NBC Fourth Realty Corp.v.Martin Industries, Inc.

Trademark Trial and Appeal Board

Aug 31, 1999

No. 91102409 (T.T.A.B. Aug. 31, 1999)

Paper No. 30
CMB
THIS DISPOSITON IS NOT
CITABLE AS PRECEDENT OF THE TTAB 9/1/99
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
_____
Trademark Trial and Appeal Board
______
NBC Fourth Realty Corp.
v.
Martin Industries, Inc.
_____
Opposition No. 102,409
to application Serial No. 74/677,803
filed on May 22, 1995
_____
Thomas V. Smurzynski of Lahive & Cockfield, LLP
for NBC Fourth Realty Corp.
J. David Wharton of Shook, Hardy & Bacon L.L.P.
for Martin Industries, Inc.
______
Before Sams, Bottorff and McLeod, Administrative Trademark
Judges.
Opinion by Bottorff, Administrative Trademark Judge:
On May 22, 1995, applicant filed intent-to-use
application Serial No. 74/677,803, by which it seeks to
register the mark GRILL MAXX, in typed form, on the
Principal Register for goods identified in the application
as "barbecue grills." Applicant has disclaimed the
exclusive right to use GRILL apart from the mark as shown.
Opposition No. 102,409
2
Opposer filed a timely notice of opposition to
registration of applicant’s mark, alleging priority of use
and likelihood of confusion under Trademark Act Section
2(d), 15 U.S.C. §1052(d), as the ground for opposition.
Specifically, opposer alleges in the notice of opposition
that opposer:
is licensor to one of the nation's leading
off-price retailers, which operates a chain of
over 500 retail department stores in forty-six
states under the tradename and service mark
T.J. MAXX. The T.J. MAXX stores sell a
variety of brand name apparel and accessories,
footwear, jewelry, domestics, kitchen
accessories and giftware, some under the
trademark T.J. MAXX.
(Notice of Opposition, paragraph 1.) Opposer also alleges
that it owns federal registrations of the marks T.J. MAXX,
GET THE MAXX FOR THE MINIMUM, THE MAXIMUM FOR THE MINIMUM,
and THE MAXX FOR THE MINIMUM.1 Finally, opposer alleges

1 Opposer’s eight pleaded registrations, status and title copies
of which opposer submitted during its testimony period and which
show that the registrations are subsisting and are owned by
opposer, are as follows:
Registration No. 1,495,462, of the mark T.J.MAXX
(stylized) for "retail department store services."
Issued July 5, 1988; affidavits under Sections 8 and 15
accepted.
Registration No. 1,199,126, of the mark T.J.MAXX
(differently stylized) for "retail department store
services." Issued June 22, 1982; affidavits under
Sections 8 and 15 accepted. The registration includes
the statement "T.J. Maxx is not the name of any living
individual."
Opposition No. 102,409
3
that applicant’s mark, when applied to applicant’s goods, so
resembles opposer’s previously-used marks and trade name as
to be likely to cause confusion, to cause mistake, or to
deceive.

