Selmer Co., Inc.

Trademark Trial and Appeal Board

May 20, 1998

No. 74652795 (T.T.A.B. May. 20, 1998)

Paper No. 12
GDH/gdh
THIS DISPOSITION IS NOT CITABLE AS PRECEDENT
OF THE TTAB MAY 20, 1998
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re The Selmer Company, Inc.
________
Serial No. 74/652,795
_______
Timothy D. Pecsenye of Blank, Rome, Comisky & McCauley for The
Selmer Company, Inc.
Janice J. McMorrow, Trademark Examining Attorney, Law Office 104
(Sidney I. Moskowitz, Managing Attorney).
_______
Before Cissel, Seeherman and Hohein, Administrative Trademark
Judges.
Opinion by Hohein, Administrative Trademark Judge:
The Selmer Company, Inc. has filed an application to
register the mark "BLACK BEAUTY" for "percussion instruments;
namely, snare drums".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

1 Ser. No. 74/652,795, filed on March 29, 1995, which alleges dates of
first use of 1923.
Ser. No. 74/652,795
2
mark "BLACK BEAUTY COWBELL," which is registered for "musical
instruments, namely, cowbells,"2 as to be likely to cause
confusion, mistake or deception.
Applicant has appealed. Briefs have been filed, but an
oral hearing was not requested. We reverse the refusal to
register.
Determinative of this appeal is the effect to be given
to a consent agreement entered into between applicant and the
owner of the cited registration. As the Examining Attorney notes
in her brief, it is clear that, except for the generic term
"COWBELL" in registrant’s mark, the respective marks are
identical and create the same commercial impression when used in
connection with such musical percussion instruments as cowbells
and snare drums. Moreover, the Examining Attorney has
demonstrated that cowbells and snare drums are closely related
goods by furnishing not only copies of five use-based third-party
registrations, but also copies of two use-based registrations
respectively owned by applicant and registrant.3 Such
registrations, in each instance, show that the owners thereof
have adopted and registered the same mark for both cowbells, on
the one hand, and drums or drum outfits, on the other hand.

