North American Bear Co., Inc.v.The Vermont Teddy Bear Co., Inc.

Trademark Trial and Appeal Board

Aug 8, 2001

No. 91107763 (T.T.A.B. Aug. 8, 2001)

8/8/01 Paper No.
36

RLS/TF

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
______

North American Bear Co., Inc.
v.
The Vermont Teddy Bear Co., Inc.
_____

Opposition No. 107,763
to application Serial No. 75/030,467
filed on December 4, 1995
_____

James M. Amend, P.C. of Kirkland & Ellis for North
American Bear Co., Inc.

H. Jay Spiegel, Esq. of H. Jay Spiegel & Associates for
The Vermont Teddy Bear Co., Inc.

Before Simms, Wendel and Holtzman, Administrative
Trademark Judges.

Opinion by Simms, Administrative Trademark Judge:

North American Bear Co., Inc. (opposer), an Illinois
corporation, has opposed the application of The Vermont
Teddy Bear Co., Inc. (applicant), a New York corporation,
to register the mark THE GREAT AMERICAN TEDDY BEAR for
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Opposition No. 107,763
2
stuffed toy animals and for message delivery services
accompanied by stuffed toy animals.1
In the notice of opposition, opposer asserts that it
first used the mark NORTH AMERICAN BEAR CO. INC. no later
than November 1979 for stuffed toys; that it owns two
registrations covering this mark and the mark with a
design for stuffed toys;2 and that applicant’s mark THE
GREAT AMERICAN TEDDY BEAR so resembles opposer’s
previously used and registered marks NORTH AMERICAN BEAR
CO. INC. with and without design as to be likely to cause
confusion, to cause mistake or to deceive. In its
answer, applicant has denied the essential allegations of
the opposition and has asserted as an “affirmative
defense” that opposer’s mark is generic. However,
because this defense is an attack on opposer’s pleaded
registrations, applicant was required to file a petition
to cancellation or a counterclaim seeking

1 Application Serial No. 75/030,467, filed December 4, 1995,
based upon applicant’s assertion of a bona fide intent to use
the mark in commerce. The words “TEDDY BEAR” have been
disclaimed.

2 Registration No. 1,365,742, issued October 15, 1985, Sections
8 and 15 declaration filed; and Registration No. 1,438,174,
issued April 28, 1987; Sections 8 and 15 declaration filed. In
both registrations the words “BEAR CO. INC.” have been
disclaimed, and the representation of the teddy bear has been
disclaimed in the ’742 registration.
Opposition No. 107,763
3

cancellation of opposer’s pleaded registrations. See
TBMP §§318.02(b) and 319. Applicant has not done this.
Accordingly, no further consideration will be given to
this
“affirmative defense.”2
Both parties have submitted notices of reliance upon
discovery depositions and/or discovery responses of the
other party. Opposer has also relied on its pleaded
registrations as well as on printed publications, and has
taken testimony. Both parties have submitted briefs.
Opposer’s Record
Opposer’s co-founder, Mr. Paul Levy, testified that
opposer has sold teddy bears with hangtags bearing the
mark NORTH AMERICAN BEAR CO. INC. since 1979. Levy dep.,
pp. 10, 17, 53. See Levy Exhibits 1 and 16 below.

2 We note, however, that, in Cancellation No. 28,205, applicant
herein did seek cancellation of one of opposer’s pleaded
registrations on the basis of allegations of fraud because
opposer had assertedly never used its mark as a trademark but
Opposition No. 107,763
4

