Collector’s Edge of Tennessee, Inc. and The Fairfield Companyv.The Edge Interactive Media, Inc.

Trademark Trial and Appeal Board

Jan 4, 2002

No. 91107996 (T.T.A.B. Jan. 4, 2002)

Paper No. 30
BAC/ml
UNITED STATES PATENT AND TRADEMARK OFFICE
_____
Trademark Trial and Appeal Board
______
Collector’s Edge of Tennessee, Inc., and The Fairfield
Company, joined as party plaintiff1
v.
The Edge Interactive Media, Inc.
_____
Opposition No. 107,996
to application Serial No. 74/390,998
filed on May 14, 1993
_____
James C. Nemmers of Shuttleworth & Ingersoll, PLC, for
Collector’s Edge of Tennessee, Inc., and The Fairfield
Company, joined as party plaintiff
Dr. Timothy Langdell, CEO of The Edge Interactive, Media,
Inc., pro se.
______
Before Quinn, Hairston, and Chapman, Administrative
Trademark Judges.
Opinion by Chapman, Administrative Trademark Judge:
Stephen D. Grant and Gil Kane, joint applicants,
originally filed an application to register the mark EDGE
1 The records of the Assignment Branch of this Office indicate
that opposer’s pleaded Registration No. 1,895,589 was assigned to
The Fairfield Company by an assignment recorded at Reel 2359,
Frame 0248 in August 2001. Accordingly, The Fairfield Company is
hereby joined as a party plaintiff pursuant to Fed. R. Civ. P.
19(a). See also TBMP § 512.01.
Opposition No. 107996
2
on the Principal Register for “printed matter, namely,
comic books, comic book reference guide books, books
featuring stories in illustrated forms, graphic novels,
comic strips, picture postcards, comic postcards, printed
postcards, trading cards, collectors [sic] cards featuring
comic book characters, playing cards, novelty stickers,
decals, and posters.”2 The application was assigned to The
Edge Interactive Media, Inc. in February 1997, and the
assignment was recorded in the United States Patent and
Trademark Office in March 1997 (Reel 1561, Frame 0255).
Collector’s Edge of Tennessee, Inc. filed the notice
of opposition alleging that opposer has continuously used
COLLECTOR’S EDGE as a trademark since prior to any date
which may be claimed by applicant; that opposer owns
Registration No. 1,895,589 for the mark COLLECTOR’S EDGE3
for “paper goods and printed matter; namely, football
trading cards, decals and stickers;” and that applicant’s
mark, when used in connection with its goods, so resembles
2 Application Serial No. 74/390,998, filed May 14, 1993, based on
applicant’s assertion of a bona fide intention to use the mark in
commerce. Subsequently, on March 5, 1997, applicant filed an
Amendment to Allege Use, with claimed dates of first use of
November 30, 1993 and first use in commerce of April 31, 1994,
which was accepted by the Examining Attorney.
3 Registration No. 1,895,589, issued May 23, 1995, Section 8
affidavit accepted, Section 15 affidavit acknowledged. The
claimed date of first use is November 30, 1991, and the date of
first use in commerce is February 21, 1992.
Opposition No. 107996
3
opposer’s previously used and registered trademark as to be
likely to cause confusion, mistake, or deception.4
Applicant, in its answer, denied the salient
allegations of the notice of opposition.
The record consists of the pleadings; the file of the
opposed application; opposer’s notice of reliance,
consisting of a current status and title copy of opposer’s
Registration No. 1,895,589; and the testimony of opposer’s
president, Alan Lewis, with exhibits. Applicant did not
take any testimony or properly introduce any evidence.5 Nor
4 In its brief on the case, opposer also has asserted common law
rights in the following marks: (1) EDGE for football and
basketball trading cards; (2) EDGE ENTERTAINMENT for trading
cards featuring comic book characters; and (3) a stylized
depiction of COLLECTOR’S EDGE (shown below) for trading cards
featuring fantasy characters:
Given our holding in this matter, we need not consider opposer’s
assertions of rights in various common law marks.
5 Applicant argues in its brief (p. 6) that it “filed its own
Notice of Reliance on August 25, 2000 (in a timely manner).”
