goods in
a cited registration are broadly described and there are no
limitations in the identifications of goods as to their
nature, type, channels of trade or classes of purchasers, it
is presumed that the scope of the registration encompasses
all goods of the nature and type described, that the
identified goods move in all channels of trade that would be
normal for such goods, and that the goods would be purchased
by all potential customers.”]. Customary trade channels for
baby wipes would include grocery stores and drug stores, and
applicant indicated, in a response to a request for
admission, that its products also would be sold through
stores selling cleaning products for general cleaning
purposes. These trade channels, as indicated by Mr. Adolf’s
testimony, are the very same trade channels in which
opposer’s goods travel.
Opposition No. 91124138
9
The mere fact that the parties’ goods may be sold in
the same kind of establishments is not entitled to as much
weight as opposer gives it in determining the relatedness of
the products. We recognize that grocery stores and drug
stores sell a wide range of products, and that merely
because goods are sold within one store does not
automatically mean that buyers are likely to be confused as
to source. See Federated Foods, Inc. v. Ft. Howard Paper
Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976)[“A wide
variety of products, not only from different manufacturers
within an industry but also from diverse industries, have
been brought together in the modern supermarket for the
convenience of the consumer. The mere existence of such an
environment should not foreclose further inquiry into the
likelihood of confusion.”]. See also Hi-Country Foods Corp.
v. Hi Country Beef Jerky, 4 USPQ2d 1169 (TTAB 1987)[not all
food products are related merely because they are sold in
the modern supermarket “with its enormous variety of food,
cleaning, paper and other products”]. In the present case,
goods of the types sold by opposer and applicant would, in
all likelihood, be found in different aisles in different
sections of the stores. In this connection, Mr. Adolf
readily acknowledged that opposer’s cleaning cloths and
towels would not be found in the same section or aisle as
“products for cleaning babies.” (Adolf dep., p. 35).
Opposition No. 91124138
10
Given the realities of the modern supermarket, the
identity of trade channels for the parties’ goods weighs
only slightly in favor of a finding of likelihood of
confusion. We hasten to add that, in the present case,
there is other more probative evidence, as cited in this
decision, to show a commercial relationship between the
parties’ goods.
The conditions of sale also increase the likelihood of
confusion. The cost of the parties’ goods, given their
inherent nature, is relatively inexpensive. Further,
cleaning wipes, towels, cloths and baby wipes are subject to
frequent replacement, and the purchase of these products
does not require deliberation or careful thought. Suffice
it to say, we fail to comprehend applicant’s statement that
the parties’ products are “sophisticated products”; we would
point out that, in any event, applicant’s statement is not
supported by any evidence. See Kimberly-Clark Corp. v. H.
Douglass Enterprises, Ltd., 774 F.2d 1144, 227 USPQ 541
(Fed. Cir. 1985). This du Pont factor weighs in opposer’s
favor.
As indicated above, in the absence of limitations in
the identifications of goods, we must presume that all
potential customers would purchase the parties’ goods.
Further, Mr. Adolf identified potential purchasers of
opposer’s goods as “anybody” (Adolf dep., p. 29), and
Opposition No. 91124138
11
applicant indicated that its goods are intended to be
purchased by “members of the general public, including men”
(Request for Admission response, no. 18). Thus, both types
of goods would be bought by the same classes of ordinary
consumers. This overlap in classes of prospective
purchasers favors opposer.
The absence of actual confusion in this case is
irrelevant. The involved application is based on an
intention to use the mark, and the application file does not
include an amendment to allege use. Even if applicant had
commenced use of the mark (a fact not shown by the
evidence), the record is silent as to the extent of any use.
Thus, it would be impossible to ascertain whether there has
been any meaningful opportunity for confusion to occur in
the marketplace among consumers. In re Kent-Gamebore Corp.,
59 USPQ2d 1373 (TTAB 2001). In any event, the test for our
purposes under Section 2(d) is likelihood of confusion.
Giant Food, Inc. v. Nation’s Foodservice, Inc., 710 F.2d
1565, 218 USPQ 390, 396 (Fed. Cir. 1983). Accordingly, this
factor is neutral.
One final point requires our consideration. Applicant
contends that opposer is estopped in the present case due to
its actions in another opposition proceeding between the
parties. Applicant raises this issue for the first time in
its brief on the case, on the last page, in a half-page
Opposition No. 91124138
12
argument. Opposer argues that the prior proceeding is
irrelevant to the current one, stating that “each opposition
stands on its own, and the action or inactions on the part
of an opposer in a prior opposition proceeding involving a
different mark have no bearing on the current opposition.”
(Reply Brief, p. 1).
Applicant is the owner of application Serial No.
76062710 to register the mark REAL CLOTH EZ ONES and design
for “moist baby wipes.” Opposer opposed registration of
that mark (Opposition No. 91124788), but opposer, at trial,
failed to take testimony or offer any other evidence.
Applicant filed a motion to dismiss pursuant to Trademark
Rule 2.132(a); opposer did not respond to the motion and the
Board, on March 9, 2005, dismissed the opposition with
prejudice. The Office issued a notice of allowance on May
24, 2005, and the Office subsequently granted a request for
the first extension of time to file a statement of use.
No issues were actually litigated in the prior
proceeding and, thus, no “issue” was determined or
precluded. Mother’s Restaurant, Inc. v. Mama’s Pizza, Inc.,
723 F.2d 1566, 221 USPQ 394, 397 (Fed. Cir. 1983).
Therefore, if res judicata applies, it must rest on
principles of claim preclusion.
Applicant’s argument is clearly ill founded. Simply
put, applicant’s mark involved herein is different from the
Opposition No. 91124138
13
one sought to be registered in application Serial No.
76062710. Thus, opposer’s claim against EZ ONES herein is
not the same claim as the one opposer raised against REAL
CLOTH EZ ONES and design. Chromalloy American Corp. v.
Kenneth Gordon (New Orleans), Ltd., 736 F.2d 694, 222 USPQ
187, 190 (Fed. Cir. 1984). Accordingly, opposer is not
precluded from bringing its likelihood of confusion claim
herein.
We have carefully considered all of the evidence
pertaining to the relevant du Pont factors, as well as all
of the parties’ arguments with respect thereto (including
any evidence and arguments not specifically discussed in
this opinion), and we conclude that opposer has established
its Section 2(d) claim of likelihood of confusion.
We conclude that consumers familiar with opposer’s
variety of textile cleaning cloths and towels sold under its
EZ-ONE mark would be likely to believe, upon encountering
applicant’s EZ ONES for moist baby wipes, that the goods
originated with or were somehow associated with or sponsored
by the same entity.
All of the relevant du Pont factors (the actual
confusion factor is neutral) favor opposer and a finding of
likelihood of confusion. To the extent that the specific
differences between the goods raise a doubt about our
conclusion, all doubt on the issue of likelihood of
Opposition No. 91124138
14
confusion must be resolved in favor of the prior registrant
and against the newcomer. Hilson Research Inc. v. Society
for Human Resource Management, supra at 1440.
Decision: The opposition is sustained, and
registration to applicant is refused.