3M Companyv.Professional Gallery, Inc.

Trademark Trial and Appeal Board

Jul 17, 2014

No. 91173411 (T.T.A.B. Jul. 17, 2014)

Hearing: Mailed:
April 10, 2014 July 17, 2014

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
______

3M Company

v.

Professional Gallery, Inc.
_____

Opposition No. 91173411
to application Serial No. 78642201
filed on June 2, 2005
_____

William G. Barber and Wendy C. Larson of Pirkey Barber PLLC
for 3M Company.

Dustin R. DuFault of DuFault Law Firm for Professional
Gallery, Inc.
______

Before Seeherman, Quinn and Kuczma, Administrative
Trademark Judges.

Opinion by Seeherman, Administrative Trademark Judge:

Professional Gallery, Inc. (Applicant) has applied to
register the mark FLAG-IT! in standard characters for
“adhesive-backed labels; adhesive-backed plastic film
designating signatory action.” The application, Serial No.
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Opposition No. 91173411
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78642201, was filed on June 2, 2005, based on an alleged
bona fide intention to use the mark in commerce (Section
1(b) of the Trademark Act).
3M Company (Opposer) has opposed registration on the
grounds of likelihood of confusion and dilution. In
particular, Opposer has alleged that it is the owner of a
number of registrations for the marks POST-IT and POST-IT
with designs for, inter alia, stationery notes containing
adhesive on one side for attachment to surfaces, and for
tape flags; that Opposer adopted and began using POST-IT as
a trademark for adhesive-backed stationery products such as
tape flags decades before Applicant filed its application;
that Opposer’s common law and statutory priority dates
precede any priority date on which Applicant may rely; and
that Opposer’s POST-IT marks are famous and became famous
well before the filing date of Applicant’s application.
Applicant has denied the salient allegations in the
notice of opposition.
The description of the record is set out at pages 8-12
of Opposer’s trial brief (90 TTABVUE 10-14) and 7-16 of
Applicant’s brief (92 TTABVUE 8-17).1 It includes the
testimony, with exhibits, of Opposer’s witnesses David

1 In its brief Applicant has asserted that a survey conducted by
Opposer, and introduced during the testimony of Dr. Blair, is
either not admissible or should not be given probative value.
Opposition No. 91173411
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Duling, Jeffrey Hillins, Theodore Peichel, Edward Blair
and, in rebuttal, David Ormson; and of Applicant’s witness,
Kevin Goldrick. Opposer has made its pleaded
registrations, Internet evidence, certain of Applicant’s
discovery responses and portions of discovery depositions
of record under a notice of reliance. Applicant has
submitted, under notice of reliance, portions of discovery
depositions,2 certain of Opposer’s responses to discovery,
official records and Internet materials.
Opposer has submitted status and title copies of 13
registrations for POST-IT marks as Exhibits 1 to 13 to its
notice of reliance. They can be found at 70 TTABVUE 10-53.
Rather than setting them forth in this opinion (doing so
occupied 2½ pages of Opposer’s brief), we highlight the
following two:
Registration No. 2736421 for POST-IT, issued
July 15, 2003, for “stationery notes and note
pads containing adhesive on one side of the
sheets for attachment to surfaces; adhesive tape
for stationery or office use; cover-up tape for
paper; tape flags; printed note forms; printed
notes featuring messages, pictures or ornamental
designs; adhesive-backed easel paper and easel
pads; bulletin boards” (Section 8 & 15 affidavits

2 Applicant’s description of the evidence it submitted does not
include the discovery deposition of David Ormson, one of
Opposer’s paralegals. Nevertheless, this deposition, or more
accurately, portions of it, were properly submitted by Applicant
under a notice of reliance, Exhibit 25, 72 TTABVUE 16-150, and it
is of record.
Opposition No. 91173411
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accepted and acknowledged, respectively;
renewed).3

Registration No. 3168105 for POST-IT, issued
November 7, 2006, for “stationery notes
containing adhesive on one side for attachment to
surfaces; printed notes featuring messages,
pictures or ornamental designs; note pads,
business forms, index tabs, easel paper, easel
pads, sketch pads, art pads, banners of paper,
page markers, bookmarks and recipe cards
containing adhesive on one side of the sheets for
attachment to surfaces; adhesive tape for
stationery or office use; labeling tape; cover-up
tape for paper; correcting tape for type; tape
flags; easels; display and message boards,
adhesive backed strips and geometrical shapes
made from cardboard for attachment to surfaces;
dry erase writing boards and writing surfaces;
holders for stationery notes, notepads and tape
flags; dispensers for tape flags and stationery
notes for stationery use; ball point pens and
highlighter pens containing tape flags; photo
paper. (Section 8 & 15 affidavits accepted and
acknowledged, respectively).4

Standing

Opposer’s registrations for its various POST-IT marks
show that it has a direct commercial interest in this
proceeding. Cunningham v. Laser Golf Corp., 222 F.3d 943,