2 Reg. No. 1,120,473, issued on June 19, 1979, which sets forth dates
of first use of January 1967.
3 Specifically, the record shows that applicant is the owner of a
registration for the mark "MATADOR" and design for "percussion musical
instruments, namely[,] drums ... [and] cowbells," while registrant is
the owner of a registration for the mark "LUDWIG" for "percussion
musical instruments and accessories--namely, drum outfits, ...
cowbells ...."
Ser. No. 74/652,795
3
While we note that the registrations are not evidence
that the different marks shown therein are in use or that the
public is familiar with them, it is nevertheless settled that
they 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.
Moreover, since neither the identification of goods in
applicant’s application nor that in the cited registration
contains any limitations as to the manners of distribution or
types of buyers for snare drums and cowbells, it must be presumed
that such musical percussion instruments move in all channels of
trade which would be normal therefor and that they would be
purchased by all potential buyers of those types of products.
See, e.g., In re Elbaum, 211 USPQ 639, 640 (TTAB 1981).
In view thereof, and inasmuch as a cowbell is a common
accessory for a drum set, which typically would include a snare
drum, it is clear that cowbells and snare drums are likely to be
sold in the same channels of trade to the same consumers and may
frequently be purchased together. Thus, in the absence of facts
which would be reflected, for example, in a sufficiently detailed
consent agreement and which establish that marketplace experience
has been to the contrary, it is plain that contemporaneous use of
essentially the same marks for such closely related percussion
musical instruments as snare drums and cowbells would be likely
Ser. No. 74/652,795
4
to cause confusion, mistake or deception as to the origin or
sponsorship of those products.
Applicant, in support of its position that confusion is
not likely, has submitted a consent agreement, entered into as of
March 21, 1996, in which applicant and registrant (respectively
referred to therein as "Selmer" and "LP") have provided, inter
alia, that:
WHEREAS, LP is the owner of the mark
BLACK BEAUTY COWBELL and U.S. Registration
No. 1,120,473, which registered on June 16,
1979 for "musical instruments - namely,
cowbells" (hereinafter referred to as the "LP
Mark"); and
WHEREAS, Selmer is the owner of the
common law trademark BLACK BEAUTY when used
in connection with snare drums (hereinafter
referred to as the "Selmer Mark") and has now
filed U.S. Trademark Application Serial No.
74/652,795 for BLACK BEAUTY for "percussion
instruments; namely, snare drums"; and
WHEREAS, the parties have not
experienced any confusion, wish to avoid any
likelihood of confusion, save costs and
expense, yet recognize the specific uses each
party has made of its own mark and resolve
any potential controversy.
NOW, THEREFORE, in order to carry out
the purpose and intent of this agreement and
in consideration of the agreements and
undertakings hereinafter set forth, the
parties agree as follows:
1. The parties agree that the above
recitals are true, correct, and are hereby
incorporated in this Agreement ....
2. LP agrees that Selmer shall
continue to use the Selmer Mark for snare
drums, and acknowledges that such use has not
lead [sic] to a single instance of actual
confusion or alleged confusion.
Ser. No. 74/652,795
5
3. Selmer agrees that LP shall
continue to use the LP Mark for musical
instruments - namely, cowbells, and
acknowledges that such use has not lead [sic]
to a single instance of confusion or alleged
confusion.
4. This agreement shall not preclude
either party from expanding its use of the
mark BLACK BEAUTY in other areas, provided
that LP does not use the Selmer Mark and
Selmer does not use the LP mark.
5. This agreement shall inure to the
benefits of and be binding upon the parties
and their respective licensees and assigns
and all other acting by, through or in
privity with them.
6. This Agreement shall not be
assignable by either party without the prior
written consent of the other party herein.
7. Both parties agree that this
Agreement may be submitted to the United
States Patent and Trademark Office ("PTO"),
if necessary. The parties further agree to
assist each other if additional documents or
instruments are required for submission to
the PTO in order to carry out the purpose and
intent of this Agreement.
....
11. This Agreement is the complete and
final expression of the parties regarding the
LP Mark and the Selmer Mark. There are no
other agreements, understandings,
representations, or warranties, oral or
written, between the parties regarding the
subject matter of this Agreement
The Examining Attorney, relying principally upon In re
Mastic Inc., 829 F.2d 1114, 4 USPQ2d 1292 (Fed. Cir. 1987) and In
re U.S. Shoe Corp., 8 USPQ2d 1938 (TTAB 1988), argues that the
agreement "is nothing more than a ’naked’ consent, entitled to
little weight in the likelihood of confusion analysis," "because
it fails to address those considerations which should be present
Ser. No. 74/652,795
6
in a well-reasoned consent, i.e., arrangements the parties have
undertaken to avoid confusion to the public and agreements to
cooperate in the future to eliminate or minimize future
confusion." Specifically, while acknowledging that substantial
weight should be given a more detailed agreement of the type
involved in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357,
177 USPQ 563 (CCPA 1973), the Examining Attorney maintains that
the consent agreement in this case "is not ’detailed’ in the
sense envisioned in DuPont" since it "speaks to the rights of the
parties, and is silent as to the likelihood of confusion to the
purchasing public." This case, the Examining Attorney insists,
is thus unlike the consent agreement presented in In re Four
Seasons Hotels Ltd., 987 F.2d 1565, 26 USPQ2d 1071 (Fed. Cir.
1993), which assertedly "had substantially more detail than the
Consent Agreement at issue here."
In particular, the Examining Attorney contends in this
regard that (footnote omitted):
Well reasoned consent agreements address
various consideration, including the reasons
the parties believe there is no likelihood of
confusion, i.e., differences in
goods/services, the marks, the channels of
trade and the consuming public. The
examining attorney asserts that the
applicant’s Consent Agreement does not refer
to these considerations because the marks at
issue are virtually identical and the goods
are highly related and travel in the same
channels of trade.
A true consent should include a specific
plan to avoid future confusion, such as
limitations on promotions and manner of
distribution, advertising and product
packaging, etc., as well as an agreement
Ser. No. 74/652,795
7
between the parties to take further action
needed to carry out the intentions of the
original consent agreement, namely, executing
additional agreements in the future as
needed. See, e.g., In re Donnay
International, Societe Anonyme[,] 31 USPQ2d
1953 (TTAB 1994). Instead, applicant’s
Consent Agreement states:
This agreement shall not
preclude either party from
expanding its use of the mark BLACK
BEAUTY in other areas, provided
that LP does not use the Selmer
Mark and Selmer does not use the LP
mark.
(emphasis added)
The examining attorney asserts that this
language leaves the applicant free to use the
mark BLACK BEAUTY on cowbells and the
registrant free to use the mark BLACK BEAUTY
COWBELLS [sic] on snare drums.
In the instant case, the Consent
Agreement cannot persuade because it merely
presents the lack of actual confusion in a
formal manner, and does nothing to obviate
the potential for future confusion. In
making decisions regarding likelihood of
confusion, the examining attorney and the ...
Board should defer to the greater knowledge
of actual market participants when it is
offered. In this case, the Consent Agreement
offers no such knowledge; it provides no
information or advice to assist the Board in
making a decision regarding likelihood of
confusion.
We are constrained to agree with applicant, however,
that in light of such background factual considerations as a
period of contemporaneous use of the respective marks for over 30
years, the differences in the goods, the fact that their retail
costs indicate that the products are not impulse items, and the
discrimination and care exercised in the purchase of musical
Ser. No. 74/652,795
8
percussion instruments,4 the consent agreement between applicant
and registrant is sufficient to support a finding that confusion
is not likely. As applicant persuasively points out, Mastic "is
readily distinguishable on its facts from this case" inasmuch as
(i) the application involved therein "was based solely on treaty
rights with Canada, and not on a preexisting use in United States
commerce," and thus the applicant therein had "no way of knowing
whether confusion had or would occur in the American marketplace
if it were allowed to register its mark"; (ii) the agreement in
such case "consented only to the registration of the mark, and
not to its use"; and (iii) the consent agreement therein "did not
evidence a ’bilateral agreement’ to restrict the parties[’] use
of the mark involved." Here, by contrast, applicant and
registrant, as applicant notes, have been using their respective
marks for over 30 years without any reported instances of actual

