Barnhardt Manufacturing Companyv.Wildwood Gin, Inc.

Trademark Trial and Appeal Board

Jun 17, 2013

No. 92053237 (T.T.A.B. Jun. 17, 2013)

Mailed: June 17, 2013

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
______

Barnhardt Manufacturing Company
v.
Wildwood Gin, Inc.
_____

Cancellation No. 92053237
_____

Kathryn A. Gromlovits of Shumaker, Loop & Kendrick, LLP for
Barnhardt Manufacturing Company.

Ernest B. Lipscomb, III and B. Craig Killough of Barnwell Whaley
Patterson & Helms LLC for Wildwood Gin, Inc.
______

Before Holtzman, Zervas and Shaw, Administrative Trademark
Judges.

Opinion by Holtzman, Administrative Trademark Judge:

Barnhardt Manufacturing Company (petitioner) has filed a
petition to cancel a registration on the Principal Register owned
by Wildwood Gin, Inc. (respondent) for the mark ULTRACLEAN for
"raw cotton," in Class 22.1

1 Registration No. 3670482; issued August 18, 2009 from an application
filed May 9, 2008, alleging dates of first use and first use in
commerce on June 2, 2008.
THIS OPINION IS
NOT A PRECEDENT OF
THE TTAB
Cancellation No. 92053237
2
As its ground for cancellation, petitioner alleges that it
has continuously used the mark ULTRACLEAN in commerce in
connection with "specially cleaned raw cotton" since March 2006,
over two years prior to the May 9, 2008 filing date of
respondent's underlying application; and that respondent's mark
when applied to respondent's goods so resembles petitioner's
previously used mark as to be likely to cause confusion.
Petitioner further alleges that it is the owner of application
Serial No. 85072021 filed on June 25, 2010, for the mark
ULTRACLEAN for "raw cotton that has been optimally cleaned to be
purified or used as an unbleached raw material"; and that
registration to petitioner has been refused on the basis of the
registration involved herein.
To the extent that petitioner also intended to assert
dilution as a ground for cancellation, the claim was not properly
pleaded since petitioner did not allege prior fame of its
ULTRACLEAN mark, or fame at all. Furthermore, the claim was
neither tried by the parties such that the pleading could be
deemed amended to conform with the evidence nor argued by
petitioner its brief. Ordinarily, in accordance with the Board's
usual practice we would find this claim to have been waived by
petitioner. However, respondent devoted a considerable portion
of its brief to argument on the merits this claim, and has
requested that judgment be entered against petitioner on the
Cancellation No. 92053237
3
claim. Accordingly, the dilution claim is dismissed as
improperly pleaded and because it is unsupported by any evidence.
Cf. Rolex Watch U.S.A. Inc. v. AFP Imaging Corp., 101 USPQ2d
1188, 1189 (TTAB 2011).
Respondent, in its answer, admits that petitioner filed an
application for the mark and goods identified in the petition to
cancel, and denies the remaining salient allegations.
As a preliminary matter, we note that petitioner attached
exhibits to its pleading. These materials consist of portions of
the file history of petitioner's pleaded application, including
the Office action refusing registration together with specimen
labels and photographs of its product (Exhs. 1, 4); a document
titled "Bleach Process Specifications," dated March 28, 2006, and
three invoices of sale, each dated December 12, 2006 (Exh. 3).2
While attaching exhibits to a pleading does not ordinarily
make them of record (Trademark Rule 2.122(c)), respondent has not
objected to these exhibits, and moreover has treated them as of
record in its brief by expressly acknowledging the exhibits in
its description of the record and/or addressing them on the
merits. Accordingly, these exhibits are all deemed to have been
stipulated into the record and they will be considered for
whatever probative value they may have. See TBMP 702.02 (3d ed.

2 The exhibits also include a printout of the subject registration
(Exh. 2) which is automatically of record.
Cancellation No. 92053237
4
rev. 2012) (improperly offered or otherwise noncomplying evidence
may nevertheless be deemed stipulated into the record where no
objection to the evidence is raised and/or the nonoffering party
treats the evidence as being of record); and, e.g., Coach
Services Inc. v. Triumph Learning LLC, 96 USPQ2d 1600, 1603, n.3
(TTAB 2010), aff'd in relevant part, 668 F.3d 1356, 101 USPQ2d
1713 (Fed. Cir. 2012).
Record
The record includes the pleadings, with exhibits, and the
file for the involved registration. In addition, petitioner
submitted the testimony, with exhibits, of petitioner's president
and chief operating officer, Lewis Barnhardt;3 and a notice of
reliance on the discovery deposition, with exhibits, of
respondent's president, Lawson Gary and responses to petitioner's
interrogatories.
Respondent did not take any testimony, but submitted a
notice of reliance on petitioner's responses to interrogatories
along with responses to respondent's requests for admissions.4
Both parties have filed briefs.

