Trendmasters, Inc.v.Toymasters Inc.

Trademark Trial and Appeal Board

Aug 3, 1999

CANC (T.T.A.B. Aug. 3, 1999)

Paper No. 32
JQ
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB AUG 5, 99
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
_____
Trademark Trial and Appeal Board
______
Trendmasters, Inc.
v.
Toymasters Incorporated
_____
Opposition No. 96,264
to application Serial No. 74/396,789
filed on June 1, 1993
_____
Cancellation No. 24,157
----
Donald A. Kaul of Dorsey & Whitney for Trendmasters, Inc.
Barbara S. McIntyre for Toymasters Incorporated.
______
Before Simms, Quinn and Chapman, Administrative Trademark
Judges.
Opinion by Quinn, Administrative Trademark Judge:
This consolidated case involves Trendmasters, Inc.’s
(hereinafter “Trendmasters”) opposition to an application
filed by Toymasters Incorporated (hereinafter “Toymasters)
and Trendmasters’ petition for cancellation of a
registration owned by Toymasters. The application is for
Opposition No. 96,264 and Cancellation No. 24,157
2
the mark TOYMASTERS for a variety of toys.1 The
registration is for the mark TOYMASTERS for designing and
inventing toys, board games and play equipment for others.2
Both the notice of opposition and the petition for
cancellation are based on priority and likelihood of
confusion under Section 2(d) of the Trademark Act.
Trendmasters owns two registrations for the marks
TRENDMASTERS and TRENDMASTERS and design covering a wide
range of toy items.
Toymasters, in its answers, denied the salient
allegations of likelihood of confusion.3
The record in this consolidated proceeding consists of
the pleadings; the files of the involved application and
registration; the trial testimony of Brian Weinstock,
Trendmasters’ vice president for boys’ product development,
with related exhibits, taken by Trendmasters; and
Toymasters’ answers to Trendmasters’ first set of
interrogatories made of record by way of Trendmasters’

1 Application Serial No. 74/396,789, filed June 1, 1993, alleging
dates of first use of July 1992.
2 Registration No. 1,832,996, issued April 26, 1994, setting
forth dates of first use of March 1993.
3 Toymasters’ answer to the notice of opposition is accompanied
by a computerized printout of third-party registrations and
applications. Trademark Rule 2.122(c) provides, in pertinent
part, that 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 of the taking of testimony. Toymasters failed to
properly introduce this evidence and, accordingly, it is not of
record and has not been considered in reaching our decision.
TBMP §705.01.
Opposition No. 96,264 and Cancellation No. 24,157
3
notice of reliance. Toymasters neither took any testimony
nor introduced any other evidence.4 Only Trendmasters filed
a brief at final hearing.5
Trendmasters is in the business of creating and
manufacturing toys, and is the largest privately-held toy
company in the United States. Sales for a recent three-year
period exceeded $214 million, and advertising expenditures
for a recent two-year period totaled $21 million.
Trendmasters sells its toys to retailers such as K Mart,
Toys R Us and Walmart, which in turn sell the toys to the
ultimate consumer. Trendmasters has made thousands of
different toys over the years and, according to Mr.
Weinstock, each toy has carried the mark TRENDMASTER. Mr.
Weinstock went on to add that the toys generally are branded
with another mark which is a common practice in the toy
industry. Trendmasters’ toys have been promoted on
television and in print media, and through catalogs and
appearances at trade shows and toy fairs. Trendmasters
maintains an Internet website which has been the subject of
millions of hits.
Inasmuch as Toymasters did not take testimony or offer
any evidence, the only information about it comes from the

