Tony Marterie & Associatesv.Blast Eyewear, Inc.

Trademark Trial and Appeal Board

Dec 28, 1999

No. 92023852 (T.T.A.B. Dec. 28, 1999)

Paper No. 38
cmb

THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB DEC. 28, 99

U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

Tony Marterie & Associates dba North Coast Industries
v.
Blast Eyewear, Inc.1
_____

Cancellation No. 23,852
_____

Robert B. Chickering of Flehr Hohbach Test Albritton &
Herbert LLP for Tony Marterie & Associates dba North Coast
Industries.

Blast Eyewear, Inc., pro se.
_____

Before Cissel, Seeherman and Bottorff, Administrative
Trademark Judges.

Opinion by Bottorff, Administrative Trademark Judge:

This cancellation proceeding involves respondent’s
Registration No. 1,590,583, which is of the mark BLAST (in
typed form).2 As of the commencement of this proceeding,

1 Substituted for W.R. Pearson dba Blast Eyewear, Inc., pursuant
to assignment recorded September 24, 1999 at Reel 1963, Frame
0653.

2 The registration issued on April 10, 1990, under Trademark Act
Section 44(e). It arose from application Serial No. 73/612,859,
filed August 4, 1986, in which a Section 44(d) priority claim was
Cancellation No. 23,852
2
the registration identified the following goods and
services: “sunglasses, radios, audio tape players, videotape
players, electric cigarette lighters” in Class 9; “watches”
in Class 14; “pens, pencils, paper party decorations” in
Class 16; “non-toy coin banks” in Class 20; “paper face
masks, toy coin banks” in Class 28; “ashtrays, non-electric
cigarette lighters” in Class 34; and “retail store services
specializing in sunglasses, audio equipment, smokers’
accessories, pens, coin banks and novelty items such as
party decorations and face masks” in Class 42.
On March 17, 1995, petitioner filed a petition to
cancel the registration in its entirety, asserting as
grounds therefor that respondent has abandoned the
registered mark due to non-use, and that the registered
mark, as applied to the goods and services identified in the
registration, is likely to cause confusion vis-à-vis
petitioner’s previously-used and registered family of BLAST
marks for clothing. On April 10, 1996, after commencement
of this proceeding and service of notice thereof on
respondent, respondent filed a Section 8 affidavit in the
Post-Registration Section of this Office by which it
asserted that the mark remained in use only on “sunglasses”
in Class 9 and “retail store services specializing in
sunglasses” in Class 42. On May 11, 1998, the registration

asserted based on a Canadian application filed on February 4,
Cancellation No. 23,852
3
was cancelled under Section 8 as to all of the other goods
and services identified in the registration.
On September 14, 1999, the Board issued an order
allowing respondent time to show cause why judgment should
not be entered against it under Trademark Rule 2.134 as to
the cancelled goods and services. Respondent did not
respond to the Board’s show cause order. In view thereof,
judgment is hereby entered against respondent on
petitioner’s abandonment and Section 2(d) grounds for
cancellation, as to all of the goods and services which were
identified in the registration as of the commencement of
this proceeding, listed above, except for “sunglasses” in
Class 9 and “retail store services specializing in
sunglasses” in Class 42. See Trademark Rule 2.134.
Thus, the only matters remaining for decision in this
case are petitioner’s pleaded abandonment and Section 2(d)
grounds for cancellation as they apply to the goods and
services remaining in the registration, i.e., “sunglasses”
in Class 9 and “retail store services specializing in
sunglasses” in Class 42. The record before us consists of
the file of the involved registration, the pleadings, the
testimony deposition of petitioner’s president, Tony
Marterie, and exhibits attached thereto, and respondent’s
notice of reliance on petitioner’s answers to certain of

1986.
Cancellation No. 23,852
4
respondent’s interrogatories. Petitioner filed a brief on
the case, but respondent filed no brief. No oral hearing
was requested.
We turn first to the issue of abandonment. The burden
of proof is on the petitioner to establish abandonment by a
preponderance of the evidence. See Cerveceria
Centroamericana S.A. v. Cerveceria India Inc., 892 F.2d
1021, 13 USPQ2d 1307, 1309 (Fed. Cir. 1989). Under the
Lanham Act, a federally registered trademark is considered
abandoned if its “use has been discontinued with intent not
to resume.” Trademark Act Section 45, 15 U.S.C. §1127.
Under the law in effect when this proceeding was commenced
in 1995, proof of nonuse of the mark in the United States
for two consecutive years was sufficient to establish a
prima facie case of abandonment.3 See Rivard v. Linville,
133 F.3d 1446, 45 USPQ2d 1374 (Fed. Cir. 1998).
Petitioner, upon whom the burden of proof rests, failed
to present any evidence in support of its pleaded
allegations of respondent’s nonuse of the registered mark in
commerce on or in connection with sunglasses and retail
store services specializing in sunglasses. In view thereof,
and in view of respondent’s denial, in its answer, of