3 The entire transcript of Mr. Barnhardt's testimony was designated as
"confidential" although there are clearly non-confidential portions and
moreover the parties have openly discussed the contents in their
briefs. To that extent, the confidentiality of the testimony is
considered waived.
4 The notice of reliance also includes what respondent refers to as the
30(b)(6) deposition of Lewis Barnhardt. However, this is actually
petitioner's testimony deposition of Mr. Barnhardt.
Cancellation No. 92053237
5
Standing
The record shows that petitioner is owner of an application
that has been refused registration as a result of the
registration herein. Thus, petitioner's standing, that is, its
real interest in this proceeding, has been established. See
Lipton Industries, Inc. v. Ralston Purina Co., 670 F.2d 1024, 213
USPQ 185, 189 (CCPA 1982).
Distinctiveness and Priority
In order for a plaintiff to prevail on a claim of likelihood
of confusion based on its ownership of common law rights in a
mark, the mark must be distinctive, inherently or otherwise, and
plaintiff must show priority of use. See Otto Roth & Co. v.
Universal Foods Corp., 640 F.2d 1317, 209 USPQ 40 (CCPA 1981).
Respondent has not questioned the distinctiveness of
petitioner's ULTRACLEAN mark nor are there any other
circumstances in the case which would have put petitioner on
notice of this defense, and we therefore find that the mark is
distinctive. See Wet Seal Inc. v. FD Management Inc., 82 USPQ2d
1629, 1634 (TTAB 2007); The Chicago Corp. v. North American
Chicago Corp., 20 USPQ2d 1715 (TTAB 1991). See also Shalom
Children's Wear Inc. v. In-Wear A/S, 26 USPQ2d 1516 (TTAB 1993).
Cf. Otto Roth, 209 USPQ at 44 (CCPA 1981) ("Neither the board nor
appellee has questioned the inherent distinctiveness of ESPRIT
NOUVEAU, and we therefore assume it functions as a trademark").
Cancellation No. 92053237
6
As to priority,5 we note that although petitioner pleaded
rights in the mark ULTRACLEAN as a single term, it is clear that
the issue of priority was tried by implied consent with respect
to slight variations of that mark, that is, as to the separate
terms, ULTRA-CLEAN or ULTRA CLEAN, with or without a hyphen.
Accordingly, the pleadings are considered amended to conform with
the evidence. Fed. R. Civ. P. 15(b).
Petitioner is a supplier of cleaned (bleached) raw cotton to
the nonwovens industry. Barnhardt Test., p. 4, 5. The raw
material is used in the manufacture of feminine hygiene products,
baby wipes, swabs, cotton balls and other similar types of
products for consumer and medical use. Id., pp. 4, 13, 23; Exh.
3. Mr. Barnhardt testified that petitioner first used the mark
ULTRA-CLEAN on cleaned raw cotton in March 2006, and that the
mark has been in continuous use since that time. Id., pp. 6; 15-
16; 19-21; Respondent's NOR, Exh. 1 (Resp. No. 2). The record
shows that petitioner manufactures the ULTRA-CLEAN product
primarily for the company, Spuntech Ind. Ltd. N.R. ("Spuntech"),
located in Israel. Respondent's NOR, Exh. 1 (Resp. No. 2).
Petitioner's cotton product is sold in bale form, with each
bale weighing approximately 500 pounds. The bale is strapped,
and wrapped in polypropylene packaging, and labels bearing the

