Travel Impressions, Ltd.v.Intrav Receptive Services, Inc.

Trademark Trial and Appeal Board

Jan 19, 1999

No. 91100065 (T.T.A.B. Jan. 19, 1999)

Paper No. 23
GDH/gdh
THIS DISPOSITION IS NOT CITABLE AS PRECEDENT
OF THE TTAB JAN. 19,99
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
_____
Trademark Trial and Appeal Board
_____
Travel Impressions, Ltd.
v.
Intrav Receptive Services, Inc.
_____
Opposition No. 100,065
_____
Michael T. Platt, Mark A. Bergsman and Bonnie G. Klein of
Dickinson, Wright, Moon, Van Dusen & Freeman for Travel
Impressions, Ltd.
Brian J. Hundertmark of Roberts & Hundertmark for Intrav
Receptive Services, Inc.
_____
Before Hohein, Hairston and Wendel, Administrative Trademark
Judges.
Opinion by Hohein, Administrative Trademark Judge:
Intrav Receptive Services has filed an application to
register the mark "TEDDY BEAR TOURS" for "travel agency
services[,] namely, arranging travel tours".1
Travel Impressions, Ltd. has opposed registration on
the ground that, since at least as early as 1976, it continuously
"has used designs of a teddy bear ... to identify and distinguish

1 Ser. No. 74/616,241, filed on December 29, 1994, which alleges a
bona fide intention to use the mark in commerce. The word "TOURS" is
disclaimed.
Opposition No. 100,065
2
[the] arranging [of] travel tours and related services"; that it
is the owner of a valid and subsisting registration for a mark,
"consisting of the design of a teddy bear" as shown below,
for the services of "arranging travel tours";2 that applicant’s
mark "is the identical literal equivalent" of opposer’s teddy
bear design mark; that the respective marks "conjure up the same
mental image or suggestion"; and that applicant’s "TEDDY BEAR
TOURS" mark, when used in connection with its services, so
resembles opposer’s registered teddy bear design mark as to be
likely to cause confusion, mistake or deception.
Applicant, in its answer, has denied the salient
allegations of the notice of opposition.
The record includes the pleadings; the file of the
opposed application; and, as part of opposer’s case-in-chief, the
testimony, with exhibits, of one of its three co-presidents and
chief executive officers, Jeffrey D. Tolkin, and the testimony,
with exhibits, of a self-employed graphics designer, Katherine
Willis Burk. Opposer, as the rest of its case-in-chief, has
submitted notices of reliance upon certain of applicant’s
responses to opposer’s first set of interrogatories and requests

2 Reg. No. 1,362,505, issued on September 24, 1985, which sets forth
dates of first use of 1976; combined affidavit §§8 and 15.
Opposition No. 100,065
3
for production of documents; various official records of the
Patent and Trademark Office ("PTO") consisting of third-party
registrations and application drawings of marks containing the
words "TEDDY BEAR" and/or depictions of teddy bears; dictionary
definitions of the term "teddy bear"; and copies of two
children’s books featuring illustrations of teddy bears.
Applicant, although it did not take testimony, furnished as its
case-in-chief a notice of reliance upon opposer’s various
responses to certain of applicant’s interrogatories, requests for
production of documents3 and requests for admissions; copies of
third-party registrations for marks featuring teddy-bear and
other bear designs;4 a dictionary definition of the term "teddy

3 It is pointed out that under Trademark Rule 2.120(j)(3)(i),
responses to requests for production of documents are not listed as
constituting proper subject matter for a notice of reliance.
Moreover, under Trademark Rule 2.120(j)(3)(ii), documents obtained
through a request for production may not be made of record by a
notice of reliance alone unless they also qualify, as happens to be
true of only some of the documents filed by applicant, either as
official records or printed publications, available to the general
public in libraries or in general circulation, within the meaning of
Trademark Rule 2.122(e). Nevertheless, inasmuch as opposer, in its
main brief, has treated such responses and documents as forming part
of the record, the evidence is deemed to constitute a stipulation of
the facts of the case, as provided by Trademark Rule 2.123(b)(2), and
has accordingly been given consideration.
