Tea Forte, Inc.v.Dr. Dunner AG

Trademark Trial and Appeal Board

Sep 30, 2012

No. 91179751 (T.T.A.B. Sep. 30, 2012)

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Mailed: September 30, 2012

UNITED STATES PATENT AND TRADEMARK OFFICE
Trademark Trial and Appeal Board
_______

Tea Forté, Inc.

v.

Dr. Dünner AG
_______

Opposition No. 91179751
to Application No. 77036208
filed November 3, 2006
_______

Douglas R. Wolf, Wolf Greenfield & Sacks PC, for opposer.

Gary M. Nath, The Nath Law Group, for applicant.

Before Rogers, Chief Administrative Trademark Judge,
Mermelstein and Greenbaum, Administrative Trademark Judges.

Opinion by Mermelstein, Administrative Trademark Judge:

Applicant Dr. Dünner AG filed an application seeking
registration of the following mark:

for “bags for packaging made of paper or plastic materials,
not included in other classes,” in International Class 16.
The mark is described in the application as follows:
Opposition No. 91179751

2
The mark consists of a three dimensional
configuration of a cardboard packaging for
holding teabags filled with tea, and consists of
a tetrahedron with a string protruding from one
apex and holding a cloudlike label at its end.

Applicant has disclaimed the exclusive right to use “the
label and the string connecting the tea bag[1] and label”
apart from the mark as shown.”2
Tea Forté, Inc. opposes registration based on its
prior use and registration of several marks, and alleges
that the applied-for mark is so similar to opposer’s marks
as to be likely to cause confusion when used on the
identified goods. Trademark Act § 2(d).3 By its answer,
applicant denied the salient allegations of the notice of
opposition.4
We dismiss the opposition.

1 “Tea bag” and “teabag” appear to be used interchangeably. In
this context, we see no difference in their meaning.
2 Based on the allegation of a bona fide intent to use the mark
in commerce under Trademark Act § 1(b). Applicant claims
priority pursuant to Trademark Act § 44(d), based on Swiss
Application No. 54516/2006 filed May 19, 2006.
3 Opposer also alleged that registration of applicant’s mark
would falsely suggest a connection with opposer and that
applicant’s mark is likely to cause dilution. These claims were
neither tried nor briefed, and we consider them waived.
4 Applicant also set out a number of so-called “affirmative
defenses” which, for the most part are merely denials of
opposer’s claims. In any event, applicant introduced no evidence
or argument in support of these allegations.
Opposition No. 91179751

3
I. Description of the Record/Evidentiary Issues
The record comprises the pleadings and the file of the
opposed application. Trademark Rule 2.122(b). In
addition, opposer filed a notice of reliance during its
assigned testimony period. Opposer did not file any
testimony.
Applicant did not file testimony or any other evidence
during its assigned testimony period, nor did applicant
file a brief on the merits of the opposition.
Opposer’s notice of reliance raises a number of issues
that require our consideration. Despite applicant’s having
not filed evidence or a brief, we may not consider evidence
which was “not obtained and filed in compliance with” the
relevant rules. Trademark Rule 2.123(l). Accordingly, we
review the evidence opposer proffered under its notice of
reliance and with its brief:
A. Registrations and Applications
In its notice of opposition, opposer claimed ownership
of six pending trademark applications and use of the
applied-for marks. By the time of trial, registrations had
been granted on two of opposer’s applications, and the rest
remained pending as applications. Opposer did not amend
its notice of opposition to claim ownership of the newly-
issued registrations and a likelihood of confusion based
Opposition No. 91179751

4
upon them. However, when an application has been clearly
identified in the notice of opposition and use of the
applied-for mark is asserted as a bar to registration, we
will construe the notice of opposition to allege a
likelihood of confusion in view of a subsequently-issued
registration based on the pleaded application if the
registration issues prior to the close of the opposer’s
trial period. See UMG Recordings Inc. v. O'Rourke, 92
USPQ2d 1042, 1045 n.12 (TTAB 2009) (citing Standard
Knitting Ltd. v. Toyota Jidosha Kabushiki Kaisha, 77 USPQ2d
1917, 1919-20 (TTAB 2006)). We therefore deem the notice
of opposition amended to allege a likelihood of confusion
in view of opposer’s two registrations.
With its notice of reliance, opposer submitted records
from the USPTO’s online database of its two registrations
and four applications, indicating their registered or
pending status and opposer’s ownership of each of them:
Mark Description Goods SN/RN
Filing
Date
Issue
Date

The mark consists of the distinctive trade
dress for a tea bag product comprising a
three-dimensional triangle-shaped tea bag, a
string in the shape of a tea leaf vine, and a
tea leaf on the end of the string.
Tea infusers not of precious
metal — IC 21
3334940 6/5/06 11/13/07

The mark consists of the distinctive trade
dress of the packaging for a product
comprising a three-dimensional pyramidal-
shaped package with a flat base and an
opening at the top through which extends a
string, which retains its shape when bent, and
a leaf on the end of the string.
Tea infusers; Tea infusers not
of precious metal — IC 21
3772093 8/1/07 4/6/10
Opposition No. 91179751

5
Mark Description Goods SN/RN
Filing
Date
Issue
Date

The mark consists of the configuration of the
product comprising a three-dimensional
pyramidal-shaped infuser that stands upright
on a flat base, a stem that is able to retain its
shape which extends through the top of the
infuser, and a leaf icon supported at the end
of the stem.
Tea canisters; Tea infusers;
Tea infusers not of precious
metal; Tea sets — IC 21
77275747 9/10/07

The mark consists of the configuration of the
product comprising a three-dimensional
pyramidal-shaped infuser that stands upright
on a flat base, a stem that is able to retain its
shape which extends through the top of the
infuser, and a leaf icon supported at the end
of the stem.
Honey; Tea; Tea bags; Tea for
infusions; Herb tea; Herbal
tea; Iced tea; Tisanes;
Chocolate; Hot chocolate;
Flavorings for beverages;
Herbal food beverages;
Herbal infusions; Bonbons —
IC 30
77275750 9/10/07

The mark consists of the configuration of the
product packaging comprising a three-
dimensional pyramidal-shaped product
packaging that stands upright on a flat base, a
stem that is able to retain its shape which
extends through the top of the product
packaging, and a leaf icon supported at the
end of the stem.
Tea; Tea bags; Tea for
infusions — IC 30
77289491 9/26/07

The mark consists of the configuration of the
product packaging comprising a three-
dimensional pyramidal-shaped product
packaging that stands upright on a flat base, a
stem that is able to retain its shape which
extends through the top of the product
packaging, and a leaf icon supported at the
end of the stem.
Honey; Tea; Tea bags; Tea for
infusions; Herb tea; Herbal
tea; Iced tea; Tisanes;
Chocolate; Hot chocolate;
Flavorings for beverages;
Herbal food beverages;
Herbal infusions; Bonbons —
IC 30
77275754 9/10/07

