Monarch Business Forms

Trademark Trial and Appeal Board

Sep 29, 1998

No. 75173118 (T.T.A.B. Sep. 29, 1998)

Paper No. 9
GDH/cj
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB SEPT 29, 98
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Monarch Business Forms
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Serial No. 75/173,118
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Walter N. Wetterman, Esq. for Monarch Business Forms.
Cheryl Butler, Trademark Examining Attorney, Law Office 107
Thomas Lamone, Managing Attorney).
_______
Before Hanak, Quinn and Hohein, Administrative Trademark Judges.
Opinion by Hohein, Administrative Trademark Judge:
Monarch Business Forms has filed an application to
register "MONARCH" as a "house mark for business forms."1
Registration has been finally refused under Section
2(d) of the Trademark Act, 15 U.S.C. §1052(d), on the ground that
applicant's mark, when applied to its goods, so resembles the
mark "MONARCH," which is registered for "loose-leaf structures--
namely, ring binders and report covers,"2 as to be likely to
cause confusion, mistake or deception.

1 Ser. No. 75/173,118, filed on September 27, 1996, which alleges dates
of first use of November 30, 1978.
2 Reg. No. 1,193,967, issued on April 20, 1982, which sets forth dates
of first use of May 1, 1980; combined affidavit §§8 and 15.
Ser. No. 75/173,118
2
Applicant has appealed. Briefs have been filed, but an
oral hearing was not requested. We affirm the refusal to
register.
Inasmuch as the respective marks are identical in all
respects, the issue of likelihood of confusion is essentially
dependent upon whether applicant’s and registrant’s goods are
sufficiently related in a commercial or other meaningful sense.
Applicant, while acknowledging in its opening brief the "sound
principle" stated by the Examining Attorney, namely, "that ’where
the marks of the respective parties are identical, the
relationship between the goods or services of the respective
parties need not be as close to support a finding of likelihood
of confusion as might apply where differences exist between the
marks,’" argues that in this case the respective goods simply are
not related. Specifically, while conceding in such brief that
"if the Examiner’s point were supported by facts found in the
record her contention would be correct," applicant maintains that
the evidence furnished by the Examining Attorney (discussed later
in this opinion) is insufficient to show a commercially
significant relationship between the respective goods.
Aside therefrom, applicant contends that "the record is
uncontradicted that Applicant’s goods do not travel in the same
trade channels" as do registrant’s products. The sole basis for
such assertion, however, is the statement, which while made by
applicant in its initial response to the refusal to register is
not supported by any affidavit or declaration from an officer or
other employee of applicant with personal knowledge thereof, that
Ser. No. 75/173,118
3
its business forms "are made-to-order for, and shipped directly
to, the specific customer; they are not stock items sold in
bookstores or stationery stores." By contrast, applicant insists
that registrant’s loose-leaf ring binders and report covers "are
customarily sold by generic mail-order or in stationery stores"
and thus the respective channels of trade for applicant’s and
registrant’s "MONARCH" products "are mutually exclusive."
Applicant also relies upon the unsupported statement,
made in its initial response to the refusal to register, that
while it has used its mark for nearly 19 years and registrant
"has allegedly used" the same mark for over 30 years, applicant
has not experienced any instance of actual confusion. Applicant
urges that in light of the "obvious probative value" of such
statement, it must be inferred that "the absence of confusion is
due to the unlikelihood that it will ever occur in a material
way."
We agree with the Examining Attorney, however, that
contemporaneous use of the identical mark "MONARCH" in connection
with "business forms" and "loose-leaf structures--namely, ring
binders and report covers" is likely to cause confusion as to the
source or sponsorship of such goods. Although applicant contends
that "[i]t is the custom-printed aspect of the Applicant’s
products ... which separates its products from the stationery-
store items" marketed by registrant, we note that as identified
in the respective application and registration, neither
applicant’s goods nor those of registrant contain any specific or
inherent limitation as to their channels of trade and classes of
Ser. No. 75/173,118
4
purchasers. It is well settled, however, that the issue of
likelihood of confusion must be determined on the basis of the
goods as they are set forth in the involved application and cited
registration. See, e.g., CBS Inc. v. Morrow, 708 F.2d 1579, 218
