Team International Marketing N.V.v.JMM Lee Properties, LLC

Trademark Trial and Appeal Board

Mar 30, 2017

No. 92057196 (T.T.A.B. Mar. 30, 2017)

This Opinion is Not a
Precedent of the TTAB

Mailed: March 30, 2017

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

Team International Marketing N.V.
v.
JMM Lee Properties, LLC
_____

Cancellation No. 92057196
_____

Paulo A. De Almeida of Patel & Almeida PC,
for Team International Marketing N.V.
Michael J. Lee,
for JMM Lee Properties, LLC (pro se).
_____

Before Zervas, Taylor and Greenbaum,
Administrative Trademark Judges.

Opinion by Greenbaum, Administrative Trademark Judge:
Team International Marketing N.V. (“Petitioner”) seeks to cancel JMM Lee
Properties, LLC’s (“Respondent”) registration for the mark CALORIC in standard
characters for “gas and electric cooking appliances, namely, ranges, microwave ovens,
barbeque grills, cooktops and kitchen range hoods” in Class 11.1

1 Registration No. 3890577 filed on July 29, 2008, under Section 1(b) of the Trademark Act,
15 U.S.C. § 1051(b), issued on December 14, 2010, claiming a date of first use on October 9,
2010, and a date of first use in commerce on October 22, 2010.
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As grounds for cancellation, Petitioner alleged (1) likelihood of confusion under
Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), based on its common-law use
of the mark KALORIK for various household and cooking appliances,2 (2)
abandonment through nonuse in commerce with no intent to resume use, and (3)
fraud on the USPTO.
In its answer, Respondent admitted that Petitioner owns an application for “the
Kalorik mark (Serial No: 85664850) in connection with the household appliances
cited in paragraph 4 of the petition, but does not have a registered trademark for
these goods.”3 Respondent otherwise denied the salient allegations. Respondent also
asserted several affirmative defenses; the only one remaining for disposition being
“unclean hands” in the nature of improper use of the federal registration symbol.4

2 In the petition for cancellation, Petitioner also pleaded ownership of Reg. No. 3382035 for
the mark for shoe polishers in Class 7 and scales in Class 9, but expressly
stated in its brief that it “does not rely on this registration for proving priority and likelihood
of confusion.” 48 TTABVUE 41 n.4.
3 4 TTABVUE 3, ¶ 4. Petitioner filed application Serial No. 85664850 for the mark on
June 28, 2012. The application includes the following description of the mark: “The mark
consists of the letter ‘K’ with an un-shaded circle appearing inside the left column of the letter
‘K’, with the word ‘KALORIK’ appearing underneath the letter ‘K.’” Petitioner submitted a
copy of the application file under notice of reliance. 36 TTABVUE 92.
4 In its answer, Respondent asserted the affirmative defenses of “unclean hands,” “laches,”
“fraud,” and “estoppel.” 4 TTABVUE 9-15. In the order denying Respondent’s summary
judgment motion, the Board struck Respondent’s affirmative defenses of “unclean hands,”
“laches,” and “estoppel.” However, the Board allowed the “fraud” defense to stand as a type
of “unclean hands” defense based on allegations of Petitioner’s “misuse” of the registration
symbol with KALORIK for unregistered goods. The Board also allowed Respondent leave to
amend its “laches” defense to include an allegation of “prejudice” (32 TTABVUE 10-14), which
Respondent did. 33 TTABVUE. However, Respondent did not pursue the “laches” defense at
trial. We therefore deem this defense waived. See Alcatraz Media, Inc. v. Chesapeake Marine
Tours Inc. dba Watermark Cruises, 107 USPQ2d 1750, 1753 n.6 (TTAB 2013), aff’d mem.,
565 F. App’x 900 (Fed. Cir. 2014).
Cancellation No. 92057196
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Both parties submitted briefs, and Petitioner submitted a reply brief.
I. Evidentiary Objections
Respondent filed a motion to strike several exhibits submitted under Petitioner’s
Notice of Reliance (“Petitioner’s NOR”).5 The Board, in its order dated September 11,
2015, deferred consideration of this motion until final decision.6 We need not decide
this motion because none of the objected-to exhibits are outcome determinative. We
do note that even if we were to strike Exhibit L to Petitioner’s NOR, which is one of
the subjects of Respondent’s motion, doing so would have no consequence because
Respondent submitted, as Exhibit Q to Respondent’s Notice of Reliance
(“Respondent’s NOR”), a printout of the very same material, i.e, Petitioner’s pending
trademark application for the KALORIK mark.7
In its brief, Petitioner repeats its objection to certain testimony from Respondent’s
Principal, Michael Lee, concerning an “oral license” agreement with a third party.
This testimony pertains to Respondent’s defense to Petitioner’s abandonment claim,
and the unpleaded issue of whether Respondent was the owner of the mark when it
filed the application underlying the subject registration. Because we do not rely on
this testimony in disposing of this case, we need not address this objection or the

