Thompson & Co. of Tampa, Inc.v.Catherine M. Masingale

Trademark Trial and Appeal BoardJul 26, 2012

No. 91197484 (T.T.A.B. Jul. 26, 2012)

Mailed: July 26, 2012 UNITED STATES PATENT AND TRADEMARK OFFICE _____ Trademark Trial and Appeal Board ______ Thompson & Co. of Tampa, Inc. v. Catherine M. Masingale _____ Opposition No. 91197484 to application Serial No. 85070219 filed on June 23, 2010 _____ Arthur W. Fisher III of Arthur W. Fisher III PA for Thompson & Co. of Tampa, Inc. Catherine M. Masingale, pro se ______ Before Seeherman, Kuhlke and Wolfson, Administrative Trademark Judges. Opinion by Kuhlke, Administrative Trademark Judge: Applicant, Catherine M. Masingale, seeks registration of the mark FATBOY in standard characters for goods identified in the application as “cigar and cigarette boxes; cigar and cigarette boxes not of precious metal; cigar and cigarette boxes of precious metal; cigar boxes; cigar boxes not of precious metal; cigar boxes of precious metal; cigar cases; cigar cases of precious metal; cigar cutters; cigar holders; cigar holders of precious metal; cigar humidifiers; THIS OPINION IS NOT A PRECEDENT OF THE T.T.A.B. Opposition No. 91197484 2 cigar lighters; cigar tubes; cigar wraps; cigars; filtered cigars and cigarettes; holders for cigar and cigarette of precious metal; holders for cigars and cigarettes; holders of cigars and cigarettes of precious metal; non-electric cigar lighters not of precious metal; smokers’ articles, namely, cigar glue; smokers’ articles, namely, cigar relighting liquid solution; smokers’ articles, namely, cigar storage tubes; smokers’ articles, namely, containment clips used to keep a cigar from falling apart; smokers’ articles, namely, outdoor cigar and cigarette disposal units; smokers’ articles, namely, outdoor receptacles for cigar and cigarette ash and waste; tobacco, cigars and cigarettes” in International Class 34.1 Opposer, Thompson & Co. of Tampa, Inc., has opposed registration of applicant’s mark on the ground that, as applied to applicant’s goods, the mark so resembles opposer’s previously used mark FAT BOY for cigars as to be likely to cause confusion under 2(d) of the Lanham Act, 15 U.S.C. §1052(d). Applicant has filed an answer denying the salient allegations. 1 Serial No. 85070219, filed June 23, 2010, alleging a bona fide intent to the use the mark in commerce under Section 1(b) of the Trademark Act, 15 U.S.C. §1051(b). We recognize that some of the items listed in the identification are essentially duplicates, e.g., “holders for cigar and cigarette of precious metal” and “holders of cigars and cigarettes of precious metal”; however, this is the identification for the application as published. Opposition No. 91197484 3 The evidence of record consists of the pleadings herein and the file of the opposed application. In addition, opposer submitted, under a notice of reliance, opposer’s requests for admissions. In its notice, counsel for opposer states that no responses to the requests were served by applicant. The requests for admissions are therefore deemed admitted because of applicant’s failure to respond. See Fed. R. Civ. P. 36. Opposer also submitted the testimony depositions, with exhibits, of Debbie Vento, opposer’s Catalog Production Manager, and Joseph Silvestro, opposer’s Vice President of Merchandising. Applicant did not take any testimony, file a notice of reliance or file a brief.2 STANDING As discussed below, opposer has established trademark rights in the mark FAT BOY as used in connection with “cigars” and has demonstrated a real interest in opposing registration for the mark FATBOY. See Ritchie v. Simpson, 170 F.3d 1092, 50 USPQ2d 1023 (Fed. Cir. 1999); Jewelers Vigilance Committee, Inc. v. Ullenberg Corp., 823 F.2d 490, 2 USPQ2d 2021 (Fed. Cir. 1987); Lipton Industries, Inc. v. 2 The material attached to applicant’s answer is not evidence for applicant. See Trademark Rule 2.122(c), 37 C.F.R. § 2.122(c) (an exhibit attached to a pleading is not evidence on behalf of the party to whose pleading the exhibit is attached unless identified and introduced in evidence as an exhibit during the period for the taking of testimony). See also Republic Steel Co. v. M.P.H. Mfg, Corp., 312 F.2d 940, 136 USPQ 447, 448 (CCPA 1963) and Hard Rock Cafe Intl (USA) Inc. v. Elsea, 56 USPQ2d 1504, 1511 (TTAB 2000). Opposition No. 91197484 4 Ralston Purina Co., 670 F.2d 1024, 213 USPQ 185 (CCPA 1982). Thus, opposer has established its standing. PRIORITY Because opposer has not pleaded any registrations, opposer must rely on its common law use to prove its priority. Inasmuch as applicant has not established use of her mark in connection with her goods prior to the filing date of her application, the earliest date upon which applicant may rely for priority purposes is June 23, 2010. Thus, in order to establish priority, opposer must show that it used its mark in connection with its goods prior to June 23, 2010. Opposer first advertised its cigars under the FAT BOY mark in its December 2000 catalog.3 Opposer has continuously sold cigars under the mark FAT BOY since at least February 20, 2001.4 Thus, we find that opposer made use of its mark FAT BOY for cigars prior to the filing of applicant’s application. We further find that the mark FAT BOY is inherently distinctive. Otto Roth & Co., Inc. v. Universal Foods Corp., 640 F.2d 1317, 209 USPQ 40 (CCPA 1981). While the term FAT, could be suggestive of the size of the cigars, without more, we cannot say that it is merely descriptive of 3 Vento Test. p. 16, Exh. 9. 