Opposer’s goods are sold to the general public in retail
and department stores, specialty stores, and flower, gift
and card shops. Opposer’s goods are also sold over the
Internet and by means of catalogs of other companies.
The price range of opposer’s teddy bears is $8 to $110.
In the period 1992 to 1998, opposer’s sales under the
mark exceeded $100 million with almost 10 million units
sold and nearly $8 million in advertising expenses. Levy
dep., pp. 27–28. Since the company was founded,
opposer’s sales have reached almost one quarter of a
billion dollars. Levy dep., p. 29.
Mr. Levy testified that applicant is a competitor
with goods of both companies being sold in the adult gift
market. The parties advertise in some of the same

only as a trade name. On September 6, 2000, the Board dismissed
with prejudice that petition for cancellation.
Opposition No. 107,763
5
consumer magazines, and the same articles have discussed
the products of both parties.
With respect to instances of actual confusion, Mr.
Levy testified, at p. 77:
Q. Did you find that any consumers
confused your mark with the Great
American Teddy Bear mark at the time
that Vermont was using it.
A. Yes. We had people calling us asking
about the opening of our store, you
know, in New York and a variety of other
calls.

And then I asked, you know, Loraine in
our office to keep track of all the
incidences of confusion that arose and
to keep a record of every call that we
got or ask customer service to keep
track of it. Asked everyone -– Asked
her to ask everyone in the company to
keep track of any confusion that
occurred during -– after this name
arose.

Opposer has made of record handwritten logs of alleged
instances of actual confusion.
Applicant’s Record
Applicant is a direct marketer of teddy bears and
other products. Applicant’s president and chief
executive officer, Ms. Elisabeth Robert, testified that
applicant began use of the mark herein sought to be
registered in 1995. Applicant’s goods have been sold
over the radio, by catalog and at its own retail stores,
only one of which is currently open. While at one time
Opposition No. 107,763
6
applicant considered changing the name of its company to
The Great American Teddy Bear Company, applicant decided
against this name change. However, applicant continued
to use the trademark GREAT AMERICAN TEDDY BEAR until
approximately the middle of 1997 (Burns discovery dep.,
p. 100). Applicant’s goods were sold from inventory
through the end of August or September 1998. Robert
discovery dep., pp. 93, 192. Applicant planned to resume
nationwide use in early 1999, by its catalog and its
retail store. Robert discovery dep., pp. 48, 129.
Applicant’s main competitors appear to be gift, candy and
mail-order flower businesses rather than teddy bear
retailers. Burns discovery dep., p. 22.
Applicant’s sales in 1997 were approximately $1
million, with advertising expenses around ½ million
dollars, mostly by means of radio advertisements. Most
of applicant’s sales are by mail order or by phone.
Applicant was aware of opposer and opposer’s marks before
applicant filed the instant application.
Ms. Robert was interrogated about applicant’s suit
against a third party for infringement of another of
applicant’s marks, and the steps taken by applicant at
that time to document instances of actual confusion.
Thereafter, she testified:
Opposition No. 107,763
7
Q And at the time that you learned of North
American Bear Company’s objections to The Great
American Teddy Bear mark, were there ever any
discussions about instituting that same kind of
plan?
A No.
Q Why not?
A Because we did not believe that it was
material, and we did not believe that it was a
threat to us.
Q What was a threat to Vermont Teddy Bear?
A The confusion between the North American
Teddy Bear Company, or North American Bear
Company, I’m sorry, and Great American Teddy
Bear Company.
Q Did you believe that there was confusion out
there?
A Yes, we did. We believed, based on what you
gave us, that there was – or what North American
Bear Company gave us – that there could be
confusion out there.

Robert discovery dep., p. 100. She testified, however,
that there were no known instances of confusion between
the marks involved herein. See also Burns discovery
dep., p. 77.
Applicant also took the testimony of an expert
witness, Mr. Herbert Larson, a practitioner in the field
of patents and trademarks for over 35 years. He
testified that, in his opinion, there was no likelihood
of confusion between the respective marks.3