5 37 TTABVUE.
6 38 TTABVUE.
7 Petitioner’s Exhibit L and Respondent’s Exhibit Q are essentially identical, the only
difference being that Petitioner’s Exhibit L does not contain the URL address or the date on
which the documents were printed. See Safer Inc. v. OMS Invs. Inc., 94 USPQ2d 1031, 1041
(TTAB 2010).
Cancellation No. 92057196
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related, fully-briefed question of whether the parties tried the unpleaded issue by
implied consent.
II. Record
The record includes the pleadings and, by operation of Trademark Rule
2.122(b)(1), 37 C.F.R. § 2.122(b)(1), the file of the subject registration.
Petitioner submitted the testimony, with accompanying exhibits, of Michael
Stolle,8 Petitioner’s CEO, and Daniel Murad,9 CFO of Team International Group of
America, Inc. (“TIGA”).
In addition, Petitioner submitted the following materials under Petitioner’s
NOR:10
• screenshots from Respondent’s website (Exhibit A) and the LinkedIn profile
page of Respondent’s Principal, Michael Lee (Exhibit B);
• printouts from the USPTO TSDR database of: three other applications and
registrations owned by Respondent (Exhibit C); three expired registrations for
CALORIC last owned by a third party (Exhibit E); the subject registration and
portions of the underlying application file (Exhibits F, G and H);11 a status and
title copy of Petitioner’s pleaded registration for KALORIK (Exhibit M);12 a

8 49 TTABVUE.
9 50 TTABVUE.
10 36 TTABVUE.
11 This submission was unnecessary, because the subject registration and the underlying
application are of record by operation of Trademark Rule 2.122(b)(1), as mentioned above.
12 As noted above, Petitioner does not rely on this registration to prove its Section 2(d) claim.
Cancellation No. 92057196
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copy of Petitioner’s pending trademark application for KALORIK (Exhibit L);
and status and title copies of third party registrations (Exhibit P) covering
large and small cooking appliances;
• printouts from appliance retailers HOME DEPOT, BEST BUY and LOWE’S
(Exhibit N) and appliance producers KENMORE, FRIGIDAIRE,
KITCHENAIDE, PANASONIC, and TOASTMASTER (Exhibit O) of webpages
showing use of the same marks for both large and small cooking appliances;
• an Internet article entitled 5 Extinct Appliance Brands That Died Too Soon,
discussing the history of the CALORIC mark (Exhibit D);
• Respondent’s responses to Petitioner’s document requests (Exhibit K) and
interrogatories (Exhibit J), and Respondent’s answers to Petitioner’s requests
for admission (“RFA”) (Exhibit I);13 and
• printouts of several Internet articles and press releases discussing
Respondent’s plan to “launch” a CALORIC line of home appliances in 2012
(Exhibit Q).

