Duck Head Apparel Company, Inc.v.Domestic Industries, Inc.

Trademark Trial and Appeal Board

Sep 20, 1999

No. 91105122 (T.T.A.B. Sep. 20, 1999)

Hearing: Paper No. 19
February 10, 1999 HRW
THIS DISPOSITION IS NOT CITABLE
AS PRECEDENT OF THE TTAB 9/20/99
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
_____
Trademark Trial and Appeal Board
______
Duck Head Apparel Company, Inc.
v.
Domestic Industries, Inc.
_____
Opposition No. 105,122
to application Serial No. 75/078,218
filed on March 25, 1996
_____
Warren E. Olson of Fitzpatrick, Cella, Harper & Scinto
for Duck Head Apparel Company.
Larry L. Coats of Rhodes, Coats & Bennett, LLP
for Domestic Industries, Inc.
______
Before Simms, Seeherman and Wendel, Administrative Trademark
Judges.
Opinion by Wendel, Administrative Trademark Judge:
Domestic Industries, Inc. filed an application to
register the mark HEALTH-MESH for “knitted fabrics made of
cotton and of cotton and polyolefins.” 1

1 Serial No. 75/078,218, filed March 25, 1996, based on an
assertion of a bona fide intention to use the mark in commerce.
Opposition No. 105,122
2
Duck Head Apparel Company, Inc. filed an opposition to
registration of the mark under Section 2(d) of the Trademark
Act. Opposer alleges that long prior to March 25, 1996
opposer and its predecessors have used the mark HEALTHKNIT
for various items of wearing apparel and have owned
registrations therefor;2 that applicant’s knit fabric goods
are intended to be sold to manufacturers of wearing apparel;
that applicant’s mark is intended to be applied to wearing
apparel to identify the source of the knit fabric goods and
this apparel would then be distributed in similar channels
of trade and to the same class of purchasers as opposer’s
wearing apparel; and that there is the likelihood that
applicant’s use of the mark HEALTH-KNIT on its goods will
lead to confusion or the erroneous belief on the part of
purchasers in the apparel trade or the public at large that
applicant’s goods originate from or are associated with
opposer.
Applicant, in its answer, denied the salient
allegations of the notice of opposition, except for
admitting that applicant’s goods were intended to be sold to
manufacturers of wearing apparel and that its HEALTH-MESH

2 Reg. No. 644,790 for the mark HEALTHKNIT and design, issued
April 30, 1957, for men’s, boys’ and children’s underwear; mens’
and boys’ T-shirts, polo shirts, and sweatshirts (as amended);
Section 2(f) as to HEALTHKNIT; second renewal April 30, 1997.
Reg. No. 1,955,069 for the mark HEALTHKNIT, issued February 6,
1996, for T-shirts, Henley shirts, briefs, sweatshirts, thermal
underwear, rib-knit sport shirts and socks.
Opposition No. 105,122
3
mark “may on certain occasions be attached to the goods of
such wearing apparel manufacturers.” [Answer, par. 11].
The Record
The record consists of the file of the involved
application; the trial testimony, with exhibits, taken by
opposer of Steven A. Upchurch, vice-president of sales for
Delta Apparel Marketing Company Consolidated, a division of
opposer; the status and title copies of opposer’s pleaded
registrations, dictionary definitions and third-party
applications and registrations introduced by means of
opposer’s notice of reliance;3 the trial testimony, with
exhibits, taken by applicant of Fred E. Hunneke, president
of applicant; and the dictionary definitions and responses
by opposer to certain of applicant’s interrogatories and
requests for documents introduced by applicant’s notice of
reliance.4