Registration No. 1,637,243, of the mark T.J. MAXX (in
typed form) for "retail department store services."
Issued March 5, 1991; affidavits under Sections 8 and 15
accepted. The registration includes the statement
"’T.J. MAXX’ does not identify a particular living
individual."
Registration No. 1,189,627, of the mark THE MAXIMUM FOR
THE MINIMUM (in typed form) for "retail department store
services." Issued February 9, 1982; affidavits under
Sections 8 and 15 accepted.
Registration No. 1,403,563, of the mark GET THE MAXX FOR
THE MINIMUM (stylized) for "retail department store
services." Issued July 29, 1986; affidavits under
Sections 8 and 15 accepted.
Registration No. 1,690,657, of the mark THE MAXX FOR THE
MINIMUM (in typed form) for "retail department store
services." Issued June 2, 1992; Office records show
that affidavits under Sections 8 and 15 accepted.
Registration No. 1,871,345, of the mark T.J. MAXX (in
typed form) for "athletic bags, purses, handbags,
pocketbooks, wallets, umbrellas, travel bags, and
luggage." Issued January 3, 1995. The registration
includes the statement "’T.J. MAXX’ is not the name of a
particular living individual."
Registration No. 1,871,415, of the mark T.J. MAXX (in
typed form) for "clothing for women, men, children and
infants; and beachwear, bathing suits, blouses, coats
dresses, footwear, gowns, headwear, hosiery, jackets,
lingerie, neckwear, sleepwear, pants, shirts, shorts,
suits, sweaters, tops, underwear, and vests." Issued
January 3, 1995. The registration includes the
statement "’T.J. MAXX’ is not the name of a particular
living individual."
Opposition No. 102,409
4
Applicant filed an answer by which it denied the
allegations of the notice of opposition which are essential
to opposer’s Section 2(d) claim.
Opposer and applicant filed briefs on the case, and
opposer filed a reply brief. No oral hearing was requested.
The evidence of record consists of the pleadings; the file
of the opposed application; status and title copies of
opposer’s eight pleaded registrations, submitted by opposer
under Notice of Reliance;2 the discovery deposition (and
exhibits thereto) of Karen Coppola, vice-president of
marketing for opposer’s T.J. MAXX retail store division,
taken by applicant during the discovery period and submitted
by opposer during opposer’s testimony period pursuant to the
parties’ stipulation;3 status and title copies of twelve
third-party registrations, submitted by applicant under
Notice of Reliance;4 and opposer’s answers to certain of
applicant’s discovery requests, submitted by applicant under
Notice of Reliance.
The following relevant facts have been established by
the evidence of record. Opposer NBC Fourth Realty Corp. is
a subsidiary of The TJX Companies, Inc. Opposer holds title

2 See infra at footnote 1.
3 See Trademark Rule 2.120(j)(2).
4 It was unnecessary to submit status and title copies of these
third-party registrations; soft copies of PTO records would have
sufficed. See Trademark Rule 2.122(e) and TBMP §703.02(b).
Opposition No. 102,409
5
to the pleaded marks, and licenses their use by The TJX
Companies, Inc. and by T.J. Maxx, which is a division of The
TJX Companies, Inc. (Coppola deposition at 8-9.)
HomeGoods, an off-price retailer of products for the home,
is another division of The TJX Companies, Inc. (Id. at 9,
19.)
T.J. Maxx stores are "off-price" department stores
"which offer fashions for the family and the home at 20 to
60 percent off regular department store prices nationwide."
(Id. at 10.) T.J. Maxx stores had annual sales in 1996 of
approximately $3 billion, approximately seventy percent of
which was attributable to clothing sales. (Id. at 14.) In
the fiscal year preceding opposer’s December 1996 response
to applicant’s first set of interrogatories, opposer spent
approximately $40 million on marketing, of which the largest
portion was for television advertising. (Opposer’s response
to applicant’s Interrogatory No. 9.) There are
approximately 590 T.J. Maxx stores located throughout the
United States. (Opposer’s response to applicant’s
Interrogatory No. 6.)
When asked to describe the goods sold at T.J. Maxx
stores, Ms. Coppola confirmed the accuracy of the allegation
in paragraph 1 of the notice of opposition that T.J. Maxx
stores sell "brand name apparel and accessories, footwear,

