North American Tobacco Import Co.

Trademark Trial and Appeal Board

Jul 30, 2002

No. 78024803 (T.T.A.B. Jul. 30, 2002)

Mailed: July 30, 2002
Paper No. 14
HRW
UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
________
In re North American Tobacco Import Company
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Serial No. 78/024,803
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Arnold J. Heckler, Esq. for North American Tobacco Import
Company.
Ronald L. Fairbanks, Trademark Examining Attorney, Law
Office 112 (Janice O’Lear, Managing Attorney).
_______
Before Wendel, Bucher and Drost, Administrative Trademark
Judges.
Opinion by Wendel, Administrative Trademark Judge:
North American Tobacco Import Company has filed an
application to register the mark VIKING for “cigarettes.”1
1 Serial No. 78/024,803, filed September 7, 2000, based on an
allegation of a bona fide intention to use the mark in commerce.
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT
OF THE TTAB
Ser No. 78/024,803
2
Registration has been finally refused under Section
2(d) on the ground of likelihood of confusion with the mark
VIKING and design, as shown below, for “glass ash trays,
humidors, and cigarette boxes, trays and jars” in Class 34.2
The refusal has been appealed and applicant and the
Examining Attorney have filed briefs. An oral hearing was
not requested.
Before taking up the issue of likelihood of confusion,
we consider first applicant’s main contention in this
proceeding, namely that the registered mark has been
abandoned, thus “opening the door” for the granting of
applicant’s application. Applicant bases its argument of
abandonment on the fact that the registrant, Viking Glass
Company, was dissolved by court decree on May 15, 1990.
Applicant has submitted a copy of a document from the State
of West Virginia to this effect. Applicant states in
2 Registration No. 817,234, issued October 25, 1966, first
renewal in 1986 for 20 years. An assignment of the registration
from Connecticut Cape Corp. (formerly Viking Glass Company) to
Dazell Co. was recorded by the Assignment Branch on January 18,
1991 at reel 0761, frame 0207.
Ser No. 78/024,803
3
addition that an Office search on September 6, 2001 has
revealed that no assignment has been recorded of this
trademark to another party through the date of this appeal.
As pointed out by the Examining Attorney in his
response to the request for reconsideration, during ex
parte prosecution an applicant will not be heard on matters
which constitute a collateral attack on the cited
registration. The certificate of registration is prima
facie evidence of the validity of the registration and the
registrant’s exclusive right to use the mark in connection
with the goods specified in the registration. 15 U.S.C.
§ 1057(b). Applicant’s argument that, since registrant has
been dissolved since 1990, it must be assumed that use of
the mark has been abandoned without intent to resume use is
no more than a collateral attack on the validity of the
registration. While it is true that the prima facie
presumption of validity of the registration may be
challenged, the present ex parte proceeding is not the
proper forum for such a challenge. Instead a formal
cancellation proceeding should have been filed, an option
which applicant chose not to pursue. Since it is not open
to applicant to prove abandonment in this ex parte
proceeding, applicant’s arguments that mark is no longer in
Ser No. 78/024,803
4
use must be disregarded.3 See In re Dixie Restaurants Inc.,
105 F.3d. 1405, 41 USPQ2d 1531, 1534 (Fed. Cir. 1997);
Cosmetically Yours, Inc. v. Clairol Inc., 424 F.2d 1385,
165 USPQ 515 (CCPA 1970).
Giving full weight to the cited registration, we turn
to the issue of likelihood of confusion, making our
determination on the basis of those of the du Pont4 factors
that are relevant in view of the evidence of record. Two
key considerations in any analysis are the similarity or
dissimilarity of the respective marks and the similarity or
dissimilarity of the goods or services with which the marks
are being used, or are intended to be used. See Federated
Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192
USPQ 24 (CCPA 1976); In re Azteca Restaurant Enterprises,
Inc., 50 USPQ2d 1209 (TTAB 1999).
Considering first the respective marks, we note that
although the marks must be considered in their entireties,
there is nothing improper, under appropriate circumstances,
in giving more or less weight to a particular portion of a
mark. See In re National Data Corp., 753 F.2d 1056, 224
USPQ 749 (Fed. Cir. 1985). Normally, it is the word
3 We note that according to the Board’s review of Office records,
there was an assignment of the registration recorded by the
Assignment Branch in 1991. (See footnote 2).
4 In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ
563 (CCPA 1973).
Ser No. 78/024,803
5
portion of a mark, rather than the design features, unless
particularly distinctive, that is the more likely to be
remembered and relied upon by purchasers in referring to
the goods and thus it is the word portion that will be
accorded more weight in determining the similarity of the
involved marks. See Ceccato v. Manifattura Lane Gaetano
Marzotto & Figli S.p.A., 32 USPQ 1191 (TTAB 1994).
Here the word VIKING is the dominant portion of
registrant’s mark. The ship design cannot be accorded
equal weight, inasmuch as purchasers would necessarily rely
upon the word portion in calling for the goods. In
addition, the main function of the ship design is to
reinforce the word portion, by its portrayal of a Viking
ship, and thus to strengthen the general impression created
by the word VIKING. See Ceccato v. Manifatture Lane
Gaetano Marzotto & Figli S.p.A., supra (coat of arms design
reinforces meaning of word mark). The literal portions of
the two marks are identical, the word VIKING, rendering the