1. Opposer’s Registrations
In view of opposer’s submission, opposer’s
Registration Nos. 3334940 (‘940 Registration) and 3772093
(‘093 Registration) are of record. Trademark Rule
2.122(d)(2). However, we emphasize that the submission of
status and title copies of registrations (or their
equivalent) under Rule 2.122(d)(2) only makes the
registration itself of record. The contents of the
Opposition No. 91179751

6
prosecution file5 of a registration is not automatically
made of record when a party offers the registration in
evidence under Trademark Rule 2.122(d)(2); a plaintiff
wishing to introduce such material in evidence must proffer
it, either under a notice of reliance or by identifying and
submitting it as an exhibit to testimony, as may be
appropriate. Opposer did not do so in this case.
In this regard, we note that opposer cites in its
brief items such as the affidavit of Thomas Ginivisian, who
is alleged to be opposer’s CFO, and results from a public
relations report commissioned by opposer, both papers
apparently from the file of one of the applications or
registrations submitted by opposer under Trademark Rule

5 The file of the registration includes the application itself
(with amendments), the registration certificate (or a facsimile
of it), post-registration filings such as affidavits of
continuing use and incontestability, and applications for
renewal. The file also contains any correspondence between the
USPTO and the registrant regarding the application or subsequent
registration, such as Office actions setting out refusals and
requirements and any argument or evidence submitted by applicant
in response to them.
By contrast, the registration which is made of record pursuant
to Trademark Rule 2.122(d)(2) by submitting a status and title
copy of it (or the equivalent from the Office’s online database)
is not the file of the application/registration but only the
registration itself — i.e., what is on the certificate of
registration issued by the USPTO. For the most part, this
consists of the mark (and a description or translation of it, if
any), the registration number and date, the registrant’s name and
address, the goods or services for which registration has been
granted, the application number and filing date, claimed dates of
use, any disclaimer or Trademark Act § 2(f) claim, and
information relating to registrability under Trademark Act § 44
(Paris Convention) or § 66 (Madrid Protocol), if relevant.
Opposition No. 91179751

7
2.122(d)(2). Copies of these and other papers were
purportedly attached to opposer’s brief (more on that topic
below).
Although opposer cites this material as evidence in its
brief, none of it has been properly submitted into
evidence. Trademark Rule 2.122(d)(2) does not provide for
the submission of anything other than the registration
itself, and the material in question was not submitted
under a timely notice of reliance, nor was it identified
and submitted as an exhibit to the testimony of any
witness.
Opposer relies on the Federal Circuit’s opinion in
Cold War Museum, Inc. v. Cold War Air Museum, Inc., 92
USPQ2d 1626 (Fed. Cir. 2009), in maintaining that the files
of its registrations and applications are of record in this
proceeding. App. Br. at 8, n.1 (also citing TRADEMARK TRIAL
AND APPEAL BOARD MANUAL OF PROCEDURE (“TBMP”) § 704.03(a) (3d ed.
rev. 2012)). Opposer misreads Cold War Museum, the TBMP,
and Trademark Rule 2.122(b)(1), the rule upon which both
are based. The rule provides in relevant part that
[t]he file ... of the application against which a
notice of opposition is filed, or of each
registration against which a petition or
counterclaim for cancellation is filed forms part
of the record of the proceeding without any
action by the parties and reference may be made
Opposition No. 91179751

8
to the file for any relevant and competent
purpose.

Trademark Rule 2.122(b)(1) (emphasis added). The rule
makes clear that it applies only to a defendant’s
application or registration, or as relevant here, the
application in an opposition “against which a notice of
opposition is filed.” Id. (emphasis added).
Likewise, Cold War Museum is of no help to opposer.
In that case — an appeal from a Board cancellation
proceeding — the Court of Appeals stated that the issue was
“governed by” Trademark Rule 2.122(b), and quoted that
rule, before going on to say that “[t]he entire
registration file — including any evidence submitted by the
applicant during prosecution — is part of the record in a
cancellation....” Cold War Museum, 92 USPQ2d at 1628. It
is quite clear from the context that the Court’s reference
to “[t]he entire registration file” is the same
registration referred to in the rule quoted immediately
prior, i.e., the “registration ... against which a petition
... for cancellation is filed,” i.e., the defendant’s
registration in the cancellation proceeding.
Because a notice of opposition has been filed against
Dr. Dünner’s application, the file of that application is
of record pursuant to Trademark Rule 2.122(b)(1). But
Opposition No. 91179751

9
opposer’s applications have not been opposed, nor has
applicant filed a counterclaim to cancel opposer’s
registrations, so neither Trademark Rule 2.122(b)(1) nor
the Cold War Museum decision provide a basis for
consideration of the prosecution files of opposer’s
registrations or applications as part of the record.6 Thus,
while opposer’s registrations are of record pursuant to
Trademark Rule 2.122(d)(2), the contents of the prosecution
files pertaining to them are not.
2. Opposer’s Applications
In addition to its two registrations, opposer
submitted records of its four pending applications from the
USPTO’s TARR database. These records were purportedly
offered under Trademark Rule 2.122(d)(2), Not. of Rel. at

6 And even if opposer’s applications and registrations were part
of the record, there are a variety of reasons why the cited
materials are unlikely to be “competent” evidence as opposer
seeks to use them. See Trademark Rule 2.122(b)(1) (“reference
may be made to the file for any relevant and competent purpose”).
While parties may stipulate to the submission of evidence by
affidavit, absent such a stipulation, testimony may be taken only
“by depositions upon oral examination,” as set out in detail in
Trademark Rule 2.123.
Therefore, Mr. Ginivisian’s affidavit would appear to be
improper testimony, id., as well as inadmissible hearsay. Fed.
R. Evid. 801(c). Likewise, the public relations report
commissioned by opposer might have been admissible as a survey
but without the testimony of the person who conducted it, it too
is hearsay, and lacks a foundation establishing that it was
conducted and analyzed by a qualified expert according to
accepted methodology. See Fed. R. Evid. 702. Having offered no
testimony during its trial period, opposer’s attempted submission
of these and other papers with its brief is too little and too
late.
Opposition No. 91179751

10
1, although, as discussed above, the cited rule provides
for the submission of registrations, not applications.
Trademark Rule 2.122(d)(2). Nonetheless, applications are
official records of the USPTO, and as such may be submitted
under a notice of reliance pursuant to Trademark Rule
2.122(e).
We hasten to add, however, that while opposer’s
pending applications have been made of record, they have
very little probative value, as applications are proof of
nothing more than the fact that they were filed. Edom
Labs. Inc. v. Lichter, 102 USPQ2d 1546, 1550 (TTAB 2012);
In re Binion, 93 USPQ2d 1531, 1535 n.3 (TTAB 2009). An
application is entitled to none of the presumptions
afforded an issued registration under Trademark Act § 7(b).
And as was the case with opposer’s registrations, we
consider opposer’s notice of reliance to cover only what is
shown on the face of the USPTO records opposer submitted;
the files of the applications were not proffered, and are
not of record. As a result, the TARR records of opposer’s
applications are of record, but are proof of nothing more
than that opposer filed such applications.
B. Applicant’s Admissions
Opposer proffered applicant’s responses to opposer’s
requests for admission. To the extent that opposer’s
Opposition No. 91179751