3 Section 45 of the Trademark Act was amended, effective January
1, 1996, to extend the minimum period of nonuse necessary to
establish a prima facie case of abandonment to three consecutive
years. See Uruguay Round Agreements Act, Pub. L. No. 103-465,
§521, 108 Stat. 4809, 4981-82 (1994).
Cancellation No. 23,852
5
petitioner’s allegations of nonuse as to those goods and
services, we find that petitioner has failed to make out a
prima facie case of abandonment. Accordingly, we dismiss
the petition to cancel insofar as it seeks cancellation, on
the ground of abandonment, of respondent’s registration for
“sunglasses” in Class 9 and “retail store services
specializing in sunglasses” in Class 42.
We turn next to petitioner’s Section 2(d) ground for
cancellation. Petitioner alleges in the petition to cancel
that, since prior to the earliest date upon which respondent
might rely for priority purposes, petitioner has used the
trademark BLAST for various items of wearing apparel; that
petitioner has used and is the owner of a family of
trademarks for wearing apparel using the formative BLAST,
and is the owner of several federal trademark registrations
for members of its BLAST family of marks4; and that

4 Petitioner pleaded ownership of the following registrations:

Registration No. 1,613,960, issued September 18, 1990, of
the mark BLAST for “women’s wearing apparel, namely, tops,
pants and skirts”;

Registration No. 1,613,961, issued September 18, 1990, of
the mark BLASTMAN for “women’s wearing apparel, namely,
tops, pants, skirts, jackets, dresses and shorts”;

Registration No. 1,618,860, issued October 23, 1990, of the
mark BLAST FOR MEN and design, for “men’s clothing, namely
pullover tops, shirts and pants”;

Registration No. 1,651,190, issued July 16, 1991, of the
mark BLAST POINT for “wearing apparel, namely, tops, pants,
skirts, jackets, dresses and shorts”;

Cancellation No. 23,852
6
respondent’s registered mark BLAST, as applied to the goods
and services identified in the registration, so resembles
petitioner’s BLAST mark as to be likely to cause confusion,
to cause mistake, or to deceive. Respondent, in its answer,
denied the essential allegations of petitioner’s Section
2(d) ground for cancellation.
The evidence of record establishes petitioner’s
priority. On this record, the earliest date upon which
respondent can rely for priority purposes is February 4,
1986, the filing date of the Canadian application which
served as the basis of respondent’s §44(d) priority claim in
the application which matured into respondent’s involved

Registration No. 1,853,164, issued September 6, 1994, of the
mark BLAST BLUES for “men’s women’s and children’s wearing
apparel, namely, pants, shorts, jackets, tops, suits,
jumpers, skirts, jogging suits, overalls, coveralls,
scarves, gloves, sweaters, hats, jerseys, t-shirts,
sweatshirts, belts, vests and footwear";

Registration No. 1,543,619, issued June 13, 1989, of the
mark BLAST OFF and design for “children’s clothing, namely,
pants, shirts, sweaters, jackets, suits, jumpers, shorts,
skirts, jog suits, overalls, and coveralls.”

Petitioner introduced status and title copies, dated November 22,
1996, of these registrations as exhibits to the December 3, 1996
testimony deposition of its president, Tony Marterie. Each of
the registrations was certified to be in full force and effect.
However, the Board’s recent review of the Office’s automated
records reveals that Registration No. 1,613,961 (BLASTMAN) was
cancelled under Section 8 on March 24, 1997, and that
Registration No. 1,543,619 (BLAST OFF and design) was cancelled
under Section 8 on December 18, 1995. (It is unclear why the
November 22, 1996 status and title copy of Registration No.
1,543,619 erroneously states that the registration was in full
force and effect as of that date.) The Office’s records reveal
that the other pleaded registrations made of record by petitioner
remain extant and are owned by petitioner.