3 Opposer also submitted as Exhibit D to the notice of reliance a
copy of a registration owned by applicant for the mark WICK A
‘WAY for “knitted, netted and textile fabrics used in making
underwear, diapers, sweatshirts, pants and shirts,” as being
illustrative of the type of goods currently being sold by
applicant. Applicant objected to the exhibit on the basis that
the registration is irrelevant to the issues in this case.
We agree and accordingly, Exhibit D has been stricken from the
record. On the other hand, applicant’s objections on the ground
of relevance to Exhibit E, the third-party registrations which
are claimed to show the use of the formative “mesh” in marks used
with knit fabrics or clothing, are overruled. While the
registrations may be of limited evidentiary value, we find no
basis for striking Exhibit E from the record.
4 The Thomson and Thomson search report with respect to the use
of “Health” in marks for fabrics and apparel which applicant
introduced in this notice of reliance has been objected to by
Opposition No. 105,122
4
Opposer has made additional objections to portions of
the testimony deposition of Mr. Hunneke and to Exhibits 1
and 3 which were introduced during his testimony. In the
portions of the testimony being challenged, Mr. Hunneke
described a former company of which he was one of the
founders and an officer, Domestic Lace, Inc. (Domestic
Lace), which manufactured knitted fabrics between 1955 and
1983 and which used the mark HEALTH-MESH on its goods from
1958 until 1983. He further testified that during this
period Domestic Lace sold fabric goods under the mark to
Standard Knitting Mills, Inc. (Standard Knitting), a
predecessor of opposer. Domestic Lace was sold to Oneita
Industries in 1983, and the mark was transferred as well,
but was later abandoned. Exhibit 1 is a copy of the
registration on the Supplemental Register for the mark
HEALTH-MESH which was issued to Domestic Lace in 1961,5 but
which applicant admits is no longer active.
Opposer argues that all testimony concerning use of the
mark HEALTH-MESH by other entities is irrelevant and
immaterial to this opposition. Opposer further contends

opposer. The objection is well taken; a trademark search report
does not qualify under 37 CFR 2.122(d) as either an “official
record” or a “printed publication.” See Weyerhaeuser Co. v.
Katz, 24 USPQ 1230 (TTAB 1992). Accordingly, Exhibit 1 has been
stricken from the record.
5 Reg. No. 720,793, issued August 29, 1961 for the mark HEALTH-
MESH for use on “knitted fabrics of cotton and of cotton and
synthetics,” claiming first use on Nov. 15, 1958.
Opposition No. 105,122
5
that applicant failed to identify the existence of the other
entities or any use of the mark HEALTH-MESH during discovery
and in fact applicant only produced one document, a search
report, as its total discovery responses, and thus applicant
should be prohibited from introducing testimony with respect
to such use of HEALTH-MESH.6 For these same reasons,
opposer objects to Exhibit 3, a sample of a mesh material,
which was introduced by Mr. Hunneke as “the type of fabric
that is contemplated by Domestic Industries to be made under
the mark Health-Mesh.” [FEH 39:14-17].
Applicant argues that opposer never made any discovery
requests directed to this prior relationship and that in
fact opposer should have been aware of the relationships of
its predecessor; that Exhibit 1 was introduced only to
corroborate the testimony with respect to prior use of the
mark by Domestic Lace; and that Exhibit 3 was only
introduced “to shed light on the meaning and commercial
impression of HEALTH-MESH in the context of a fabric,” in
that goods have not yet been manufactured or sold under the
mark. (Brief p. 4).

6 At the oral hearing opposer requested a further ruling by the
Board on applicant’s bona fide intention to use its mark, in view
of applicant’s failure to produce any documents with respect to
intended use during discovery. This issue was never pleaded by
opposer, however, nor do we find that the issue was tried by the
implied or express consent of the parties, as is required for the
pleadings to be amended under FRCP 15(b). Accordingly, we have
not considered this issue.
Opposition No. 105,122
6
It is true that if information is withheld during
discovery, even after the propounding party has sought to
obtain this information by means of a motion to compel, or
if a party states that no such information is available, a
party may be precluded from later introducing information of
this nature as evidence in its behalf during its testimony
period, if the propounding party raises objections thereto.
See Johnston Pump/General Valve Inc. v. Chromalloy American
Corp., 10 USPQ2d 1671 (TTAB 1989). The problem here is that
we do not have opposer’s discovery requests before us; only
applicant’s responses have been made of record. Nor did
opposer file a motion to compel. Thus, we have no basis
upon which to determine whether applicant improperly
withheld information from opposer as to prior companies or
use of the mark HEALTH-MESH by these companies.
Accordingly, we will not entertain opposer’s objections to
Mr. Hunneke’s testimony or Exhibit 1. In addition, we note
that opposer has relied upon this testimony in its own
arguments, which clearly contradicts any objection based on
irrelevancy.
As for Exhibit 3, we find that applicant has switched
its tactics as to the purpose for introducing the sample
since Mr. Hunneke’s testimony was taken. Moreover, because
applicant’s discovery responses alone are adequate to
determine that applicant provided no documents or
Opposition No. 105,122
7
information during discovery as to intended use, we find the
introduction of a sample of this type during testimony to be
improper. Accordingly, opposer’s objection to Exhibit 3 is
upheld and the exhibit is stricken from the record.
The Opposition
Priority is not an issue here, in view of opposer’s
introduction by means of a notice of reliance of status and
title copies of its pleaded registrations. King Candy Co.,
Inc. v. Eunice King’s Kitchen, Inc., 496 F.2d 1400, 182 USPQ
108 (CCPA 1974).
Thus, we turn to the issue of likelihood of confusion
and to those of the du Pont factors7 which we find relevant
under the circumstances.
With respect to the marks involved, while there is a
degree of similarity in appearance between the marks
HEALTHKNIT and HEALTH-MESH, as argued by opposer, the
greater similarity is in the connotations or commercial
impressions conveyed by the marks. From the dictionary
definitions made of record by both parties, it is clear that
a “mesh” may be viewed as one type of knitted material or