3 At the time the registration was made of record the renewal
application had not yet been granted. In accordance with Board
policy, we have ascertained that the registration has been
renewed. The items “glue sticks for stationery or office use”
and “paper and cardboard sheet material having adhesive coatings
on both sides for attachment to walls or other surfaces to hold
displays or other messages in place” have been deleted.
4 The Section 8 and 15 affidavits were considered by the Office
after the registration was made of record. In accordance with
Board policy, we have ascertained that the affidavits were
accepted and acknowledged. We also note that “index cards” were
deleted from the registration.
Opposition No. 91173411
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55 USPQ2d 1842 (Fed. Cir. 2000). Therefore, Opposer has
established its standing.
Likelihood of Confusion
There are two elements to the ground of likelihood of
confusion: priority and likelihood of confusion.
Priority
In view of Opposer’s registrations, which are of
record, priority is not in issue as to Opposer’s marks and
goods as identified in the registrations. King Candy
Company v. Eunice King’s Kitchen, Inc., 496 F.2d 1400, 182
USPQ 108 (CCPA 1974). In addition, Opposer has submitted
testimony as to its use of the POST-IT mark continuously
since 1980 for sticky notes, and for adhesive flags since
1987-88. Peichel p. 5, 8, 75 TTABVUE 8, 11. Applicant’s
mark was filed on the basis of intent-to-use, and Applicant
has not submitted any evidence of use. In fact, Applicant
stated, in its responses to Interrogatory Nos. 4, 8 and 10,
(Exhibit 166, 70 TTABVUE 76-78) that Applicant had not
commenced use of its mark in commerce. Thus, the earliest
date on which Applicant may rely is the June 2, 2005 filing
date of its application. Opposer has established its
priority.
Likelihood of Confusion
Opposition No. 91173411
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Our determination of the issue of likelihood of
confusion 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 & 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).
Opposer has asserted that its POST-IT mark is famous.
Because fame plays a dominant role in cases featuring a
famous or strong mark, we turn first to the du Pont factor
of the fame of the prior mark. Kenner Parker Toys Inc. v.
Rose Art Industries, Inc., 963 F.2d 350, 22 USPQ2d 1453,
1456 (Fed. Cir. 1992).
Opposer has submitted substantial evidence to show the
fame of its POST-IT mark. It began using the mark for
3” x 3” sticky note pads in 1980, and since then has
expanded its use to adhesive flags, flag highlighters and
flag pens, binder tabs, easel pads, and so on, Hillins
p. 21, 78 TTABVUE 24, with POST-IT flags having been
introduced around 1987-88. Peichel p. 8, 75 TTABVUE 11.
The POST-IT products are sold in office super stores such
as Staples and Office Depot and mass retailers such as
Walmart, Target and K-Mart, club stores such as Sam’s and
Costco, “the Dollar channel,” grocery stores and
Opposition No. 91173411
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drugstores, and online through some of these same retailers
and also e-tailers such as Amazon. Hillins p. 38-40, 78
TTABVUE 41-43. Opposer also custom prints POST-IT products
for companies to use for their own promotional activities.
Id. p. 39, 78 TTABVUE 42.
Opposer’s sales figures for its POST-IT products were
submitted under seal, so we can say only that they are
substantial; for the period 2003 through 2012 annual sales
were in the multi-millions of dollars, including millions
of dollars each year for the POST-IT flag products.
Exhibit 24, 80 TTABVUE 195-96. It is the market leader in
the category for sticky notes. Hillins p. 24, 78 TTABVUE
27. Brand research studies Opposer conducted between 2005
and 2011 show that the POST-IT brand has very significant
recognition; it is number one in both unaided and total
awareness, and far ahead of other brands. Exhibits 25
through 31, 82 TTABVUE 132-524, 83 TTABVUE 3-348, 84
TTABVUE 3-218, 80 TTABVUE 197-412.5 A more specific study
done for 2012 shows that the recognition for POST-IT brand
for flags in the office/school supply category, although
lower than for the POST-IT brand in general, is still

5 These exhibits were submitted as confidential, so we will not
report the actual numbers.

Opposition No. 91173411
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significantly higher than competing brands. Exhibit 32, 80
TTABVUE 413.
Opposer promotes its POST-IT brand through TV
commercials and media spots, office supply catalogs,
freestanding inserts in magazines and newspapers,
merchandising and promotional displays, direct mail and
trade shows; and online through Opposer’s Post-it.com
website, through banner ads, retailers’ websites, and
social media such as Facebook. Hillins p. 59-61, 73, 74,
78 TTABVUE 62-64, 76, 80. Again, Opposer’s advertising and
promotional figures were submitted under seal, but the
amounts spent in the period 2003-2012 on POST-IT products
in general, and on POST-IT flag products in particular, are
millions of dollars each year. Since 2005 Opposer has
sponsored a NASCAR car, and the POST-IT trademark is
displayed across the hood of the car. Hillins p. 85-86, 78
TTABVUE 87-88, Exhibit 36, 78 TTABVUE 347. Opposer also
sponsors the 3M Championship, a Senior PGA golf event, at
which there is the Post-It Greats of Golf Championship, a
tournament for the great golfers of yesteryear. Hillins p.
87, 78 TTABVUE 89.
The POST-IT brand has also received many mentions in
print, television and film. Examples of print references
include the following:
Opposition No. 91173411
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The Milwaukee Journal Sentinel dated December 21,
2005 has an article entitled, “25th anniversary a
reminder of Post-it notes’ influence” (Exhibit
44, 78 TTABVUE 355);

The February 24, 2006 issue of Life magazine
suggests a “Post-it party” to use the sticky
notes to color a wall (Exhibit 46, 78 TTABVUE
357);

The September 2006 issue of Men’s Health magazine
features the “3M POST-IT SUPER STICKY NOTES”
(Exhibit 49, 78 TTABVUE 364);

The June 28, 2007 issue of The New York Times has
an article in its House&Home section about the
“Post-it,” and how the self-stick note keeps
households running (Exhibit 54, 78 TTABVUE 369);
and

The Sacramento Bee of June 28, 2010 has an
article called “Stuck on Post-its” about the 30th
birthday of the sticky notes (Exhibit 79, 78
TTABVUE 409).