3 We have chosen to give relatively little weight to this
testimony for the following reasons. First, Mr. Larson’s
opinion seems to be significantly influenced by the manner of
opposer’s usage in its catalogs and promotional material.
However, the expert did not apparently consider opposer’s
ownership of federal trademark registrations covering opposer’s
pleaded marks, and the presumptions of validity we must give to
Opposition No. 107,763
8
There is no evidence of third-party use of similar
marks.
Arguments of the Parties
Essentially, opposer argues that the relevant
factors to be considered in the likelihood-of-confusion
analysis support its position that confusion is likely.
Opposer notes that it has used its marks for over 20
years and that opposer’s significant sales and
advertising as well as favorable press coverage have
resulted in “an enormous amount of recognition and good
will among consumers” (brief, p. 5) so that opposer’s
mark NORTH AMERICAN BEAR CO. must be considered famous or
at least very strong in the teddy bear market. Opposer
states that its advertising expenditures have averaged
around $1 million per year.
It is opposer’s position that the marks of the
parties are substantially similar and convey similar
overall commercial impressions. In this regard, opposer

those registrations of record. Applicant’s witness was also
influenced by the fact that opposer does not use the standard
registration notice (®), which the witness stated had a bearing
upon his opinion on the issue of likelihood of confusion.
However, the presence or absence of a registration notice is not
a factor in the likelihood-of-confusion analysis under In re
E.I. duPont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA
1973). We also must consider the goods as described in
opposer’s pleaded registration and in applicant’s application,
goods that are for our purposes legally identical. For these
Opposition No. 107,763
9
notes that both marks are multi-word phrases that share
the significant words “AMERICAN” and “BEAR.” Opposer
argues that the respective marks have similar meanings
and that, in addition, opposer’s design depicting a teddy
bear enhances the likelihood of confusion.
With respect to the goods, opposer argues that they
are identically described products which are sold to the
general public in similar channels of trade, including by
Internet retailers. The respective goods are also
advertised through catalogs and the parties’
advertisements have appeared in some of the same
publications. Opposer also notes the lack of similar
third-party uses as well as opposer’s evidence of actual
confusion. In this regard, it is opposer’s position that
the instances of actual confusion increased at the time
applicant opened its New York store and began advertising
its goods under its mark on the radio. According to
opposer, the instances of actual confusion are
illustrative of how confusion may occur if applicant is
permitted to register its mark. Opposer also maintains
that applicant prosecuted its application in bad faith
because, after the filing of the application, opposer
brought to applicant’s attention some of the instances of

and other reasons, we have given little weight to Mr. Larson’s
Opposition No. 107,763
10
actual confusion. Finally, opposer asks us to resolve
any doubt that we may have in favor of the prior user and
registrant.
Applicant, on the other hand, argues that the
respective marks are different in sound, appearance and
meaning. Applicant maintains that the dominant parts of
opposer’s marks are the words “NORTH AMERICAN” while the
dominant part of applicant’s mark is the expression
“GREAT AMERICAN.” With respect to opposer’s marks,
applicant argues that “NORTH AMERICAN” is geographically
descriptive or misdescriptive (“North American” connoting
goods coming from Canada, the United States or Mexico,
whereas opposer’s goods are imported from Asia), and that
this aspect of opposer’s marks is not strong since
“AMERICA” is commonly used in many marks. Applicant
contrasts this significance with the words “GREAT
AMERICAN” in its mark, which applicant argues connotes
very fine products made in the United States.
It is also applicant’s position that opposer’s marks
are not famous or strong because there is no evidence of
a significant percentage of opposer’s advertising being
used to promote opposer’s asserted marks rather than
other marks by which it identifies its teddy bears.