Opposition No. 102,409
6
jewelry, domestics, kitchen accessories and giftware."
(Coppola deposition at 12.) She further described the
above-referenced "domestics" as "sheets, towels, linens,
comforters, blankets, aprons, place mats, things along that
line," and the "kitchen accessories" as "kitchen gadgets to
gourmet cookware to stemware to silverware, that whole genre
of kitchen items." (Id. at 13.)
When she was asked whether T.J. Maxx has plans to
expand into additional product categories, she answered:
Well, we have opened three years ago a concept
store called -- or a store called "T.J. Maxx
and More." The first name that it was under
was T.J. Megastores, but they have now been
branded "T.J. Maxx and More." And that really
combines a T.J. Maxx store and a sister
company of ours, HomeGoods, which provides an
array of home products. And what we’ve done
with the T.J. Maxx and More stores is bring
those two concepts together under the same
roof under the one banner of "T.J. Maxx and
More."
(Id. at 19.) There is no evidence in the record as to how
many "T.J. Maxx and More" stores exist, or as to the sales
and advertising figures for such stores.
When she was asked what sort of goods "might be sold by
bringing in the HomeGoods," Ms. Coppola answered:
Okay. It is a lot of stuff, a 50,000 square
foot store. Let’s go through it. Certainly
picture frames -- well, going through the
seasonality, large oriental rugs, accent
furniture, storaging containers, appliances,
kitchen accessories, gourmet cookware,
Opposition No. 102,409
7
baskets, home accent crystal, dinnerware
services, silverware and china."
(Id. at 22-23.)5 She further described "accent furniture"
as follows: "It is end tables, it is bar stools, it’s
chairs, it’s baker’s racks, it’s hammocks, it’s umbrella
tables, it’s beach chairs, it’s outdoor chairs and
furniture, that season of the year." (Id. at 23.) She
further described "appliances" as "coffee makers, blenders,
bread makers, electric frying pans, grills, mixers, ice
cream makers, hair dryers, curling irons, electric curlers."
(Id. at 23-24.)
With respect to "grills," Ms. Coppola stated as
follows:
We have sold small barbecue grills. We have
an outdoor/indoor kitchen-type grill thing. I
don’t know what to call that. It’s used for -
- there is an indoor and there is an outdoor
grill. The indoor grill grills. You make a
waffle on it, electric grill pans. The
outdoor grills are what you would know them to
be, barbecue grills.
(Id. at 24.) She further stated that she knows that T.J.
Maxx has sold "some Weber grills" (id. at 25), but that she,
as marketing director for TJX Companies, Inc., has never
researched the barbecue grill industry, nor, to her