13 Although Petitioner submitted Respondent’s answers to Petitioner’s RFAs in their entirety,
including Respondent’s denials to many RFAs, Petitioner may only make of record, by notice
of reliance, Respondent’s admissions. See Trademark Rules 2.120(k)(3)(i) and 2.120(k)(5). In
this case, in Petitioner’s NOR, Petitioner highlighted Respondent’s response to RFA No. 4 (36
TTABVUE 4, item “I”), in which Respondent admits that it did not sell any goods bearing the
CALORIC mark in the United States before July 29, 2008, the filing date of the intent-to-use
application underlying the subject registration. Accordingly, we consider only this response
to be of record.
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Respondent submitted the testimony, with accompanying exhibits, of Michael
Lee,14 Respondent’s Principal, Uri Murad,15 the CEO of TIGA, and Raymond K. Uhlir,
Jr., a managing director for brand licensing at LMCA (Leveraged Marketing
Corporation of America).16
In addition, Respondent submitted the following under Respondent’s NOR:17
• copies of Petitioner’s responses (Exhibit A) and supplemental responses
(Exhibit B) to Respondent’s interrogatories, and Petitioner’s answers to
Respondent’s first (Exhibit C) and second (Exhibit D) sets of RFAs;
• the Trademark Licensing Agreement between Petitioner and TIGA (Exhibit
E);18
• screenshots from LinkedIn (Exhibit F), Wall Street Journal (Exhibit G) and 4-
Traders (Exhibit H) showing Uri Murad’s employment;
• screenshots from Sears.com (Exhibit I), BestBuy.com (Exhibit J),
ConsumerReports.org (Exhibit K), and Lowes.com (Exhibit L) displaying large
and small cooking appliances in different departments;
• screenshots from Martinapplicance.com, 360Wichita.com (for Lytton’s
Appliance Showroom), pacificappliancegroup.com, applicanceshowroom.com
(for Larry Soares Appliance Showroom), and the “official blog” from

14 53 TTABVUE 2.
15 54 TTABVUE.
16 53 TTABVUE 230.
17 42 TTABVUE and 44 TTABVUE.
18 Petitioner also made this document of record as Exhibit A to the testimony depositions of
both Michael Stolle (49 TTABVUE 98) and Daniel Murad (50 TTABVUE 111).
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designerhomesurplus.com, demonstrating how retailers display major
appliances on their showroom floors (Exhibit M);
• dictionary definitions of “caloric” (Exhibits N and O);
• printouts from the USPTO TSDR database of the registration file of
Petitioner’s pleaded registration (Exhibit P) and Petitioner’s pending
application (Exhibit Q) for the KALORIK mark, and status and title copies of
third party registrations (Exhibit R) covering goods unrelated to those at issue
in this proceeding, and which emanate from some of the same companies
identified by Petitioner.
Petitioner submitted a rebuttal NOR19 on:
• a printout from the website of the California Secretary of State showing that a
company named “Marine Appliances International, Inc.” is in “suspended”
status;
• printouts from the USPTO TSDR website of specimens filed by Respondent
during the prosecution of two other applications, and a copy of the specimen
Respondent filed in the application file for the subject registration; and
• a copy of Respondent’s answers to select interrogatories.
III. Standing
Standing is a threshold issue that must be proven by the plaintiff in every inter
partes case. See Empresa Cubana Del Tabaco v. Gen. Cigar Co., 753 F.3d 1270, 111
USPQ2d 1058, 1062 (Fed. Cir. 2014), cert denied, 135 S. Ct. 1401 (2015). A party has

19 47 TTABVUE.
Cancellation No. 92057196
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standing to seek cancellation of a registration if the party believes it is likely to be
damaged by the registration. Cunningham v. Laser Golf Corp., 222 F.3d 943, 55
USPQ2d 1842, 1844 (Fed. Cir. 2000).
Proof that a plaintiff’s trademark application was rejected because of a
defendant’s registration is sufficient to establish standing. Empresa Cubana, 111
USPQ2d at 1062 (because USPTO refused petitioner's registration based on a
likelihood of confusion with respondent's registration, petitioner “has a real interest
in cancelling the Registrations and a reasonable belief that the Registrations blocking
its application are causing it damage.”); Lipton Indus., Inc. v. Ralston Purina Co., 670
F.2d 1024, 213 USPQ 185, 189 (CCPA 1982) (“Thus, to have standing in this case, it
would be sufficient that [plaintiff] prove that it filed an application and that a
rejection was made because of [defendant's] registration.”). Both parties made of
record Petitioner’s pleaded application and file history showing that the application
has been refused registration on the ground of a likelihood of confusion with
Respondent's involved registration.20 Petitioner therefore has proven its standing.
We now address Petitioner’s claim of priority and likelihood of confusion under
Section 2(d) of the Trademark Act.
IV. Priority
A party claiming prior use of a mark may petition to cancel a registration on the
basis of such prior use pursuant to Section 14 of the Trademark Act, 15 U.S.C. § 1064.