4 Opposer, in its main brief, "objects to the introduction of the
registrations" on the basis that applicant "did not assert
acquiescence as an affirmative defense." Specifically, opposer
points to applicant’s statement in the notice of reliance that
opposer "has been aware of other marks that are similar to its
registered mark and has acquiesced in their use" and argues that
"[a]n unpleaded defense cannot be relied upon by the defendant unless
the defendant’s pleading is amended (or deemed amended), pursuant to
FED.R.CIV.P. 15(a) or (b), to assert the matter," which is not the
case in this proceeding. However, as applicant correctly notes in
its brief, its notice of reliance also specifies, among other things,
that the evidence is relevant and admissible inasmuch as it
demonstrates that "the marks at issue are not similar" and that "the
registered mark is weak". In view thereof, the third-party
Opposition No. 100,065
4
bear"; and excerpts from a printed publication.5 Briefs have
been filed, but an oral hearing was not requested.
Opposer’s priority of use of its registered mark is not
in issue inasmuch as the record satisfactorily establishes that
its pleaded registration is subsisting and owned by opposer. See
King Candy Co. v. Eunice King’s Kitchen, Inc., 496 F.2d 1400, 182
USPQ 108, 110 (CCPA 1974). Specifically, the testimony of Mr.
Tolkin indicates, with respect to the introduction of a plain
copy of its pleaded registration, that such exhibit "is the
registration of our teddy bear mark" and that the registration is
"active," it "has been in continuous use since it was filed" and
it has had all statutory declarations of use and incontestability
filed in connection therewith. In addition, opposer’s discovery
responses state, among other things, that opposer "is the owner

registrations have been considered for whatever probative value they
may have for such purposes.
5 Such excerpts, consisting of certain pages from the 1994 edition of
Travel Law by Thomas A. Dickerson, have been objected to by opposer
in its reply brief on the grounds that "the treatise has not been
shown to be a publication in general circulation, as required for
publications entered in evidence by Notice of Reliance under
Trademark Rule 2.122(e)," and "the matter is offered to prove the
truth of the matter asserted and is hearsay." Opposer’s objection is
denied. Aside from the fact that a legal "treatise," as opposer
characterizes the Travel Law book, would likely be available to the
general public in most major libraries, it is settled that, like
dictionaries, the Board may properly take judicial notice, for the
truth of the matter stated therein, of information appearing in
standard reference works, such as encyclopedias and treatises. See,
e.g., In re Hartop & Brandes, 311 F.2d 249, 135 USPQ 419, 420 (CCPA
1962) at n. 6. By its notice of reliance, applicant in essence was
inviting the Board to take judicial notice of the factual information
contained in the excerpts from the Travel Law treatise and opposer,
although it had a full and fair opportunity to counter such evidence,
offered nothing during its rebuttal testimony period. Accordingly,
we have considered the excerpts furnished by applicant for their
appropriate probative value as to the asserted sophistication of
travel agent purchasers.
Opposition No. 100,065
5
of U.S. Registration No. 1,362,505 for a teddy bear logo" and
reveal that a combined declaration under Sections 8 and 15 of the
Trademark Act was timely filed and accepted. (Answer to
Interrogatory No. 7 of Applicant’s Second Set of Interrogatories
and supplemental response to Request No. 1 of Applicant’s First
Set of Requests for Production of Documents.) Moreover, and in
any event, the record demonstrates that opposer is in fact the
prior user of its pleaded mark, having continuously used its
teddy bear logo since 1976, while applicant, since it did not
commence use of its "TEDDY BEAR TOURS" mark until May 1995, can
at best claim the December 29, 1994 filing date of its
application as the earliest date upon which it can rely in this
proceeding.6 Accordingly, as applicant acknowledges in its
brief, the only issue to be determined is whether its "TEDDY BEAR
TOURS" mark, when used in connection with travel agency services,
namely, arranging travel tours, so resembles opposer’s registered
mark for the identical services of arranging travel tours that
confusion is likely as to the origin or affiliation of such
services.
According to the record, opposer is engaged "in the
business of selling air land vacations through travel agents to
the consuming public." (Tolkin dep. at 6.) In particular,
opposer acts as a "tour operator/wholesaler" by "arranging and
providing all of the services and accommodations [offered] in

6 See, e.g., Zirco Corp. v. American Tel. & Tel. Co., 21 USPQ2d
1542, 1544 (TTAB 1991) [under Section 7(c) of the Trademark Act, an
intent-to-use applicant may rely upon the filing date of its
application as its constructive date of first use of its subject
mark].