The record shows that there have been several print
articles, some with photographs, as well as television
coverage, about a billboard made of POST-IT papers on a
wall in Grand Central Terminal, including articles in the
July 20, 2010 New York Times (Exhibit 81, 78 TTABVUE 412),
the August 4, 2010 Wall Street Journal (Exhibit 82, 78
TTABVUE 413), and the November 17, 2010 issue of Newsweek
(Exhibit 86, 78 TTABVUE 422).
Numerous television shows and movies make unsolicited
mentions of POST-IT notes. For example, in a 2003 episode
of Sex and the City, “one of the stars of the show actually
Opposition No. 91173411
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gets broken up [with] by her boyfriend using a POST-IT
note.” Hillins p. 95, 78 TTABVUE 98, (Exhibit 102, 78
TTABVUE 457). In a 2005 episode of The Office, as a gag
the boss fires an employee for stealing POST-IT Notes.
(Exhibit 103).6 POST-IT notes were the focal point of a
scene in a Gilmore Girls episode. (Exhibit 109). And in
Romy and Michelle’s High School Reunion, the main
characters say they invented POST-IT notes. (Exhibit 154,
78 TTABVUE 473). POST-IT notes were the subject of jokes
in the monologues of Jay Leno and Jimmy Kimmel on their
2010 late night shows, while on the March 20, 2006 David
Letterman show there were repeated mentions of POST-IT
notes as two men created a portrait out of POST-IT notes
during the course of the program. (Exhibits 119, 120,
108). An anchor on CNN, in reporting in 2005 on the 25th
anniversary of POST-IT notes, said that with its
introduction “life has never been the same,” and “they have
so many good uses.” (Exhibit 104). The product was also
the subject of a segment of the CBS News Sunday Morning
show in 2007. (Exhibit 112). Opposer’s highlighter pen
with flags was featured on the Oprah Winfrey show in 2008,

6 This exhibit, as well as other video exhibits discussed
herein, were identified during the testimony of Jeff Hillins
(TTABVUE entry #78), and submitted on a separate CD-ROM.
Opposition No. 91173411
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in a segment in which Oprah interviewed the inventor.
(Exhibit 114).
Although the specific exhibits regarding impressions
(an impression is one person viewing one advertisement or
promotional piece) were marked confidential, annual
impressions for the years 2004 through 2012 for the POST-IT
mark and products number in the multi-millions and
sometimes over a billion. Exhibit 165.
The above evidence leaves us in no doubt that POST-IT
is a famous mark for sticky notes. The evidence, such as
the sales figures, not only demonstrates the popularity of
the actual product, but the volume and nature of publicity
also highlights the fame of the POST-IT brand. In
particular, the references in the television programs and
the movie Romy and Michelle’s High School Reunion reflect
the writers’ and producers’ views that the POST-IT mark is
so well known that viewers will immediately understand the
reference. Although we acknowledge that POST-IT is
primarily famous for sticky notes, the sales and
advertising figures for POST-IT flags is substantial, and
promotional activities such as the segment on Oprah add to
the public recognition of the mark for these goods. In any
event, sticky flags are so similar to sticky notes that the
Opposition No. 91173411
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fame pertaining to the mark for sticky notes spills over
onto POST-IT for flags.
Applicant makes the argument that “even if found
famous the POST-IT mark is weak and undeserving of wide
latitude in protection.” Brief, p. 41, 92 TTABVUE 42.
Applicant cites no support for this position, and we are
not persuaded by it. Whether or not a mark is initially
suggestive, and therefore would have less distinctiveness
than an arbitrary or coined mark, once the mark is found to
be famous, that means it is a strong mark and is entitled
to a broad scope of protection. The cases standing for
this principle are legion. See Bose Corp. v. QSC Audio
Products Inc., 293 F.3d 1367, 63 USPQ2d 1303, 1309 (Fed.
Cir. 2002) (“[the marks ACOUSTIC WAVE and WAVE] are famous
and thus entitled to broad protection”); Recot Inc. v. M.C.
Becton, 214 F.3d 1322, 54 USPQ2d 1894, 1897 (Fed. Cir.
2000) (“Famous marks thus enjoy a wide latitude of legal
protection”).
Because we have found POST-IT to be a famous mark,
this weighs very heavily in Opposer’s favor in the
likelihood of confusion analysis.
In terms of the du Pont factor of the similarity or
dissimilarity of the goods, Applicant has admitted that its
goods, identified as “adhesive-backed labels; adhesive-
Opposition No. 91173411
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backed plastic film designating signatory action,” are in
fact flags. Mr. Goldrick, Applicant’s Vice President of
Operations, testified:
Q: So, by the term “adhesive backed labels,” you
intended that to mean adhesive flags; is that
correct?

