Signature Brands, Inc.v.Dallas Technologies Corp.

Trademark Trial and Appeal Board

Feb 24, 1998

No. 91096032 (T.T.A.B. Feb. 24, 1998)

THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB FEB. 24, 98
Paper No. 39
PTH
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
_____
Trademark Trial and Appeal Board
______
Signature Brands, Inc. substituted for
Health o Meter, Inc.
v.
Dallas Technologies Corporation
_____
Opposition No. 96,032
to application Serial No. 74/469,776
filed on December 16, 1993
_____
Mark Kusner of D. Peter Hochberg Co., L.P.A. for Signature
Brands, Inc. substituted for Health o Meter, Inc.
D. Bruce Gardiner of Gardiner Law Firm for Dallas
Technologies Corporation.
______
Before Seeherman, Hairston and Walters, Administrative
Trademark Judges.
Opinion by Hairston, Administrative Trademark Judge:
An application has been filed by Dallas Technologies
Corporation to register the mark MR. BEER for “beer
manufacturing kit, consisting of a large clear plastic
fermenting bottle, 6 P.E.T. plastic bottles with lids, 4
Opposition No. 96,032
2
pounds of malt extract, one packet of yeast, and
instructions.”1
Registration has been opposed by Signature Brands, Inc.
on the ground of likelihood of confusion between applicant’s
mark and opposer’s previously used and registered mark MR.
COFFEE for “coffee brewers and disposable coffee filters”2;
“decanters”3; “electric domestic warming plates”4; “coffee”5;
“cleaning compositions for coffee and/or tea brewing
apparatus”6; “kitchen appliances; namely, water filtering
units for producing potable water for domestic use, electric
juicers, electric mug and carafe warmers, and electric hand
held blenders”7; and “kitchen appliances; namely electric
cappuccino and espresso makers for domestic use; dessicating
units for producing dried foods; [and] electric potato
bakers.”8 Also, opposer, in an amended opposition alleges
that applicant has intended to deceive the public through
misuse of the federal registration symbol and statements in

1 Application Serial No. 74/469,776 filed December 16, 1993,
alleging a bona fide intention to use the mark in commerce. The
term “Beer” is disclaimed apart from the mark as shown.
2 Registration No. 1,018,778 issued August 26, 1975; renewed.
The term “Coffee” is disclaimed apart from the mark as shown.
3 Registration No. 1,089,737 issued April 18, 1978; Sections 8 &
15 affidavit filed. The term “Coffee” is disclaimed apart from
the mark as shown.
4 Registration No. 1,142,407 issued December 9, 1980; Sections 8
& 15 affidavit filed. The term “Coffee” is disclaimed apart from
the mark as shown.
5 Registration No. 1,343,074 issued June 18, 1985; Sections 8 &
15 affidavit filed. The term “Coffee” is disclaimed apart from
the mark as shown.
6 Registration No. 1,651,275 issued July 23, 1991.
7 Registration No. 1,875,877 issued January 24, 1995.
Opposition No. 96,032
3
advertising and product materials that MR. BEER is a
registered trademark. Applicant, in its answer, denied the
allegations with respect to likelihood of confusion. The
answer was deemed amended to deny that applicant had an
intent to deceive the public.
The record consists of the pleadings; the file of the
involved application; and trial testimony taken by both
parties (with related exhibits). Opposer submitted under
notices of reliance, inter alia, certified copies of its
pleaded registrations; applicant’s answers to several of
opposer’s interrogatories and requests for admissions;
status and information sheets issued by the PTO for certain
of the third-party registrations relied on by applicant
which show that such registrations have been canceled or
have expired; the file wrapper and contents of two abandoned
trademark applications for marks consisting of “MR.”; copies
of newspaper and magazine articles about opposer’s products;
and copies of advertisements of opposer’s and applicant’s
products. Applicant submitted under notice of reliance
copies of third-party registrations of marks consisting of
“MR.” and its responses to other of opposer’s
interrogatories and requests for admission.9