20 42 TTABVUE 227 (Exhibit Q to Respondent’s NOR); 36 TTABVUE 92 (Exhibit L to
Petitioner’s NOR).
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In order for Petitioner to establish priority and ultimately prevail in this proceeding,
it must demonstrate that it used its pleaded mark KALORIK in commerce prior to
Respondent’s priority date. See Trademark Act Section 2, 15 U.S.C. § 1052 (to
establish priority in a likelihood of confusion claim brought under Section 2(d), a
party must prove that, vis-à-vis the other party, it owns “a mark or trade name
previously used in the United States … and not abandoned …”). “Oral testimony, if
sufficiently probative, is normally satisfactory to establish priority of use.”
Powermatics, Inc. v. Globe Roofing Prods. Co., 341 F.2d 127, 144 USPQ 430, 432
(CCPA 1965).” In this regard, oral testimony should be clear, consistent, convincing,
and uncontradicted.” Productos Lacteos Tocumbo S.A. de C.V. v. Paleteria La
Michoacana, Inc., 98 USPQ2d 1921, 1922 (TTAB 2011).
It is well-settled that absent any evidence of earlier use, the earliest date upon
which a respondent may rely is the filing date of the underlying application that
matured into the subject registration. See Trademark Act Section 7(c), 15 U.S.C.
§ 1057(c). See also Syngenta Crop Prot. Inc. v. Bio-Chek LLC, 90 USPQ2d 1112, 1119
(TTAB 2009) (“applicant may rely without further proof upon the filing date of its
application as a ‘constructive use’ date for purposes of priority.”). The USPTO
accorded a filing date of July 29, 2008 to the application that matured into the
registration at issue herein, and Respondent does not claim an earlier priority date.21

21 We also note that in response to RFA No. 4, Respondent admits that it “did not sell any
goods bearing the CALORIC mark in the United States prior to July 29, 2008.” 36 TTABVUE
75, 77 (Petitioner’s NOR Ex. I).
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We therefore must determine whether Petitioner has established use of its pleaded
mark KALORIK in commerce prior to July 29, 2008.
Petitioner submitted evidence that through its exclusive licensee, TIGA,
Petitioner used its KALORIK mark on small electric cooking appliances in the United
States before Respondent’s constructive use date of July 29, 2008. Specifically,
Petitioner made of record through the testimony of both Michael Stolle and Daniel
Murad a copy of the 2005 KALORIK Trademark License Agreement (“License
Agreement”) between Petitioner and TIGA. The License Agreement grants TIGA an
exclusive, royalty-free license to use in the United States Petitioner’s Kalorik mark,
displayed as in Exhibit A to the License Agreement, on household appliance
products.22 Michael Stolle and Daniel Murad both testified to the terms of the License
Agreement, including quality control measures. Michael Stolle confirmed that TIGA
is a “bona fide licensee of [Petitioner’s] Kalorik trademark which is used for cooking
appliances in the United States.”23
Michael Stolle and Daniel Murad also testified that Petitioner has used the
KALORIK mark, displayed as , through TIGA on cooking appliances in the
United States continuously since 2006. According to Daniel Murad, TIGA has sold
KALORIK cooking plates, electric grills, slow cookers, and deep fryers since 2006,

22 The Trademark Licensing Agreement is Ex. A to Daniel Murad Test. 50 TTABVUE 111.
The mark is identified in Ex. A to the Trademark Licensing Agreement. 50 TTABVUE 116.
23 49 TTABVUE 19.
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and toaster ovens and combination grill sandwich waffle makers since 2007.
Similarly, Michael Stolle testified that TIGA sold toaster ovens, electric grills,
cooking plates, deep fryers and slow cookers under the KALORIK mark since 2006.24
In addition, Petitioner made of record invoices and invoice extracts showing sales
in the United States of KALORIK branded grills and cooking plates from 2007-2012,
sales of KALORIK branded slow cookers and sandwich maker grills from 2006-2008,
and sales of KALORIK branded toaster ovens in 2007. Petitioner also made of record
TIGA’s 2007-2008 catalogs showing the types of KALORIK branded appliances sold
in the United States, and screenshots showing the types of KALORIK branded
appliances TIGA has sold since 2006.
Based on this record, we find that Petitioner, through its licensee TIGA, has used
the mark KALORIK, displayed as , in the United States on electric grills,
cooking plates, deep fryers, and slow cookers since 2006, and on toaster ovens since
2007. See Trademark Act Section 5, 15 U.S.C. § 1055 (“Where a ... mark sought to be
registered is or may be used legitimately by related companies, such use shall inure
to the benefit of the ... applicant for registration.”). See General Motors Corp. v.
Aristide & Co., 87 USPQ2d 1179 (TTAB 2008) (“A trademark owner can rely on the
use of a licensee for its priority.”).
Because Petitioner has established a first use date for its small electrical cooking
appliances prior to Respondent’s priority date, and Respondent has not contested