USPQ 198, 199 (Fed. Cir. 1983); Squirtco v. Tomy Corp., 697 F.2d
1038, 216 USPQ 937, 940 (Fed. Cir. 1983); and Paula Payne
Products Co. v. Johnson Publishing Co., Inc., 473 F.2d 901, 177
USPQ 76, 77 (CCPA 1973). Thus, where the goods in the
application at issue and in the cited registration are broadly
described as to their nature and type and there are no
restrictions, as is the case herein, in the respective
identifications of goods as to the channels of trade or classes
of customers, it is presumed in each instance that in scope the
application and registration encompass not only all goods of the
nature and type described therein, but that the identified goods
move in all channels of trade which would be normal for such
goods and that they would be purchased by all potential buyers
thereof. See, e.g., In re Elbaum, 211 USPQ 639, 640 (TTAB 1981).
No weight, therefore, may be given to applicant’s contentions
regarding difference in distribution channels and intended
purchasers for the respective goods.
Moreover, in support of her position that business
forms are closely related to loose-leaf ring binders and report
covers, the Examining Attorney has made of record portions of the
index from a Miller’s Office Products catalog, which lists both
business forms and ring binders, to demonstrate that "business
forms and binders, as well as other office requisites and
Ser. No. 75/173,118
5
stationery supplies, travel in the same channels of trade." The
Examining Attorney has also furnished over a dozen use-based
third-party registrations for marks which, in each instance, are
registered among other things for "business forms," on the one
hand, and various "binders," including "ring binders," "journal
binders," "ledger binders" and "loose-leaf binders," on the
other. Two of such registrations additionally include "report
covers" and a third also lists "report binders." Although such
registrations are not evidence that the different marks shown
therein are in use or that the public is familiar with them, they
nevertheless have some probative value to the extent that they
serve to suggest that the goods listed therein are of a kind
which may emanate from a single source. See, e.g., In re Albert
Trostel & Sons Co., 29 USPQ2d 1783, 1785-86 (TTAB 1993) and In re
Mucky Duck Mustard Co. Inc., 6 USPQ2d 1467, 1470 (TTAB 1988) at
n. 6.
In view of the above evidence, and since as noted
previously, applicant’s "business forms" encompass all types of
such forms and are not limited to custom-printed products, we
concur with the Examining Attorney that "business forms" and
loose-leaf "ring binders and report covers" are closely related
office stationery supplies which would be sold through the same
channels of trade to the identical classes of purchasers. When
such closely related goods are sold under the identical mark
"MONARCH," confusion as to the origin or affiliation thereof is
likely to occur.
Ser. No. 75/173,118
6
Our conclusion in this regard is not diminished or
otherwise altered by applicant’s unsupported statement that it
has not encountered any incidents of actual confusion between its
mark and registrant’s mark during almost 19 years of use. While
we agree with applicant that the absence of any instances of
actual confusion over a significant period of time is a factor
indicative of no likelihood of confusion, it is a meaningful
factor only where the record demonstrates appreciable and
continuous use by the applicant of its mark in the same markets
as those served by registrant under its mark. See, e.g.,
Gillette Canada Inc. v. Ranir Corp., 23 USPQ2d 1768, 1774 (TTAB
1992). It is not a mitigating factor where, as here, the record
is devoid of information concerning the nature and extent of the
marketing activities of applicant and registrant under their
respective marks during the asserted period of contemporaneous
use.
In the present case, we not only have no details as to
the level of sales, advertising expenditures and marketing areas
served by applicant, but we have no indication as to what
registrant’s experience has been, other than the statement--
obviously without probative value--that registrant "has allegedly
used" its "MONARCH" mark for over 30 years. Compare In re
General Motors Corp., 23 USPQ2d 1465, 1470-71 (TTAB 1992). We
accordingly agree with the Examining Attorney that purchasers and
potential customers, familiar with registrant’s "MONARCH" mark
for loose-leaf ring binders and report covers, would be likely to
believe, upon encountering applicant’s identical "MONARCH" mark
Ser. No. 75/173,118
7
for business forms, that such closely related office stationery
supplies emanate from, or are sponsored by or affiliated with,
the same source.
Decision: The refusal under Section 2(d) is affirmed.
E. W. Hanak
T. J. Quinn
G. D. Hohein
Administrative Trademark Judges,
Trademark Trial and Appeal Board