Professional Products, Inc.v.Beta Holdings, Inc.

Trademark Trial and Appeal Board

Nov 3, 2011

No. 92049230 (T.T.A.B. Nov. 3, 2011)

Mailed: November 3, 2011

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

Professional Products, Inc.
v.
Beta Holdings, Inc.
_____

Cancellation No. 92049230
_____

John Wiley Horton of Pennington Moore Wilkinson Bell &
Dunbar, P.A. for Professional Products, Inc.

David H.E. Bursik for Beta Holdings, Inc.
_____

Before Bucher, Cataldo and Mermelstein,
Administrative Trademark Judges.

Opinion by Cataldo, Administrative Trademark Judge:

Petitioner, Professional Products, Inc., has petitioned
to cancel Registration No. 3237981 for the mark shown below

(SPLINT disclaimed), owned by respondent, Beta Holdings,
Inc. The registration issued on May 1, 2007 on the
Principal Register. The goods are identified therein as
“orthopedic splints,” in International Class 10. In the
THIS OPINION IS NOT A
PRECEDENT OF
THE T.T.A.B.
Cancellation No. 92049230
2
application underlying Registration No. 3237981, petitioner
asserted August 31, 2006 as a date of first use of the mark
in commerce.
In its petition for cancellation, petitioner alleges
that it has made prior common-law use of the marks EZY
SPLINT in connection with orthopedic splints and EZY WRAP in
connection with goods including orthopedic splints.1
Petitioner further alleges that as a result of the
similarity between the parties’ marks as applied to their
respective goods, confusion is likely among consumers as to
the source of those goods.
In its answer, respondent denied the salient
allegations of the petition to cancel.2
The Record
The record in this case consists of the pleadings and
the file of respondent’s involved Registration No. 3237981.
In addition, during their assigned testimony periods, the
parties submitted the testimony depositions, with exhibits,
of petitioner’s CEO, Bryan Edward Kilbey; petitioner’s
General Manager, Dean Howard Stanton; an independent

1 Petitioner also pleaded ownership of pending applications to
register EZY SPLINT, application Serial No. 77311333, which has
since been abandoned, EZY WRAP, application Serial No. 77310176
and EZY WRAP & Design, application Serial No. 77311330.
2 Respondent also asserted certain affirmative defenses but did
not pursue them by motion or at trial. Accordingly, they are
deemed waived. Petitioner further asserted as “affirmative
defenses” matters that are more in the nature of amplifications
of its denials and have been so construed.
Cancellation No. 92049230
3
orthopedic distributor of petitioner’s products, Carl Ernest
Urbon; respondent’s CEO, Gerald Suh; and respondent’s
President, Zafer Termanini.
Petitioner and respondent filed main briefs and
petitioner filed a reply brief.
Unclean Hands
In its brief on the case, respondent raises for the
first time the contention that petitioner’s asserted false
statements regarding the date of first use of its EZY SPLINT
mark constitutes unclean hands. However, respondent did not
assert unclean hands as an affirmative defense in its
answer. “[A]n unpleaded defense cannot be relied upon by
the defendant unless the defendant's pleading is amended (or
deemed amended), pursuant to Fed. R. Civ. P. 15(a) or 15(b),
to assert the matter.” TBMP §§311.02 and 314 (3d ed. 2011).
The reason for requiring an affirmative defense to be
pleaded is to give the plaintiff notice of the defense and
an opportunity to respond. Blonder-Tongue Laboratories,
Inc. v. University of Illinois Foundation, 402 U.S. 313,
350, 169 USPQ 513 (1971). We further note that respondent
does not argue, nor does the record in this case support a
finding, that petitioner was fairly apprised that respondent
was taking any testimony or introducing evidence on the
issue. Cf. Boise Cascade Corp. v. Cascade Coach Co., 168
USPQ 795, 797 (TTAB 1970). Thus, we find that the issue of
Cancellation No. 92049230
4
unclean hands was not tried by the implied consent of the
parties.
In light of the foregoing, we find that respondent has
neither pleaded that petitioner’s claim is barred by unclean
hands, nor have the parties tried the unpleaded issue by
express or implied consent. Accordingly, respondent’s
arguments on the issue of unclean hands will be given no
consideration. We turn then to petitioner’s pleaded ground
of priority and likelihood of confusion.
Petitioner’s Standing
First, we consider whether petitioner has standing. A
plaintiff must have a ‘real interest’ in the outcome of a
proceeding in order to have standing. See Ritchie v.
Simpson, 170 F.3d 1092, 50 USPQ2d 1023, 1025 (Fed. Cir.
1999). “To establish a reasonable basis for a belief that
one is damaged by the registration sought to be cancelled, a
petition may assert a likelihood of confusion which is not
wholly without merit.” Lipton Industries v. Ralston Purina
Co., 670 F.2d 1024, 213 USPQ 185, 189 (CCPA 1982).
Petitioner’s testimony and evidence of use of EZY
SPLINT and EZY WRAP in connection with orthopedic splints
establishes its standing to petition to cancel respondent’s
involved mark for orthopedic splints. We note in addition
that respondent does not dispute petitioner’s standing to
bring this proceeding.
Cancellation No. 92049230
5
Priority of Use
It is well-settled that in the absence of any evidence
of earlier use, the earliest date upon which a respondent
may rely is the filing date of its underlying application.
See Trademark Act Section 7(c), 15 U.S.C. §1057(c). See
also Larami Corp. v. Talk to Me Programs, Inc., 36 USPQ2d
1840 (TTAB 1995). In this case, the intent-to-use
application that matured into respondent’s registration at
issue was accorded a filing date of July 30, 2004. Inasmuch
as respondent has neither alleged nor introduced any
evidence to support a finding that it made earlier use of
its involved mark, we find that July 30, 2004 is the
earliest date upon which respondent is entitled to rely for
purposes of priority.3 Petitioner, therefore, may establish
its priority by proving that on or before July 30, 2004, it
made use of the EZY SPLINT or EZY WRAP mark in connection
with orthopedic splints.
Because petitioner has not pleaded ownership of any
registered trademark, and further because its pleaded
applications were filed subsequent to the filing date of the
application that matured into respondent’s registration,
petitioner must rely on its common-law use of EZY SPLINT and