4 Toymasters’ notice of reliance on its registration sought to be
canceled in this proceeding is superfluous inasmuch as the
registration automatically forms part of the record pursuant to
Trademark Rule 2.122(b)(1).
Opposition No. 96,264 and Cancellation No. 24,157
4
involved application and registration, and its answers to
interrogatories. Toymasters apparently is a one-person
operation with sales over a three-year period of less than
$9,000. From the discovery responses, it would appear that
Toymasters has produced only one toy, namely a “stuffed
electric battery powered ride-on motorhorse.”
Before turning to the merits, the Board should point
out that Toymasters’ involved application also was the
subject of Opposition No. 96,101 brought by a third party.
In that proceeding, opposer Toymax, Inc. moved for summary
judgment on its claim that Toymasters failed to use its mark
in commerce. The Board, in a decision dated October 2,
1997, found that Toymasters had not used its mark in
commerce as contemplated by the Trademark Act, and granted
opposer’s motion. Judgment was entered against applicant,
the opposition was sustained and registration to applicant
was refused.6
The Board, in the present consolidated proceeding,
subsequently issued an order noting the above decision, and

5 Trendmasters’ request to extend its time to file the brief is
granted.
6 Perhaps encouraged by this result, Trendmasters raised, for the
first time in its appeal brief, a claim that applicant had failed
to use its mark in commerce and, thus, that the involved
application is void ab initio.
Suffice it to say that this claim was neither pleaded nor tried
by the parties, but rather has been raised at a manifestly late
juncture of the proceeding. Accordingly, no consideration has
been given to this claim. See: The Chicago Corp. v. North
American Chicago Corp., 20 USPQ2d 1715, 1717 at n. 5 (TTAB 1991).
Opposition No. 96,264 and Cancellation No. 24,157
5
advised the parties herein that a decision would issue in
due course.
We now turn to the merits of this consolidated
proceeding. Our determination under Section 2(d) 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. In re E. I. du Pont de Nemours & 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. Federated Food, Inc. v. Fort
Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA
1976).
With respect to priority, opposer’s ownership of valid
and subsisting registrations establish its priority insofar
as the opposition is concerned. King Candy Co. v. Eunice
King’s Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108 (CCPA
1974). Further, with respect to both the opposition and
cancellation, Mr. Weinstock’s testimony establishes that
Trendmasters’ first use of its mark predates the earliest
date of use upon which Toymasters is entitled to rely.
David Crystal, Inc. v. Glamorise Foundation, Inc., 189 USPQ
740 (TTAB 1975); and Jean D’Albret v. Henkel-Khasana
G.m.b.H., 185 USPQ 317 (TTAB 1975) [absent evidence,
earliest date on which a defendant may rely is the filing
Opposition No. 96,264 and Cancellation No. 24,157
6
date of the opposed application or the filing date of the
underlying application for a registration sought to be
canceled].
In the present case, the goods are substantially
similar or, at least in part, legally identical for purposes
of our analysis. The goods would appear to be relatively
inexpensive, off-the-shelf toys which are the subjects of
impulse purchases. In addition, the goods move through the
same channels of trade to the same classes of purchasers.
Further, Trendmasters' toy items are related to Toymasters’
services of designing and inventing toys. Moreover, the
record indicates that Trendmasters has offered the same type
of services as those identified in Toymasters’ registration.
In this connection, we note the following testimony of Mr.
Weinstock:
First, we have on occasion been hired to
design and invent toys for other
companies. It’s not a big part of our
business; however, we do this from time
to time. Second, we are continuously
being asked by others to design and
develop—-inventing work. We almost
always turn them down. But it’s still
clear that we are thought of for this
type of service. Third, we go back to
the similarity of the marks problem.
Because the applicant’s mark is so
similar to ours, people are going to
think that it’s us doing business in the
design work under the “Toymasters” mark.
Mr. Weinstock went on to identify two specific instances
when Trendmasters did toy design work for others. In
Opposition No. 96,264 and Cancellation No. 24,157
7
mentioning Trendmasters’ work in designing a line of
electronic “Barney” toys for Hasbro, Mr. Weinstock stated