5 It is unclear from the deposition transcript whether the
"50,000 foot store" Ms. Coppola refers to is the HomeGoods store
or the T.J. Maxx and More store.
Opposition No. 102,409
8
knowledge, has anyone else at T.J. Maxx performed such
research. She stated that she does not know the average
purchase price of barbecue gas grills, the characteristics
of the average grill purchaser, nor how many outdoor grills
T.J. Maxx has sold, either in terms of gross sales or units.
(Id. at 26-27.)
Applicant’s Interrogatory Nos. 24-26 requested
information regarding T.J. Maxx’s sales of outdoor barbecue
grills for the last three years. Opposer’s December 1997
responses to those interrogatories reveal that all such
sales occurred in 1995, when T.J. Maxx had $3,600 in gross
sales resulting from the sale of approximately forty-eight
Weber brand outdoor barbecue grills. Opposer has admitted
that it has not mentioned barbecue gas grills in its radio,
television or print advertising in the past five years.
(Opposer’s response to applicant’s Request for Admissions
No. 8.)
Opposer also has admitted that it has not used T.J.
MAXX as a brand name or private label name for barbecue gas
grills. (Opposer’s response to applicant’s Request for
Admissions No. 7.) In her deposition, when Ms. Coppola was
asked, generally, whether T.J. Maxx sells products under a
"T.J. Maxx" brand name or label, she stated that T.J. Maxx
does not "put our label inside any garment, if that’s what
you’re asking." (Coppola deposition at 50). However, she
Opposition No. 102,409
9
also stated: "Well, I should say all products sold inside of
our store, whether they be Anne Klein or a picture frame,
they all have a label with "T.J. Maxx" on them which is the
price ticket." (Id. at 51).
Priority is not an issue in this case, in view of
opposer’s submission of status and title copies of its
registrations. See King Candy Co. v. Eunice King’s Kitchen,
Inc., 496 F.2d 1400, 182 USPQ 108,110 (CCPA 1974). Thus,
the issue to be determined with respect to opposer’s Section
2(d) claim is whether confusion is likely to result from
applicant’s use of applicant’s mark on the goods identified
in the application. Our determination as to whether a
likelihood of confusion exists is based on an analysis of
all of the probative facts in evidence that are relevant to
the factors bearing on the likelihood of confusion issue.
See In re E.I. du Pont de Nemours and Co., 476 F.2d 1357,
177 USPQ 563 (CCPA 1973).
To the extent that opposer’s opposition to registration
of applicant’s GRILL MAXX mark for "barbecue grills" is
based on opposer’s ownership of its Registration No.
1,189,627, of the mark THE MAXIMUM FOR THE MINIMUM for
"retail department store services," we do not hesitate to
find against opposer and in favor of applicant. We find
that the marks GRILL MAXX and THE MAXIMUM FOR THE MINIMUM
are too dissimilar to support a finding of likelihood of
Opposition No. 102,409
10
confusion, especially as applied to the goods and services
identified in the application and registration. Cf. Kellogg
Co. v. Pack ’Em Enterprises, Inc., 951 F.2d 330, 21 USPQ2d
1142 (Fed. Cir. 1991). Our reasons for deciding that
applicant’s mark is not confusingly similar to opposer’s
other registered marks, discussed later in this opinion,
apply a fortiori when we compare applicant’s mark GRILL MAXX
to opposer’s mark THE MAXIMUM FOR THE MINIMUM.
Likewise, to the extent that opposer’s opposition is
based on opposer’s ownership of its Registration Nos.
1,871,345 and 1,871,415, which are of the mark T.J. MAXX
for, respectively, various clothing items and various
accessory items, we find that the goods identified in those
registrations are too dissimilar and unrelated to
applicant’s "barbecue grills" to support a finding that
confusion is likely to result from the parties’ use of their
respective marks thereon. Cf. Pure Gold, Inc. v. Syntex
(U.S.A.), Inc., 739 F.2d 624, 222 USPQ 741 (Fed. Cir. 1984).
The real dispute in this case, therefore, is whether
applicant’s mark GRILL MAXX, for "barbecue grills," is
likely to be confused with opposer’s trade name and
registered mark T.J. MAXX, or with opposer’s registered
marks GET THE MAXX FOR THE MINIMUM, and/or THE MAXX FOR THE
MINIMUM, all used in connection with "retail department
store services."
Opposition No. 102,409
11
We turn first to a consideration of the commercial
relationship between the parties’ respective goods and
services. Because applicant’s identification of goods is
not limited as to trade channels, we must assume that
applicant’s barbecue grills move in all normal trade
channels for such goods. See In re Elbaum, 211 USPQ 639
(TTAB 1981). We must construe the words "retail department
store services" in opposer’s recitation of services in
accordance with their ordinary meaning, and we take judicial
notice that Webster’s Ninth New Collegiate Dictionary
(1990), at page 340, defines "department store" as "a store
selling a wide variety of goods and arranged in several
departments."
We are not persuaded that retail department stores are
among the normal trade channels for barbecue grills, or that
barbecue grills are otherwise related to retail department
store services. There is no evidence in the record from
which we can conclude that retail department stores normally
offer barbecue grills for sale, that purchasers normally
would expect retail department stores to carry such goods,
that retail department stores normally sell barbecue grills
under their own house marks or brand names, or that
purchasers normally would expect barbecue grills to be sold
under a department store’s house mark or brand name; nor are
these matters of which it would be appropriate for us to
Opposition No. 102,409
12
take judicial notice. Distinguish, e.g., F.I. Tripi Co.,
Inc. v. R.H. Cosmetics Corp., 196 USPQ 126 (TTAB 1997).
Indeed, the only evidence in the record to support
opposer’s argument that retail department stores are among
the normal trade channels for barbecue grills is opposer’s
assertion that it sold approximately forty-eight Weber brand
barbecue grills in its own stores in 1995.6 However,
opposer’s 1995 sales of barbecue grills appear on this
record to have been a one-time phenomenon, de minimis both
in terms of units sold (less than one unit for every ten
T.J. Maxx stores) and percentage of sales ($3600 out of $3
billion in total annual sales). Apparently, neither
opposer’s vice-president of marketing nor any other of
opposer’s officers or employees is knowledgeable about the
barbecue grill industry or market, a fact from which it must
be inferred that barbecue grills are not among the goods
normally sold in opposer’s department stores.
In short, the record does not support opposer’s
argument that retail department stores are among the normal
trade channels for barbecue grills. Nor are we persuaded by
opposer’s argument that applicant’s "barbecue grills" are
related to opposer’s "retail department store services" by