However, no copy of applicant’s notice of reliance was received
by opposer or the Board until February 2001, when applicant
attached a copy of its purported notice of reliance to its main
brief as well as an “Appendix of Documents Relied Upon”
(including copies of registrations printed out on February 10,
2001).
Applicant is well aware (or should be) that “the facts and
arguments presented in the brief must be based on the evidence
offered at trial. A brief may not be used as a vehicle for the
introduction of evidence.” See TBMP § 801.01. Because there is
no proof of the timely filing of applicant’s “notice of
reliance,” the contents thereof will not be considered by the
Board. It should be noted, however, that, given the nature of
Opposition No. 107996
4
did applicant attend or participate in the testimony
deposition of Alan Lewis.
Both parties filed briefs on the case.6 An oral
hearing was not requested.
With regard to the issue of priority, to the extent
that opposer owns a valid and subsisting registration of
its pleaded mark,7 the issue of priority does not arise.
See King Candy Co. v. Eunice King's Kitchen, Inc., 496 F.2d
1400, 182 USPQ 108, 110 (CCPA 1974); and Carl Karcher
Enterprises, Inc. v. Stars Restaurants Corp., 35 USPQ2d
1125 (TTAB 1995). Moreover, the record establishes
opposer’s prior and continuous use of its mark since
February 1992.
Thus, the only remaining issue before the Board is
that of likelihood of confusion. Our determination of
the “evidence” and the weight it is to be accorded, a
consideration of applicant’s proposed “evidence” would not alter
the Board’s ruling in this matter.
6 The Board notes that applicant filed its brief “under protest”
due to its pending motions. There are no remaining pending
motions. See Board orders dated January 11, 2001; January 12,
2001; January 23, 2001; February 14, 2001; and November 1, 2001.
Applicant is advised that factual statements made in briefs on
the case can be given no consideration unless they are supported
by evidence properly introduced at trial. See BL Cars Ltd. v.
Puma Industria de Veiculos S/A, 221 USPQ 1018 (TTAB 1983); and
Abbott Laboratories v. TAC Industries, Inc., 217 USPQ 819 (TTAB
1981). See also, TBMP § 706.02.
7 Applicant asserts throughout its brief that opposer has not
shown that it is the owner of the pleaded registration. However,
the records of the Assignment Branch of this Office include seven
recorded documents supporting a proper chain of title to opposer.
Opposition No. 107996
5
likelihood of confusion is based on an analysis of all of
the facts in evidence that are relevant to the factors
bearing on the issue of likelihood of confusion. In re E.
I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563
(CCPA 1973). Specifically, in any likelihood of confusion
analysis, two key considerations are the similarities or
dissimilarities between the goods and the similarities or
dissimilarities between the marks. Federated Foods, Inc.
v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24 (CCPA
1976). Based on the record before us in this case, we find
that confusion is likely.
Turning first to a consideration of the parties’
respective goods, it is well settled that goods need not be
identical or even competitive to support a finding of
likelihood of confusion, it being sufficient instead that
the goods are related in some manner or that the
circumstances surrounding their marketing are such that
they would likely be encountered by the same persons under
circumstances that could give rise to the mistaken belief
that they emanate from or are associated with the same
source. See In re Peebles, Inc., 23 USPQ2d 1795 (TTAB
1992); and In re International Telephone and Telegraph
Corporation, 197 USPQ 910 (TTAB 1978). Nor is it necessary
that a likelihood of confusion be found as to each item
Opposition No. 107996
6
included within applicant’s identification of goods. See
Squirtco v. Tomy Corporation, 697 F.2d 1038, 216 USPQ 937,
939 (Fed. Cir. 1983); Tuxedo Monopoly, Inc. v. General
Mills Fun Group, 648 F.2d 1335, 209 USPQ 986, 988 (CCPA
1981); and Alabama Board of Trustees v. BAMA-Werke Curt
Baumann, 231 USQP 408, footnote 7 (TTAB 1986).8
In addition, it is well established that the issue of
likelihood of confusion must be determined in light of the
goods set forth in the opposed application and pleaded
registration and, in the absence of any specific
limitations therein, on the basis of all normal and usual
channels of trade and methods of distribution for such
goods. See, e.g., CBS Inc. v. Morrow, 708 F.2d 1579, 218
USPQ 198, 199 (Fed. Cir. 1983); Squirtco v. Tomy Corp.,
supra, 216 USPQ at 940; and Paula Payne Products Co. v.