5 Respondent's claim that "prior rights were not the subject of [the]
pleadings" (Brief, p. 1, fn.2) is not understood. The petition clearly
and specifically alleges prior rights in the mark.
Cancellation No. 92053237
7
mark ULTRA-CLEAN are affixed to the packaged product in three
places. Barnhardt Test., p. 18; Exh. 6; Respondent's NOR, Exh. 1
(Resp. No. 2). Petitioner has submitted examples of labels that
are placed on the bales, and Mr. Barnhardt testified that the
mark has been used on such labels since March 2006. Id., pp. 17-
18, 20; Exh. 6.
The record shows that on March 27, 2006, petitioner sent an
email to Spuntech regarding the cleaning and labeling
requirements for the product; and that petitioner prepared a
bleach process specification sheet for Spuntech on March 28,
2006, referring to the "product description" as BCC ULTRA CLEAN
("BCC" identifying "Barnhardt commodity comber") and specifying
the certification and labeling requirements for the product.
Id., pp. 16-18; Exhs. 5, 6; Pldg. Exh. 3. The three invoices of
sale submitted by petitioner all bear the ULTRA-CLEAN mark and
show, as respondent admits, that the product was ultimately
shipped to Spuntech, in three separate prepaid shipments, on
December 12, 2006. Pldg. Exh. 3; Resp.'s Br., pp. 4, 8. Each
invoice lists 60 bales of cotton (which weigh roughly 512 pounds
per bale), and a total cost, per shipment, of approximately
$30,000.
We find that the evidence as a whole is clearly sufficient
to demonstrate petitioner's use of the mark ULTRA-CLEAN at least
as of December 12, 2006.
Cancellation No. 92053237
8
According to respondent's president, Mr. Gary, respondent
began actual use of its ULTRACLEAN mark in June 2008. Gary
Test., pp. 10, 16. Thus, the May 9, 2008 filing date of
respondent's underlying intent-to-use application is the earliest
date upon which respondent can rely for purposes of priority.
Petitioner has established use of its ULTRA-CLEAN mark prior to
such date, and therefore has priority.
Respondent argues that petitioner's evidence is insufficient
to establish petitioner's prior use of the ULTRA-CLEAN mark. We
have considered those arguments and find them unpersuasive.
While respondent acknowledges petitioner's sales of its
ULTRA-CLEAN product to Spuntech in December 2006, respondent
argues that petitioner has provided no evidence of labeling of
the product "prior to [respondent's] trademark filing for the
mark on May 9, 2008." Br., p. 8. However, it is clear from Mr.
Barnhardt's testimony that the packaging in which the cotton
product is shipped includes a label bearing the ULTRA-CLEAN mark,
and that the labels reflect the mark as it was used in 2006.
Furthermore, although the particular labels shown in Barnhardt
Exh. 6 (as well as those in Pldg. Exh. 1) may not have been
"made" or printed before May 9, 2008, as respondent contends, it
is clear from the record that this label is of the type that has
been used by petitioner. It is obvious from the face of the
various labels of record, that each label has been individually
Cancellation No. 92053237
9
prepared according to the specifications (weight, moisture, etc.)
for the particular bale of cotton.
Respondent further argues that petitioner made no bona fide
use of the mark prior to respondent's application filing date.
Respondent relies on Lucent Information Management Inc. v. Lucent
Technologies Inc., 186 F.3d 311, 51 USPQ2d 1545, 1555 (3d Cir.
1999) (applying the "market penetration" test formulated by the
Court in Natural Footwear Ltd. v. Hart, Schaffner & Marx, 760
F.2d 1383, 225 USPQ 1104 (3rd Cir. 1985)) which, according to
respondent, "raised the threshold of 'use' required to establish
priority." Arguing that "trademark rights are not created unless
there is a shipment or sale exposed to the public in the United
States," respondent contends that petitioner's "one time sale" of
bleached cotton under the mark in December 2006 "to a single
customer" which was "located outside the United States"
establishes only a token use of the mark; and that petitioner's
"failure to continue sales" under the mark between December 2006
and the filing of respondent's application in May 2008 "makes
[petitioner's] use a de minimis use of the mark." Br., pp. 4, 9,