4 We recognize that, aside from the differences in the goods (which are
apparent from the very nature of such items), none of the above facts
is set forth either in the consent agreement or in an affidavit from
an officer or other employee of applicant having personal knowledge
thereof. Instead, such facts as there having been a 30-year period of
contemporaneous use of the respective marks and that one of
applicant’s snare drums "would cost at a minimum between $450-700" are
set forth in various statements offered by applicant’s counsel in
either applicant’s request for reconsideration and/or initial brief.
However, inasmuch as the Examining Attorney has raised no objections
to consideration of such facts and has apparently accepted them, we
consequently have treated such facts as being established. As stated
in In re National Distillers & Chemical Corp., 297 F.2d 941, 132 USPQ
271, 274-75 (CCPA 1962) (footnote omitted):
When counsel for applicant made allegations of fact in
signed responses to the Patent Office actions, he certified,
under ... the Trademark Rules of Practice, that "there is
good ground to support them". While such statements are not
"evidence" of the facts stated, it seems to us that ...
[w]here, as here, no objection was made to the statements of
counsel and the examiner acted upon them, ... such
statements have in legal effect become the equivalent of
competent evidence. ....
Ser. No. 74/652,795
9
confusion; their consent agreement "explicitly covers the use of
the marks by their respective holders"; and "the consent
agreement in this case specifically envisions that the parties
will not use the other’s mark for any reason whatsoever and that
they will cooperate so that ... [applicant’s] mark may be
registered."5
Moreover, unlike U.S. Shoe, in which the marks involved
had been in contemporaneous use for no more than a few years at
best, this case is closest to In re Palm Beach Inc., 225 USPQ
785, 787-88 (TTAB 1985), in which the Board, in finding that
confusion was not reasonably likely to result from use of the
mark "ADLER" and design for pants and the mark "ADLER" for
knitted socks, reasoned that:
As noted by the Examining Attorney, the
letters of consent in the present case do not
include any restrictions limiting applicant
and registrant to diverse markets, nor do
they contain any recitation of steps to be

5 We hasten to note, however, that we are not pleased by applicant’s
failure to include citations to the United States Patents Quarterly,
First and Second Series, in those instances where the precedent
applicant cites also appears in the Federal Reporter, Second Series.
Citation to the former should always be provided. We would be remiss,
moreover, if we did not express our displeasure with applicant’s
counsel’s overzealous advocacy in this matter. Specifically, we note
that in arguing that "the extent of potential confusion is de
minimis," counsel asserts in applicant’s initial brief that "[t]his
very issue was succinctly discussed by the Court of Customs and Patent
Appeals in the case of In re National Distillers & Chem. Corp., 297
F.2d at 949-50 (emphasis added), where the court reasoned that:"
(quotation omitted). The quoted language which immediately follows
(spanning pages 13 and 14 of applicant’s initial brief) is not,
however, from the opinion of "the court" in such case; rather, it
appears in the concurring opinion of Judge Rich, 132 USPQ at 278.
While apparently inadvertent, counsel’s reference to such language as
being from the majority opinion in National Distillers nevertheless
gives a distorted and misleading impression, particularly in view of
the fact that that case also provoked a dissenting opinion. Counsel
is advised, therefore, to exercise greater care and attention to
detail in the future.
Ser. No. 74/652,795
10
taken by applicant and registrant to preclude
conflict. Nevertheless, considering the
letters of consent and the affidavit of Mr.
Milton Adler, President and founder of
applicant’s subsidiary Adler Pants Co., in
light of the other facts and circumstances in
this case, we are convinced that there is no
reasonable likelihood of confusion. In this
regard, we note that while the respective
marks of applicant and registrant are
substantially similar, and their goods are
closely related (facts which, taken alone,
serve as an indication that confusion may be
likely), still, pants and knitted socks are
specifically different items of clothing
which are normally displayed in different
sections of the stores in which they are
sold. Added to the specific differences in
the goods are certain other, very persuasive,
evidentiary factors, namely, the more than
forty-five years of contemporaneous use of
the respective marks of the parties without
any known instances of confusion, the belief
of applicant and two successive owners of the
cited registration that there is no
likelihood of confusion by reason of the
continued use of the marks, and the
willingness of both of the successive owners
of the cited registration to consent to
applicant’s use and registration of its mark
"ADLER" and design for pants.
Having considered the entire record, we
can only conclude that there is no real
likelihood of confusion. The fact that the
parties have used their marks
contemporaneously for more than forty-five
years without any known instances of
confusion is strong evidence that confusion
is not likely to occur as a result of
continued use of the marks in the future.
Cf. In re American Management Associations,
supra. Certainly, it gives credence to the
belief of the parties themselves that there
is no likelihood of confusion.
Similarly, while the consent agreement in this case is
hardly a model of detail,6 it nevertheless is plainly more than a