Cancellation No. 23,852
7
registration. According to the uncontroverted deposition
testimony of petitioner’s president, Mr. Marterie,
petitioner has used its BLAST mark on clothing since August
1985. Accordingly, we find that priority rests with
petitioner in this case.
With respect to likelihood of confusion, our
determination is based on an analysis of all of the
probative facts in evidence that are relevant to the factors
bearing on the likelihood of confusion issue. See In re
E.I. du Pont de Nemours and Co., 476 F.2d 1357, 177 USPQ 563
(CCPA 1973). In any likelihood of confusion analysis, two
key considerations are the similarities between the marks
and the similarities between the goods and/or services. See
Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d
1098, 192 USPQ 24, 29 (CCPA 1976). We shall analyze
petitioner’s likelihood of confusion claim first with
respect to respondent’s goods, i.e., “sunglasses,” and then
with respect to respondent’s services, i.e., “retail store
services specializing in sunglasses.”
We find that respondent’s mark BLAST is identical to
petitioner’s primary mark BLAST.5 Moreover, we find that

5 We reject petitioner’s contention that it owns a “family” of
BLAST marks. There is no evidence showing that petitioner has
used and promoted its marks in the manner of a family of marks.
See J & J Snack Foods Corp. v. McDonald’s Corp., 932 F.2d 1460,
18 USPQ2d 1889 (Fed. Cir. 1991); American Standard, Inc. v. Scott
& Fetzer Co., 200 USPQ 457 (TTAB 1978).
Cancellation No. 23,852
8
petitioner’s BLAST mark is a strong mark. That is, BLAST is
an arbitrary term as applied to petitioner’s goods, and
there is no evidence of any third-party use of marks which
consist or are comprised of the word BLAST, either for the
goods and services involved in this case or for any other
goods and services.
The relative strength of petitioner’s mark is further
established by petitioner’s evidence of its extensive use
and promotion of the mark. See Pasco, Inc. v. Diamond
Shamrock Corporation, 191 USPQ 59 (TTAB 1976). In view of
the parties’ confidentiality agreement and the stipulated
protective order of record in this case, we will not mention
petitioner’s specific sales and advertising figures in this
opinion, but we can state that petitioner’s gross sales, in
terms of unit and dollar volumes, are substantial.
Petitioner’s clothing products are sold in over 2,000 stores
throughout the United States, including specialty retail
shops and leading department stores such as Nordstrom,
Macy’s, Hecht’s, Marshall Fields, J.C. Penney and Dayton
Hudson. Petitioner distributes substantial amounts of its
own advertising materials directly to retailers and to
retail customers, and also advertises its products in the
department stores’ own widely-distributed catalogs. Retail
stores do in-store advertising of petitioner’s BLAST