24 49 TTABVUE 19-20.
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Petitioner’s priority for such goods, petitioner has established priority of use for
KALORIK, displayed as , for toaster ovens, electric grills, cooking plates,
deep fryers, and slow cookers.
V. Likelihood of Confusion
Our likelihood of confusion determination under Section 2(d) is based on an
analysis of all of the probative facts in evidence that are relevant to the factors set
forth in In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA
1973). See also In re Majestic Distilling Co., Inc., 315 F.3d 1311, 65 USPQ2d 1201
(Fed. Cir. 2003). In any likelihood of confusion analysis, however, two key
considerations are the similarities between the marks and the similarities between
the goods. See Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192
USPQ 24 (CCPA 1976) (“The fundamental inquiry mandated by §2(d) goes to the
cumulative effect of differences in the essential characteristics of the goods and
differences in the marks.”).
We consider the likelihood of confusion factors about which either party
introduced evidence, and treat the remaining factors as neutral.25 See M2 Software,
Inc. v. M2 Commc’ns, Inc., 450 F.3d 1378, 78 USPQ2d 1944 (Fed. Cir. 2006) (even
within du Pont list, only factors that are “relevant and of record” need be considered).

25 In their briefs, both parties argued, or at least mentioned, all of the du Pont factors, but
they only presented evidence on the factors discussed below.
Cancellation No. 92057196
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A. Similarity of the Marks
We begin with the first du Pont factor, the similarity of the parties’ marks. In a
likelihood of confusion analysis, we analyze “the marks in their entireties as to
appearance, sound, connotation and commercial impression.” In re Viterra, 671 F.3d
1358, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (quoting du Pont, 177 USPQ at 567).
See also Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772,
396 F.3d 1369, 73 USPQ2d 1689, 1692 (Fed. Cir. 2005). Further, “[t]he proper test is
not a side-by-side comparison of the marks, but instead ‘whether the marks are
sufficiently similar in terms of their commercial impression’ such that persons who
encounter the marks would be likely to assume a connection between the parties.”
Coach Servs. Inc. v. Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1721
(Fed. Cir. 2012) (citation omitted). The focus is on the recollection of the average
purchaser, who normally retains a general rather than a specific impression of
trademarks. In re Binion, 93 USPQ2d 1531 (TTAB 2009); Sealed Air Corp. v. Scott
Paper Co., 190 USPQ 106 (TTAB 1975).
As noted above, under the terms of the License Agreement, Petitioner has licensed
to TIGA the exclusive right to use the KALORIK mark, displayed as , on
household appliances, including cooking appliances. Daniel Murad testified that
TIGA “always use[s] this specific Kalorik looking mark on our products,”26 and
Michael Stolle confirmed that TIGA “has used this particular mark in the United