11
requests were admitted, applicant’s responses are
admissible under Trademark Rule 2.120(j)(3)(i).
C. Printed Publications
Opposer proffered excerpts from a number of printed
publications “pursuant to [Trademark] Rule 2.122(d)(2)”
[sic] to “establish Opposer’s prior use of Opposer's
Pyramidal Trade Dress Marks and Opposer's notoriety
associated with Opposer's Pyramidal Trade Dress Marks.”
Not. of Rel. at 3.
Printed publications are admissible, pursuant to
Trademark Rule 2.122(e), under a notice of reliance “if the
publication ... is competent evidence and relevant to an
issue.” Id. It is well-settled that printed publications
submitted under Trademark Rule 2.122(e) are generally
admissible only for what they show “on their face.” Boyds
Collection Ltd. v. Herrington & Co., 65 USPQ2d 2017, 2020
n.8 (TTAB 2003). Printed publications can be offered, for
example, to show when and how a party used a mark in
advertising its goods or services, that branded goods
received certain publicity, or that an alleged family of
marks was advertised together. But printed publications
such as the articles and advertisements submitted by
opposer are not competent evidence of the truth of any
matters stated in them because the printed publication
Opposition No. 91179751

12
would be hearsay if offered for that purpose. Life Zone
Inc. v. Middleman Group Inc., 87 USPQ2d 1953, 1956 n.5
(TTAB 2008) (“a printed publication is only admissible for
what it shows on its face; unless it falls within an
exception to the hearsay rule it will not be considered to
prove the truth of any matter stated in the publication”
(citing 7-Eleven Inc. v. Wechsler, 83 USPQ2d 1715, 1717 n.2
(TTAB 2007))); Syngenta Crop Protection Inc. v. Bio-Chek
LLC, 90 USPQ2d 1112 (TTAB 2009); Fed. R. Evid. 801(c).
Accordingly, opposer’s printed publications are
admissible to show, inter alia, that the public has been
exposed to what is in them and that opposer and its goods
have received some publicity. See e.g., Opp. Br. at 6
(“[o]pposer was featured in an article entitled ‘Elegance
is in the Bag’”). However, the printed publications are
not admissible to prove matters such as opposer’s use of
the mark on the identified goods in commerce, or the
opposer’s growth, revenue, and sales. In this regard, we
note that opposer relies on magazine articles quoting Peter
Hewitt — apparently opposer’s founder — regarding opposer’s
business and its success. See e.g., Opp. Br. at 6, 14.
These statements are inadmissible hearsay. Fed. R. Evid.
802. If opposer wished to offer the statement of Mr.
Hewett or anyone else on such matters, it was required to
Opposition No. 91179751

13
present that evidence by testimony pursuant to Trademark
Rule 2.123. We cannot consider magazine articles where
testimony was required. Trademark Rule 2.123(l). We
therefore disregard arguments in opposer’s brief based on
the contents of these publications.
D. Design Patent
Pursuant to Trademark Rule 2.122(e), opposer submitted
a copy of its Design Patent No. D613114S with its notice of
reliance. The patent is admissible under the cited rule as
a public record. We note, however, that opposer’s notice
of reliance refers to the “File History” of this patent.
Not. of Rel. at 5. To the extent that opposer intended to
submit the entire prosecution file for this patent as
evidence, opposer has not done so. Only the patent itself
has been proffered, see Not. of Rel. Attachment 33, and
that is all that we consider to be of record.
E. Attachments to Opposer’s Brief
Attached to opposer’s brief were 237 pages of
exhibits. We have not reviewed this material, as it was
not properly submitted and is not part of the record. As
we have noted in the past, it is usually pointless to
attach evidence to a brief: If the evidence was not
previously submitted, it is untimely; if the evidence was
previously submitted it is unnecessary and duplicative. In
Opposition No. 91179751

14
either case, it should not be attached to a brief. Life
Zone Inc., 87 USPQ2d at 1955 (“Exhibits or attachments to
briefs are of little or no use in a Board proceeding.”).
We have disregarded this material in reaching our decision.
II. Standing
To establish standing to oppose registration of
applicant’s mark, opposer must prove that it has a real
interest in the outcome of this proceeding and a reasonable
basis for its belief that it would be damaged by issuance
of a registration of the mark to applicant. See Ritchie v.
Simpson, 170 F.3d 1092, 50 USPQ2d 1023 (Fed. Cir. 1999);
Lipton Indus., Inc. v. Ralston Purina Co., 670 F.2d 1024,
213 USPQ 185 (CCPA 1982); Time Warner Entm’t Co. v. Jones,
65 USPQ2d 1650 (TTAB 2002).
Opposer’s submission of its trademark registrations
for its own pyramidal tea infusers adequately establishes
opposer’s interest in this proceeding and a reasonable
basis for its belief that damage would result from
registration.
III. Priority
A. Opposer’s Registrations
Opposer has established its ownership of two valid and
subsisting trademark registrations. As a result, with
respect to the marks in those registrations and the goods
Opposition No. 91179751

15
respectively identified in them, priority is not an issue.7
King Candy Co. v. Eunice King’s Kitchen, Inc., 496 F.2d
1400, 182 USPQ 108, 110 (CCPA 1974).
B. Allegation of Prior Use
As noted earlier, the notice of opposition alleges use
of opposer’s marks in connection with “tea infusers, tea,
and tea packaging since at least as early as October 31,
2003,” Not. of Opp. ¶ 6, and opposer makes extensive
references in its brief to its prior use of the marks on
various goods. E.g., Opp. Br. at 1 (“Opposer has ...
extensively used virtually identical pyramidal shaped
designs in connection with tea and related packaging.”).
Nonetheless, the evidence of record does not support
opposer’s claim of use, let alone use as early as 2003.