A: Correct.

Q: And by the term “adhesive backed film
designating signatory action,” you intended that
to mean adhesive flags that have a preprinted
message that says “Sign Here” or something like
that, correct?

A: Correct.

Goldrick p. 65, 87 TTABVUE 68. Applicant’s president,
Matthew Bertram, also testified at his discovery deposition
that “flags” would fall within a “re-positionable adhesive-
back label.” Bertram p. 20, 70 TTABVUE 91. Opposer’s
registrations include “tape flags,” and therefore the goods
must be deemed legally identical. Even if we were to view
the identification of “adhesive-backed labels” as
referencing a product different from flags, likelihood of
confusion must be found if there is likely to be confusion
with respect to any item that comes within the
identification of goods in the application. Tuxedo
Monopoly, Inc. v. General Mills Fun Group, 648 F.2d 1335,
209 USPQ 986, 988 (CCPA 1981). We also point out that
Applicant’s identified “adhesive-backed labels” would be
Opposition No. 91173411
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legally identical to the “labeling tape” in Opposer’s
Registration No. 3168105. Further, the goods identified in
Applicant’s identification are encompassed within the
“stationery notes containing adhesive on one side for
attachment to surfaces” identified in that registration,
and the “stationery notes containing adhesive on one side
of the sheets for attachment to surfaces” in Opposer’s
Registration No. 2736421.
Because the goods are legally identical, they are
presumed to travel in the same channels of trade and be
sold to the same classes of purchasers. In re Viterra
Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1908 (Fed. Cir.
2012). This would include general department stores.
Bertram p. 55, 70 TTABVUE 99.7