Opposition No. 100,065
6
connection with [its] advertised vacations," including hotels,
rental cars and air fares. (Response to Interrogatory No. 2 of
Applicant’s First Set of Interrogatories.) Its tour packages
cover such vacation destinations as Florida, Hawaii, Las Vegas,
Mexico and the Caribbean and it plans to reintroduce tour
packages to Europe in the summer of 1997.
Although opposer has its headquarters on Long Island,
New York and maintains offices only in Bethlehem, Pennsylvania,
Atlanta, Georgia and Honolulu, Hawaii, opposer has a coast-to-
coast sales force, including agents in Ohio, North Carolina, New
Jersey, Maryland, Virginia and Washington, as well as a national
account representative who "deals with [travel] agencies from
California to Maine to Florida to Washington." (Tolkin dep. at
39.) Such persons provide opposer with "person-to-person contact
with travel agencies to encourage agencies to book ... [its
travel] packages." (Id.) On average, opposer’s sales force
"book[s] approximately 200,000 to 250,000 people a year." (Id.
at 38.)
As a way to distinguish itself in the minds of travel
agents, opposer in 1976 selected a mark consisting of "a
smiling[,] curved, friendly teddy bear in a ’travel’ pose" in
order "to convey an image of a company that focuses on service,
is warm, cuddly, user friendly and focused on vacations and
leisure." (Id. at 8.) Since the adoption thereof in 1976,
opposer has continuously used a teddy bear design in the format
shown in its pleaded registration as well as in a variety of

Opposition No. 100,065
7
other poses and costumes, all of which reflect a vacation and/or
leisure theme and which are recognizable as the same teddy bear
character. Such character is named "TIMOTHY," which "is an
acronym which stands for Travel Impressions mascot out to help
you." (Id. at 11.)
Opposer, since about 1989, has marketed its tour
packages to travel agents by holding several trade shows each
year at which representatives of airlines, hotels, rental car
companies, attractions and tourist boards have booths. The
products and services offered by such firms "are bookable
through" opposer. (Id. at 13.) In addition to use of its teddy
bear design, in various poses and costumes, on flyers announcing
such shows, Mr. Tolkin testified that:
[A]t these trade shows we use our teddy bear
front and center. And by that I mean we have
a bear costume where we have an employee walk
around as the bear. We give away a prize to
the agent who can correctly tell us what
TIMOTHY stands for.
We have used the bear consistently in
our materials and at times have played off
the bear theme by using the word "bear" in
various manifestations. For instance, one
year we used ... BEAR-ZAAR ... to connote a
carnival atmosphere and have used the word
"bear" in various uses along those lines.
(Id. at 13-14.)7 Opposer currently presents its trade shows "in
Raleigh, Charlotte, Atlanta, Baltimore, Philadelphia, New Jersey

7 Similarly, in 1993 opposer distributed a "BEARGAINS" flyer touting
its vacation travel packages, while a flyer in 1995 invited travel
agents to receive "THE ’BEAR FAX’" concerning specials on its travel
tours through a "weekly ’Beargains’ fax." (Tolkin dep. Exhibits 7
and 9.)
Opposition No. 100,065
8
and Long Island and ... [has] in the past conducted shows in
Albany, Westchester and southern Connecticut." (Id. at 14.)
Opposer, as noted previously, has used its teddy bear
design, in the format shown in its pleaded registration, since
1976 in connection with its services of arranging travel tours.
Among other things, opposer utilizes such mark, as well as
variations thereof, on its invoices, business stationery,
incentive offers to travel agents and advertising literature. In
addition, beginning in the early 1980s, opposer has given away to
travel agents small plush or stuffed teddy bears as promotional
items for its services. The reason therefor, according to Mr.
Tolkin, is that:
[W]e are constantly fighting for shelf space
in an agent’s mind. They have an incredibly
difficult job to remember and be knowledge-
able on products throughout the world and
then to try and remember which source to book
those products through.
We have found that this teddy bear is
the finest item that we can leave with a
travel agent. Most travel agents are women
and as such, they love the teddy bear on
their desk and with the ribbon that says
Travel Impressions it reminds them as to who
we are. Even the male travel agents like the
bear as it is a cuddly, soft, warm item and
it reinforces the impressions that we would
like them to have of our company.