6 Clearly, had applicant and registrant chosen to elaborate upon such
facts as the nature of the channels of trade for their respective
Ser. No. 74/652,795
11
mere "naked" consent. Although sketchy in places, the agreement
recites each party’s ownership of their marks for their
respective goods; sets forth the critical facts that the parties
have not experienced a single instance of actual confusion
resulting from the use of such marks, desire to avoid any
likelihood of confusion and wish to resolve any potential
controversy; and provides for the parties to assist each other if
any further documents or instruments are necessary for submission
to the Patent and Trademark Office in order to carry out the
intent and purpose of the agreement, which obviously encompasses
the securing of a registration by applicant for its "BALCK
BEAUTY" mark for snare drums.7 Furthermore, the lack of any
explicit arrangements to avoid a likelihood of confusion in the
future is perhaps understandable, given the absence to date of
any incidents of actual confusion, and the agreement plainly
contemplates that each party will continue with the marketing
methods and distribution channels they have been using to sell
their cowbells and snare drums under their respective marks.

products, the circumstances under which their goods have and continue
to be sold, the reasons why they believe there have been no known
instances of actual confusion over a 30-year period and what specific
steps they would take if an incident of actual confusion should arise,
the agreement itself would be more persuasive and the prospects for
avoiding the delay inherent in an appeal of a refusal to register
would have been substantially enhanced.
7 Although, as the Examining Attorney accurately observes, the
agreement does permit the parties to expand "use of the mark BLACK
BEAUTY in other areas," we think it is highly doubtful, due to the
presence of the generic term "COWBELL" therein, that registrant would
apply its "BLACK BEAUTY COWBELL" mark to snare drums, nor would
applicant be motivated to expand the use of its "BLACK BEAUTY" mark to
cowbells, given the inherent likelihood of confusion which would
result therefrom. We simply do not read the consent agreement as
sanctioning use of marks which the parties know or should know would
result in a likelihood of confusion, given the provisions that each
Ser. No. 74/652,795
12
Finally, it is clear that the parties are aware of the
underlying factual circumstances under which applicant’s "BLACK
BEAUTY" snare drums and registrant’s "BLACK BEAUTY COWBELL"
cowbells have been sold for over 30 years. These circumstances,
as applicant points out in its brief, include a specialized
retailing environment (musical instrument stores rather than
department stores or other mass merchandisers) in which
individualized attention is paid by store clerks to careful and
discriminating consumers seeking to buy relatively expensive
musical percussion instruments. The consent agreement, when read
in light of this factual background, is sufficiently detailed to
be decisive. As set forth in du Pont, supra at 568:
The weight to be given more detailed
agreements of the type presented here should
be substantial. It can be safely taken as
fundamental that reputable businessmen-users
of valuable trademarks have no interest in
causing public confusion. ....
Thus when those most familiar with use
in the marketplace and most interested in
precluding confusion enter agreements
designed to avoid it, the scales of evidence
are clearly tilted. It is at least difficult
to maintain a subjective view that confusion
will occur when those directly concerned say
it won’t. A mere assumption that confusion
is likely will rarely prevail against
uncontroverted evidence from those on the
firing line that it is not.
Accordingly, in light of the fact that applicant and
registrant have not encountered any incidents of actual confusion
in over 30 years of conjoint use of essentially identical marks
for closely related musical percussion instruments, their

party is permitted to continue its existing use, but is prohibited
Ser. No. 74/652,795
13
marketplace experience minimizes any doubt and is compelling
evidence that confusion as to source or sponsorship is not likely
to occur.
Decision: The refusal under Section 2(d) is reversed.
R. F. Cissel
E. J. Seeherman
G. D. Hohein
Administrative Trademark Judges,
Trademark Trial and Appeal Board

from using the other’s mark.