13, 16 (italics in original).
To begin with, respondent cites to no authority for its
contention that the sale of products to a single customer is not
sufficient to establish priority of use. Furthermore, to the
extent that respondent is arguing that in order for a sale to be
Cancellation No. 92053237
10
bona fide, it must be made to customers within the United States,
respondent is mistaken. As defined in Section 45 of the
Trademark Act, "use" of a mark means use "in commerce." The word
"commerce" means "all commerce which may lawfully be regulated by
Congress." Commerce between the United States and a foreign
country is a type of commerce that is regulable by Congress. See
Person's Co. Ltd. v. Christman, 900 F.2d 1565, 14 USPQ2d 1477,
1479 (Fed. Cir. 1990). Thus, petitioner's shipment of its
product to the company in Israel was clearly a sale of the
product in commerce.
In addition, respondent's reliance on Lucent is misplaced.
The "market penetration" test, as articulated in Natural
Footwear, was used for the purpose of determining the geographic
extent of common law rights. The Court in Lucent extended the
reach of this test, using it to determine common law rights as an
initial matter, based on the extent of use in commerce. The test
does not apply here. Our precedent does not require use in
commerce or any particular degree of market penetration in order
to establish priority. See, e.g., National Cable Television Ass'n
v. American Cinema Editors, Inc., 937 F.2d 1572, 19 USPQ2d 1424,
1429 n.4 (Fed. Cir. 1991) ("Section 14 [through Section 2(d)]
requires only prior use; 'in commerce' is noticeably absent.").
See also First Niagara Insurance Brokers Inc. v. First Niagara
Financial Group Inc., 476 F.3d 867, 81 USPQ2d 1375, 1378 (Fed.
Cancellation No. 92053237
11
Cir. 2007) ("...the plain language of the statute...merely
requires the prior mark to have been ‘used in the United States
by another.'"); and, e.g., E.I. du Pont de Nemours and Co. v. Big
Bear Stores, Inc., 161 USPQ 50, 51 (TTAB 1969) (bona fide test
marketing and experimental sales in small volumes are sufficient
to show use of a mark).
It is only necessary for petitioner to show that it made a
bona fide use of the mark in the ordinary course of trade, and
not merely to reserve a right in the mark. Section 45 of the
Trademark Act. The record, in this case, shows an arms-length,
legitimate commercial transaction, and there is nothing to show
that this transaction was anything other than a genuine
commercial use.
Respondent's arguments regarding petitioner's alleged lack
of continuous use of the mark are unavailing. As noted earlier,
Mr. Barnhardt attested to continuous use of the ULTRA-CLEAN mark
since 2006. Moreover, respondent has expressly acknowledged that
there were subsequent sales of the ULTRACLEAN product to Spuntech
in March 2009, stating: "...Barnhardt has provided no evidence
of sales using the UltraClean mark from December 2006 until March
30, 2009"; and "[Respondent] understands that [Spuntech] resumed
purchasing bleached cotton under the Ultra-Clean name from
Barnhardt in 2009." Resp.'s Br., p. 9.
Cancellation No. 92053237
12
In any event, in order to establish priority, a plaintiff is
only required to show prior use, not continuous use of its mark,
unless the defendant has asserted the affirmative defense of
abandonment. See West Florida Seafood Inc. v. Jet Restaurants
Inc., 31 F.3d 1122, 31 USPQ2d 1660 (Fed. Cir. 1994). Respondent
has not asserted the defense of abandonment in this case,6 and
even if it had, this time period is insufficient to support a
prima facie case of abandonment inasmuch as it is less than three
years.
We find that petitioner has met its burden of establishing
its priority by a preponderance of the evidence by showing use of
the ULTRA-CLEAN mark in shipments to Israel at least as early as
December 12, 2006.
Likelihood of Confusion
Respondent has not discussed the merits of petitioner's
issue of likelihood of confusion in its brief, taking the
position that there can be no likelihood of confusion "because
[respondent] is the proper owner of the [mark]." Nevertheless,
the question of likelihood of confusion must be determined from
the record, and we find based on the record, that confusion is
likely.