marks identical in sound and meaning. Moreover, as pointed
out by the Examining Attorney, the term VIKING as used in
connection with either applicant’s cigarettes or
registrant’s smokers’ articles, including ash trays,
humidors and cigarette boxes, is totally arbitrary, having
no suggestive connotation when used with goods of this
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nature. All in all, the overall commercial impressions
created by the marks are virtually identical. Applicant
has made no argument to the contrary.
Thus, we turn to a comparison of the respective goods
with which applicant and registrant are using, or intend to
use, these highly similar marks. In making our analysis,
we are guided by the general principle that the greater the
degree of similarity in the marks, the lesser the degree of
similarity that is required between the goods on which the
marks are being used to support a likelihood of confusion.
If the marks are virtually the same, as is the case here,
there need only be a viable relationship between the goods
in order to support a holding of likelihood of confusion.
See In re Peebles Inc., 23 USPQ2d 1795 (TTAB 1992); In re
Concordia International Forwarding Corp., 222 USPQ 255
(TTAB 1983).
Furthermore, it is not necessary that the goods of
applicant and registrant be similar or even competitive to
support a holding of likelihood of confusion. It is
sufficient if the respective goods are related in some
manner and/or that the conditions surrounding their
marketing are such that they would be encountered by the
same persons under circumstances that could, because of the
similarity of the marks used thereon, give rise to the
Ser No. 78/024,803
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mistaken belief that they emanate from, or are associated
with, the same source. See In re Albert Trostel & Sons
Co., 29 USPQ2d 1783 (TTAB 1993) and the cases cited
therein. If there are no restrictions in the application
or registration as to the channels of trade or class of
purchasers, the parties’ goods must be assumed to travel in
all the normal channels of trade for the goods of this
nature and to all the normal classes of purchasers. See
Kangol Ltd. v. KangaROOS U.S.A. Inc., 974 F.2d 161, 23
USPQ2d 1945 (Fed. Cir. 1992).
Thus, the question before us is whether a sufficient
relationship exists between the cigarettes of applicant and
the various smokers’ articles of registrant, such as ash
trays, humidors and cigarette boxes, that purchasers would
be likely to believe that the goods originate from a single
source, if highly similar marks are used thereon. We find
the copies of several third-party registrations made of
record by the Examining Attorney showing registration of
the same mark by a single entity for both tobacco products
including cigarettes and smokers’ articles including items
such as ash trays, cigarette cases, humidors, and cigarette
boxes, more than adequate to establish that such a
relationship exists. While these registrations are
admittedly not evidence of use of the marks in commerce for
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these goods, they are sufficient to suggest that the goods
are of a type which may be produced by a single entity and
be identified by the same mark. See In re Albert Trostel &
Sons Co., supra, In re Mucky Duck Mustard Co., 6 USPQ2d
1467 (TTAB 1988), aff’d as not citable precedent 88-1444
(Fed. Cir. November 14, 1988). Accordingly, if highly
similar marks are used on both types of goods, as is the
case here, it may be presumed that purchasers will
mistakenly believe that the goods emanate from the same
source. Furthermore, it appears only reasonable that
purchasers encountering ash trays and other smokers’
articles bearing the same mark as a brand of cigarettes
would assume that the smokers’ articles originate from the
same source as the cigarettes, if no more than as
promotional items. See Larus & Brother Co. v. Holiday
Designs, Inc., 159 USPQ 686 (TTAB 1968)(close relationship
found to exist between applicant’s ash trays and opposer’s
smoking tobacco and cigarettes).
In addition, in the absence of any limitations in the
application or registration it must be presumed that the
goods of both applicant and registrant would travel in the
same channels of trade, be sold in the same retail outlets,
and be sold to the same class of purchasers, namely, the
Ser No. 78/024,803
9
general public. No distinction whatsoever can be made on
this basis.
Applicant’s argument that neither entity specifically
includes the goods of the other in its identification of
goods is to no avail. The goods of the applicant and
registrant need not be identical or even competitive to
support a holding of likelihood of confusion. As fully
discussed above, it is necessary only that a viable
relationship exist between the goods such that use of
similar marks on the goods results in the mistaken belief
on the part of purchasers that the goods originate from a
common source. This relationship has been shown to exist.
Applicant’s further argument for an “equitable result”
by allowing the mark VIKING to coexist for the products of
both applicant and registrant would clearly be unfair to
registrant. Registrant is fully entitled to the protection
afforded to it by its valid and existing registration of
the mark against the registration by applicant of
substantially the same mark for goods closely related to
registrant’s goods.
Accordingly, on the basis of the virtually identical
commercial impressions of the marks being used, or intended
to be used, and the relationship which has been shown to
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10
exist between the goods of applicant and registrant, we
find that confusion is likely.
Decision: The refusal to register under Section 2(d)
is affirmed.
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11