(Id. at 30.) Opposer annually distributes between 50 to 2,000 of
such bears through its sales representatives, at its trade shows
and educational seminars, and to agents taking special trips to
familiarize themselves with opposer’s travel tour packages.
Opposer, over the years, has also given away to travel agents
Opposition No. 100,065
9
note paper holders featuring its name, telephone number and a
depiction of its "TIMOTHY" teddy bear.
Approximately 98 percent of the tour packages offered
by opposer are sold through travel agents, while the remaining
two percent of its tours are "private label programs for entities
where we do take a booking from the general public". (Id. at
57.) Opposer, as a service for the travel agents who sell its
tour packages, processes the issuance of vouchers for airline
tickets, hotels, rental cars and attractions, once a tour has
been paid for, and sends out a "bear facts" booklet which
provides customers with "some practical advice on how to make
their trip a little more pleasant." (Id. at 38.)
Opposer is not familiar with any other companies which
use a teddy bear logo in connection with arranging travel and
vacation tours, Mr. Tolkin testifying that "[t]he only company
that I know that is infringing on our teddy bear trademark is
[applicant,] Intrav." (Id. at 40.) Such knowledge, Mr. Tolkin
indicated, was based upon a report of an employee of opposer who
saw a teddy bear design in a brochure by applicant which was
available at a travel agents of the Carolinas convention held in
January 1996. Although he conceded, when asked on cross-
examination whether he was aware of any use of the words "bear"
or "teddy bear," or a depiction of such, as mark for travel-
related services by parties other than applicant, that "[t]here
may be some use of a bear or teddy bear ... in the sense that
travel is a very large umbrella," Mr. Tolkin further testified
Opposition No. 100,065
10
that he was "not aware of any such use or depiction ... in a
segment of the business similar to mine." (Id. at 55-56.)
As to whether opposer’s registered mark is a depiction
of a teddy bear and would be recognizable as such, opposer
offered the testimony of Ms. Burk, who indicated that teddy bears
posses the following general characteristics and traits:
Teddy bears have little round ears and [a]
little round muzzle. Usually a button nose,
sometimes not. Stitches for a mouth, happy.
Round paws. Sometimes they’re two-toned.
Sometimes they have clothes on. Mostly,
they’re very friendly.
(Burk dep. at 25.) In particular, when shown a copy of opposer’s
pleaded registration and asked what the mark shown therein was a
drawing of, she stated that "[t]hat’s a teddy bear going on
vacation." (Id. at 25-26.) Moreover, when asked to explain why
she thought such mark shows a teddy bear, she explained that
"he’s got that little round face and little round ears and button
eyes and stitched on nose". (Id. at 26.) For the same reasons,
Ms. Burk also identified various other poses and illustrations of
"TIMOTHY" as those of a teddy bear and, from looking at their
faces, stated that they were representations of the same teddy
bear. As to whether, as applicant contends, each of such poses
and illustrations could be that of just a cartoon bear, she
replied:
"It’s a cartoon of a teddy bear. I
mean, the rendering of it is cartoon-like.
But it is a bear, a teddy bear.
(Id. at 27.)
Opposer also introduced, in addition to Ms. Burk’s
testimony, drawings of teddy bears in two children’s books and
Opposition No. 100,065
11
copies of various third-party registrations and application
drawings of marks which contain the words "TEDDY BEAR" and/or
illustrations of teddy bears. Such evidence shows how others
have depicted teddy bears and that, by comparison, opposer’s
registered mark would likewise be regarded as a teddy bear. The
record further reveals that the term "teddy bear" is defined as:
"[a] child’s toy bear, usually stuffed
with soft material and covered with furlike
plush" -- The American Heritage Dictionary of
the English Language (3d ed. 1992) at 1843
and The American Heritage Dictionary (2d
coll. ed. 1982) at 1248; and
"a stuffed toy bear" -- Webster’s Third
New International Dictionary (1971) at 2348,
which also contains the following
as an illustration of the term so defined.
While there is relatively little information about
applicant, the record indicates that, like opposer:
Applicant is a tour operator/wholesaler.