7 Applicant does not discuss the goods or channels of trade
factors at all, identifying in the Table of Contents of its brief
only the du Pont factors of the similarity of the marks, number
and nature of similar marks in use on similar goods, fame, and no
bad faith intent (the 13th factor). However, at pages 28-29, 92
TTABVUE 29-30, Applicant argues that the dissimilarity of the
marks is the du Pont factor that should weigh most heavily,
“especially with respect to the channels of trade through which
both the Opposer’s and [Applicant’s] goods travel through.” It
is not clear what Applicant means, although we note that in
general Applicant sells promotional goods, and therefore may be
referring to the channels of trade for such goods. In any case,
we point out that the channels of trade in both Opposer’s and
Applicant’s identifications of goods are unrestricted, and
therefore the goods must be presumed to travel in all channels of
trade that are appropriate for such goods. Stone Lion Capital
Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157,
1162 (Fed. Cir. 2014).
Opposition No. 91173411
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With respect to the conditions of purchase factor, the
consumers of POST-IT products are the public at large,
including teachers, mothers, white collar workers and
creative professionals. Hillins p. 40, 70 TTABVUE 43.
Applicant’s president, Matthew Bertram, testified that
“anybody” could use Applicant’s FLAG-IT! product, that “any
regular person could be an end user of our flag product.”
Bertram p. 62-63, 70 TTAB 103-04. The flag packs are
inexpensive, with the typical price ranging from a dollar
up to $10 or $15. Hillins, p. 43, 78 TTABVUE 46.
Opposer’s witness Jeff Hillins testified that they are the
subject of impulse purchases; “a lot of times POST-IT
products aren’t always a destination category where someone
will actually go to a store specifically just for a POST-IT
product. … over the years [we] have developed a line of
impulse products that would capture the eye of a consumer
and they would feel [it] necessary to just buy it even
though they may not need it.” Hillins p. 41, 78 TTABVUE
44. With respect to flags specifically, Mr. Hillins
testified that POST-IT flags are the subject of impulse
purchase, stating that if the flags are displayed with
products that are on a school list during the back-to-
school shopping time frame, students, teachers or parents
will buy them. Hillins p. 42, 78 TTABVUE 45.
Opposition No. 91173411
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Although the foregoing factors of fame, goods,
channels of trade and conditions of purchase favor Opposer,
Applicant relies primarily on what it asserts are
differences in the marks to show that confusion is not
likely. Essentially, Applicant contends that the only
similarity between the marks is the element IT, an element
that Applicant claims is so commonly used that it is not a
sufficient basis on which to find the marks are similar.
In support of this position, Applicant has made of record
over 100 third-party applications and over 1200 third-party
registrations for marks containing the element “IT.”
Most of this evidence is not particularly probative.
First, we note that third-party applications are evidence
only of the fact that the applications have been filed, and
therefore have no probative value to show that the element
IT is commonly used in trademarks. Weider Publ’s, LLC v.
D&D Beauty Care Co., 109 USPQ2d 1347, 1360 (TTAB 2014). As
for the third-party registrations, they are not evidence
that the marks are in use, or that the public is familiar
with them. See In re Albert Trostel & Sons Co., 29 USPQ2d
1783 (TTAB 1993). They can, however, be used in the manner
of a dictionary, to show that a term has a significance in
a particular industry. Tektronix, Inc. v. Daktronics,
Inc., 534 F.2d 915, 189 USPQ 693, 694-95 (CCPA 1976)
Opposition No. 91173411
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(third-party registrations “may be given some weight to
show the meaning of a mark in the same way that
dictionaries are used”); In re Sela Prods., LLC, 107 USPQ2d
1580, 1588 (TTAB 2013). In this case, Applicant has
submitted third-party registrations for all sorts of goods
and services, not merely those in the stationery field.
See, for example, WEDGE-IT for frame height gauge for race
cars (Reg. 2710056, 72 TTABVUE 725); GLOVE IT and heart
design for golf gloves (Reg. No. 2793876, 72 TTABVUE 735);
MOVE IT for providing real estate listings and real estate
information via the Internet (Reg. No. 3567581, 72 TTABVUE
1003); and CLIP-IT for non-metal cable clips, non-metal
pipe and cable clips (Reg. No. 3860374, 73 TTABVUE 92).
Even for those third-party registrations for arguably
similar goods, we are unable to conclude that “it” has any
significance with respect to Opposer’s and Applicant’s
products other than as an indefinite pronoun that, when
combined with a verb, indicates that “it” is the recipient
of the action.
Applicant has also submitted pages from various
Internet-retailer sites, including Office Depot, Office
Max, Target, Walmart and Staples, that list products
identified by marks having the element “IT.” For example,
Exhibit 33 to Applicant’s notice of reliance (73 TTABVUE
Opposition No. 91173411
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653-805) shows the results of a search of the Office Depot
website for “it,” as well as pages for some of the specific
items shown in the search results. Most of the pages
feature Opposer’s POST-IT products, such as sticky
removable file folder labels, sticky removable multi-use
labels, sticky removable color-coding labels, flags and
printed flags. Some pages also show other marks having the
element IT, including CHEEZ-IT for snack crackers (73
TTABVUE 669), FIND IT for file folders, a CD/DVD binder, a
supply caddy, a stackable storage bin and a 3-ring binder
(73 TTABVUE 687, 688, 698, 701, 703), FIX-IT UTILITIES for
repair software (73 TTABVUE 689), DIP-IT for coffeemaker
cleaner (73 TTABVUE 690), MASTER CASTER ReStor-IT for a
leather/vinyl repair kit (73 TTABVUE 700) and ReStor-It for
a furniture touch-up kit (73 TTABVUE 791); Snap-It for an
eyeglass repair kit (73 TTABVUE 794); Triplett Sniff-It 2
for an energy tester (73 TTABVUE 796); Tripp Lite Protect
It! SWIVERL6 for a surge suppressor (73 TTABVUE 798); Clip-
it for a flash drive (73 TTABVUE 804); Ativa Mobil-IT for
various products, including computer accessory products
such as a home/auto charging kit for use with iPod and
other devices (73 TTABVUE 671), a netbook caddy (73 TTABVUE
687) a tech case (73 TTABVUE 688), a Bluetooth speaker (73
TTABVUE 692) and a privacy filter (73 TTABVUE 695), as well
Opposition No. 91173411
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as a business card wallet (73 TTABVUE 698) and a briefcase
(73 TTABVUE 707); BATTLE CREEK Equipment Ice It!
ColdCOMFORT for a therapy system (73 TTABVUE 740); BIC
Mark-It Permanent Fashion Markers for markers (73 TTABVUE
742); BIC Wite-Out Cover-It for correction fluid (73
TTABVUE 744); Bracketron Universal GPS Grip-iT Mount for a
device to hold a GPS (73 TTABVUE 746); Cocoon GRID-IT! for
a tool organizer (73 TTABVUE 748) and a sun visor organizer
(73 TTABVUE 750); LIKE-IT for an office organizer (73
TTABVUE 711) and stackable desk organizer (73 TTABVUE 715);
Corel Create it! for a photo-editing disc (73 TTABVUE 752);
Light It! for a sensor light (73 TTABVUE 780); Penatia
Snip-it for ballpoint pen refills (73 TTABVUE 788); and IT-
STAYS for adhesive (73 TTABVUE 709).
The sixth du Pont factor considers “the number and
nature of similar marks in use on similar goods.” The
principle behind this factor is that if a certain term
appears in many marks that are owned by separate entities
and that are used for similar goods, consumers will look to
other elements in the marks to distinguish them. The
third-party uses that Applicant has made of record do not
persuade us that consumers will distinguish Applicant’s
FLAG-IT mark from Opposer’s POST-IT mark when these marks
are used on identical adhesive flags. First, to be
Opposition No. 91173411
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probative, the marks must be used on “similar goods.” Many
of the goods shown on the websites do not, at least on this
record, appear to be similar to the goods of Opposer and
Applicant, e.g. snack crackers, furniture touch-up kits,
eyeglass repair kits, energy testers, surge suppressors,
flash drives, coffeemaker cleaners and cold therapy
systems. The mere fact that they are sold on the same
website does not per se make them similar. Further, some
of the marks themselves are not similar to Opposer’s and
Applicant’s marks. For example, in the Ativa Mobil-IT
mark, IT is likely to be viewed as an abbreviation for
“Information Technology,” rather than the indefinite
pronoun, while IT STAYS and LIKE-IT have a different look
and/or syntax from the parties’ marks.8 In addition, the
grouping of the third-party uses as shown in the webpages
submitted by Applicant does not reflect actual marketing
conditions. It is unlikely that consumers of flags will
search a retail website for all “IT” marks, as opposed to
searching for the type of product they are interested in or
searching for particular brand names. Thus, the fact that
Applicant’s search results show certain third-party marks
on the same pages as Opposer’s mark does not persuade us

