Macmillan, Inc.v.Dolores M. Winner

Trademark Trial and Appeal Board

Jan 11, 1999

No. 91104286 (T.T.A.B. Jan. 11, 1999)

Zervas
Opposition No. 104,286
Macmillan, Inc.
v.
Dolores M. Winner
Before Walters, Chapman and Wendel, Administrative Trademark
Judges.
By the Board.
Applicant Dolores Winner seeks registration of the mark
RAGGEDY BEAR & THE RAGGEDIES for “publications; namely,
travel, tracing, coloring and comic books featuring stories
about a fictional bear, rag dolls and other cartoon
characters” in International Class 16.1
Opposer Macmillan, Inc. has opposed registration of
applicant's mark on the grounds that opposer is engaged in
the worldwide business of publishing printed material such
as books and catalogs and related products such as video and

1 Application Serial No. 75/031,073 was filed on December 11,
1995 and is based on an intent-to-use the mark in commerce.
UNITED STATES DEPARTMENT OF COMMERCE
Patent and Trademark Office
Trademark Trial and Appeal Board
2900 Crystal Drive
Arlington, Virginia 22202-3513
Opposition No. 104,286
2
audio cassettes; that RAGGEDY ANN and RAGGEDY ANDY are the
names of two colorful rag dolls created in 1915 to which
opposer has rights; that RAGGEDY ANN and RAGGEDY ANDY are
featured in a series of publications; and that opposer has
registered the marks RAGGEDY ANN and RAGGEDY ANDY for a
“series of children’s books.”2 Further, opposer asserts
that opposer has regularly used the names and the marks
RAGGEDIES or RAGGEDYS to refer collectively to these
characters and their stuffed animal friends in publications.
Opposer maintains that applicant's mark, when used on
applicant's goods, is confusingly similar to RAGGEDY ANN and
RAGGEDY ANDY, and other marks in opposer's family of marks
such as RAGGEDY ANN & ANDY, THE ADVENTURES OF RAGGEDY ANN &
ANDY, and RAGGEDIES, as used on a wide variety of goods
including children’s books, newsletters, and catalogues.
In her answer, applicant denies all of the allegations
of the notice of opposition.
This case now comes up on opposer's motion for summary
judgment (filed March 16, 1998 via a certificate of
mailing).

2 Reg. No. 1,008,384, issued April 8, 1975 for “children’s
books.” The claimed dates of first use and first use in commerce
are 1918.
Reg. No. 1,007,388 issued March 25, 1975 for “series of
children’s books.” The claimed dates of first use and first use
in commerce are 1920.
Opposition No. 104,286
3
In moving for summary judgment on the issue of
likelihood of confusion, opposer contends that the dominant
parts of opposer’s marks are RAGGEDY and/or RAGGEDIES; that
RAGGEDY and/or RAGGEDIES are the legally dominant elements
of applicant’s mark because applicant has disclaimed the
term “bear;” that the marks are similar aurally and
visually; that applicant's mark “co-opts” RAGGEDY and
RAGGEDIES which are the most salient and distinctive
features of opposer's trademark and mimics the cadence or
sequence of opposer's RAGGEDY ANN & ANDY mark; that
opposer's marks are entitled to a wide scope of protection
because they are commercially strong, part of a family of
marks and have conceptual strength in that the marks are
“arbitrary, or at a minimum suggestive;” that the respective
goods of the parties are legally identical because there is
an overlap between such goods and applicant has not listed
any limitation on the nature and character of the products
on which she intends to use her mark; and that the
similarities between applicant's RAGGEDY BEAR character
shown in a sample of use submitted with applicant's
application and opposer's RAGGEDY ANN and RAGGEDY ANDY
characters indicate that applicant selected her mark with
Opposition No. 104,286
4
the specific intent to trade on the goodwill associated with
opposer’s marks.3
As evidence in support of the summary judgment motion,
opposer submitted the declaration of Carol Roeder, who is
vice-president for subrights and international markets of
opposer, and of Marni Beck, who is an attorney with the law
firm representing opposer in the present Board proceeding.
Ms. Roeder declares that RAGGEDY ANN and RAGGEDY ANDY
were created in 1915 and are colorful rag dolls with
triangle noses, curly mop hair, horizontally-striped
stockings and coverups with suspender tops; that in 1918,
the first of hundreds of published stories featuring these
rag dolls was published which describe the adventures of
dolls and toys of all types that magically come to life in a
secret place referred to as RAGGEDY LAND; that RAGGEDY ANN
and RAGGEDY ANDY have consistently been used as marks; that
opposer has regularly used RAGGEDIES or RAGGEDYS as names
and marks to refer collectively to RAGGEDY ANN and RAGGEDY
ANDY and their stuffed animal friends (“the Raggedy
Characters”) in publications, and as marks to identify