It arranges and provides all of the services
and accommodations [needed] in connection
with packaged vacations and tours. Depending
on the package, Applicant makes arrangements
for hotels, attractions, events, [and]
transportation. The packages are sold
through tour operators and travel agents. As
part of its business, Applicant is offering
packaged programs for individuals travelling
to Florida. These individual programs are
packaged under the banner of TEDDY BEAR
TOURS.
(Answer to Interrogatory No. 1(A) of Opposer’s First Set of
Interrogatories and Request for Production of Documents.) To
Opposition No. 100,065
12
date, however, applicant has used its "TEDDY BEAR TOURS" mark
only in connection with a brochure, issued in May 1995, entitled
"FLORIDA SIGNATURE VACATIONS". Such brochure prominently
features, on both the cover page and an inside page, depictions
of a teddy bear character which, as reproduced below, is also
engaged in various vacation and leisure activities:
Applicant markets its services of arranging travel
tours by participating in trade shows, sending direct mail to
travel agencies and tour operators, and making personal visits to
travel agencies. Opposer, however, is not aware of any instances
in which a person has contacted opposer thinking he or she was
contacting applicant and admits that it has no knowledge of any
other incidents of actual confusion between its teddy bear mark
and applicant’s "TEDDY BEAR TOURS" mark involving either travel
agents or the general public.
Opposition No. 100,065
13
Applicant, in attempting to show that a bear design is
in common use in the travel field, introduced copies of various
third-party registrations for marks featuring a teddy-bear or
other bear designs. None of the registrations containing a
teddy-bear design, however, is for the same services as those
rendered by the parties to this proceeding, while those
registrations which arguably include such services as arranging
travel tours and the like are for readily distinguishable bear
designs involving grizzly bears, panda bears or koala bears.
Finally, in an effort to establish the nature of a
travel agent’s job, the excerpts provided by applicant from the
treatise Travel Law indicate among other things that travel
agents act as retailers by marketing travel services to consumers
on behalf of the suppliers the agents represent; that travel
agents are, in a sense, information specialists upon whom
consumers rely in making their travel arrangements; and that
travel agents are paid primarily by suppliers and tour operators
on a commission basis.
Turning to consideration of the pertinent factors set
forth in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177
USPQ 563, 567 (CCPA 1973), for determining whether a likelihood
of confusion exists, we find that opposer has demonstrated that
there is a likelihood of confusion as to source or sponsorship
from the contemporaneous use of the parties’ marks in connection
with the legally identical services of arranging travel tours.
In this regard, since both parties market their services,
including Florida vacation packages, through travel agents, the
Opposition No. 100,065
14
channels of trade and the principal customers for such services
are the same. The fact, moreover, that travel agents are
knowledgeable and discriminating consumers when it comes to
selecting or recommending travel packages for themselves or their
customers does not mean, as applicant argues, that they are
necessarily sophisticated or otherwise knowledgeable in the field
of service marks or that they are immune from confusion as to
origin or affiliation. See, e.g., Wincharger Corp. v. Rinco,
Inc., 297 F.2d 261, 132 USPQ 289, 292 (CCPA 1962); In re Decombe,
9 USPQ2d 1812, 1814-15 (TTAB 1988); and In re Pellerin Milnor
Corp., 221 USPQ 558, 560 (TTAB 1983). This would especially be
the case where, as here, legally equivalent marks are utilized by
the parties in connection with legally identical travel tour
arrangement services. Furthermore, contrary to applicant’s
contentions, the respective marks are substantially identical in
overall commercial impression; there is no evidence of any
significant third-party use of the term "teddy bear" and/or
teddy-bear or other bear designs, in connection with arranging
travel tours or similar travel services, so as to indicate that
marks which consist of or include such elements are weak and,
thus, are only entitled to a narrow scope of protection; and the
absence of any known instances of actual confusion is not a
meaningful factor in the circumstances of this case.