8 There are also listings for marks that do not appear to have
the element IT in them at all, e.g., MASTERVISION EARTH SILVER
EASY-CLEAN, and others in which the letters I-T are merely part
of another word, e.g., UNITED STATES POSTAL SERVICE HANDY BANDIT.
Opposition No. 91173411
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that consumers would be exposed to the various marks in
this manner. Although a page of an actual office supply
catalog that showed, in close proximity, goods bearing
Opposer’s mark as well as many third-party marks having the
same look as Opposer’s mark might be probative evidence on
the sixth du Pont factor, the same cannot be said for
computer search results of a website, since such results
are determined by both the search strategy used and the
logarithm by which the results are depicted.
We have gone into great detail with this exhibit of
the Office Depot webpages because it puts into some
perspective the listing of third-party marks that Applicant
has highlighted at pages 21-23 of its brief (92 TTABVUE 22-
24). We note, for example, that many of the third-party
marks shown in the listing indicate only the mark and
registration number, without any evidence of use of the
mark. Of the 25 marks for which Applicant does provide a
location in the record of the evidence showing use of the
mark, many of the marks are for goods that are not
particularly similar to the goods for which Applicant is
attempting to register its mark. See, e.g., VELV-ITS! for
what appears to be a children’s activity set to make and
decorate posters, frames and stickers (Exhibit 14, 87
TTABVUE 178-183); SKETCH IT for what appears to be a
Opposition No. 91173411
-22-
child’s game by which drawing fast brings the player tokens
(Exhibit 5, 87 TTABVUE 127-132); SNIP IT for a children’s
activity kit for snipping and cutting activities (Exhibit
18, 87 TTABVUE 202-209); TagIt! for gift tags for wine
bottles (Exhibit 17, 87 TTABVUE 198-201); MASK-IT for “all-
in-one masking tape and drop cloth,” Exhibit 6, 87 TTABVUE
133-141); TACK-IT for a temporary hold adhesive used to
affix “appliques, trims, ribbon and more” (Exhibit 12, 87
TTABVUE 169-173); and STICK IT tape for hair attachments
(Exhibit 13, 87 TTABVUE 174-177).9
There are some third-party marks for goods that are
more similar to Opposer’s and Applicant’s goods. Of the
marks listed above from the Office Depot website, there are
some for office supplies/desk accessories such as FIND IT
for file folders, BIC Mark-It Permanent Fashion Markers,
BIC Wite-Out Cover-It correction fluid, and Penatia Snip-it
for ballpoint pen refills. With Mr. Goldrick’s testimony,
Applicant made of record several other desk items with IT-
suffix marks, specifically, the mark DOCIT (giving the

9 The exhibits in TTABVUE # 87 were submitted as exhibits to the
testimony of Kevin Goldrick, as opposed to the marks and goods
shown in the webpages submitted under notice of reliance. The
exhibits relating to third-party use identified by Mr. Goldrick
reflect items that he had purchased, with the exception of
Exhibit 23, which is a printout of webpages he retrieved through
“either Google search or Amazon.com” as a result of a search for
“products with a logo using dash I-T.” Goldrick, p. 51-52, 87
TTABVUE 54-55.
Opposition No. 91173411
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impression of DOC IT) used for, inter alia, a 3x5 card case
with dividers, a set of tab dividers, expanding files with
pockets, and a pencil case (Exhibit 21, 87 TTABVUE 228-
268); CASE-IT for a 3-ring zipper binder (Exhibit 16, 87
TTABVUE 191-197); MEAD PRESS-IT SEAL-IT for envelopes
(Exhibit 7, 87 TTABVUE 142-54); TAPE IT for label tape and
stationery tape (Exhibit 23, 87 TTABVUE at 312-315); LABEL
IT! for label printers (Exhibit 23, 87 TTABVUE at 322-325);
and FLIP IT for a device with plastic cards with
information such as “Vacation” to notify co-workers of an
employee’s whereabouts when not at his/her desk (Exhibit
10, 87 TTABVUE 163-165).
Although Applicant has submitted hundreds of webpages
from various websites, in point of fact there are only a
very few webpages that can be regarded as showing the use
of similar marks on even arguably similar goods. Further,
there is no evidence of third-party marks ending in IT for
sticky notes or flags. In fact, Applicant’s Vice President
of Operations, Kevin Goldrick, and its Vice President for
Sales and Marketing, Joseph Durand, both testified that
they were not aware of any other trademarks for adhesive
flags that end in hyphen I-T other than POST-IT and FLAG-
IT! Goldrick p. 78, 87 TTABVUE 81, Durand p. 45, 70
TTABVUE 135. As for the products bearing IT-suffix marks
Opposition No. 91173411
-24-
that Mr. Goldrick purchased, and which are shown in
Applicant’s trial exhibits 5 through 22, many of which are
discussed above, Mr. Goldrick testified that he was unaware
when the products were introduced into the market, or
whether they were still being sold at the time of his
testimony (a year after he purchased the items), or what
the level of sales or advertising is for the products.
Goldrick p. 79, 87 TTABVUE 82. Similarly, with respect to
the products shown in Exhibit 23, which is the search
results of the Internet search Mr. Goldrick conducted, Mr.
Goldrick did not know when the products were introduced, or
whether they are currently for sale, or the level of sales
or advertising for these products. Goldrick p. 81, 87
TTABVUE 84. Thus, the evidence falls short in showing that
consumers are so familiar with third-party IT-suffix marks
for sticky notes and flags, or even for similar stationery
items, that they would look to other elements to
distinguish the various marks.
We also note that Opposer has had success in having
third parties cease or modify their use of and/or abandon
their applications for various IT-suffix marks, including
some of the third-party marks noted by Applicant, e.g.,
FIND IT (Response to Requests for Admission Nos. 14, 15, 78
and 79); HOLD IT (Response to Requests No. 25 and 89);
Opposition No. 91173411
-25-
LABEL IT! (Response to Requests Nos. 27, 28, 91 and 92);
LIKE-IT (Response to Requests No. 29 and 93); SECURE-IT
TAPE (Response to Requests No. 46 and 110); TAPE IT
(Response to Requests No. 58, 122 and 123); CLIP-IT
(Response to Request No. 73); COVER IT (Response to Request
74); and DOT·IT (Response to Request No. 77).10 Opposer
also submitted testimony and exhibits regarding other
third-party marks against which it successfully took
action, including CARD-IT (Exhibit 172 89 TTABVUE 141-
145); NOTE IT (Exhibit 173, 89 TTABVUE 146); ADHERE IT
(Exhibit 176, 89 TTABVUE 163); MARK-IT (Exhibit 179, 89
TTABVUE 189); EDIT-IT (Exhibit 182, 89 TTABVUE 199); FILM
IT (Exhibit 183, 89 TTABVUE 302); ROLLIT (Exhibit 187, 89
TTABVUE 392); SITE-IT (Exhibit 191, 89 TTABVUE 447) and
TAC-IT (Exhibit 195, 89 TTABVUE 487-498).
In view of the foregoing, we find that Applicant has
not demonstrated that the 6th du Pont factor should weigh
in its favor.
Therefore, when we consider the similarity of
Opposer’s mark POST-IT and Applicant’s mark FLAG-IT!, we do
not discount the similarity of the “-IT” ending, or
concentrate only on the first syllables. On the contrary,