8 Registration No. 1,914,763 issued August 29, 1995.
9 Opposer objected to applicant’s submission of these responses
on the grounds that applicant may not rely on its own responses
and that the responses constitute hearsay. Applicant, however,
maintains that pursuant to Trademark Rule 2.120(j)(5) the
Opposition No. 96,032
4
Both parties filed briefs on the case, but no oral hearing
was requested.
The record indicates that opposer’s predecessor first
used the MR. COFFEE mark in 1970 on coffee. Opposer
currently markets under the MR. COFFEE mark coffee makers,
espresso/cappuccino makers, warming plates, thermal carafes,
coffee filters, ice tea makers, hot tea makers, bread
makers, food dehydrators and water filters. MR. COFFEE
products are sold nationwide in mass merchandisers,
department stores and through catalogs and television
marketing. Opposer distributes MR. COFFEE products to
department stores through a distributor named PHD Inc.
PHD Inc. has sold MR. COFFEE products to department stores
for approximately nineteen years.

responses should in fairness be considered so as to not make
misleading the responses which were offered by opposer in its
notice of reliance. The purpose of the fairness provision of
Rule 2.120(j)(5) is to allow an answering party to avoid an
unfair interpretation of responses relied on by the propounding
party which contain less than all of the relevant information.
The responses relied on by opposer concern when applicant first
used the registration symbol, who was responsible for the use,
and whether the registration symbol was currently in use. The
responses relied on by applicant concern when applicant became
aware that the use of the registration symbol was improper, what
action applicant took to cease use, and the identification of
documents pertaining to applicant’s use of the registration
symbol. We believe that, in fairness, applicant should be
allowed to rely on these responses which contain information
relevant to its alleged misuse of the registration symbol. Also,
opposer’s objection to the responses on hearsay grounds in not
well-taken.
Opposition No. 96,032
5
For the period 1990 through 1995 opposer’s sales of MR.
COFFEE products exceeded $800,000,000. In 1995 MR. COFFEE
coffee makers were the largest selling brand of automatic
drip coffee makers in the United States, comprising 31% of
all automatic drip coffee makers sold. For the same year,
opposer’s espresso/cappuccino maker was one of the top four
selling brands in the United States.
MR. COFFEE products are advertised to consumers through
television and magazine advertising. MR. COFFEE
advertisements have appeared in many well-known magazines
such as People, Better Homes & Gardens, and Food & Wine.
For the period 1990 through 1995, opposer spent over
$89,000,000 in advertising products with the MR. COFFEE
mark.10
In an effort to police its mark, opposer has opposed
registration of other applications for marks consisting of
“MR.” for kitchen appliances.
Although an intent to use application, the record shows
that applicant began sales of its beer manufacturing kit as
early as March 1995. Applicant advertises in magazines,
through direct mail pieces to retailers, and at trade shows.
Applicant’s beer making kits are sold in mass merchandisers