7 As noted above, the subject application claims priority
pursuant to Trademark Act § 44(d) based on a Swiss application
filed May 19, 2006. Opposer may rely on the filing date of its
now-registered applications for priority. See Trademark Act
§ 7(c). Opposer’s applications were filed on June 5, 2006 (‘940
Reg.), and August 1, 2007 (‘093 Reg.). However, both of those
dates are subsequent to applicant’s foreign priority date.
Thus on this record, applicant would likely prevail on priority
if priority were an issue. But as King Candy and its progeny
make clear, when the opposer proves ownership of an unchallenged
registration, priority is irrelevant. Unless applicant seeks to
cancel opposer’s registrations by way of a counterclaim, opposer
need not prove its prior use — or indeed, any use at all — with
respect to the marks and goods in opposer’s registrations.
Opposition No. 91179751

16
Opposer’s claim of use since 2003 is apparently based
on the dates of first use and use in commerce recited in
its registrations, but such reliance is mistaken:
The allegation in an application for
registration, or in a registration, of a date of
use is not evidence on behalf of the applicant or
registrant; a date of use of a mark must be
established by competent evidence. Specimens in
the file of an application for registration, or
in the file of a registration, are not evidence
on behalf of the applicant or registrant unless
identified and introduced in evidence as exhibits
during the period for the taking of testimony.

Trademark Rule 2.122(b)(2).
To the extent opposer alleges rights based on use, as
opposed to its registrations, opposer was obliged to prove
its use and that such use was prior to applicant’s priority
date, i.e., prior to May 19, 2006. See Sanyo Watch Co.,
Inc. v. Sanyo Elec. Co., Ltd., 691 F.2d 1019, 215 USPQ 833,
834 (Fed. Cir. 1982) (opposer “bears the burden of proof
which encompasses not only the ultimate burden of
persuasion, but also the obligation of going forward with
sufficient proof of the material allegations of the Notice
of Opposition, which, if not countered, negates appellee's
right to a registration”). Trademark Rule 2.122(b)(2)
makes clear that neither the dates of use nor the specimens
in an application or registration are evidence of use or
priority. Such facts must be “established by competent
Opposition No. 91179751

17
evidence,” id., which usually means testimony by a witness
with firsthand knowledge of opposer’s actual use of the
mark in commerce prior to applicant’s priority date, often
supported by business records for which a proper foundation
has been laid in testimony. But in this case, opposer
offered no testimony, and we are able to find no other
support for opposer’s use or priority in this record.8
(Again, opposer’s printed publications are admissible only
to demonstrate that such material was distributed to the
public, but not to prove the truth of any matter therein,
such as opposer’s actual use of the marks on the identified
goods.)
Inasmuch as opposer has proven neither use nor
priority with respect to any unregistered trademarks
(including the marks and respective goods set out in its
pending applications), it cannot establish a claim under
Trademark Act § 2(d) with respect to them. Trademark Act
§ 2(d). We therefore consider the merits of the opposition
only with respect to the marks in opposer’s ‘940 and ‘093

8 Opposer states that “[u]se and registration of Opposer's
Registrations has never been challenged, including by Applicant.”
Opp. Br. at 5. To the extent that opposer refers here to rights
arising from use (as opposed to registration) of its mark, it is
opposer who bears the burden of proving its prior use in commerce
on the relevant goods. Applicant has no burden to challenge
opposer’s prior use of unregistered marks until opposer
establishes those facts in the first instance.
Opposition No. 91179751

18
Registrations and the goods respectively identified in
them.
IV. Likelihood of Confusion
Our determination under Trademark Act § 2(d) is based
on an analysis of the probative facts in evidence that are
relevant to the factors bearing on the issue of likelihood
of confusion. See In re E.I. du Pont de Nemours & Co., 476
F.2d 1357, 177 USPQ 563, 567 (CCPA 1973); Palm Bay Imp.,
Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396
F.3d 1369, 73 USPQ2d 1689 (Fed. Cir. 2005); In re Majestic
Distilling Co., Inc., 315 F.3d 1311, 65 USPQ2d 1201 (Fed.
Cir. 2003); In re Dixie Rests. Inc., 105 F.3d 1405, 41
USPQ2d 1531 (Fed. Cir. 1997). In considering the evidence
of record on these factors, we keep in mind that “[t]he
fundamental inquiry mandated by Section 2(d) goes to the
cumulative effect of differences in the essential
characteristics of the goods and differences in the marks.”
Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d
1098, 192 USPQ 24, 29 (CCPA 1976); see In re Azteca Rest.
Enters., Inc., 50 USPQ2d 1209 (TTAB 1999).
A. The similarity or dissimilarity of the marks in
their entireties

In a likelihood of confusion analysis, we compare the
marks for similarities and dissimilarities in appearance,
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claimer
label and the
ing connecting
tea bag and
el
llows:
istration No.
4940
2093

Opposition No. 91179751

20

1. Drawings
The similarities between the drawings of applicant’s
mark and opposer’s9 are obvious. All three marks are
pyramidal configurations with a string emerging from the
apex, and having an attachment on the free end of the
string.
The marks also differ in some respects: applicant’s
mark is described as a tetrahedron, while opposer’s mark is
a square pyramid.10 Moreover, applicant’s mark appears to
be approximately a regular tetrahedron, i.e., one in which
each face, including the base, is an equilateral triangle
(and thus the same size), while opposer’s square pyramid
has a considerably greater height than width, giving it a
taller, more elongated appearance. Finally, the string on
applicant’s pyramid ends in a “cloudlike label,” while

9 The drawings of the marks in opposer’s two registrations are
virtually identical, except that the position of the string and
“leaf” differ slightly. The parties have ignored any difference
between the drawings in opposer’s registrations, and we likewise
consider them to be essentially identical for purposes of our
analysis.
10 A tetrahedron is “a solid figure having four plane faces.”
i.e., a pyramid with a triangular base. COLLINS ENGLISH DICTIONARY
(10th ed. unabridged 2009) (http://dictionary.reference.com/browse
/tetrahedron (visited July 23, 2012)). By contrast, a square
pyramid is “a three-dimensional geometric figure with a square
base and four triangular sides that connect at one point; a
pyramid with a square base.” DICTIONARY.COM’S 21ST CENTURY LEXICON.
(http://dictionary.reference.com/browse/square pyramid (visited
July 23, 2012)). We take judicial notice of these definitions.
Fed. R. Evid. 201(b); In re Red Bull GmbH, 78 USPQ2d 1375, 1377
(TTAB 2006).
Opposition No. 91179751

21
opposer’s strings end in what appears to be a leaf, and is
described in the ‘940 Registration as “a tea leaf.” But
despite being able to list several specific differences, we
think that these drawings are nonetheless quite similar,
even when viewed side-by-side — a more stringent comparison
than is usually made by consumers in the marketplace.
Puma-Sportschuhfabriken Rudolf Dassler KG v. Roller Derby
Skate Corp., 206 USPQ 255, 259 (TTAB 1980) (in actual
marketplace conditions consumers rarely have the advantage
of a side-by-side comparison, and must rely on their
imperfect recollection of a prior mark). Allowing for the
realities in the marketplace, the impressions formed by
these drawings would likely be quite similar.
2. Descriptions of the Marks
Our comparison of the marks does not end with the
drawings, because the record includes descriptions of all
of the involved marks, which must be considered in
determining their similarity and their likely impression on
the relevant consumer as they would be encountered. The
description of the mark is more than just an aid to
examination. When one is necessary, a description of the
mark is a formal requirement, and it becomes part of the
registration (if and when one is issued). The description
of the mark is essentially part of the mark itself.
Opposition No. 91179751

