Rubbermaid Inc.v.Dean M. Lucente

Trademark Trial and Appeal Board

Dec 2, 1998

No. 91095572 (T.T.A.B. Dec. 2, 1998)

Paper No. 20
DEB
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE
TTAB Dec. 2, 98
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
_____
Trademark Trial and Appeal Board
______
Rubbermaid Incorporated
v.
Dean M. Lucente
_____
Opposition No. 95,572
to application Serial No. 74/448,489
filed on October 15, 1993
_____
Richard B. O’Planick for Rubbermaid Incorporated.
Dean M. Lucente, pro se.
______
Before Simms, Walters and Bucher, Administrative Trademark
Judges.
Opinion by Bucher, Administrative Trademark Judge:
An application has been filed by Dean M. Lucente to
register KEEPERS as a trademark for plastic covers for food
containers.1

1 Serial No. 74/448,489, in International Class 21, filed
October 15, 1993, based upon an allegation of a bona fide
intention to use the mark in commerce.
Opposition No. 95,572
2
Registration has been opposed by Rubbermaid
Incorporated on the ground that applicant’s mark so
resembles the previously used and registered mark GREENS
KEEPER for large commercial containers for produce,2 the
unregistered trademark KEEPERS for a wide variety of
household containers, and the unregistered trademark KEEPER
for food storage containers having plastic covers, as to be
likely, when applied to applicant’s goods, to cause
confusion, or to cause mistake, or to deceive.
Applicant, in answer to the opposition, denied many of
the salient allegations.3
The record consists of the pleadings, the file of
applicant’s application and the testimony depositions of two
of opposer’s witnesses taken by opposer, with exhibits. By
notice of reliance under Trademark Rule 2.122(d), opposer
has also relied upon its pleaded registration and
applicant’s discovery responses. Applicant submitted no
evidence. Only the opposer has filed a brief in this case.