3 Respondent asserts that its earliest date of first use is
August 31, 2006, which is subsequent to its filing date. Suh
Testimony, p. 4-8, Exhibits 2, 4 and 5; Termanini Testimony, p.
4-6.

Cancellation No. 92049230
6
EZY WRAP as trademarks to prove priority. In order for a
plaintiff to prevail on a claim of likelihood of confusion
based on its ownership of common-law rights in a mark, the
mark must be distinctive, inherently or otherwise, and
plaintiff must show priority of use. See Otto Roth & Co. v.
Universal Foods Corp., 640 F.2d 1317, 209 USPQ 40 (CCPA
1981).
EZY SPLINT
Respondent maintains that petitioner has not
demonstrated its priority as to the mark EZY SPLINT. Upon
review of the evidence of record, we find that petitioner
has failed to prove that it made prior use of its EZY SPLINT
mark. However, and as discussed below, we find the record
demonstrates that petitioner made sales of orthopedic
splints under the nearly identical common-law mark EZY
SPLINTS at least as early as 2003 and that such sales have
been followed by activities proving continuous use of that
mark.
Petitioner testified and introduced evidence that it
first used EZY SPLINT ROLL in connection with orthopedic
splints in commerce in 1994.4 However, there is no evidence
of record that petitioner continued to use EZY SPLINT ROLL
in connection with these goods and may in fact have

4 Kilbey Testimony, p. 11-17; Exhibits 1a, 1b and 1c; Urbon
Testimony, p. 7-12, Exhibit 1a.

Cancellation No. 92049230
7
discontinued such use. However, petitioner further
testified and introduced evidence that its first use of EZY
SPLINTS in connection with orthopedic splints occurred in
2003.5 Petitioner submitted a product catalog from 2003,
displaying the mark EZY SPLINTS as part of the designation
“EZY SPLINTS 15 LAYER” available in various sizes in
connection with orthopedic splints and also displaying
telephone and facsimile ordering information at the bottom
of the page.6 Petitioner testified that such catalogs were
and are distributed to customers who can order the goods
directly therefrom.7 Petitioner submitted subsequent
catalogs, invoices and labels displaying the EZY SPLINTS
mark in connection with orthopedic splints.8
Petitioner further testified that sales of orthopedic
splints under the mark EZY SPLINTS have been continuous.9
We find that petitioner’s testimony is clear and consistent
as to how the catalogs, invoice records and labels are kept.
We further find that petitioner’s testimony is
uncontradicted by any testimony or evidence submitted by
respondent.

