Robert Schneiderv.Gonella D. Jemison

Trademark Trial and Appeal Board

Aug 11, 1999

No. 91104585 (T.T.A.B. Aug. 11, 1999)

Skoro
Opposition No. 104,585
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE
TTAB
AUG. 11,99
Robert Schneider
v.
Gonella D. Jemison
Before Cissel, Hohein and Rogers, Administrative Trademark
Judges.
An application has been filed by Gonella D. Jemison for
the mark 1-800-324-HUGS for “telephone shop-at-home services
in the field of stuffed toys” in class 42.1 The application
has been opposed by Robert Schneider, claiming priority of
use and common law rights for the mark 1-800-949-HUGS for
“telephone shop-at-home services in the field of stuffed
toys, especially stuffed teddy bears”; and ownership of a
federal registration for the mark SEND-A-HUG! and design for
“mail order services featuring stuffed animals.” Opposer
alleges that applicant’s use of the mark 1-800-324-HUGS in
connection with the identified services would be likely to

1 Serial No. 75/056,405, filed February 12, 1996, alleging a
bona fide intention to use the mark.
UNITED STATES DEPARTMENT OF COMMERCE
Patent and Trademark Office
Trademark Trial and Appeal Board
2900 Crystal Drive
Arlington, Virginia 22202-3513
Opposition No. 104,585
2
cause confusion, or to cause mistake, or to deceive.
Applicant has denied all the salient allegations of the
opposition.
This case now comes up on opposer’s motion for summary
judgment, filed June 24, 1997. As grounds for his motion,
opposer contends that there is no genuine issue of material
fact as to his priority of use, the identity of the
services, and the similarity of the marks, and that the
respective services are rendered through the same channels
of trade.
Applicant has responded, contending that she originated
her idea prior to opposer and has been working steadily to
bring it to market, receiving the telephone number in 1996;
that she was not aware of opposer; and that she has not
tried to trade on his goodwill.
The burden is on the party moving for summary judgment
to demonstrate the absence of any genuine issue of material
fact, and that it is entitled to summary judgment as a
matter of law. Fed. R. Civ. P. 56(c). See also, Celotex
Corp. v. Catrett, 477 U.S. 317 (1986). The evidence of
record and any inferences which may be drawn from the
underlying undisputed facts must be viewed in the light most
favorable to the non-moving party. See, Olde Tyme Foods
Inc. v. Roundy’s Inc., 961 F.2d 200, 22 USPQ2d 1542 (Fed.
Cir. 1992). In considering the propriety of summary
Opposition No. 104,585
3
judgment, the Board may not resolve issues of material fact
against the non-moving party; it may only ascertain whether
such issues are present. See, Opryland USA, Inc. v. Great
American Music Show, Inc., 970 F.2d 847, 23 USPQ2d 1471
(Fed. Cir. 1993); and Lloyd’s Food Products Inc. v. Eli’s
Inc., 987 F.2d 766, 25 USPQ2d 2027 (Fed. Cir. 1993).
In certain cases, however, even though disputes remain
with respect to certain material facts, summary judgment may
be granted, so long as all factual disputes are resolved in
favor of the non-moving party and inferences drawn from the
undisputed facts are viewed in the light most favorable to
the non-moving party. See, Larry Harmon Pictures Corp. v.
The William’s Restaurant Corp., 929 F.2d 662, 18 USPQ2d
1292, 1293 (Fed. Cir. 1991); Anderson v. Liberty Lobby,
Inc., 477 U.S. 242, 255 (1986) (“The evidence of the non-
movant is to be believed, and all justifiable inferences are
to be drawn in his favor”); and Bishop v. Wood, 426 U.S.
341, n.11 (1976) (“In granting summary judgment for
respondents, the District Court was required to resolve all
genuine disputes as to material facts in favor of
petitioner.”).
In this case opposer has provided an affidavit and
documents establishing that he has used the mark 1-800-949-
HUGS in connection with the services since at least as early
Opposition No. 104,585
4
as 19942 and that the services offered under the mark are
delivery services of greetings with a bear, accessed through
a telephone number.
In its response to the motion for summary judgment,
applicant submitted an affidavit and documents demonstrating
the efforts she has made to set up a business involving a
stuffed bear which accompanies a greeting; copyrighting a
drawing of a bear in connection with a “Huggi-Gram” in 1988;
obtaining the telephone number in 1996; and having bears
manufactured with a label displaying applicant’s mark.3
Opposer has filed a reply brief, which we have
considered.
We find, from the evidence submitted by the parties,
that there exists no genuine issue of material fact that
opposer’s use of 1-800-949-HUGS as a service mark to
identify telephone shop-at-home services in the field of
stuffed toys began in 1994.
Conversely, applicant has offered no contradictory
evidence on summary judgment as to priority of use. Viewing