Johnson Publishing Co., Inc., 473 F.2d 901, 177 USPQ 76, 77
(CCPA 1973).
With respect to the involved goods, we note that
opposer’s pleaded registration covers “football trading
8 Applicant states in its brief that it should at least be
granted a registration “for all goods and services it applied for
other than the specific goods of trading cards which opposer
singled out.” (Applicant’s brief, p. 25). However, applicant
did not submit any proposed amendment to its application. In any
event, the record supports a finding of likelihood of confusion
based on the involved marks and goods.
Opposition No. 107996
7
cards, decals and stickers.” Similarly, applicant’s goods
cover a variety of printed matter, including, “trading
cards” and “novelty stickers, [and] decals.” Because there
is no limiting language which restricts the subject matter
of these goods in the involved application, we must presume
that applicant’s goods encompass all types of trading
cards, decals, and novelty stickers, including those
related to the football-themed goods identical to those of
opposer.
We also must presume that applicant’s goods move
through all the ordinary and normal channels of trade for
such goods to all the usual purchasers for such products.
See Octocom Systems Inc. v. Houston Computer Services,
Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990);
and The Chicago Corp. v. North American Chicago Corp., 20
USPQ2d 1715 (TTAB 1991). See also In re Elbaum, 211 USPQ
693 (TTAB 1981).
Indeed, Alan Lewis, the president of opposer, provided
the following testimony in his deposition taken on June 28,
2000:
Q: Earlier you had mentioned that the same buyers
for the stores and the chains purchased both
sports and non-sports trading cards. Do they
also stock sports and non-sports trading cards
alongside one another?
A: Yes.
Opposition No. 107996
8
. . . .
Q: Both sport and non-sport cards together?
A: That’s correct.
Q: Side-by-side?
A: Correct.
See Deposition of Alan Lewis at pp. 42-43. Mr. Lewis
confirmed the similar (if not identical) channels of trade
of sports cards and non-sports cards in the following
discussion:
Q: So if you’re looking at the cards, can you look
from sports cards to non-sports cards and back
again without any physical obstruction?
A: That’s correct.
. . . .
Q: . . . Do any large retailers you’re aware of
segregate sports cards from non-sports cards, put
them in physically different locations?
A: No.
Q: Why do they keep them together?
A: It’s mainly logistics. Trading cards is a
particular category. There’s one buyer. There’s
one jobber that will come around and stock those
shelves. . . . It’s the same product in the
consumer’s mind and it’s sold in the same spot,
and, you know, people are drawn to that one spot
to find what they want.
Q: Do consumers purchase both sports and non-sports
cards?
A: Yes.
See Lewis Deposition at pp. 44-45.9
Thus, applicant's “trading cards” must in legal
contemplation be viewed as being identical to opposer's
9 Indeed, Mr. Lewis indicated that opposer itself produced both
sports and non-sports cards. Dep. at pp. 11 and 56.
Opposition No. 107996
9
goods since the term obviously includes trading cards with
a football theme. Similarly, the same is true regarding
stickers and decals. Consequently, the respective goods
must be considered to move in the same channels of trade,
and would be sold to the identical classes of purchasers.
Indeed, under the du Pont factors regarding conditions
of sale, the average purchaser may be expected to exercise
less care in the decision to purchase a less expensive
article. Here, “these are not expensive items requiring
one to exercise careful thought and/or expertise in their
purchase. More often than not they are shelf items which
are purchased on a somewhat casual basis.” In re
Sailerbrau Franz Sailer, 23 USPQ2d 1719, 1720 (TTAB 1992).
See also, Recot Inc. v. M.C. Becton, 214 F.3d 1322, 54
USPQ2d 1894, 1899 (Fed. Cir. 2000) (“[w]hen products are
relatively low-priced and subject to impulse buying, the
risk of likelihood of confusion is increased because
purchasers of such products are held to a lesser standard
of purchasing care”).
Plainly, the marketing and sale of trading cards (even
of different subject matters), if offered under the same or
similar marks, would be likely to cause confusion as to
origin or affiliation.