3 For example, opposer notes that RAGGEDY BEAR is dressed in
RAGGEDY ANN clothing and RAGGEDY BEAR is accompanied by a doll
which is reminiscent of RAGGEDY ANN and is conspicuously named
“Fannie Annie.” See opposer's brief in support of opposer's
motion for summary judgment at p. 2.
Opposition No. 104,286
5
goods;4 that opposer and its predecessors have used RAGGEDY
ANN, RAGGEDY ANDY and other marks including RAGGEDIES (“the
Raggedy Marks”) on a wide variety of merchandise, including
printed materials such as hardcover, mass-market and trade
paper books and catalogues;5 that opposer has licensed the
right to use the Raggedy Characters and the Raggedy Marks to
dozens of companies on and in connection with various goods
such as doll patterns, Christmas decorations, a children’s
television program, syndicated and animated television
programs and movies, collectible ceramic plates, costume
jewelry, umbrellas, dolls, sleeping bags, mats, play tents,
puzzles, playing cards, posters, tins, key chains, greeting
cards, stickers, balloons, jigsaw puzzles, board games,

4 Opposer asserts that opposer has created a rag doll dog named
RAGGEDY ARTHUR (a/k/a/ RAGGEDY DOG) and his feline friend named
RAGGEDY CAT. Also, opposer asserts that opposer introduced the
LITTLE RAGGEDYS in 1990, which is a collection of infant-geared
RAGGEDY characters including LITTLE RAGGEDY ANN, LITTLE RAGGEDY
ANDY, LITTLE RAGGEDY PUPPY and LITTLE RAGGEDY KITTY.
5 Opposer’s trademark portfolio also includes federal
registrations for: (1) THE ADVENTURES OF RAGGEDY ANN & ANDY for
animated television programs (Reg. No. 1,852,686); (2) RAGGEDY
ANN for costume jewelry (Reg. No. 984,956); (3) RAGGEDY ANN &
ANDY for jewelry (Reg. No. 1,119,204); (4) RAGGEDY ANN’S for toy
embroidery sets (Reg. No. 389,294); (5) RAGGEDY ANN AND ANDY for
socks and stocking (Reg. No. 1,058,505); (6) RAGGEDY ANN & ANDY
for umbrellas (Reg. No. 1,063,893); (7) RAGGEDY ANN for paper
patterns and printed appliques for construction of dolls and doll
wardrobes (Reg. No. 1,131,749); (8) RAGGEDY ANN & ANDY for child
care center services (Reg. No. 1,124,584); (9) RAGGEDY ANN & ANDY
for children’s pools and sand boxes (Reg. No. 1,094,596); (10)
RAGGEDY ANN & ANDY for inflatable balls (Reg. No. 1,103,515);
(11) RAGGEDY ANN & ANDY for toys and related goods (Reg. No.
1,623,799); (12) RAGGEDY ANN for transistor radios (Reg. No.
1,103,801); (13) RAGGEDY ANN & ANDY for transistor radios (No.
1,114,028); and (14) RAGGEDY ANN for jewelry boxes (Reg. No.
1,043,479).
Opposition No. 104,286
6
various apparel and child care services; that the Raggedy
Marks and the products and services sold under these marks
are offered for sale in bookstores, the Internet, gift
stores, specialty collectible stores and other retail and
wholesale establishments nationwide and worldwide, including
major mass merchandisers; that sales of licensed merchandise
sold under these marks have exceeded $17 million; that in
the past four years, opposer has received over one-half
million dollars in revenue in connection with its licensing
of the Raggedy Marks; that through its extensive national
and international marketing, advertising and distribution of
publications and related goods featuring the Raggedy
Characters and the Raggedy Marks, opposer has developed
widespread public recognition of, and extensive goodwill of
great value in, the Raggedy Marks, and has received
unsolicited media coverage in newspapers, magazines and
other media; that there are yearly festivals and dozens of
fan clubs devoted to the Raggedy Characters; and that there
have been musicals and full length feature films featuring
the Raggedy Characters.
Ms. Beck, through her declaration, provides copies of
applicant’s application papers, the notice of opposition,
opposer’s discovery requests and applicant’s responses
thereto, and excerpts from applicant’s discovery deposition.