2 See Exhibit D to opposer’s affidavit, which sets forth an
advertisement using the service mark together with a copyright
date of 1994. While opposer has submitted copies of his
telephone bill for the number dating back to 1992, the bill only
shows the telephone number and does not demonstrate service mark
use.
3 The initial date for manufacturing of bears is not provided.
However, since the mark in question involves the telephone
number, any manufacturing prior to 1996 is unrelated to use of
the mark.
Opposition No. 104,585
5
the evidence in the light most favorable to applicant,
applicant has established that she used her mark on bears in
1996; and that she has a constructive use date of February
12, 1996 based on the filing date of the opposed
application.
In that opposer has established use of his 1-800-949-
HUGS mark prior to applicant’s constructive use date for her
1-800-324-HUGS mark, we find that there is no genuine issue
of material fact and that it is opposer who has priority of
use of a telephone number mark.
We turn next to the issue of likelihood of confusion.
Having carefully considered the materials and arguments
submitted by the parties in connection with the issue of
likelihood of confusion, we find that the parties’ telephone
number marks are virtually identical when considered in
their entireties.
Further, there is no genuine issue of material fact
that the parties’ respective services are the same. Opposer
has established that its services involve a person calling
the 1-800-949-HUGS telephone number and ordering a
personalized gift to be sent to a designated recipient.
That personalized gift is a stuffed teddy bear that is
called “HUGS” together with a personalized message called a
“HUG-GRAM” and other items, if selected. Applicant’s
services are described as involving the sale of a “Huggi-
Opposition No. 104,585
6
Bear” which carries a “Huggi-Gram” and provides a telephonic
hug when people call to order one. Applicant’s application
reads “telephone shop-at-home services in the field of
stuffed toys.” Thus, opposer has established that the
services, too, are virtually the same.
As to the channels of trade, applicant states that she
does not plan to compete with the floral industry, as
opposer does; and she does not set up displays in
restaurants and gift shops, although her bears have appeared
at an international airport. However, applicant’s services,
as identified in her application, are not limited to
specific channels of trade and must therefore be deemed to
be sold or likely to be sold in all channels appropriate for
such services. Therefore, applicant’s telephone shop-at-
home services in the field of stuffed toys must be
considered to be sold in the same channels of trade as
opposer’s services. Considering the virtual identity
between the marks, we find that, when used on the
respectively identified services, confusion is likely to
result.4

4 We note that applicant’s response to opposer’s motion
includes many assertions of fact and arguments intended to
establish applicant’s good faith adoption of her mark and the
absence of any intent to trade on opposer’s good will. These are
issues to be considered in the likelihood of confusion analysis,
and we draw all reasonable inferences on these issues in favor of
applicant. Nonetheless, other likelihood of confusion factors so
favor opposer that good faith adoption and an absence of any
intent to trade on opposer’s good will cannot support a
conclusion that there is no likelihood of confusion.
Opposition No. 104,585
7
Therefore, because the Board finds that there is no
genuine issue of material fact on the issues of priority and
likelihood of confusion, and that opposer is entitled to
judgment as a matter of law, opposer’s motion for summary
judgment is granted. Judgment is hereby entered against
applicant, the opposition is sustained and registration to
applicant is refused.
R. F. Cissel
G. D. Hohein
G. F. Rogers
Administrative Trademark
Judges, Trademark Trial
and Appeal Board