that “[t]hey know we’re good at designing, and they wanted
us to do it for them.”
From the above testimony, it would appear that, just as
in the case with the goods, there is an identity (or
substantial similarity) between the parties’ services.
We now turn to compare the marks TRENDMASTERS and
TOYMASTERS. We note at the outset that if the goods and/or
services are identical, “the degree of similarity [between
the marks] 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, 1700
(Fed. Cir. 1992).
Both marks begin with the letter “T”, both have three
syllables and both end in the word “MASTERS.” The marks are
similarly constructed and are somewhat similar in sound.
There is no evidence of record showing any uses or
registrations of similar marks in the toy field. On this
point, Mr. Weinstock testified that his company is “the only
significant toy company which uses the word ‘masters’ in its
name” and, moreover, that he is not familiar with “any
competitor toy company that uses a name beginning with the
letter ‘T’ and including as any part of its name the word
‘masters.’” Mr. Weinstock also believes that the likelihood
Opposition No. 96,264 and Cancellation No. 24,157
8
of confusion is enhanced by the fact that his company is
“often referred to and are often called Trendmasters toys
and Trendmasters toymakers.”
We find that the marks TRENDMASTERS and TOYMASTERS are
sufficiently similar in overall commercial impression that,
when used in connection with identical or substantially
similar goods and/or services, confusion is likely to occur.
In finding likelihood of confusion, we have kept in mind the
normal fallibility of human memory over time and the fact
that consumers retain a general rather than a specific
impression of trademarks encountered in the marketplace.
Spoons Restaurants, Inc. v. Morrison, Inc., 23 USPQ2d 1735
(TTAB 1991), aff’d, No. 92-1086 (Fed. Cir. June 5, 1992).
Trendmasters claims that its mark is famous. Indeed,
Trendmasters has enjoyed success with the toys sold under
the mark TRENDMASTERS, and Trendmasters has undertaken
significant promotional activities. Further, as noted
above, the record is devoid of any properly introduced
evidence of any third-party uses or registrations of similar
marks in the toy industry. Although we are willing to
accept Trendmasters’ claim that its mark is strong in the
field, we do not accord, however, the status of “famous
mark” to the mark TRENDMASTERS based on the record presently
before us. Cf. Kenner Parker Toys v. Rose Art Industries,
963 F.2d 350, 22 USPQ2d 1453, 1456 (Fed. Cir. 1992).
Opposition No. 96,264 and Cancellation No. 24,157
9
The absence of any evidence of actual confusion is of
little moment in deciding this case. Given Toymasters’
extremely limited sales, there has been no meaningful
opportunity for confusion to occur in the marketplace.
In sum, the relevant du Pont factors in Trendmasters’
favor simply outweigh any differences in the marks.
Finally, to the extent that these differences or any of the
points raised by the dissent raise a doubt on the issue of
likelihood of confusion, such doubt must be resolved in
favor of the prior user. San Fernando Electric Mfg. Co. v.
JFD Electronics Components Corp., 565 F.2d 683, 196 USPQ 1,
2 (CCPA 1977).
Decision: The opposition is sustained. The petition
for cancellation is granted and the registration will be
canceled in due course.
T. J. Quinn
B. A. Chapman
Administrative Trademark
Judges, Trademark Trial
and Appeal Board
Simms, Administrative Trademark Judge, dissenting:
I cannot join my colleagues because I do not believe
that the marks TRENDMASTERS and TOYMASTERS, as used in
Opposition No. 96,264 and Cancellation No. 24,157
10
connection with toy designing and inventing services, are
sufficiently similar in sound, appearance or meaning to
cause confusion. First, I confine my comments to the
cancellation proceeding wherein Trendmasters seeks to cancel
Toymasters’ registration for designing and inventing toys,
board games and play equipment for others. This is because,
in my view, the decision in Opposition No. 96,101 refusing
registration of Toymasters’ applied-for mark renders moot
Trendmasters’ claims herein against that application. Not
only do I believe that the marks TRENDMASTERS and TOYMASTERS
have different and distinct sounds, appearances and
connotations, but also I believe that, with respect to these
services, they are and would be offered to a relatively
sophisticated class of purchasers (for example, a toy
company such as Hasbro) that would necessarily know the
source of the services offered under these different marks
and thereby distinguish them.
R. L. Simms
Administrative Trademark Judge