5 Id.
6 Id.
7 Kilbey Testimony, p. 1-17; Urbon Testimony, p. 17.
8 Exhibits 2-19f.
9 Kilbey Testimony, p. 113; Stanton Testimony, p. 18-19; Urbon
Testimony, p. 11-12.

Cancellation No. 92049230
8
We note respondent’s arguments that petitioner has made
inconsistent statements regarding the date of first use of
its EZY SPLINT mark. Nonetheless, and as discussed above,
we find that petitioner has established by testimony and
evidence that it first made use of EZY SPLINTS as a mark in
connection with orthopedic splints a least as early as 2003,
and that such use is continuous. We further note that
petitioner has introduced evidence of use of EZY SPLINT as a
mark in connection with orthopedic splints.10 However, it
is not clear from the record whether or at what time such
use commenced.
Therefore, we find that petitioner has demonstrated, by
a preponderance of the evidence, use of the mark EZY SPLINTS
in connection with orthopedic splints as early as 2003 - a
date prior to the earliest date respondent can rely on, July
30, 2004, and that initial sales were followed by activities
proving continuous use of the EZY SPLINTS mark.11

10 Kilby Testimony, Exhibits 4a-4b.
11 We note that while petitioner did not specifically assert
ownership of the mark EZY SPLINTS in its petition for
cancellation, its testimony and evidence, as well as its
arguments in its brief on the issue of priority, are directed in
part toward its use of the EZY SPLINTS mark. Similarly, certain
of respondent’s arguments regarding priority in its brief are
directed toward petitioner’s use of the EZY SPLINTS mark.
Respondent did not object to any of petitioner’s evidence or
arguments regarding use of the EZY SPLINTS mark. Accordingly, we
deem the petition to cancel to be amended to assert a claim of
priority and likelihood of confusion based upon petitioner’s use
of the mark EZY SPLINTS in connection with orthopedic splints.
In any event, because EZY SPLINTS is a mere pluralization of EZY
SPLINT, we find that the marks are legal equivalents. See Wilson
Cancellation No. 92049230
9
EZY WRAP
Respondent does not dispute that petitioner has made
common-law use of EZY WRAP as a trademark prior to the July
30, 2004 filing date of the application underlying its
involved registration.12
Likelihood of Confusion
Our likelihood of confusion determination under Section
2(d) is based on an analysis of all of the 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 &
Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). See also Palm
Bay Imports, Inc. v. Veuve Clicquot Ponsardin Maison Fondee
En 1772, 396 F.3d 1369, 73 USPQ2d 1689 (Fed. Cir. 2005); In
re Majestic Distilling Company, Inc., 315 F.3d 1311, 65
USPQ2d 1201 (Fed. Cir. 2003); and In re Dixie Restaurants
Inc., 105 F.3d 1405, 41 USPQ2d 1531 (Fed. Cir. 1997).
In our determination of the issue of likelihood of
confusion, we will concentrate our discussion on
petitioner’s EZY SPLINTS mark, which is more similar to the
mark in the challenged registration than petitioner’s EZY
WRAP mark.

v. Delauney, 245 F.2d 877, 114 USPQ 339, 341 (CCPA 1957); In re
Pix of Am., Inc., 225 USPQ 691, 692 (TTAB 1985).
12 Kilbey Testimony, p. 11-17, 33-35, 46-47, Exhibits 1a, 1b and
1c, 16; Urbon Testimony, p. 17.
Cancellation No. 92049230
10
The Goods
Turning first to our consideration of the similarities
or dissimilarities between the parties’ goods, we note that
the goods recited in respondent’s involved registration are
“orthopedic splints.” Petitioner has introduced testimony
and evidence that it has made use of its EZY SPLINTS mark in
connection with identical goods.
Channels of Trade and Classes of Purchasers
When the goods are identical, we must assume that the
channels of trade and purchasers are also the same.
Genesco Inc. v. Martz, 66 USPQ2d 1260, 1268 (TTAB 2003)
(“Given the in-part identical and in-part related nature of
the parties’ goods, and the lack of any restrictions in the
identifications thereof as to trade channels and purchasers,
these clothing items could be offered and sold to the same
classes of purchasers through the same channels of trade”);
and In re Smith and Mehaffey, 31 USPQ2d 1531, 1532 (TTAB
1994) (“Because the goods are legally identical, they must
be presumed to travel in the same channels of trade, and be
sold to the same class of purchasers”).
Therefore, given the identical nature of the parties’
goods, the channels of trade and purchasers must be
considered to be the same so we move on to consider whether
the marks are similar or dissimilar in their entireties as
to appearance, sound, connotation and commercial impression.
Cancellation No. 92049230
11
Palm Bay Imports Inc. v. Veuve Clicquot Ponsardin Maison
Fondee En 1772, 73 USPQ2d at 1691 (Fed. Cir. 2005).
The Marks
Turning to our consideration of the marks at issue, we
note initially that, "[w]hen marks would appear on virtually
identical ... [goods or] services, the degree of similarity
[of the marks] necessary to support a conclusion of likely
confusion declines." See Century 21 Real Estate Corp. v.
Century Life of America, 970 F.2d 874, 23 USPQ2d 1698 (Fed.
Cir. 1992), cert. denied, 506 U.S. 1034 (1994). See also
ECI Division of E-Systems, Inc. v. Environmental
Communications Inc., 207 USPQ 443, 449 (TTAB 1980). The
test, under the first du Pont factor, is not whether the
marks can be distinguished when subjected to a side-by-side
comparison, but rather whether the marks are sufficiently
similar in terms of their overall commercial impression that
confusion as to the source of the goods offered under the
respective marks is likely to result.
In this case, petitioner’s EZY SPLINTS mark is similar
to respondent’s mark