22
Trademark Rule 2.72, which governs amendments to the
description or the drawing of the mark, makes clear that
the description of the drawing may be amended “only if ...
[t]he proposed amendment does not materially alter the
mark,” as compared with the drawing and description
originally filed. Trademark Rule 2.72(a)(2), 2.72(b)(2),
2.72(c)(2).11
At the time both applicant’s and opposer’s
applications were examined, the relevant rule stated that
“[a] description of the mark may be included in the
application and must be included if required by the
trademark examining attorney.” Trademark Rule 2.37
(effective Nov. 2, 2003). But then, as now,12 the examining
attorney had no discretion with configuration or trade
dress marks: “If an acceptable statement describing the
mark is not in the record, the examining attorney must
require the applicant to submit a description to clarify
what the applicant seeks to register.” TMEP § 1202.02(d)
(5th ed. 2007) (emphasis in original). Further, if a

11 The cited sections cover applications based on use in commerce,
on a bona fide intent to use, and those based on Trademark Act
§ 44.
12 Trademark Rule 2.37 has since been amended to explicitly
require a description of the mark in any application in which
“the mark is not in standard characters.” 73 Fed. Reg. 13,780
(March 14, 2008) (effective for any application filed on or after
May 13, 2008).
Opposition No. 91179751

23
description of the mark is placed in the record, it must
“state[s] accurately what the mark comprises, and not
create a misleading impression by either positive statement
or omission of facts.” TMEP § 808.02 (5th ed. 2007).
Applicant describes its mark as follows:
The mark consists of a three dimensional
configuration of a cardboard packaging for
holding teabags filled with tea, and consists of
a tetrahedron with a string protruding from one
apex and holding a cloudlike label at its end.

From applicant’s drawing, considered in light of the
description of its mark, we conclude that applicant claims
as its trademark the configuration or shape of a cardboard
package or box for teabags. The box is in the shape of a
three-sided pyramid with a string affixed to its apex, and
to which a label is affixed. The string and label are part
of applicant’s mark, although applicant has disclaimed the
exclusive right to use such features.
The descriptions of the marks in opposer’s two
registrations differ. The ‘940 Registration indicates that
the depicted configuration is of a “three-dimensional
triangle-shaped tea bag,” with a string reminiscent of a
“tea leaf vine” ending with a tea leaf. The mark in
opposer’s ‘093 Registration is described pyramidal
“packaging for a product,” again, with a string emerging
from its apex, surmounted with a leaf. (The ‘093
Opposition No. 91179751

24
description does not say that the appendage is in the shape
of a tea vine and tea leaf, although it does not exclude
that possibility, either.)
3. Comparison of the Marks
As noted, the drawings of the marks are quite similar.
Both of opposer’s drawings and applicant’s depict a
pyramidal object with a string attached to or emerging from
its apex, terminating in a cloud-shaped label or a leaf
shape. Opposer describes the mark in the ‘940 Registration
as being the shape of a tea bag, while the mark in its ‘093
Registration is the shape of packaging for some product.
And similar to the ‘093 Registration, applicant’s mark is
described as “packaging for holding teabags.”
We find that the overall commercial impression of
applicant’s mark and the mark in opposer’s ‘093
Registration would likely be substantially similar. As
discussed, the drawings are similar, and the marks are both
described as used on packaging. The similarity of the mark
in opposer’s ‘940 Registration to applicant’s mark is less
certain. Again, the marks are undeniably in the same
general shape and otherwise similar, but it is less clear —
and there is no argument or evidence bearing on the
question — whether consumers would be likely to see the
shape of opposer’s teabag mark and the shape of applicant’s
Opposition No. 91179751

25
packaging mark as the same or similar trademarks.
Nonetheless, it seems likely to us that consumers would
view as similar the presumptively distinctive shape of a
package with the same shape used as a trademark on
something which might be packaged therein. The degree to
which customers are likely to see those marks as similar in
a trademark sense (i.e., similarity as an indication that
they share a common source) may depend on evidence which is
not in this record — such as how distinctive (unique) the
shape is — but we conclude that they are likely to consider
the marks at least somewhat similar.
The similarity of the marks thus favors a finding of
likelihood of confusion.
B. The Similarity or Dissimilarity and Nature of the
Goods and Trade Channels

Opposer asserts that its goods and those of applicant
are identical or nearly so, both being essentially teabags
or tea,13 and the ensuing presumption that the goods move in
the same channels of trade, id. at 11-12. As will be seen,
the record does not support opposer’s contention.

13 Opp. Br. at 4 (“Peter Hewitt, founder of Tea Forte, Inc., ...
first developed the pyramidal-shaped tea bag (also called an
‘infuser’) on September 7, 2000.”); id. at 10-11 (“There is no
dispute that the underlying goods for the [a]pplicant’s packaging
is tea and related products.” (under the heading “Applicant’s and
Opposer’s Goods are Identical”)).
Opposition No. 91179751

26
In determining applicant’s right to register in view
of opposer’s registrations, we are constrained to consider
the goods as they are set out in the respective application
and registrations, because those are the goods for which
applicant seeks registration, and the goods which define
the scope of opposer’s registrations.14 E.g., Octocom Sys.
Inc. v. Houston Computers Svcs. Inc., 918 F.2d 937, 16
USPQ2d 1783, 1787 (Fed. Cir. 1990) (“The authority is
legion that the question of registrability of an
applicant's mark must be decided on the basis of the
identification of goods set forth in the application
regardless of what the record may reveal as to the
particular nature of an applicant's goods....” (emphasis
added)); In re La Peregrina Ltd., 86 USPQ2d 1645, 1646
(TTAB 2008) (applicant may not restrict by extrinsic
evidence the goods set out in a prior registration (citing
In re Bercut-Vandervoort & Co., 229 USPQ 763, 764 (TTAB
1986))). Thus, when we consider the likelihood of
confusion between an applied-for mark and registrations,
the relevant goods for comparison are those identified in

14 Had opposer properly submitted evidence establishing its prior
use of the marks, we would also consider any goods in connection
with which opposer proved such use. But because opposer has not
submitted any competent evidence of use, we are limited to a
determination of applicant’s right to register vis-à-vis the
marks and goods set out in opposer’s registrations only.
Opposition No. 91179751