In particular, it is well settled that marks which
respectively consist of a picture or design and the word that
describes that picture or design are legal equivalents and hence
are given the same significance in determining the question of
Opposition No. 100,065
15
likelihood of confusion. See, e.g., Izod, Ltd. v. Zip Hosiery
Co., Inc., 405 F.2d 575, 160 USPQ 202, 203 (CCPA 1969) [pictorial
representation of a feline animal’s head (which may be seen as
that of a tiger’s) and words "TIGER HEAD"]; Shunk Manufacturing
Co. v. Tarrant Manufacturing Co., 318 F.2d 328, 137 USPQ 881, 883
(CCPA 1963) [representation of man wearing kilts and tam and word
"SCOTCHMAN"]; In re Duofold Inc., 184 USPQ 638, 639-40 (TTAB
1974) [design of golden eagle and words "GOLDEN EAGLE"]; and In
re Penthouse International Ltd., 175 USPQ 42, 43 (TTAB 1972)
[picture of key and word "KEY"]. Here, as to the overall
commercial impression engendered by their respective marks, the
parties agree that whether opposer’s design mark is the legal
equivalent of applicant’s "TEDDY BEAR TOURS" mark is a question
of fact which depends both upon whether one mark evokes the other
mark and whether purchasers of the services of arranging travel
tours are likely to make the translation or association.
Applicant asserts that opposer "fails to demonstrate
the first requirement and provides no evidence or argument
regarding the second." Specifically, in light of the dictionary
definitions of the term "teddy bear," applicant maintains that
(footnotes omitted):
[A] teddy bear is a special form of stuffed
toy. Opposer’s Timothy character does not
behave like a stuffed toy. It engages in
various activities that a stuffed toy could
not accomplish, such as water skiing ,
playing golf, swimming, flying an airplane,
and celebrating the new year. However, these
are activities in which a cartoon character
such as Yogi Bear or the costumed Timothy
character present at trade shows, could
engage.
Opposition No. 100,065
16
....
Opposer relies on the testimony of its
co-president and [a] graphics designer to
claim that its Timothy character evokes the
image of a teddy bear. As can be expected,
the co-president testified that the character
was a teddy bear and stated the characteris-
tics of the design as including a smile, ...
round face and body, curved paws and feet,
and fluffy ears. Likewise, the graphics
designer testified that teddy bears have
little round ears, little round muzzles,
happy mouths, round paws, and friendly
demeanor. Clearly, though, these character-
istics can be similarly applied to any number
of cartoon characters and animals that are
not teddy bears ....
....
Opposer’s brief refers to cases in which
word-picture equivalency was found. These
cases are clearly distinguishable from the
instant matter. .... In each of these
cases, the word mark and the design were
identical matches and a finding of equiva-
lency was appropriate. However, in the
instant case, the marks are TEDDY BEAR TOURS
and a cartoon of what could be a bear or
other animal, but which has no clear associa-
tion to a teddy bear.
Finally, Opposer claims that the trade
dress of the parties provides evidence that
the marks project a confusingly similar
commercial impression. In its claim, Opposer
states that Applicant "uses" its mark in con-
junction with a teddy bear logo. However,
Opposer does not support this assertion. It
refers to a marketing brochure issued by
Applicant in 1995, a brochure that has not
been reprinted. While Opposer’s evidence
would support the assertion that Applicant,
at one time more than two years ago, used a
teddy bear logo in conjunction with its mark,
the evidence does not support its assertion
that Applicant currently "uses" such a logo.
Applicant’s word mark and Opposer’s
design marks [sic] clearly do not evoke one
another. Rather, Applicant’s mark evokes the
thought of teddy bears and Opposer’s mark
Opposition No. 100,065
17
evokes the thought of a cartoon character
.... Additionally, no showing has been made
by Opposer that consumers are likely to make
a translation between the two marks.
Applicant’s arguments, simply put, are not supported by
the record. Opposer has plainly shown that its "TIMOTHY" logo is
a representation of a teddy bear and would be so regarded by both
travel agents and members of the general public. In particular,
Ms. Burk’s testimony is unrebutted that opposer’s mark, even
though cartoon-like, is a design of a teddy bear since, as
further evidenced by many of the other teddy-bear depictions in
the record, it possesses the attributes typical of such a bear.
The "TIMOTHY" character depicted in opposer’s mark, moreover, is
still recognizable as the same teddy bear even when engaging in a
variety of vacation and leisure activities. The record also
reveals that for many years opposer has promoted its services by
playing upon a teddy-bear theme, utilizing such give-away items
as small stuffed or plush teddy bears and imprinted note-paper
holders with a teddy bear design, having an employee dress up in
a bear suit at the trade shows it hosts, sending out its "bear
fax" informational booklets and distributing advertising flyers
variously touting a "BEAR-ZAAR," "BEARGAINS" and "THE ’BEAR
FAX’". In addition, the children’s storybooks made of record by
opposer demonstrate that it is not uncommon for teddy bears to be
engaged in animated activities, like opposer’s "TIMOTHY" teddy
bear, even though a teddy bear, by definition, is basically a
children’s stuffed toy.