in that both marks consist of the nearly identical terms EZY
and EZ, which are commonly understood to be alternate or
Cancellation No. 92049230
12
novel spellings of the word “easy”; followed by the nearly
identical terms SPLINTS and SPLINT. The only differences
between the wording in the marks is the presence of the
letter “Y” and the pluralization of SPLINTS in petitioner’s
EZY SPLINTS mark, which do not significantly change the
appearance or sound of petitioner’s mark vis a vis
respondent’s

mark. See Calvin Klein Industries Inc. v. Calvins
Pharmaceuticals Inc., 8 USPQ2d 1269, 1271 (TTAB 1988) (the
addition of the letter “s” at the end of applicant’s mark
CALVINS does little distinguish it from opposer’s mark
CALVIN); In re Curtice-Burns, Inc., 231 USPQ 990, 992 (TTAB
1986) (McKENZIE’S and McKENZIE are nearly identical). As a
result, we find that the marks are highly similar in
appearance and sound. Further, both marks suggest that the
goods identified thereby may be used to provide an easy
splint for an injury. Thus, the marks are highly similar in
meaning or connotation.
Similarly, the circular design surrounding the term EZ
in respondent’s mark does little to distinguish it from
petitioner’s mark. The simple geometric design does not
impart any particular meaning or connotation to the mark
and, as a simple carrier for the term EZ, contributes little
Cancellation No. 92049230
13
to the visual impression thereof. It is also settled that
when a mark comprises both a word and a design, then the
word is normally accorded greater weight because it would be
used by purchasers to request the goods or services. In re
Appetito Provisions Co., 3 USPQ2d 1553 (TTAB 1987).
In view of the foregoing, we find that petitioner’s EZY
SPLINTS mark and respondent’s mark

are very similar in appearance, sound, connotation and, when
viewed as a whole, convey highly similar overall commercial
impressions.
Actual Confusion
Another du Pont factor discussed by the parties is the
existence of actual confusion. Respondent has testified
that it is aware of several instances of actual confusion
between its orthopedic splints under its involved mark and
orthopedic splints offered by petitioner under its EZY
SPLINTS mark.13 Respondent’s acknowledgment of actual
confusion in this case certainly favors a finding of
likelihood of confusion.

13 Suh Testimony, p. 13; Termanini Testimony, p. 7-8.

Cancellation No. 92049230
14
Conclusion
We have carefully considered all of the testimony and
evidence pertaining to priority of use, the relevant du Pont
factors, as well as all of the parties’ arguments with
respect thereto, including any evidence and arguments not
specifically discussed in this opinion.
We conclude that petitioner has established priority of
use as to its EZY SPLINTS mark and that consumers familiar
with petitioner’s goods under such mark would be likely to
believe, upon encountering respondent’s mark

for its identical goods, that the parties’ goods originate
with or are associated with or sponsored by the same entity.
In making our determination, we have balanced the relevant
du Pont factors. The factors of the identity of the goods,
similarities in the marks, and testimony from respondent as
to actual confusion weigh strongly in petitioner’s favor.
DECISION: Based upon our findings above, the petition
to cancel on the ground of priority and likelihood of
confusion is granted. Registration No. 3237981 will be
cancelled in due course.