Opposition No. 104,286
7
In her response to opposer’s motion for summary
judgment, applicant contends that her mark is not RAGGEDY
ANN BEAR and points out differences in appearance between
opposer’s dolls and RAGGEDY BEAR and the rag dolls depicted
in her goods. Applicant did not submit any affidavits or
declarations; rather, she submitted only argument and a copy
of her publication.
Summary judgment is an appropriate method of disposing
of cases in which there are no genuine issues of material
fact in dispute, thus leaving the case to be resolved as a
matter of law. See Fed. R. Civ. P. 56(c). The purpose of
summary judgment is to avoid an unnecessary trial where
additional evidence would not reasonably be expected to
change the outcome. See Pure Gold, Inc. v. Syntex (U.S.A.),
Inc. 739 F.2d 624, 222 USPQ 741 (Fed. Cir. 1984). A party
moving for summary judgment has the burden of demonstrating
the absence of any genuine issue of material fact, and that
it is entitled to summary judgment as a matter of law. See
Celotex Corp. v. Catrett, 477 U.S. 317, 106 S. Ct. 2548
(1986). The evidence must be viewed in a light favorable to
the non-movant, and all justifiable inferences are to be
drawn in the non-movant’s favor. See Opryland USA, Inc. v.
Great American Music Show, Inc., 961 F.2d 200, 22 USPQ2d
1542 (Fed. Cir. 1992).
Opposition No. 104,286
8
Upon careful consideration of the record and the
arguments of the parties, we believe that based on the
evidence submitted by the parties, there is no genuine issue
of material fact concerning opposer’s likelihood of
confusion claim and that opposer is entitled to judgment
thereon as a matter of law.
Initially, we consider opposer’s claim of priority of
use and standing to bring opposer’s claim. Opposer has
pleaded ownership of several federal trademark
registrations, including Registration Nos. 1,008,384 and
1,007,388 for RAGGEDY ANN and RAGGEDY ANDY, respectively,
which show first use dates of roughly eighty years ago.6 As
an exhibit to Ms. Roeder’s declaration, opposer provided
certified status copies of Registration Nos. 1,008,384 and
1,007,388, showing title in opposer’s name. Applicant, in
her opposition to the summary judgment motion, does not
dispute opposer's first use of its marks on its goods. In
view of the above, there is no genuine issue of material
fact concerning opposer's priority of use of its marks or
opposer's standing.
The determination of whether a likelihood of confusion
exists is made by evaluating and balancing those of the
thirteen evidentiary factors set forth in In re E.I. du Pont

6 In contrast, applicant filed her intent-to-use application on
December 11, 1995.
Opposition No. 104,286
9
de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567
(CCPA 1973) shown to be applicable to a particular case and
for which evidence has been made of record. As noted in the
du Pont decision itself, each of the factors may from case
to case play a dominant role.
In this case, applicant’s mark is comprised of two
parts; (a) RAGGEDY BEAR, and (b) THE RAGGEDIES.7 RAGGEDY
BEAR and opposer’s registered marks; i.e. RAGGEDY ANN and
RAGGEDY ANDY, each comprises the three syllable word RAGGEDY
followed by a one syllable word. As such, opposer's marks
and the first portion of applicant's mark have the same
cadence and word sequence. In meaning, the marks are highly
similar in that they identify a character that is ragged.
Further, applicant adds “& the RAGGEDIES” to RAGGEDY BEAR.
Opposer has used RAGGEDIES since 1990 on a collection of
infant-geared RAGGEDY characters including LITTLE RAGGEDY
ANN, LITTLE RAGGEDY ANDY, LITTLE RAGGEDY PUPPY and LITTLE
RAGGEDY KITTY. Applicant has merely combined two of
opposer's marks and substituted the term BEAR for ANN or
ANDY. Thus, the marks, when taken as a whole, are highly
similar in sound and meaning.

