Diplomat Corp.v.EOK, Inc.

Trademark Trial and Appeal Board

Apr 30, 1998

No. 91095370 (T.T.A.B. Apr. 30, 1998)

Paper No. 24
RLS/CCR
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB APRIL 30, 98
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
_____
Trademark Trial and Appeal Board
______
Diplomat Corporation
v.
E-OK, Inc.
_____
Opposition No. 95,370
to application Serial No. 74/159,956
filed on April 23, 1991
_____
Robert L. Epstein of James & Franklin for Diplomat
Corporation.
E-Ok, Inc., pro se.
______
Before Sams, Simms and Quinn, Administrative Trademark
Judges.
Opinion by Simms, Administrative Trademark Judge:
Diplomat Corporation (opposer), a New York corporation,
has opposed the application of E-OK, Inc. (applicant), a
Michigan corporation, to register the mark shown below
Opposition No. 95370
2
for clothing, namely, T-shirts and sweatshirts.1 Opposer
asserts in the notice of opposition that opposer and its
predecessor have used the mark ECOLOGY KIDS for underwear
for infants, diapers and related products including diaper
covers, sleeping pants and training pants; that opposer
filed an application to register this mark on November 9,
1992; that opposer used the mark ECOLOGY KIDS prior to
applicant’s filing date and prior to the date of first use
claimed in applicant’s application; and that applicant’s
mark so resembles opposer’s mark as to be likely to cause
confusion, to cause mistake or to deceive. In its answer,
applicant has denied the allegations of the opposition.
The record of this case consists of the testimony of
opposer’s executive vice president (and related exhibits),

1 Application Serial No. 74/159,956, filed April 23, 1991,
claiming use in commerce since April 1990. In the application,
applicant has disclaimed the word "KIDS" and the ecology symbol
apart from the mark as shown.
Opposition No. 95370
3
and the application file.2 The parties have submitted
briefs but no oral hearing was requested.3
The testimony of opposer’s executive vice president,
Mr. Stuart Liederman, establishes that opposer (by its
predecessor), located in Stony Point, New York, has been
using the mark ECOLOGY KIDS since June or July of 1989.
Opposer has used the mark in connection with such products
as infants’ underwear (layette), pullovers, T-shirts,
diapers, training pants, receiving blankets and gowns.
Although opposer has not so pleaded, the testimony also
reveals that opposer sold ECO SUDS and ECO PRE-WASH
detergents and bath products since at least 1991.4
Opposer’s goods are sold to mass merchandisers, to
specialty retailers such as Toys R’ Us, to grocery stores,
drug stores and to infants' specialty catalogs. Opposer's
goods have been sold in 8000-9000 stores. Opposer has
advertised its goods in magazines and at trade shows.
Opposer has touted its products as being ecological

2 On March 14, 1997, the Board struck from the record applicant’s
evidence, which was in the nature of a declaration with exhibits,
because this matter was submitted without opposer’s written
consent. See Trademark Rule 2.123(b).
3 In its brief, applicant objected to the timeliness of the
filing of opposer’s testimony. As pointed out by opposer in its
reply brief, however, the pertinent rule only requires that
opposer's testimony (and exhibits) be “promptly" filed.
Accordingly, this objection is not well taken.
4 These goods are listed upon opposer's 1990 price list. The
mark has been used on infants' underwear since 1991.
Opposition No. 95370
4
(Leiderman, 17) because they are not disposable paper
diapers. Opposer’s 1995 sales were around $8 million.
Opposer argues that the respective marks are similar in
meaning, "eco" being an assertedly well-recognized
abbreviation of "ecology". Moreover, opposer points to its
evidence of use of the word "ECO" (as part of its marks) in
connection with some of its accessory products. Opposer
argues that its infants’ underwear and diaper products are
closely related to applicant's T-shirts and sweatshirts and
that such goods may travel in the same channels of trade to
the same class of purchasers. Opposer also notes that its
use precedes applicant's filing date, the earliest date upon
which applicant is entitled to rely in the absence of
evidence.
Applicant argues, on the other hand, that opposer's
mark is a combination of two descriptive nouns and that no
exclusive rights should be accorded to these words.
Upon careful consideration of this record and the
arguments of the parties, we believe that opposer has shown
that confusion is likely. Aside from the fact that
applicant did not plead that opposer's mark ECOLOGY KIDS is
merely descriptive, raising this defense for the first time
in its brief, there is no evidence at all to support
applicant’s argument. Rather, opposer has shown that it
uses these words as a trademark and has done so for
Opposition No. 95370
5
approximately nine years. We also agree with opposer that
applicant’s mark ECO KIDS and opposer’s mark ECOLOGY KIDS
are substantially similar in sound, appearance and meaning.5
Moreover, applicant’s T-shirts and sweatshirts are items of
clothing which are closely related to opposer’s infants’
clothing (and identical to at least one item of opposer’s --
T-shirts). These goods may all well be sold in the same
retail stores to the same classes of purchasers. Purchasers
aware of opposer's ECOLOGY KIDS infants' underwear, diapers
and other items, who then encounter applicant's ECO KIDS T-
shirts and sweatshirts are likely to believe that those
goods emanate from or are otherwise sponsored by or
affiliated with the same source.
Decision: The opposition is sustained and registration
to applicant is refused.
J. D. Sams
R. L. Simms
T. J. Quinn
Administrative Trademark
Judges, Trademark Trial
and Appeal Board

5 In this regard, we note that the Random House Unabridged
Dictionary (2d ed. 1993) defines “eco-” as:
a combining form representing ecology in
the formation of compounds (ecosystem;
ecotype)…
Opposition No. 95370
6