27
the application and registrations, even if evidence shows
that the parties’ actual goods are different than those
which are identified.
As will be seen, this record leaves much to be desired
by way of explanation of the involved goods and how they
relate to the parties’ marks. We have done our best to
understand this record, but it is opposer who bears the
burden of proof in this case. And to the extent that the
evidence is unclear or there are gaps in the record, the
fault lies solely with opposer.
1. Applicant’s Goods
Opposer seems to misconstrue the nature of applicant’s
goods. In arguing that “Applicant’s and Opposer’s Goods
are Identical,” Opp. Br. at 10, or related, id. at 11,
opposer notes that “the underlying goods for the
[a]pplicant’s packaging is [sic] tea and related products.”
Opp. Br. at 11. To the contrary, the goods identified in
the subject application are not tea, tea bags, or tea
infusers. Rather, applicant’s goods are “bags for
packaging made of paper or plastic materials, not included
in other classes.”
Opposer refers to applicant’s description of its mark,
arguing that “[a]pplicant's packaging is for use with
‘holding teabags filled with tea.’” Opp. Br. at 11.
Opposition No. 91179751

28
Because the purpose of applicant’s packaging is not stated
in its identification of goods, we agree that such
packaging includes packaging for teabags, although
applicant’s goods are not limited to that use.15
Finally, we note that applicant’s goods are classified
in International Class 16, which includes goods made of
paper or cardboard. TMEP § 1401.02(a). This is consistent
with applicant’s description of the goods as “bags for
packaging...,” or “cardboard packaging...,” although Class
16 would clearly be inappropriate for food such as tea, tea
bags, or (as we will see) tea infusers.
Thus, we agree with opposer that applicant’s goods
could be read as packaging for tea bags. But it is quite
clear from this record that applicant’s goods do not
include tea, tea bags, or tea infusers.16

15 We also believe that opposer’s construction of applicant’s
goods is likely to be closest to opposer’s goods. Accordingly,
while applicant’s goods are not limited to bags for packaging
teabags, we will concentrate on that subset of applicant’s goods.
16 The file of the subject application indicates that as
originally filed, it included “medical tea” in International
Class 5 and “tea” in International Class 30. Those goods were
ultimately deleted, apparently to avoid a refusal to register in
view of a third-party registration for a mark comprising a
pyramid-shaped tea bag and covering various teas. The refusal
was directed to applicant’s Class 5 and 30 goods only, and
applicant’s mark was approved for publication only after deletion
of “tea” and “medical tea.” This course of action suggests that
applicant clearly did not intend the application (as it now
stands) to include any kind of tea, nor did the examining
attorney construe it to include tea or tea bags.
Opposition No. 91179751

29
2. Opposer’s Goods
Opposer’s goods are identified as “tea infusers not of
precious metal” (both registrations) and “tea infusers”
(‘093 Registration), both in International Class 21. In
its brief, opposer apparently operates under the premise
that the identified tea infusers are the same as tea bags.
Opp. Br. at 4. They are not.
A tea infuser is a utensil used for holding loose tea
while preparing a tea beverage for drinking. Typically
made of mesh or perforated material, and often with a
handle, chain, or similar appendage, the infuser allows the
tea to come into contact with the water to steep until the
beverage reaches the desired strength, when the infuser can
be removed from the water using the handle or chain, and
reused. We take notice17 of the following definitions:
Infuse To steep or soak herbs, spices, or
vegetables in liquid to extract their flavor and
transfer it to the liquid; the solids are then
strained out; a tea infuser is a small perforated
ball for that purpose.

Elizabeth Riely, A CULINARY DICTIONARY—THE CHEF'S COMPANION, 146
(3d ed. 2003);
infuser (ɪnˈfjuːzə)
— n
any device used to make an infusion, esp a tea
maker

17 See Fed. R. Evid. 201(b).
Opposition No. 91179751

30
COLLINS ENGLISH DICTIONARY—COMPLETE & UNABRIDGED (10th ed. 2009)
(http://dictionary.reference.com/browse/infuser?o=100074
(accessed Sept. 15, 2012));
infuser A small perforated closed container
which allows boiling water to come into contact
with tea, herbs, spices, etc. thus extracting
flavor from the solid

Charles G. Sinclair, INTERNATIONAL DICTIONARY OF FOOD & COOKING,
271 (1998).
TEA BALL or TEA INFUSER, also called Steeper, is a
small, perforated metal ball of two halves that snap
together for holding tea leaves to be steeped in hot
water.

Barbara Ann Kipfer, THE CULINARIAN: A KITCHEN DESK REFERENCE, 552
(2011).
Tea infusers come in a variety of styles; the
following image shows a few examples, which we include for
illustrative purposes only:

Jane Pettigrew, THE TEA COMPANION (2004).
As noted above, opposer has made of record a patent
Opposition No. 91179751

31
issued to it for the design of a tea infuser. One of the
drawings of opposer’s patented infuser is reproduced below:

Patent No. D613114S (issued Apr. 6, 2010), fig. 8 (“FIG. 8
is an exploded view of the tea infuser of this invention”).
Finally, we note that opposer has properly classified
its tea infusers in International Class 21. Class 21
(“Housewares and Glass”) “includes mainly small, hand-
operated utensils and apparatus for household and kitchen
use....” See TRADEMARK MANUAL OF EXAMINING PROCEDURE (“TMEP”),
§ 1401.02(a) (8th ed. 2011). Further, both “tea infusers”
and “tea infusers not of precious metals” appear in the
USPTO’s online ACCEPTABLE IDENTIFICATION OF GOODS AND SERVICES MANUAL
(“ID Manual”) (http://tess2.uspto.gov/netahtml/tidm.html),
in Class 21, as acceptable without further qualification.
While it is also used to prepare tea, a tea bag
differs from a tea infuser. We take note of the following
definitions:
Opposition No. 91179751

32
tea bag
noun
a container of thin paper or cloth holding a
measured amount of tea leaves for making an
individual serving of tea.

RANDOM HOUSE DICTIONARY (2012) (http://dictionary.reference.com
/browse/tea+bag?s=t (visited Sept. 17, 2012)).
tea bag
— n
a small bag of paper or cloth containing tea
leaves, infused in boiling water to make tea

COLLINS ENGLISH DICTIONARY—COMPLETE & UNABRIDGED (10th ed. 2009)
(http://dictionary.reference.com/browse/tea+bag?s=t
(visited Sept. 17, 2012)). In other words, a teabag is a
small packet made of filter paper (or similar material)
prefilled with tea, so that it may be steeped in water to
prepare a tea beverage. The tea bag is usually made in an
individual serving size and usually includes an attached
string so that it may be easily removed when the beverage
reaches the desired strength.
Unlike opposer’s tea infusers, tea bags are properly
classified in International Class 30 (“Staple Foods”). See
ID Manual. Class 30 includes “[c]offee, tea, cocoa,” and a
variety of other food items. TMEP § 1401.02(a). Notably,
Class 30 does not include tea infusers or any other items
Opposition No. 91179751