6 Respondent's passing reference in its brief to an alleged "lapse of
about three years before a further sale was made" is insufficient.
Cancellation No. 92053237
13
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, however, two key
considerations are the similarities or dissimilarities between
the marks and the similarities or dissimilarities between the
goods. See Federated Foods, Inc. v. Fort Howard Paper Co., 544
F.2d 1098, 192 USPQ 24, 29 (CCPA 1976).
Petitioner, in its brief, argues that it owns a family of
"ULTRA" prefixed marks, including such marks as ULTRAWHITE,
ULTRASORB and ULTRASCENT. However, petitioner did not plead a
family of marks, and to the extent that it could be said that the
issue was tried by the parties with implied consent, a family of
marks clearly has not been proven. See Marion Laboratories v.
Biochemical/Diagnostics, 6 USPQ2d 1215, 1218 (TTAB 1988).
Petitioner attempted to introduce certain promotional
literature relating to these marks during the discovery
deposition of Mr. Gary (Exhs. 6-9), but among other problems with
this evidence, petitioner provided no foundation for its
introduction. Mr. Gary stated that he had never seen any of
these materials; nor had he ever heard of the marks shown
therein. Furthermore, there is no evidence that any of the marks
allegedly comprising the family have ever been promoted together,
Cancellation No. 92053237
14
or that any promotion occurred prior to the filing date of
respondent's underlying application.
We turn then to a comparison of petitioner's mark
ULTRA-CLEAN with respondent's mark ULTRACLEAN, and a
consideration of the marks in their entireties in terms of sound,
appearance, meaning and commercial impression. See Palm Bay
Imports, Inc. v. Veuve Clicquot Ponsardin Fondee En 1772, 396
F.3d 1369, 73 USPQ2d 1689, 1691 (Fed. Cir. 2005).
The marks are identical in sound, meaning and commercial
impression and virtually identical in appearance. The presence
of a hyphen between the words in petitioner's mark is an
insignificant difference that is not likely to be noticed or
remembered by purchasers when encountering these marks at
separate times. See In re Sears, Roebuck and Co., 2 USPQ2d 1312,
1313 (TTAB 1987) (CROSS-OVER and CROSSOVER "identical in
appearance but for the inclusion in applicant's mark of a hyphen,
which, for purposes herein, is of no legal significance”);
Goodyear Tire & Rubber Co. v. Dayco Corp., 201 USPQ 485, 489 n.4
(TTAB 1978) (FAST-FINDER with a hyphen is "in legal
contemplation" substantially identical to the mark FASTFINDER
without a hyphen).
The near identity of the marks strongly favors a finding of
likelihood of confusion. See In re Shell Oil, 992 F.2d 1204, 26
USPQ2d 1687, 1688 (Fed. Cir. 1993) ("The identity of words,
Cancellation No. 92053237
15
connotation, and commercial impression weighs heavily against the
applicant.").
While ULTRA-CLEAN has a suggestive meaning in relation to
petitioner's cotton product, that suggestive meaning is the same
in both marks. Furthermore, there is no evidence that the term
has been commonly used by others for similar goods or, for that
matter, that it has been used by anyone other than petitioner.
We recognize that ULTRA-CLEAN, as a suggestive mark, is not
entitled to the broadest scope of protection. However, the mark
is at least entitled to protection against the registration of a
virtually identical mark, if such mark is used on related goods.
See King Candy Co. v. Eunice King's Kitchen, Inc., 496 F.2d 1400,
182 USPQ 108, 109 (CCPA 1974) (likelihood of confusion is to be
avoided as much between weak marks as between strong marks).
We turn then to a consideration of the goods. Respondent's
goods are identified in the registration as "raw cotton."
Petitioner's product, as the evidence shows, is raw cotton that
has been cleaned by a bleaching process. Barnhardt Test., p. 6;
Resp.'s NOR, Exh. 1 (Resp. Nos. 2, 3, 9). The respective goods
on their face are similar, and this similarity is confirmed by
Mr. Gary's testimony which indicates that respondent's raw cotton
product is also cleaned, albeit through a mechanical process.
Gary Dep., pp. 19, 20. Notwithstanding any differences in the
cleaning processes, however, these similar products are
Cancellation No. 92053237
16
alternatives to one another for use in the very same end
products, including healthcare and feminine hygiene products, wet
wipes and dry wipes. Barnhardt Test., pp. 13, 23; Gary Dep., pp.
20, 21, 30. Indeed, the parties are competitors in the nonwovens
industry. Barnhardt Test., p. 13; Gary Dep., p. 8, 21.
There is no question that the parties' highly similar
products would come to the attention of the same purchasers in
the same industry under circumstances that would cause them
naturally to assume, in view of the near identity of the marks,
that the goods emanate from the same source or that there is
otherwise some connection between them. See, e.g., Luzier Inc.
v. Marlyn Chemical Co., Inc., 442 F.2d 973, 169 USPQ 797 (CCPA
1971). See also In re Mitsubishi Jidosha Kogyo Kabushiki Kaisha,
19 USPQ2d 1633 (TTAB 1991); In re International Telephone &
Telegraph Corp., 197 USPQ 910 (TTAB 1986). Accordingly, we find
that a likelihood of confusion exists.
Decision: The petition to cancel is granted, and
Registration No. 3670482 will be cancelled in due course.