10 Opposer’s responses to Applicant’s requests for admission were
filed by Applicant as Exhibit 29 to its notice of reliance, 72
TTABVUE 226-268.
Opposition No. 91173411
-26-
we think consumers will view the marks POST-IT and FLAG-IT!
as unitary marks, and will view them as being similar in
appearance and pronunciation in that they are both
constructed in the same manner, with a four-letter one-
syllable verb identifying an action to be taken with
respect to “IT.” The beginning elements, POST and FLAG,
rather than being seen as identifying separate sources for
the goods, will be understood as merely identifying
different activities that can be done with the goods.
These words also have some similarity in meaning, in that
POST refers to announcing something in written form (“to
publish, announce, or advertise by or as if by use of a
placard”) while FLAG means to identify something (“to mark
or identify with or as if with a flag”) such that, the
marks POST-IT and FLAG-IT! for adhesive flags both convey
the connotation of noting information; POST-IT flags would
mean flags that can be posted (placed) to identify specific
information or a specific page, while FLAG-IT! flags would
also indicate that the flags can be used to identify
specific information or a specific page.11 It must be

11 Definitions from Merriam-Webster Online, http://www.merriam-
webster.com, Exhibit 157, 70 TTABVUE 67. We are not persuaded by
Applicant’s argument that the noun definition for “flag” would
apply here, rather than the verb; because of the manner in which
“flag” appears in the mark, FLAG-IT!, the word will be understood
to be the verb form. Further, Applicant’s president testified at
his discovery deposition that Applicant came up with its FLAG-IT!
Opposition No. 91173411
-27-
remembered that, when marks would appear on virtually
identical goods or services, as is the case here, 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, 1700
(Fed. Cir. 1992). The fact that Opposer uses the word
“flag” immediately next to its mark POST-IT, and has done
so since the product was introduced in 1987-88, reinforces
the connection of its mark with FLAG. See examples of
Opposer’s goods and packaging at Exhibit 18, 78 TTABVUE
296-340. In addition, Opposer has advertised its flags
with “flag” slogans such as “Flag it. Find it. Fast.”
(Exhibit 14, 79 TTABVUE at 87, 89, 97); “Find it. Flag it.
Find it again.” (Exhibit 14, 79 TTABVUE at 91, 93); “If
it’s worth finding, it’s worth flagging” (Exhibit 14, 79
TTABVUE at 84); and “Find it and Flag it!” (Exhibit 14, 79
TTABVUE at 99, 102); Write. Flag. Find it!” (Exhibit 20, 77
TTABVUE at 48-49, 52-54).12