Opposition No. 107996
10
When marks appear on virtually identical goods, the
degree of similarity necessary to support a conclusion of
likely confusion declines. See Century 21 Real Estate
Corp. v. Century Life of America, 970 F.2d 874, 23 USPQ2d
1698 (Fed. Cir. 1992).
We turn next to a consideration of the respective
marks at issue. It is well settled that marks are
considered in their entireties, but in articulating reasons
for reaching a conclusion on the issue of likelihood of
confusion, there is nothing improper in stating that, for
rational reasons, more or less weight has been given to a
particular feature or portion of a mark. That is, one
feature of a mark may have more significance than another.
See In re National Data Corporation, 753 F.2d 1056, 224
USPQ 749 (Fed. Cir. 1985). We find the dominant origin-
indicating portion of opposer’s registered mark is the word
EDGE, which is identical to applicant’s mark. That is, the
common significant element in both parties’ marks is the
same term, EDGE.
When considered in their entireties, the respective
marks are similar in sound and appearance. Concerning the
connotations of the respective marks, the term EDGE (when
used alone) is arbitrary in connection with applicant’s
goods. Further, we find that the term COLLECTOR’S in
Opposition No. 107996
11
opposer’s pleaded registration is highly suggestive, if not
descriptive, of the anticipated purchasers of opposer’s
goods – namely, card collectors – as well opposer’s actual
goods, collector’s cards.10 While the mark COLLECTOR’S EDGE
is somewhat suggestive of trading cards, nonetheless, the
overall commercial impression of the marks is highly
similar.
Moreover, the slight difference in the respective
marks may not be recalled by purchasers seeing the marks at
separate times. The emphasis in determining likelihood of
confusion is not on a side-by-side comparison of the marks,
but rather must be on the recollection of the average
purchaser, who normally retains a general rather than
specific impression of the many trademarks encountered;
that is, a purchaser’s fallibility of memory over a period
of time must also be kept in mind. See Grandpa Pidgeon’s
of Missouri, Inc. v. Borgsmiller, 477 F.2d 586, 177 USPQ
573 (CCPA 1973); and Spoons Restaurants Inc. v. Morrision,
Inc., 23 USPQ2d 1735 (TTAB 1991), aff’d unpub’d (Fed. Cir.,
June 5, 1992).
10 Opposer has submitted testimony establishing the similarity, if
not interchangeability, of the terms trading cards and
collector’s cards. See Lewis Deposition at p.55.
Opposition No. 107996
12
Even if potential purchasers realize the apparent
difference between the marks EDGE and COLLECTOR’S EDGE,
they may mistakenly believe that applicant’s mark is simply
a revised, shortened version of opposer’s mark, with both
marks serving to indicate origin in the same source.
Our finding above that certain of applicant’s goods,
specifically, “trading cards,” “decals,” and “novelty
stickers,” are legally identical to opposer’s identified
“football trading cards, decals and stickers,” is more than
sufficient to overcome the relatively minor differences
between the parties’ marks.
Thus, when we compare the parties' marks in their
entireties we find that they are substantially similar in
sound, appearance and commercial impression. See In re
Azteca Restaurant Enterprises Inc., 50 USPQ2d 1209 (TTAB
1999). Their contemporaneous use, in connection with the
same or closely related goods, would therefore be likely to
cause confusion as to the source or sponsorship of such
products.
Applicant’s argument that there has been no actual
confusion is unavailing as there is no evidence of record
regarding applicant’s geographic area of sales or amount of
sales. Hence, it is not clear that there has been
opportunity for confusion in the marketplace. Moreover,
Opposition No. 107996
13
the test is whether there is a likelihood of confusion, not
whether actual confusion has occurred. See Weiss
Associates Inc. v. HRL Associates Inc., 902 F.2d 1546, 14
USPQ2d 1840 (Fed. Cir. 1990).
Accordingly, because of the similarity of the parties’
marks; the identity of some of the parties’ goods; and the
similarity of the trade channels and purchasers of the
respective goods, we find that there is a likelihood that
the purchasing public would be confused when applicant uses
EDGE as a mark for its goods.
Decision: The opposition is sustained, and
registration to applicant is refused.