Cancellation No. 23,852
9
clothing products, such as placing signage bearing
petitioner’s mark on the racks bearing petitioner’s clothes,
and they also feature petitioner’s products in their own
newspaper advertisements.
We turn next to the question of the similarity of the
parties’ respective goods and services. Because the
parties’ marks are identical, there need be only a viable
relationship between their respective goods and services in
order to find that a likelihood of confusion exists. See In
re Concordia International Forwarding Corp., 222 USPQ 355
(TTAB 1983). Moreover, because petitioner’s BLAST mark is a
strong mark, as discussed above, it is entitled to a
relatively broad scope of protection. See Pasco, Inc. v.
Diamond Shamrock Corporation, supra; Baker Industries, Inc.
v. Bowers, 191 USPQ 260 (TTAB 1976); Andrea Radio
Corporation v. Premium Import Co., Inc., 191 USPQ 232 (TTAB
1976).
We find that “sunglasses,” the goods identified in
respondent’s involved registration, are sufficiently related
to petitioner’s clothing products that confusion is likely
to result if they are sold under the identical, strong and
arbitrary mark BLAST. That is, we find that sunglasses and
clothing, particularly sportswear items like petitioner’s,
are complementary products. It appears from petitioner’s
president’s uncontroverted testimony that clothing
Cancellation No. 23,852
10
manufacturers commonly market numerous accessory items,
including sunglasses, under the same marks that they use for
their clothing products; that this is true not only for
designer name marks like Calvin Klein and Donna Karan, but
also for non-designer name marks such as Esprit and Nike;
that customers are accustomed to seeing sunglasses and
clothing items advertised and sold under the same mark in
the same department stores; and that every department store
which carries petitioner’s clothing products also carries
eyewear or sunglasses.
Additionally, because the identification of goods in
respondent’s registration does not limit the trade channels
and classes of customers for respondent’s sunglasses, we
must presume that the sunglasses are marketed in all normal
trade channels and to all normal classes of customers for
such products. See In re Elbaum, 211 USPQ 639 (TTAB 1981).
The evidence of record establishes that the normal trade
channels for sunglasses include department stores such as
those in which petitioner’s clothing products are sold.
Respondent has made of record petitioner’s
interrogatory answer by which petitioner admits that it is
unaware of any instances of actual confusion. We have not
accorded the apparent absence of actual confusion
significant weight in our likelihood of confusion analysis
in this case, in view of the fact that there is no evidence
Cancellation No. 23,852
11
as to the extent of respondent’s use of its mark on
sunglasses and thus no evidence as to whether there has been
a significant opportunity for actual confusion to have
occurred. See Gillette Canada Inc. v. Ranir Corp., 23
USPQ2d 1768 (TTAB 1992). Accordingly, although we have
considered this evidence, we find that the absence of actual
confusion is not sufficient, in this case, to outweigh the
other evidence of record which supports a finding of
likelihood of confusion.
For the reasons discussed above, we find that
respondent’s use of BLAST as a mark for sunglasses is likely
to cause confusion vis-à-vis petitioner’s clothing products
sold under the identical mark. In view thereof, and in view
of petitioner’s priority, we find that petitioner has
established its Section 2(d) ground for cancellation of
respondent’s registration with respect to Class 9
“sunglasses.”
We also find that petitioner is entitled to prevail on
its Section 2(d) ground for cancellation of respondent’s
registration with respect to Class 42 “retail store services
specializing in sunglasses.” As discussed above,
petitioner’s BLAST mark is a strong and arbitrary mark which
is entitled to a broad scope of protection, given
petitioner’s widespread use and promotion of the mark and
the absence of any evidence of third-party use of similar
Cancellation No. 23,852
12
marks on similar goods or services. Pasco, Inc. v. Diamond
Shamrock Corporation, supra. Respondent’s mark is identical
to this strong and arbitrary mark of petitioner’s, a factor
which weighs heavily against respondent in our likelihood of
confusion analysis. See In re Martin’s Famous Pastry
Shoppe, Inc., 748 F.2d 1565, 223 USPQ 1289, 1290 (Fed. Cir.
1984).
In these circumstances, it is not dispositive that
petitioner’s goods and respondent’s services are not the
same. Because the parties’ marks are identical, there need
be only a viable relationship between their respective goods
and services in order to support a finding of likelihood of
confusion. In re Concordia Forwarding Corp. supra. We find
that the requisite relationship exists in this case. The
evidence of record establishes the existence of a close,
complementary relationship between sunglasses and clothing
items such as petitioner’s. In view of that relationship,
it is likely that purchasers familiar with clothing sold
under petitioner’s strong and arbitrary mark BLAST, upon
encountering BLAST retail stores specializing in sunglasses,
would be likely to mistakenly assume that a source,
sponsorship or other connection exists.
Indeed, to find for respondent on this issue, we
essentially would have to conclude that the degree of
dissimilarity between petitioner’s goods and respondent’s
Cancellation No. 23,852
13
services is so great as to outweigh all of the other
evidence of record, such as the identity of the marks and
the strength of petitioner’s mark, which supports a finding
of likelihood of confusion in this case. See, e.g., Pure
Gold, Inc. v. Syntex (U.S.A.) Inc., 739 F.2d 624, 222 USPQ
741 (Fed. Cir. 1984). We cannot so conclude. Rather, after
carefully considering all of the evidence of record
pertaining to the relevant du Pont factors, we conclude that
a likelihood of confusion exists as between petitioner’s
BLAST clothing products and respondent’s BLAST retail store
services specializing in sunglasses.6 In view thereof, and
in view of petitioner’s priority, we find that petitioner
has established its Section 2(d) ground for cancellation of
respondent’s registration with respect to Class 42 “retail
store services specializing in sunglasses.”
In summary, as to all of the goods and services
identified in the registration as of the commencement of
this proceeding except for “sunglasses” in Class 9 and
“retail store services specializing in sunglasses” in Class
42, judgment is hereby entered against respondent pursuant

6 As was the case with respect to respondent’s sunglasses, see
supra at pp. 10-11, we have accorded no significant weight in our
likelihood of confusion analysis to the apparent absence of any
instances of actual confusion between petitioner’s goods and
respondent’s services. There is no evidence as to the extent of
respondent’s use of its mark in connection with such services,
and thus there is no basis for concluding that any meaningful
opportunity for actual confusion has existed. See Gillette
Canada Inc. v. Ranir Corp., supra.

Cancellation No. 23,852
14
to Trademark Rule 2.134. As to “sunglasses” in Class 9 and
“retail store services specializing in sunglasses” in Class
42, the petition to cancel is dismissed with respect to
petitioner’s abandonment ground, but is granted with respect
to petitioner’s Section 2(d) ground.

Decision: The petition to cancel is granted.

R. F. Cissel

E. J. Seeherman

C. M. Bottorff

Administrative Trademark Judges
Trademark Trial and Appeal Board