26 50 TTABVUE 82.
Cancellation No. 92057196
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States since 2006 for kitchen appliances.”27 We therefore compare Petitioner’s mark,
which consists of a stylized letter K above the word KALORIK, with Respondent’s
mark CALORIC.
Respondent argues that the marks differ in appearance, sound, meaning, and
commercial impression, and that the stylized letter K in Petitioner’s mark is the
dominant element in that mark. These arguments are unconvincing.
Although we consider each mark on a case-by-case basis, the wording in composite
word and design marks normally is accorded greater weight in the likelihood of
confusion because the verbal portion is most likely to indicate the origin of the goods
and to be use by purchasers to request the goods. See, e.g., Viterra, 101 USPQ2d at
1908; M.C.I. Foods Inc. v. Bunte, 96 USPQ2d 1544, 1551 (TTAB 2010). Likewise, we
accord the wording KALORIK in Petitioner’s mark greater weight here. While
Petitioner’s mark features a large stylized K with the wording KALORIK presented
below, we do not find the stylized K to be due greater weight than the literal term
KALORIK, which customers would use to call for or refer to the goods.
Respondent’s mark CALORIC is highly similar visually to the dominant, literal
portion of Petitioner’s mark, KALORIK, differing only in the presence of the letter
“K” in Petitioner’s mark in place of the letter “C” in that of Respondent in the first
and last positions. Furthermore, the substitution of the letter “K” in Petitioner’s mark
for the “C” in Respondent’s mark has little, if any, effect on their pronunciation such
that the terms CALORIC and KALORIK in the marks are likely to sound identical

27 49 TTABVUE 19.
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when pronounced. See Kabushiki Kaisha Hattori Tokeiten v. Scuotto, 228 USPQ 461,
462 (TTAB 1985) (“In our view, the word portion of applicant's mark ‘SEYCOS', is
virtually the phonetic equivalent of opposer's ‘SEIKO’ mark and is, in fact, the
phonetic equivalent of the plural of opposer's mark.”). Regarding meaning and
connotation, both marks suggest a source of heat, as reflected in the dictionary entries
for “caloric” submitted by Respondent,28 and Michael Lee’s testimony (“Caloric … has
to do with heat or calorie intake.”), as well as the testimony of Petitioner’s witness,
Michael Stolle regarding the word “kalorik” (“the route [sic] of the Kalorik brand
means heating[.] [I]t’s Latin. … [I]f you pronounce it the French way because Kalorik
was created in Belgium, it means actually heating based is the translation, would be
Kalorik.”).29 The slight misspelling of Petitioner’s mark does not affect the mark’s
commercial impression in any significant way. See, e.g., Contour Chair-Lounge Co. v.
Englander Co., 324 F.2d 186, 139 USPQ 285, 288 (CCPA 1963) (“Contur” but a slight
misspelling of “Contour,” with identical pronunciation and meaning); Fleetwood Co.
v. Mende, 298 F.2d 797, 132 USPQ 458, 460 (CCPA 1962) (TINTZ merely a phonetic
spelling of “tints”).
While we acknowledge that the marks are not identical, we find the marks,
considered in their entireties, to be highly similar visually, aurally, and in meaning,
and to convey highly similar overall commercial impressions. This du Pont factor
favors a finding that confusion between the marks is likely.