4 Vento Test. pp. 24, 32, Exhs. 15 (sales reports for 2005-2011), and 17 (reorder notice report, including 2001 orders). Opposition No. 91197484 5 the cigars. Moreover, there is no evidence of record to indicate that FAT BOY is not inherently distinctive for cigars. In view of the evidence and testimony presented as to opposer’s use prior to applicant’s June 23, 2010 filing date, opposer has established its priority with respect to its common law rights in the mark FAT BOY for cigars. LIKELIHOOD OF CONFUSION Our likelihood of confusion determination under Section 2(d) 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 and 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). Two key considerations are the similarities between the marks and the similarities between the goods. See Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24 (CCPA 1976). We turn first to a consideration of the goods, channels of trade and class of purchasers. We must make our determinations under these factors based on the goods as they are recited in the application. See In re Elbaum, 211 USPQ 639 (TTAB 1981). The “cigars” listed in the application are identical to opposer’s “cigars.” It is sufficient for a finding of Opposition No. 91197484 6 likelihood of confusion if the relatedness is established for any item encompassed by the identification of goods within a particular class in the application. Tuxedo Monopoly, Inc. v. General Mills Fun Group, 648 F.2d 1335, 209 USPQ 986 (CCPA 1981); Baseball America Inc. v. Powerplay Sports Ltd., 71 USPQ2d 1844, 1847 n.9 (TTAB 2004). We further note that most of applicant’s remaining goods are related in the sense that they would be used with cigars. In re Martin's Famous Pastry Shoppe, Inc., 748 F.2d 1565, 223 USPQ 1289 (Fed. Cir. 1984) (complementary goods sufficiently related such that they could be encountered by the same purchasers under circumstances that could give rise to the mistaken belief that the goods come from a common source). Considering the channels of trade and classes of purchasers, because there are no limitations as to channels of trade or classes of purchasers in the application, we must presume that applicant’s goods will be sold in all ordinary channels of trade and will be offered to all ordinary classes of purchasers for these goods. See Hewlett-Packard Co. v. Packard Press Inc., 281 F.3d 1261, 62 USPQ2d 1001 (Fed. Cir. 2002). Because applicant’s identified “cigars” are legally identical to the cigars for which opposer has established prior rights in its mark, the channels of trade for these Opposition No. 91197484 7 goods must be deemed to be the same. Further, the record establishes that all of the involved goods could be sold in stores that sell various tobacco products, on the internet, and via mail order. Opposer has established that it sells its cigars online and via mail order. Thus, the channels of trade and classes of purchasers overlap to the extent that applicant may also sell her goods via these channels and to these purchasers. In view of the above, the du Pont factors of the similarity of the goods, the channels of trade and classes of purchasers favor a finding of likelihood of confusion. We now consider the similarity or dissimilarity of the marks FATBOY and FAT BOY when compared in their entireties in terms of appearance, sound, connotation and commercial impression, keeping in mind that “when marks would appear on virtually identical goods or services, the degree of similarity necessary to support a conclusion of likely confusion declines.” Century 21 Real Estate Corp. v. Century Life of America, 970 F.2d 874, 23 USPQ2d 1698, 1701 (Fed. Cir. 1992). The only difference between the involved marks is the space in opposer’s mark. In this case, the space or absence of the space does not change the sound, connotation or commercial impression of the marks. Thus, we consider these marks to be identical. Opposition No. 91197484 8 Considering the similarity of the marks, the relatedness of the goods, and the overlap in channels of trade and classes of customers, we conclude that the evidence of record as it pertains to the relevant du Pont factors supports a finding of a likelihood of confusion as between applicant’s FATBOY mark and opposer’s FAT BOY mark, such that registration of applicant’s mark is barred under Trademark Act Section 2(d). As noted above, applicant has not submitted any evidence, taken any testimony or presented any legal argument to rebut opposer’s showing. Decision: The opposition is sustained.