expert testimony.
Opposition No. 107,763
11
Also, according to applicant, opposer’s advertising is
directed to the use of opposer’s asserted marks as a
trade name and not as a trademark.
With respect to the goods, applicant maintains that
the goods travel in different channels of trade because
opposer is a wholesaler whereas applicant is a direct
distributor selling its goods in its own stores, by mail
order, by phone and over the Internet. Also, with
respect to distinctions in the goods, applicant argues
that opposer’s goods are made in Asia while its goods are
made in the United States. Applicant contends that
opposer’s evidence of alleged actual confusion is hearsay
which is not admissible as a business record exception to
this rule because the evidence was gathered in
contemplation of this litigation, and is also not
admissible under the state-of-mind exception to the
hearsay rule. Further, applicant notes that opposer took
no testimony of anyone who was actually confused or who
compiled the information of alleged instances of actual
confusion. If anything, applicant maintains that this
evidence only suggests possible confusion between the
companies and not between their trademarks. Applicant
maintains that there has been no bad faith on its part
because, while applicant knew of opposer and one of its
Opposition No. 107,763
12
registrations prior to applicant’s use, there is no
evidence that applicant adopted its mark to trade on any
goodwill of opposer.4
Opinion and Decision
Opposer’s registrations (and the testimony)
establish opposer’s priority in this case. The only real
issue is whether applicant’s mark THE GREAT AMERICAN
TEDDY BEAR is so similar to opposer’s marks NORTH
AMERICAN BEAR CO. INC. with and without a teddy bear
design that confusion is likely.
Upon careful consideration of this record and the
arguments of the parties, we agree with opposer that
confusion is likely. First, while there are obvious
differences in the respective marks, opposer’s mark NORTH
AMERICAN BEAR CO. INC. and applicant’s mark THE GREAT
AMERICAN TEDDY BEAR have significant similarities in
sound, appearance and commercial impression. In this
regard, both opposer’s and applicant’s marks are multi-
word marks, which include the words AMERICAN and BEAR in
that order, and both signify or suggest that the teddy
bears sold under those marks are American (or North

3 Applicant also argues that there is evidence of other “third-
party” marks since opposer failed to oppose another of
applicant’s marks -– THE ALL AMERICAN TEDDY BEAR. However,
aside from its irrelevance, there is no evidence of record on
this point.
Opposition No. 107,763
13
American) teddy bears. See American Optical Corp. v.
North American Optical Corp., 489 F.Supp. 443 (N.D.N.Y.
1979) (public would likely confuse defendant’s name NORTH
AMERICAN OPTICAL with protected
AMERICAN OPTICAL name). The image of a teddy bear in one
of opposer’s marks reinforces the similarity to
applicant’s mark, which contains the words TEDDY BEAR.
Also, as opposer has pointed out, the degree of
similarity between marks necessary to support a finding
of likelihood of confusion declines if the marks appear
on identical goods, as in the instant case. See Century
21 Real Estate Corp. v. Century Life of America, 970 F.2d
874, 23 USPQ2d 1698 (Fed. Cir. 1992). Moreover,
applicant’s message delivery services involving teddy
bears are substantially related to opposer’s products.
Because the goods are considered substantially
identical, we also must assume (and the evidence supports
the fact that) the channels of trade in which these goods
and services are sold and the classes of purchasers to
whom they are sold are also substantially identical.
Also, stuffed teddy bears are not very expensive items
and may be purchased on impulse, or at least without
careful consideration. This factor also weighs in favor
of opposer.
Opposition No. 107,763
14
Although we are not convinced, at least on this
record, that opposer’s marks have achieved a famous
status, we nevertheless believe that they must be
considered reasonably strong ones in the field with sales
over 20 years approaching ¼ billion dollars. Also, there
is no evidence of third-party use of similar marks.
While we have considered the evidence with respect
to instances of actual confusion, we do not find it to be
controlling. However, we do believe that the instances
of confusion of potential purchasers are at least
illustrative of how confusion may occur. We conclude
that purchasers, aware of opposer’s NORTH AMERICAN BEAR
CO. INC. (with and without design) teddy bears who then
encounter applicant’s THE GREAT AMERICAN TEDDY BEAR teddy
bears are likely, especially considering the fallibility
of memory, to confuse the source or origin of applicant’s
goods.
The opposition is sustained and registration to
applicant is refused.