mark because “we were looking for some sort of action word for
the flags.” Bertram p. 78, 70 TTABVUE 108.
12 Applicant asserts that “this promotional campaign was
subsequently discontinued shortly after discovery of
[Applicant’s] FLAG-IT! application,” brief, p. 18, 92 TTABVUE 19,
referring to the slogans containing the phrase FLAG IT. However,
we note that one of the catalogs made of record by Opposer,
showing the slogan “Flag it. Find it. Fast!” bears a copyright
date of 2008. Exhibit 14, 79 TTABVUE 97. Inserts prepared for
2010 catalogs for several third parties, shown in confidential
Exhibit 20, use the slogans “Write. Flag. Find It!”, 77 TTABVUE
Opposition No. 91173411
-28-
Accordingly, although there are differences in the
marks due to the differences in the words POST and FLAG,
overall the marks convey a similar commercial impression
and the similarities in appearance, pronunciation and
connotation outweigh the differences. See Kenner Parker
Toys Inc. v. Rose Art Industries, Inc., supra, in which
likelihood of confusion was found between PLAY-DOH and FUN
DOUGH, both for modeling compound. As a result, consumers
who are familiar with POST-IT for sticky notes, adhesive
labels, or flags are likely to assume, when viewing FLAG-
IT! used for flags, that these goods emanate from the same
source as the POST-IT products and that this source has
adopted a variation of its POST-IT mark specifically for
its flags.
In saying this, we are aware that Applicant’s mark
includes an exclamation point, and Opposer’s mark does not,
but we do not consider the exclamation point to distinguish
the marks. Consumers are not likely to remember the
presence or absence of the punctuation mark. See Dassler
KG v. Roller Derby Skate Corporation, 206 USPQ 255 (TTAB
1980) (under actual marketing conditions, consumers do not
necessarily have the luxury of making side-by-side

49, 51-54, and “Flag Your Catalog Favorites with These”, 77
TTABVUE 47, while inserts for a 2012 catalog use the slogan “Flag
‘Em Down!” 77 TTABVUE 64.
Opposition No. 91173411
-29-
comparisons between marks, and must rely upon their
imperfect recollections). When the similarities of the
marks are considered in light of the facts that Opposer’s
POST-IT mark is famous, that the goods are identical and
must be deemed to be sold in the same channels of trade,
and that the goods are inexpensive items subject to impulse
purchase, consumers are far more likely to recognize the
overall similarity between the marks rather than
distinguish them based on their differences.
Opposer has also asserted that Applicant adopted its
mark with the intention of creating an association with
Opposer’s POST-IT mark. Opposer bases this assertion on
the fact that Applicant is located approximately 40 miles
away from Opposer; that Applicant’s testimony and discovery
witnesses were aware of POST-IT notes prior to the time
Applicant filed its application, and Applicant was aware
that Opposer used the POST-IT marks in connection with tape
flags prior to filing its application (response to
Interrogatory No. 15); and that Opposer and Applicant are
direct competitors in the promotional products industry.
Opposer also points out that Applicant did not call as a
trial witness its president, who selected the mark FLAG-
IT!, and that “[t]his lack of explanation from the person
responsible for selecting Applicant’s mark undercuts the
Opposition No. 91173411
-30-
credibility of any assertion that Applicant did not intend
to create an association with the famous POST-IT mark.”
Brief, p. 41, 90 TTABVUE 43.
We will not infer a bad intent from the fact that
Applicant was aware of Opposer’s POST-IT mark at the time
it filed its application and for many years prior to that,
and that Applicant did not provide the testimony of the
person who selected its mark. As Applicant has shown,
there are third-party IT-suffix marks, and the initial
words in the marks, POST and FLAG, have totally different
letters, and therefore Applicant may have thought that its
mark was sufficiently different from Opposer’s POST-IT
mark. However, the fact that we have found no bad intent
on Applicant’s mark cannot justify its registration. As
the Court has said, there is “no excuse for even
approaching the well-known trademark of a competitor.”
Recot Inc. v. M.C. Becton, supra at 54 USPQ2d 1898, quoting
Nina Ricci S.A.R.L v. E.T.F. Enterprises Inc., 889 F.2d
1070, 12 USPQ2d 1901, 1904 (Fed. Cir. 1989). When a famous
mark is at issue, a competitor must pause to consider
carefully whether the fame of the mark, accorded its full
weight, casts a “long shadow which competitors must avoid.”
Id. at 1897, quoting Kenner Parker, supra at 22 USPQ2d
Opposition No. 91173411
-31-
1456. Given the universe of available marks, Applicant’s
FLAG-IT! mark comes too close to Opposer’s POST-IT mark.
In view of the fame of Opposer’s mark, which entitles
it to a broad scope of protection, the identity of the
goods and channels of trade, and the conditions of
purchase, namely that the flags are purchased by the public
at large without particular care and frequently on impulse,
and the overall similarity of the marks, particularly in
their commercial impression, we find that Applicant’s mark
FLAG-IT! for its identified goods is likely to cause
confusion with Opposer’s previously used mark POST-IT for
flags and sticky notes.
Opposer has also submitted survey evidence in support
of its claim of likelihood of confusion, evidence that
Applicant has criticized at some length. Because we have
found that, even without the survey, Opposer has proved
likelihood of confusion, we need not rely on the survey to
support our decision, and therefore there is no need for us
to discuss the survey or the objections to it. No evidence
or argument on any other du Pont factor has been submitted.
To the extent that any is relevant, we treat it as neutral.
Opposition No. 91173411
-32-
In view of our finding of likelihood of confusion, it
is unnecessary for us to consider the ground of dilution,
and we choose not to do so.13
Decision:
The opposition is sustained.

13 We note that Opposer has given this ground rather short shrift
in its brief, devoting approximately 1½ pages to this ground,
most of which merely lists the factors set forth in the Trademark
Act, followed by single sentences essentially stating for each
factor that Opposer has satisfied it. Brief, pp. 45-46.