7 In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ
563 (CCPA 1973).
Opposition No. 105,122
8
“knit.”8 We are aware that applicant’s witness refused to
concur with the statement of opposer’s witness that any mesh
would be considered a knit, although not every knit a mesh,
and elaborated on technical differences involved in the
manufacture of “mesh” fabrics. Nonetheless, we believe the
overall impression of the marks would be similar, a
“healthful” type of knit fabric, albeit a “knit” in general,
HEALTHKNIT, or a “mesh” in particular, HEALTH-MESH.
Insofar as the respective goods of the parties are
concerned, we recognize the obvious differences asserted by
applicant between opposer’s knit wearing apparel and
applicant’s knitted fabric, as identified in the
registration and application. Opposer’s goods are finished
products for consumer use and applicant’s goods are
materials which may be used in the manufacture of these
finished products. When questioned as to potential uses for
applicant’s particular knitted fabrics, Mr. Hunneke
testified that the fabrics could be used for everything from
the netting for playpens to laundry or fruit bags to
blankets or linings for jackets. Mr. Hunneke stated that,
although applicant had not yet begun to use its mark, the
planned uses for the knitted mesh fabrics at this time were
in the government, medical and industrial fields, and to a

8 We note in particular the definition of “mesh” in Merriam-
Webster’s Collegiate Dictionary (10th Ed. 1993) as “a woven, knit
or knotted material of open texture with evenly spaced holes.”
Opposition No. 105,122
9
limited extent in the apparel trade. [FEH 17:10-22]. Thus,
as earlier noted, the relationship which can be drawn
between the goods of the parties is one of fabric to final
product when the knitted fabrics are used in the manufacture
of knitted wearing apparel.
A significant factor to be considered in this case is
the similarity or dissimilarity of the channels of trade for
the respective goods. Mr. Hunneke testified that the normal
channels of trade for the knitted fabrics with which
applicant intends to use its mark are sales either to
converters or jobbers who finish the fabrics before selling
it to their trade or directly to a manufacturer, but never
sales to retail consumers or to the over-the-counter market.
Opposer argues, however, that these are merely
allegations of intended trade channels, applicant having not
yet begun using its mark, and that, in view of the
unrestricted identification of goods in the application, all
normal channels of trade must be taken under consideration.
Opposer contends that, even though applicant may not intend
to market its fabrics directly to retail consumers, we “must
assume” that there is the possibility that knitted apparel
could be sold to these consumers bearing hang tags which
advertise the fabric of which the garments are made as a
HEALTH-MESH fabric.
Opposition No. 105,122
10
It is well established, and applicant acknowledges as
much, that, in the absence of any restrictions in the
identification of goods in the application, applicant’s
knitted fabrics must be presumed to travel in all the normal
channels of trade for such goods. See Kangol Ltd. v.
KangaROOS U.S.A., 974 F.2d 161, 23 USPQ2d 1945 (Fed. Cir.
1992). But it is equally true, as argued by applicant, that
opposer has the burden of proof as to what constitutes the
normal channels of trade and of presenting evidence to
demonstrate that the marketing conditions for the products
of the respective parties are such that the goods would be
likely to be encountered by the same persons under
circumstances which could, because of the similarity of the
marks used thereon, give rise to the mistaken belief that
the goods are in some way associated with the same producer.
See Chase Brass & Copper Co., Inc. v. Special Springs, Inc.,
199 USPQ 243 (TTAB 1978).
Opposer has proffered no evidence to establish as
normal channels of trade for applicant’s knitted fabrics any
other than those testified to by Mr. Hunneke. No evidence
has been made of record in rebuttal to Mr. Hunneke’s
statement that applicant’s goods would never be sold
directly to retail consumers, and thus there is no evidence
that retail fabric stores lie within the normal channels of
trade. While opposer argues that we should assume the
Opposition No. 105,122
11
possibility of applicant’s fabric mark being found on hang
tags used to identify the fabric used in the finished
articles, the use of hang tags in this manner in the garment
industry is clearly not a matter of which we may take
judicial notice. The burden of proof lies with opposer.
Although the use of hang tags for this purpose may be