33
of kitchenware, nor does it include packaging of any kind.18
At least for purposes of trademark registration, “tea bags”
are not kitchen utensils for preparing tea, but rather
items of food, i.e., tea packaged in ready-to-use portions.
So although either can be used in tea preparation, a tea
bag and a tea infuser are not the same thing; a tea infuser
is a reusable utensil which can be filled with tea, but
cannot make tea by itself, while a tea bag is a portion of
tea sold in a disposable packet for preparing a beverage.19
And the identified goods in opposer’s pleaded registrations
are clearly tea infusers, not tea bags.
3. Opposer’s ‘940 Registration
While we are convinced that this construction of
opposer’s identified goods is correct, we frankly admit

18 Although called a tea bag, the identification and
classification of tea bags in Class 30 (rather than in Class 16
with paper bags) rests on the premise that the purchaser of a tea
bag is buying tea, not bags — although both are clearly involved
in the transaction. In fact, containers which are sold filled
with their intended contents are universally classified and
identified with reference to the contents, not the container.
For instance, an identification reading “cans of soda” would be
treated as a soft drink (Class 32), rather than a metal can
(Class 6). While the ID Manual includes many examples of
containers, when the container itself is identified, it will
usually indicate that the container is “sold empty,” e.g., “metal
cans for beverages, sold empty.” “Tea bags” are therefore
classified and considered as tea, not bags for ID and
classification purposes, and for determining likelihood of
confusion with other marks.
19 Opposer’s seeming confusion on this issue is all the more
puzzling, as opposer has clearly applied for both tea infusers in
Class 21 and tea and tea bags in Class 30 in its pending
applications.
Opposition No. 91179751

34
that it raises a serious problem. Recall that opposer
argued that applicant’s “bags for packaging made of paper
or plastic materials” should be construed in conjunction
with the description of applicant’s mark, which indicates
that the mark is the “configuration of ... packaging for
holding teabags filled with tea....” We agreed with
opposer, to the extent that the description of applicant’s
mark does indicate one possible purpose for applicant’s
identified packaging, and is therefore consistent with the
identification of goods.
By contrast, the description of the mark in opposer’s
‘940 Registration is plainly inconsistent with its
identified goods. Although this registration covers “tea
infusers not of precious metal,” the description of the
registered mark indicates that “the mark consists of the
... trade dress for a tea bag product comprising a three-
dimensional triangle-shaped tea bag.” But as we have
discussed, tea infusers are not tea bags, and vice versa.
Thus, although the registration indicates that the mark is
the configuration of a tea bag, the identified goods are
not tea bags, but tea infusers. We do not understand — and
opposer has not explained — how a tea bag serves as a
trademark for tea infusers. Unlike the subject
application, in which the description of the mark refers to
Opposition No. 91179751

35
one of the possible uses for the identified packaging, the
description of the mark and the identification of goods in
opposer’s ‘940 Registration appear to be irreconcilable, at
least on this record.
Opposer bears the burden of proving by a preponderance
of the evidence that the mark in the subject application is
likely to cause confusion with the marks in opposer’s
registrations. Life Zone Inc. v. Middleman Group Inc., 87
USPQ2d 1953, 1959 (TTAB 2008). Clearly, an appropriate
comparison of the relevant goods and marks is crucial to a
likelihood of confusion analysis, although it is impossible
to do so when the mark, the goods, or both, are unclear on
the record presented.
Given the uncertainties inherent in the ‘940
Registration, we are unable to find that opposer has met
its burden to demonstrate a likelihood of confusion with
respect to that registration.
Opposer’s ‘093 Registration fares better in this
regard. That registration is also for “tea infusers,” but
the description indicates that the mark is “the ... trade
dress of the packaging for a product....” Because the
packaging which comprises the mark could include packaging
for tea infusers, there is no discrepancy between the
identification of the goods and the description of the mark
Opposition No. 91179751

36
in this registration. We will therefore focus on whether
confusion is likely with respect to opposer’s ‘093
Registration.
4. Comparison of the Goods; Customers and
Channels of Trade

We compare, finally, the goods set out in the subject
application to those in the ‘093 Registration. The goods
in the ‘093 Registration are “tea infusers,” and “tea
infusers not of precious metals” (we refer to both as “tea
infusers”), while applicant’s goods are bags for packaging
including, as opposer urges, bags for packaging tea bags.
But while opposer equates packaging for tea bags with “tea
and related products,” Opp. Br. at 11, the record does not
support that leap. For one thing, these goods are very
different and serve different purposes. Opposer’s tea
infusers would be used by a consumer to make tea, while the
purpose of applicant’s packaging would be to pack teabags
for shipment or sale. One seeking an implement with which
to make tea would not look for or purchase something in
which a teabag is packaged, and one needing packaging for
tea bags would not consider a tea infuser for that purpose.
Given our findings as to the parties’ respective
goods, it is apparent that the customers for them are
likely to be different. Opposer’s tea infusers are likely
Opposition No. 91179751

37
to be purchased by ordinary consumers who enjoy drinking or
making tea. By contrast, applicant’s packaging for tea
bags would not likely be purchased by consumers (the
purchasers of tea infusers), but by manufacturers or
purveyors of tea bags who themselves package teabags for
shipment or sale. While it is true that one who buys a
package of tea bags also receives the packaging, the goods
at issue in that transaction are the tea, not the packaging
the teabags come in.
It is axiomatic that unless expressly restricted,
goods are presumed to move in all channels of trade normal
for such items, and that they are purchased by all of the
usual consumers for such goods. In re Elbaum, 211 USPQ
639, 640 (TTAB 1981) (citing Kalart Co., Inc. v. Camera-
Mart, Inc., 258 F.2d 956, 119 USPQ 139 (CCPA 1958)). But
because applicant’s and opposer’s goods are not identical,
we cannot presume that their trade channels are identical.
In fact, although neither applicant’s nor opposer’s goods
are restricted in their channels of trade, we find that the
normal channels of trade for their respective goods are
different, and do not overlap.
Although opposer has not submitted any evidence as to
the usual channels of trade for its tea infusers, it is
well-known that such items can be purchased in a variety of
Opposition No. 91179751

38
retail outlets, such as specialty stores selling houseware,
kitchenware, or tea, department stores, and even well-
stocked grocery stores. On the other hand, we know little
about the normal channels of trade for packaging for
teabags,20 and opposer has supplied no evidence or argument
on this point. We are unaware whether packaging for
teabags is sold in the same channels of trade as opposer’s
tea infusers, or in any retail outlets at all. Rather, the
nature of such goods suggests that applicant’s packaging
would be purchased by teabag manufacturers — or possibly
retailers — wholesale from either the packaging
manufacturers or those who supply tea bag manufacturers or
teabag retailers. There is no evidence — and we are not