It is clear, therefore, that opposer’s teddy bear mark
evokes the term "TEDDY BEAR" and that applicant’s "TEDDY BEAR
Opposition No. 100,065
18
TOURS" mark, given the genericness of the word "TOUR" as used in
connection with the services of arranging travel tours, evokes
the image of a teddy bear. Applicant, in the only demonstrated
use of its mark in the record, has in fact displayed its mark in
its advertising literature in conjunction with several different
designs of a teddy-bear character, some of which designs, like
opposer’s "TIMOTHY" teddy bear, are engaged in various vacation
and leisure activities. Plainly, opposer has proven that its
teddy bear mark and applicant’s "TEDDY BEAR TOURS" mark, when
considered in their entireties, are legal equivalents and that,
as such, they project the same commercial impression when used in
connection with the identical services of arranging travel tours.
Confusion as to the origin or affiliation of such services is
therefore likely to occur.
In reaching this conclusion, we additionally note that
when used as service marks for the arranging of travel tours,
both a teddy-bear design and the term "TEDDY BEAR" are arbitrary
or fanciful designations and hence constitute strong marks which
are entitled to a broad scope of protection in the absence of a
showing of appreciable third-party use of marks which contain
such designations and which are for the same or substantially
related services as those provided by applicant and opposer. On
the present record, however, there is no evidence of any third-
party use of marks which contain a depiction of a teddy bear
and/or the words "TEDDY BEAR" for services which are the same as
or even arguably related to travel tour arrangement services
rendered by the parties.
Opposition No. 100,065
19
Specifically, applicant’s reliance on various third-
party registrations for marks which feature teddy-bear and other
bear designs does not establish that the marks which are the
subjects thereof are in actual use and that the purchasing public
is consequently familiar with them. See, e.g., Smith Brothers
Manufacturing Co. v. Stone Manufacturing Co., 476 F.2d 1004, 177
USPQ 462, 463 (CCPA 1973) ["in the absence of any evidence
showing the extent of use of any of such marks or whether any of
them are now in use, they provide no basis for saying that the
marks so registered have had, or may have, any effect at all on
the public mind so as to have a bearing on likelihood of
confusion."] As stated in AMF Incorporated v. American Leisure
Products, Inc., 474 F.2d 1403, 177 USPQ 268, 269 (CCPA 1973):
[L]ittle weight is to be given such regis-
trations in evaluating whether there is
likelihood of confusion. The existence of
these registration is not evidence of what
happens in the market place or that customers
are familiar with them nor should the
existence on the register of confusingly
similar marks aid an applicant to register
another likely to cause confusion, mistake or
to deceive.
Lastly, our conclusion that confusion is likely is not
altered by the lack of any incidents of actual confusion during a
period of just over two years of contemporaneous use by the
parties of their respective marks. This is because the absence
of any instances of actual confusion is a meaningful factor only
where the record indicates that, for a significant period of
time, an applicant’s sales of its services or goods and any
advertising thereof have been so appreciable and continuous that,
if confusion were likely to happen, any actual incidents thereof
Opposition No. 100,065
20
would be expected to have occurred and would have come to the
attention of one or both of the parties. See, e.g., Gillette
Canada Inc. v. Ranir Corp., 23 USPQ2d 1768, 1774 (TTAB 1992). In
this case, not only is a two-year period a relatively short
interval, but there is no indication as to the extent of
applicant’s sales and advertising of its services under its
"TEDDY BEAR TOURS" mark, nor is there any evidence that the
parties have in fact been providing their services of arranging
travel tours in the same localities. The lack of any instances
of actual confusion, therefore, is not indicative of an absence
of a likelihood of confusion.
Decision: The opposition is sustained and registration
to applicant is refused.
G. D. Hohein
P. T. Hairston
H. R. Wendel
Administrative Trademark Judges,
Trademark Trial and Appeal Board