6 We have given little probative weight to Ms. Coppola’s
testimony regarding opposer’s sales of "an outdoor/indoor
kitchen-type grill thing." See supra at p. 7. That item, which
Ms. Coppola suggests might be used to cook a waffle, does not
Opposition No. 102,409
13
virtue of the fact that opposer’s stores sell items such as
outdoor furniture and casual dinnerware, which might be used
in conjunction with barbecue grills. Rather, we conclude on
this record that the commercial relationship between
barbecue grills and retail department store services is
tenuous, at best, a fact which weighs against a finding of
likelihood of confusion in this case.
We turn next to a determination of whether or not
applicant’s GRILL MAXX mark and opposer’s marks T.J. MAXX,
THE MAXX FOR THE MINIMUM, and GET THE MAXX FOR THE MINIMUM,
when viewed in their entireties, are similar in terms of
appearance, sound, connotation, and overall commercial
impression. We find that they are not.
The only point of similarity between applicant’s mark
and opposer’s marks is the presence in each of the marks of
the term MAXX. In applicant’s mark GRILL MAXX and in
opposer’s marks THE MAXX FOR THE MINIMUM and GET THE MAXX
FOR THE MINIMUM, the term MAXX clearly would be viewed as a
misspelling of, or substitution for, the word "max," which
itself is an abbreviation of the word "maximum."7 This
conclusion is further borne out by comparison of the
essentially identical connotations of opposer’s pleaded

appear to be substantially related to barbecue grills, and thus
is of little relevance to this case.
7 We take judicial notice that Webster’s Third New International
Dictionary - Unabridged (1976), at p. 1396, defines "max" as,
inter alia, "abbr maximum."
Opposition No. 102,409
14
registered marks GET THE MAX FOR THE MINIMUM, on one hand,
and THE MAXX FOR THE MINIMUM and GET THE MAXX FOR THE
MINIMUM, on the other hand.
The words "maximum" and "max," and by extension the
term "maxx" as it is used in applicant’s mark GRILL MAXX and
opposer’s marks THE MAXX FOR THE MINIMUM and GET THE MAXX
FOR THE MINIMUM, have a somewhat laudatory connotation. We
take judicial notice that Webster’s Ninth New Collegiate
Dictionary (1976), at pp. 1396-1397, defines "max" as, inter
alia, "[short for maximum] a perfect score (as in a
scholastic recitation) or complete success," and defines
"maximum" as "the greatest quantity or value attainable in a
given case" and "the highest point or degree." Moreover,
many of the third party registrations8 made of record by

8 The third party registrations made of record by applicant are:
Reg. No. 1,825,345: KITTY LITTER MAXX (stylized) for "cat
box filler";
Reg. No. 1,688,662: MAXX for "general purpose sorbent
granules, powder, flexible pads, tubular socks, pillows,
sheets, rolls and elongated blankets for controlling and
absorbing oil, grease, and fluids for domestic, commercial
and industrial use";
Reg. No. 1,661,817: THE BLACK MAXX for "exercise equipment,
namely a belt and harness with hand straps and boots for
strengthening and toning muscles by resistance training";
Reg. No. 1,752,699: THUNDER MAXX for "toy vehicles and ride-
on toy vehicles";
Reg. No. 1,780,763: DELLA-MAXX for "all purpose liquid
cleaning preparations";
Reg. No. 1,781,617: TRIM-MAXX for "tea";
Opposition No. 102,409
15
applicant show, in the same way that dictionary definitions
might be used to show,9 that the term MAXX is often used in
marks as a substitute for the word "max," and for laudatory
effect.
In view of the laudatory nature of the term MAXX, we
find that applicant’s mark GRILL MAXX is not confusingly
similar to either of opposer’s slogan marks THE MAXX FOR THE
MINIMUM and GET THE MAXX FOR THE MINIMUM. The marks are
dissimilar in terms of their appearance, sound, connotation
and commercial impression, inasmuch as opposer’s marks are
multi-word, unitary slogans, and applicant’s mark is not.
The mere presence in each of the marks of the laudatory term
MAXX is an insufficient basis for finding that these marks,