prevalent when highly advertised or well-known fabrics or
fibers are involved, we cannot assume the use of hang tags
to identify the source of the underlying fabric to be a
widespread practice in the garment industry without
competent evidence to this effect. See In re Albert Trostel
& Sons Co., 29 USPQ2d 1783 (TTAB 1993)[absence of convincing
evidence that finished leather products commonly carry not
only the mark of the manufacturer but also the mark of the
producer of the leather from which they are made]. Cf. E.I.
du Pont de Nemours and Co. v. Sunlyra International Inc., 35
USPQ2d 1787 (TTAB 1995)[acknowledgment by applicant that
opposer’s LYCRA mark often appears on hang tags for the
finished clothing].
Thus, we are led to the conclusion that applicant’s
knitted fabrics would travel in channels of trade distinct
from those for opposer’s wearing apparel. Moreover, while
the average consumer would come in contact with opposer’s
HEALTHKNIT clothing, Mr. Hunneke has testified that the
purchasers of applicant’s HEALTH-MESH fabrics would be
Opposition No. 105,122
12
professional buyers for companies of the types previously
described or one of the principals of a manufacturing firm,
all of whom are discriminating purchasers, and that the
sales themselves would run from a thousand to a hundred
thousand dollars. [FEH 13:17 – 14:16]. Under these
circumstances, there is less possibility that the purchasers
of applicant’s HEALTH-MESH fabrics would be confused as to
the source of the goods, even though they may be aware of
opposer’s finished knitted clothing products being sold
under the HEALTHKNIT mark.
Opposer also argues that the fame of its mark, as one
which has been used since June 1955 and is known as an “old-
line” brand across the country, must be taken into
consideration. The sales figures introduced by Mr. Upchurch
for the years 1992-1996 (although some were allegedly
incomplete) could not, however, be realistically viewed as
indicative of sales under a famous mark.9 Furthermore, he
stated that there has been a change in recent years in the
marketing of the apparel, in that it is now mainly sold
“upon request” domestically and that the major markets for
it are “offshore,” or more specifically, in Japan. Although
we agree with opposer that its mark is better known at the
present time than applicant’s, in that applicant’s mark is
not in use, we find no evidence that opposer’s mark is
Opposition No. 105,122
13
entitled to any expanded breadth of protection on the basis
of alleged fame. On the other hand, neither can we concur
with applicant’s arguments that opposer’s mark is extremely
weak, in the absence of any evidence in the record of
widespread use of similar marks for similar goods.
Finally, we have the factor of concurrent use by
predecessors of both parties of the same marks for similar
goods for a period of twenty-five years (1958-1983), which
applicant claims occurred without any objections by
opposer’s predecessor and without any instances of actual
confusion. The testimony of Mr. Hunneke, however, simply
provides evidence that Standard Knitting purchased knitted
fabrics from Domestic Lace during this period; that certain
of these were HEALTH-MESH fabrics (the percentage of the
latter being unclear); that Standard Knitting never objected
to use by Domestic Lace of its HEALTH-MESH mark;10 and that
the witness was not aware of any actual confusion during
this period. While this evidence has been taken into
consideration, we do not find this a convincing showing that
the lack of actual confusion over a period of years is a
strong factor in applicant’s behalf.

9 The actual figures were introduced pursuant to the stipulated
protective order as confidential material.
10 While opposer has strongly objected to applicant’s alleged
attempts to raise an estoppel issue or to “tack-on” prior use,
applicant has made it clear that it raised the matter of prior
use by predecessors solely for consideration in connection with
the issue of likelihood of confusion.
Opposition No. 105,122
14
Upon reviewing all of the relevant factors, however, we
find the balance to weigh in applicant’s favor. Although
the marks are highly similar in overall connotation and
commercial impression and the goods share a certain
relationship, we consider the distinctions in the channels
of trade which must be drawn on the basis of the evidence of
record, as well as the level of sophistication of the
purchasers of applicant’s goods, more than adequate to
conclude that there is no likelihood of confusion.
Decision: The opposition is dismissed.
R. L. Simms
E. J. Seeherman
H. R. Wendel
Trademark Administrative Judges,
Trademark Trial and Appeal Board