2 Rubbermaid Commercial Products, Inc., a wholly owned
subsidiary of opposer, Rubbermaid Incorporated, is the owner of
Registration No. 1,184,813, issued on January 5, 1982 from an
application filed on January 26, 1981, which sets forth dates of
first use of March 8, 1979; §8 affidavit accepted and §15
affidavit received. The word “GREENS” has been disclaimed apart
from the mark as shown.
3 Applicant denies a likelihood of confusion based on a
difference in the goods, etc., but admits to most of opposer’s
recital of facts and to the fact that applicant has made no use
of the mark as of the filing of the pleadings.
Opposition No. 95,572
3
The record shows that opposer and its wholly owned
subsidiary market plastic containers of all sizes for
household and commercial usage, each of which is sold with
the appropriate plastic lid. The plastic products sold
under the KEEPER mark are primarily food storage containers,
the plastic containers sold under the KEEPERS mark can be
used for all kinds of household storage purposes, while the
GREENS KEEPER mark is used on a more narrow range of large
commercial containers directed to the food service industry.
Opposer introduced into the record its pleaded
registration for the GREENS KEEPER mark, and has shown use
of the GREENS KEEPER mark through the testimony of Patrick
W. Brandt, Vice President of opposer’s subsidiary.
According to Mr. Brandt, Rubbermaid Commercial Products,
Inc. has continuously used GREENS KEEPER as its trademark in
connection with large commercial containers since at least
as early as 1979 (Brandt Deposition at Page 3).
Opposer also demonstrated use of the unregistered
trademarks KEEPERS and KEEPER through the testimony of James
Joseph Kilcoyne, manager of opposer’s Home Products
Division. The Kilcoyne testimony shows that opposer has
used the KEEPER mark continuously since 1971 (Kilcoyne
Deposition at Page 18), and used the trademark KEEPERS
continuously since 1986 (Kilcoyne Deposition at Page 30).
Opposition No. 95,572
4
The GREENS KEEPER product is promoted at trade shows,
through catalogs, and in other media directed to the food
service industry (Brandt Deposition at Page 3). Opposer
advertises the KEEPERS and KEEPER marks on the smaller
household containers in catalogs and specification sheets
made available to retailers in all fifty states and
overseas, and the marks are prominently applied directly to
the products themselves using adhesive labels (Kilcoyne
Deposition at Page 28).
Turning first to the issue of priority, the testimony
of Mr. Kilcoyne establishes opposer’s prior use of the
KEEPER and KEEPERS marks. In light of opposer’s reliance on
the status and title copy of opposer’s valid and subsisting
registration for GREENS KEEPER, priority of the GREENS
KEEPER mark is not an issue. See King Candy Co. v. Eunice
King’s Kitchen, 496 F.2d 1400, 182 USPQ 108 (CCPA 1974).
Even without the pleaded registration, opposer's prior use
of the GREENS KEEPER mark is clear from the testimony of Mr.
Brandt.
We turn next to the issue of likelihood of confusion.
In the course of rendering this decision, we have followed
the guidance of In re E.I. DuPont DeNemours & Co., 476 F.2d
1357, 1362, 177 USPQ 563, 567-68 (CCPA 1973), which sets
forth the factors which, if relevant, should be considered
in determining likelihood of confusion.
Opposition No. 95,572
5
The marks herein are identical or substantially the
same. While we must compare the marks in their entireties,
we find KEEPER to be the dominant portion of the mark GREENS
KEEPER. We give less prominence to the word GREENS in the
GREENS KEEPER mark since “greens” is merely descriptive as
applied to these goods and hence is disclaimed on that
registration. The word “greens” in this context refers to
lettuce or other green vegetables that could be washed and
stored in this device.
Turning then to a consideration of the respective
goods, as previously indicated, we have no testimony or
evidence from applicant in the present case. We have only
the application file and applicant’s answers to opposer’s
interrogatories. The application lists applicant’s goods as
“plastic covers for food containers.” It seems safe to
presume that applicant’s goods as identified include goods
that could well be identical to one or more of opposer’s
myriad styles of plastic containers. As opposer argues,
almost every item in opposer’s extensive line of products
sold under all three claimed marks includes a plastic cover
for a food storage container.
The application is unrestricted as to potential
channels of trade. In response to opposer’s
interrogatories, applicant confirmed his intentions to sell
through the same channels of trade -- through commercial,
Opposition No. 95,572
6
wholesale and retail channels -- as those utilized for
decades by opposer.
Opposer points out that its lowest-priced storage
containers sell for several dollars (Kilcoyne Deposition at
Page 37-38). The cost of the product is a valid
consideration in analyzing likelihood of confusion because
consumers are likely to be less careful when purchasing
cheaper items. Purchasers will often treat these as casual
or impulse items and hence will not scrutinize closely the
product or its source. See Life Industries Corp. v. Star
Brite Distributing Inc., 31 F.3d. 42, 31 USPQ2d 1536 (2nd
Cir. 1994) [The inexpensive nature of boat caulking
cartridges (costing around $6.00 apiece) favors likelihood
of confusion].
There is nothing in the record to suggest any third-
party usage or registration of similar marks on similar
goods. Mr. Kilcoyne testified that to his knowledge no one
else in the industry uses the terms KEEPERS or KEEPER as
source indicators (Kilcoyne Deposition at Page 42).
On the spectrum of marks, we must conclude that
registrant’s marks are at the very least, suggestive.4 On

4 While this pro se applicant said in his answer to the
opposition that he considered his own mark KEEPERS to be
“descriptive” in relation to his products, this issue was not
raised by the Office during ex parte examination, nor did
applicant challenge opposer’s registration or common law claims,
and has not raised descriptiveness as an affirmative defense in
Opposition No. 95,572
7
the other hand, despite opposer’s long and seemingly
exclusive use on such a wide variety of goods, we have no
evidence, such as consumer recognition surveys, for example,
to find any of these three Rubbermaid marks to be well known
or famous when applied to plastic household containers, as
urged by opposer.
We have reviewed the similar, if not identical,
trademarks claimed by these parties. We have seen that the
goods would certainly be closely related, if not identical.
Hence, we agree with opposer that applicant’s use of KEEPERS
on his goods so resembles opposer’s marks used on opposer’s
goods as to be likely to cause confusion.
Decision: The opposition is sustained and registration
to applicant is refused.
R. L. Simms
C. E. Walters
D. E. Bucher

this proceeding. Hence, any descriptiveness issues are not
before the Board in this proceeding.
Opposition No. 95,572
8
Administrative Trademark
Judges, Trademark Trial and
Appeal Board