Reg. No. 1,806,657: ULTRA MINI MAXX for "full line of
cleaning preparations, combination
cleaning/disinfecting/deodorizing preparations and polishing
preparations all for household, institutional and commercial
use";
Reg. No. 1,874,557: AMERICAN TRAC MAXX for "fender mounted
radios primarily used for agricultural and industrial
purposes";
Reg. No. 1,857,454: MUSCLE MAXX for "nutritional supplement
for athletes";
Reg. No. 1,939,195: MAXX for "hand tools, namely, ice
scrapers with snow brush attached";
Reg. No. 1,920,053: KITTY LITTER MAXX (typed form) for "cat
box filler"; and
Reg. No. 1,953,089: MORTGAGE MAXX for "mortgage brokerage
services."
9 See, e.g., Specialty Brands, Inc. v. Coffee Bean Distributors,
Inc., 748 F.2d 669, 223 USPQ 1281 (Fed. Cir. 1984).
Opposition No. 102,409
16
when viewed in their entireties, are similar in terms of
their overall commercial impressions.
Turning next to a comparison of applicant’s mark GRILL
MAXX and opposer’s mark T.J. MAXX, we likewise find that the
marks are dissimilar. Again, the only common element in the
respective marks is the term MAXX; the marks otherwise are
dissimilar in terms of appearance and sound. As discussed
above, MAXX has a somewhat laudatory connotation as used in
applicant’s mark and as applied to applicant’s goods, and
the commercial impression created by applicant’s mark is
that of a "maximum" grill, i.e., a maximum-quality grill, a
maximum-capacity grill, etc.
In opposer’s T.J. MAXX mark, by contrast, the term MAXX
loses most or all of its laudatory connotation and, instead,
strongly connotes a surname. Indeed, the overall commercial
impression created by opposer’s mark is clearly that of an
individual’s name, i.e., an individual with the initials
T.J. and the surname MAXX. No other reasonable construction
or interpretation of opposer’s mark is apparent on this
record.10 Applicant’s mark GRILL MAXX carries no such
connotation and creates no such commercial impression.

10 In this regard, we note that opposer’s predecessor Newton
Buying Corp., during prosecution of the application which matured
into opposer’s pleaded Registration No. 1,199,126, requested that
the following statement be entered into the application record:
"T.J. Maxx is not the name of any living individual. Rather, it
is the name of a ficticious [sic] person, is entirely fanciful,
and was made up by Newton Buying Corp." See Exhibit 7 to the
Opposition No. 102,409
17
We are not persuaded that the term MAXX dominates the
commercial impressions created by both marks, as opposer
argues. Even if we were to assume that MAXX dominates
applicant’s mark because the only other element of
applicant’s mark is the generic term GRILL, we nonetheless
cannot conclude on this record that MAXX, rather than T.J.,
is the dominant feature of opposer’s mark. Rather, T.J.
MAXX appears to be a unitary expression connoting an
individual’s name, and neither T.J. nor MAXX is necessarily
dominant in the commercial impression created by the mark.
Indeed, on the basis of this record, it would not be
unreasonable to conclude that T.J., and not MAXX, might be
perceived as the dominant feature of opposer’s mark.
Opposer apparently refers to itself as "T.J." or "T.J.’s,"
as well as "T.J. MAXX." See, e.g., Ms. Coppola’s deposition
testimony at page 27, where, in referring to opposer’s T.J.
MAXX stores, she says, "[t]he average customer at T.J. is
primarily a female," and "I think that’s the reason they
walk into T.J." See also Exhibit 4 to Ms. Coppola’s
deposition, which she identified (at page 21) as a T.J. MAXX