7 The component parts of a mark may be viewed as a preliminary
step in determining probable customer reaction to the conflicting
composite as a whole. See Vol. 3, J. Thomas McCarthy, McCarthy
on Trademarks and Unfair Competition, §23.41 (4th edition).
Opposition No. 104,286
10
Additionally, opposer has offered persuasive evidence
that its marks are famous and applicant has not controverted
opposer’s evidence. RAGGEDY ANN and RAGGEDY ANDY have been
in continuous use on hundreds of different goods for roughly
eighty years; the RAGGEDY ANN and RAGGEDY ANDY characters
have been featured in musicals, full length feature films
and yearly festivals; dozens of fan clubs have been formed
which are devoted to RAGGEDY ANN and RAGGEDY ANDY; and goods
sold under these marks have generated millions of dollars in
licensing revenues. Famous marks enjoy a wide latitude of
legal protection. Kenner Parker Toys, Inc. v. Rose Art
Indus., Inc., 963 F.2d 350, 22 USPQ2d 1453, 1456 (Fed. Cir.
1992), cert. denied, 506 U.S. 862 (1992).
Turning to the similarity of the goods and their trade
channels, we note that applicant's identification of goods
does not include any limitation restricting the goods to
particular trade channels. Accordingly, the Board must
presume that the application encompasses all goods of the
type described in the application and that they move in all
normal channels of trade and that they are available for all
potential customers. In re Elbaum, 211 USPQ 639 (TTAB
1981). Because both applicant's and opposer's goods are
virtually identical; i.e. books for children, and applicant
Opposition No. 104,286
11
has not offered evidence to the contrary,8 we conclude that
the goods may be sold in identical locations to the same
consuming public.
Opposer has also raised an allegation about applicant’s
intent in adopting her mark. For purposes of determining
likelihood of confusion, as we have no evidence on this
point, we assume that applicant acted in good faith in
adopting her mark.
Upon consideration of all the relevant du Pont factors,
(similarity of the marks, similarity of the goods/services,
the fame of opposer's mark, and the parties’ respective
trade channels),9 we find a likelihood of confusion between
applicant's and opposer's marks, when used on their
respective goods.
Finally, we point out the following:
[T]he field from which trademarks can be selected
is unlimited . . . there is therefore no excuse

8 When a motion for summary judgment is made and supported as
provided for in Fed. R. Civ. P. 56, as is the case here, the
party against whom summary judgment is sought may not rest on
mere allegations, but must file counter-affidavits or other
matter as set forth in Fed. R. Civ. P. 56 to show that there is a
genuine issue for trial.
9 Opposer has also asserted that the marks are part of a family
of marks. However, opposer has not provided evidence such as
advertising and promotional materials showing that the purchasing
public recognizes RAGGEDY; i.e. the common element of opposer’s
marks, is indicative of a common origin of opposer’s goods. See
J & J Snack Foods Corp. v. McDonald’s Corp., 932 F.2d 1460, 18
USPQ2d 1889, 1891 (CAFC 1991); and Ladish Co v. Dover
Corporation, 192 USPQ 462, 463-64 (TTAB 1976). Opposer’s
ownership of a number of registrations for marks containing the
prefix RAGGEDY is insufficient, per se, to establish a family of
marks. Polaroid Corporation v. Richard Manufacturing Company,
341 F.2d 150, 144 USPQ 419 (CCPA 1965).
Opposition No. 104,286
12
for even approaching the well-known trademark of a
competitor . . . and that all doubt as to whether
confusion, mistake, or deception is likely is to
be resolved against the newcomer, especially where
the established mark is one which is famous. . . .
Planters Nut & Chocolate Co. v. Crown Nut Co., 305 F.2d
916, 924-25, 134 USPQ 504, 511 (CCPA 1962).
Decision: Opposer’s motion for summary judgment is
granted, judgment is hereby entered against applicant, the
opposition is sustained and registration to applicant is
refused.
C. E. Walters
B. A. Chapman
H. R. Wendel
Administrative Trademark
Judges, Trademark Trial
and Appeal Board