10 Applicant has objected to the information concerning opposer’s
sales and advertising as being hearsay. However, inasmuch as
opposer’s witness, John Lange, testified that the information was
compiled from records kept in the regular course of opposer’s
business, applicant’s objection is not well taken.
Opposition No. 96,032
6
and department stores. PHD, Inc. is also the distributor of
applicant’s beer making kits to department stores. The
record shows that the parties’ goods are sold in some of the
same stores and have been featured in some of the same store
advertisements.
Inasmuch as certified copies of opposer’s pleaded
registrations are of record, there is no issue with respect
to opposer’s priority. King Candy Co., Inc. v. Eunice
King’s Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108 (CCPA
1974).
We turn then to the issue of likelihood of confusion.
Opposer maintains that the respective goods of the
parties are closely related because they are housewares.
However, in determining whether two or more products are
closely related, it is not enough that the products may be
classified in the same category or that a term can be found
that describes the products. See In re Cotter and Company,
179 USPQ 828 (TTAB 1973) and In re The Barash Company, Inc.,
132 USPQ 548 (TTAB 1962). Rather, the circumstances
surrounding the marketing of the goods must be such that the
marks are likely to be encountered by the same persons under
conditions that could give rise to the mistaken belief that
they are in some way associated with the same source.
Monsanto Co. v. Enviro-Chem Corp., 199 USPQ 590 (TTAB 1978).
We recognize that opposer’s coffee and tea makers, other
Opposition No. 96,032
7
kitchen appliances and accessories and applicant’s beer
making kit are marketed through the same trade channels and
may be purchased by the same ultimate end users. However,
there are marked differences between opposer’s coffee and
tea makers, other kitchen appliances and accessories and
applicant’s beer making kit. The parties’ goods are very
different in nature and are used for distinct purposes.
Applicant’s product is a kit consisting of specialized
equipment and ingredients for making beer. Opposer’s goods,
on the other hand, are electrical devices and accessories
which are used to prepare food and coffee and tea. There is
no evidence that opposer sells any of the equipment or
ingredients contained in applicant’s kit. Nor is there
evidence that other manufacturers of kitchen appliances
market beer making kits as a spin-off from their products.
Moreover, the fact that both applicant’s kit and opposer’s
coffee and tea makers “brew” beverages does not establish a
relationship between these goods, such that consumers would
believe that the goods come from the same source simply
because they are sold under marks which begin with “MR.”
followed by a generic term.
Turning then to the marks, opposer contends that its
MR. COFFEE mark is famous and therefore entitled to a broad
scope of protection. Applicant concedes that the mark is
well known, but argues that the fame of the MR. COFFEE mark
Opposition No. 96,032
8
is limited to “coffee related appliances.” Applicant’s
point is borne out by opposer’s sales figures for the period
1990 through 1995. Opposer’s total sales of products under
the MR. COFFEE mark was approximately $800,000,000;
opposer’s coffee makers, filters and accessories accounted
for well over half of that amount. In view thereof, and in
the absence of other evidence (e.g., advertising
expenditures showing widespread exposure of the MR. COFFEE
mark in connection with opposer’s other products), it would
appear that the fame of opposer’s MR. COFFEE mark is indeed
limited to the field of coffee makers.
Further, we note that while opposer’s witness, Mr.
Lange, testified that opposer sells automatic hot tea makers
under the mark MRS. TEA, opposer did not plead use of this
mark or any other marks consisting of a title (i.e., MR. or
MRS.) followed by a generic or highly descriptive term in
the notice of opposition. Moreover, Mr. Lange testified
that MRS. TEA is generally followed with the designation “by
MR. COFFEE.” Thus, this is not a situation where opposer is
relying on a line of marks which follow the same pattern.
We find, therefore, that notwithstanding the fame of
opposer’s mark, in view of the differences between opposer’s
and applicant’s goods, confusion is unlikely. See e.g.
Burns Philip Food Inc. v. Modern Products Inc., 24 USPQ2d
1157 (TTAB 1992) [While fame of a mark is entitled to
Opposition No. 96,032
9
substantial weight in determining likelihood of confusion,
other factors may be more significant]; and Electronic Data
Systems Corp. v. EDSA Micro Corp., 23 USPQ2d 1460 (TTAB
1992) [Fame is not the only factor that must be considered
in likelihood of confusion analysis; otherwise owner of
famous mark would have a right in gross].
In reaching our decision, we have given little weight
to the third-party registrations submitted by applicant.
Many of the registrations have been canceled or have
expired. Also, there is no evidence of actual use, and in
the absence such evidence, the third-party registrations are
entitled to little weight on the question of likelihood of
confusion. See Plantronics Inc. v. Starcom Incorporated,
213 USPQ 699 (TTAB 1982).
We turn finally to the second issue, applicant’s
alleged misuse of the registration symbol and applicant’s
use of the statement that MR. BEER is a registered
trademark. As applicant points out, a statement such as
“registered trademark” is not an official or statutory
symbol of federal registration, and thus the use of this
statement is not a basis for denying registration.
According to applicant’s responses to opposer’s
interrogatories and requests for admissions, applicant did
use the registration symbol on labels and in at least one
advertisement. Applicant states that it gave its printer
Opposition No. 96,032
10
the go ahead to use the registration symbol after expiration
of the period for filing an opposition and prior to
notification of the instant opposition. Further, applicant
states that it notified its printer to change all labels and
advertisements after being advised by opposer that use of
the registration symbol was improper. Under the
circumstances, we cannot say that applicant’s use of the
registration symbol was intended to mislead or defraud
prospective purchasers. See Knorr-Nahrmittel
Aktiengesellschaft v. Havland International, Inc., 206 USPQ
827 (TTAB 1980).
Decision: The opposition is dismissed.
E. J. Seeherman
P. T. Hairston
C. E. Walters
Administrative Trademark
Judges, Trademark Trial and
Appeal Board