20 We must assume here that applicant’s packaging is sold empty
for use by others, because applicant’s use of its mark on
packaging for its own goods would not constitute use of its
trademark on the identified goods. When goods are sold in a
package, the customer is not normally buying the packaging, but
what is in the package. In other words, if applicant’s packaging
is sold full of tea bags, its goods would not be considered
“packaging” in Class 16, but “tea” or “tea bags” in Class 30.
Once the packaging is applied to the goods, transfer of the
packaging becomes incidental to the sale of the packaged goods,
and the packaging is not considered to be separate goods in trade
for which a trademark registration can be granted. See In re MGA
Entm’t Inc., 84 USPQ2d 1743, 1745-47 (TTAB 2007) (trapezoidal box
for applicant’s goods not considered goods in trade).
Opposer has not raised as a ground for opposition the issue of
whether applicant has a bona fide intent to use the mark on the
packaging itself (i.e., apart from any use on packages containing
tea or other items), or whether applicant’s intended use on
packaging will be incidental to applicant’s sale of other items,
such as tea. In the absence of such a claim, we must assume that
applicant intends to make proper use of its mark in commerce,
that is, by selling its packaging empty.
Opposition No. 91179751

39
aware — that ordinary consumers would normally purchase
“bags for packaging [teabags].”
In summary, we find that opposer’s tea infusers differ
significantly from applicant’s packaging for teabags. One
is a kitchen utensil, while the other is an enclosure or
wrapping for other items. Tea infusers are used to prepare
tea, while packaging would be used to wrap or package
teabags for shipment or sale. Opposer’s goods would be
sold to consumers, while applicant’s goods are likely to be
sold to those who manufacture and package tea bags or
possibly to retailers. Thus the parties’ goods differ
significantly, and both the customers and channels of trade
for the goods differ. This factor supports a finding of no
likelihood of confusion.
C. Conditions of Sale
Opposer contends that its goods and those of applicant
are both “likely to be ‘impulse’ buys rather than careful,
sophisticated purchases,” thus increasing the likelihood of
confusion. Opp. Br. at 12-13.
Opposer has not submitted any evidence supporting this
theory, such as a range of prices for the identified goods
or any other evidence of market conditions. Nonetheless,
we think it likely that the universe of tea infusers
includes some relatively low-cost items. On the other
Opposition No. 91179751

40
hand, we are unaware of the cost of applicant’s bags for
packaging (tea bags). While they are likely to be
individually inexpensive (tea bags are relatively
inexpensive, which generally limits the cost of their
packaging), if they are purchased by teabag manufacturers
or shippers, they are probably purchased in bulk quantities
at greater expense, and even if they are inexpensive,
someone packaging tea bags is likely to take care in their
purchase to make sure that such packaging is suitable for
the task.
Thus, although opposer’s goods are likely to be
relatively inexpensive, because of the lack of evidence
regarding applicant’s goods, we are unable to conclude that
this factor weighs in opposer’s favor, and we treat it as
neutral.
D. Fame of the Prior Mark
Opposer argues that its marks are well-known. Opp.
Br. at 13-14. Evidence of the fame of a prior mark is
entitled to “a dominant role” in our analysis. Coach
Servs. Inc. v. Triumph Learning LLC, 668 F.3d 1356, 101
USPQ2d 1713, 1720 (Fed. Cir. 2012) (internal quotations and
citations omitted). In considering fame, we look to the
sales, advertising, and length of use of the senior mark.
du Pont, 177 USPQ at 567; Packard Press Inc. v. Hewlett-
Opposition No. 91179751

41
Packard Co., 227 F.3d 1352, 56 USPQ2d 1351, 1356 (Fed. Cir.
2000).
In this case, opposer has submitted no competent
evidence of its sales or length of use. Opposer has made
of evidence a number of articles or promotional features
depicting its goods (usually along with a number of other
goods). But in the absence of any other information, we
can conclude from them only that the public has been
exposed to opposer’s mark. It is not possible to determine
the length or effect of that exposure on this record, and
we can give no weight to counsel’s unsupported argument.
On this limited record, we are unable to tell whether
opposer’s mark has achieved any significant level of
renown.
Because of the dominant role a finding of fame plays
in a likelihood of confusion analysis, “it is the duty of
the party asserting that its mark is famous to clearly
prove it.” Lacoste Alligator S.A. v. Maxoly Inc., 91
USPQ2d 1594, 1597 (TTAB 2009). Opposer has not done so,
and we consider this factor neutral.
E. Balancing the Factors
We have found that the mark in opposer’s ‘093
Registration is substantially similar to applicant’s mark.
The relationship of opposer’s tea infusers to applicant’s
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42
bags for packaging, however, is considerably more tenuous.
Although both are potentially related to tea in some
fashion, there are substantial differences in the uses and
function of such goods and the likely customers and
channels of trade for them. Opposer has failed to address
these issues in its brief, and has presented little
evidence relevant to any of the other du Pont factors.
On balance, we cannot find that opposer has carried
its burden to show that registration of applicant’s mark
would lead to a likelihood of confusion. Similarity of the
marks alone is not enough.
V. Remand of Application
As will be obvious by now, a considerable difficulty
in this proceeding has been the determination of just what
marks and goods are at issue. Applicant’s current
identification of goods — “bags for packaging made of paper
or plastic materials” — is very broad. However, it appears
from the description of applicant’s mark that applicant may
in fact intend to use the mark on only a narrow subset of
those goods, namely, “cardboard packaging for holding
teabags filled with tea.” If applicant in fact intends to
apply its mark only to a specific type of packaging for
specific purposes (as it appears from the description of
the mark), the examining attorney should consider requiring
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43
a limitation or clarification of the identification of
goods.21 Depending on whether the goods are amended, it may
also be appropriate to amend the description of the mark.
Other issues may have to wait until after submission of a
statement of use.22
Accordingly, we remand this application to the
trademark examining attorney to determine whether any
limitation of applicant’s identified goods is appropriate.
Trademark Rule 2.131.

21 Again, our assumption is that applicant intends to sell its
packaging empty, and it may be appropriate to explicitly state
that fact in the identification of goods.
22 Another issue suggested by the facts of record is whether
applicant’s “bags for packaging” are goods in trade, or are
merely incidental to applicant’s sale of other goods. See supra
n.20. Because this issue usually depends on the manner in which
applicant uses its mark, it is generally not considered an
appropriate refusal for an intent-to-use application until an
allegation of use has been filed (or sooner, if applicant seeks
to rely solely on a foreign registration as a basis). TMEP
§ 1202.06(c). Nonetheless, if the circumstances of this case are
determined to be an exception to this general rule, the examining
attorney is not precluded from exploring this topic on remand.
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44
VI. Conclusion
We have carefully considered all of the evidence of
record and opposer’s argument, including that which we have
not specifically discussed. For the foregoing reasons, we
conclude based on this record, that registration of
applicant’s mark for the identified goods is not likely to
cause confusion with opposer’s registered marks.

Decision: The opposition is DISMISSED. The application
will be remanded to the examining attorney in accordance
with this decision.