Coppola deposition. We have considered this fact, i.e., that
opposer’s predecessor made the above-quoted statement during
prosecution of its application, as being "merely illuminative of
shade and tone in the total picture confronting" us on the
question of the commercial impression created by opposer’s T.J.
MAXX mark. See Interstate Brands Corporation v. Celestial
Seasonings, Inc., 576 F.2d 926, 198 USPQ 151, 154 (CCPA 1978).
Opposition No. 102,409
18
store’s direct mail card, and which bears the heading
"What’s New At T.J.’s This Week?"11
For the reasons discussed above, we find that when the
marks are viewed in their entireties in terms of appearance,
sound, connotation and overall commercial impression,
applicant’s mark GRILL MAXX is dissimilar, rather than
similar, to any and all of opposer’s marks T.J. MAXX, THE
MAXX FOR THE MINIMUM, and GET THE MAXX FOR THE MINIMUM.
We have carefully considered all of the arguments with
respect to the other du Pont evidentiary factors, most of
them made by applicant, and conclude that none of those
factors significantly affects the outcome of this case. We
are not persuaded by applicant’s argument that the relevant
purchasers in this case are necessarily sophisticated as to
trademarks or immune to source confusion. Nor are we
persuaded that the third-party registrations made of record
by applicant establish that MAXX is a weak or diluted mark;

11 We also note that opposer, as plaintiff in Opposition No.
94,915, contended that its T.J. MAXX mark and the applicant’s
T.J. BAILEY mark were similar, and argued in support of that
contention that, "[b]earing in mind the standard prohibition
against dissection of marks in evaluating similarity, and to the
rule that the first part of a mark is the most prominent, the
marks are similar," and that it was "quite likely that a
significant portion of potential clothing store customers would
remember either" T.J. BAILEY or T.J. MAXX "as T.J. ’something’."
See opposer’s responses to applicant’s Requests for Admissions
Nos. 5 and 6, and Exhibit 8 to the Coppola deposition. The fact
that opposer made these arguments is a fact which we may consider
as "merely illuminative of shade and tone in the total picture
confronting" us on the question of whether "T.J." or "MAXX" is
the dominant feature in the commercial impression created by
opposer’s mark. See Interstate Brands, supra.
Opposition No. 102,409
19
those registrations are not evidence that the marks depicted
therein are in use or that they are familiar to consumers.
We have considered the third-party registrations only
insofar as they aid us in determining the connotation of the
term MAXX, as discussed above. The alleged absence of
actual confusion is entitled to little weight in this case,
given the fact that applicant’s application is an intent-to-
use application.
Opposer, citing its $3 billion in annual sales, its $40
million in annual advertising expenditures, the fact that it
has used the mark since 1977, and the fact that it operates
590 stores nationwide, argues that its T.J. MAXX mark is a
famous, well-known mark which is entitled to a wide scope of
protection. Applicant contests opposer’s claim of fame,
contending that the above-referenced facts do not, in
themselves, establish the fame of opposer’s mark. On this
record, we conclude that although opposer’s T.J. MAXX mark
probably is famous in the field of retail apparel sales,
opposer has not established that T.J. MAXX, or any other of
opposer’s marks, is a famous mark for the various non-
apparel items opposer sells, much less that any of opposer’s
marks has achieved fame for goods as far afield from apparel
as barbecue grills. Accordingly, while we have considered
the fame of opposer’s mark, we find that the fact of such

Opposition No. 102,409
20
fame is of less importance to our likelihood of confusion
analysis in this case than it would have been if the goods
and services involved had been more closely related.
After having considered all of the evidence pertaining
to the relevant likelihood of confusion evidentiary factors,
we conclude that opposer has failed to establish the
existence of a likelihood of confusion in this case. In
view of the fact that the commercial relationship between
applicant’s goods and opposer’s services appears on this
record to be tenuous, at best, applicant’s mark simply is
not sufficiently similar to opposer’s pleaded marks and
trade name to warrant a finding that source confusion is
likely to result from the parties’ concurrent use of their
respective marks on or in connection with their respective
goods and services.
Decision: The opposition is dismissed.
J. D. Sams
C. M. Bottorff
L. K. McLeod
Administrative Trademark Judges
Trademark Trial and Appeal Board