28 44 TTABVUE 22 (Respondent’s NOR Ex. N) and 44 TTABVUE 36 (Respondent’s NOR Ex.
O).
29 49 TTABVUE 44.
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B. Comparison of the Goods, Channels of Trade, and Conditions of Sale
We next consider the goods, channels of trade, and conditions of sale. We must
make our determinations under these factors based on the goods as they are
identified in the registration. Stone Lion Capital Partners, LP v. Lion Capital LLP,
110 USPQ2d at 1161; Octocom Sys., Inc. v. Houston Computers Servs., Inc., 98 F.2d
937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990). As to Petitioner’s common law mark,
Petitioner must establish through evidence the types of goods, channels of trade, and
conditions of sale.
1. Comparison of the Goods
It is settled that the respective goods need not be similar or even competitive in
order to find that they are related for purposes of our likelihood of confusion analysis.
“Instead, likelihood of confusion can be found ‘if the respective products are related
in some manner and/or if the circumstances surrounding their marketing are such
that they could give rise to the mistaken belief that they emanate from the same
source.” Coach Servs., 101 USPQ 2d at 1722 (quoting 7-Eleven Inc. v. Wechsler, 83
USPQ2d 1715, 1724 (TTAB 2007)). See also On-line Careline Inc. v. Am. Online Inc.,
229 F.3d 1080, 56 USPQ2d 1471 (Fed. Cir. 2000). The issue is not whether purchasers
would confuse the goods, but rather whether there is a likelihood of confusion as to
the source of the goods. L’Oreal S.A. v. Marcon, 102 USPQ2d 1434, 1439 (TTAB 2012);
In re Rexel Inc., 223 USPQ 830 (TTAB 1984).
As discussed above, Petitioner has established use of its mark KALORIK,
displayed as , for toaster ovens, electric grills, cooking plates, deep fryers,
Cancellation No. 92057196
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and slow cookers. The goods identified in Respondent’s registration are “gas and
electric cooking appliances, namely, ranges, microwave ovens, barbeque grills,
cooktops and kitchen range hoods.” Respondent argues that the goods are different
and do not commonly emanate from the same source. However, Petitioner’s and
Respondent’s electric goods fall under the general category of “electric cooking
appliances,” making them inherently related. Given that Petitioner’s and
Respondent’s goods could be used together in the same kitchen, we find that they are
complementary products. See e.g., In re Cook Medical Tech. LLC, 105 USPQ2d 1377,
1380 (citing Martin’s Famous Pastry Shoppe 223 USPQ at 1290) (“If goods are
complementary in nature, or used together, this relatedness can support a finding of
likelihood of confusion.”); Octocom, 16 USPQ2d at 1788 (OCTOCOM for modems held
confusingly similar to OCTACOMM for computer programs because programs and
modems are commonly used together).
In support of its argument that the parties' respective goods are related, Petitioner
made of record a number of third-party use-based registrations identifying some of
Petitioner’s and some of Respondent’s electric cooking appliances. The most pertinent
are summarized below:30
Registration No. Mark Selected Goods
4182941 FRIGIDAIRE
PROFESSIONAL
Electric ranges, electric counter
cooktops, range hoods, microwave
ovens; electric toaster ovens, electric
slow cookers, electric panini grills
3944713 KENMORE Electric ranges, electric cooktops,
microwave ovens, barbecue grills, range

30 36 TTABVUE 189 (Petitioner’s NOR Ex. P). This exhibit also includes registrations that
are not use-based, but we have not considered them, and they are not listed in the chart.
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Registration No. Mark Selected Goods
hoods; electric grills, toaster ovens,
electric slow cookers
1585507 KITCHENAID Electric ranges, range hoods, cooktops,
microwave ovens
3269916 Electric slow cookers
2157201 Electric ranges; electric grills
699340 TOASTMASTER31 Ranges; sandwich grills
3757299 HOMEIMAGE Barbecues and grills, cooking ranges;
electric grills, electric slow cookers,
electric toaster ovens
4582791 ASHLEY Barbecue grills, cooking ranges,
microwave ovens; deep fat fryers
4485836 TRIPLE FUSION
HEAT
Barbecues and grills, microwave ovens,
cooking ranges, electric cooktops;
electric grills, electric slow cookers,
electric deep fryers
3651700 CAL BEST Barbecue grills, cooking ranges; electric
grills
3484342

Cooking ranges; electric grills, deep fat
fryers
3923996 E-WARE Barbecues and grills, cooking ranges;
deep frying machines, electric grills,
electric slow cooker, electric toaster
ovens
4596558 Electric ranges, electric cooktops;
electric deep fryers, electric grills,
electric slow cookers, electric toaster
ovens
3219697

Microwave ovens; electric toaster
ovens, electric slow cookers
2929519 SAMSUNG Microwave ovens; electric slow cookers
3253326 TAYAMA Barbecue grills, electric induction
cooking ranges; electric cooking grill,
electric slow cookers
3395241 VASTU Electric ranges; electric slow cookers,
electric grills, toaster ovens, deep
fryers.

31 As with the TOASTMASTER screenshot, we have considered the TOASTMASTER
registration over Respondent’s objection.
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Third-party registrations may serve to suggest that the goods and services are of a
type that may emanate from a single source. In re Mucky Duck Mustard Co., 6
USPQ2d 1467, 1470 n.6 (TTAB), aff'd per curiam, 864 F.2d 149 (Fed. Cir. 1988).
Petitioner also submitted web page printouts showing several of the marks in these
registrations in use.32 Id.
Mark Selected Goods
KENMORE Electric grills, slow cookers, and cooktops
FRIGIDAIRE Electric grills, slow cookers, and cooktops
KITCHENAID Toasters and slow cookers
PANASONIC33 Slow cookers and cooktops
TOASTMASTER Cooking ranges, toasters, hot plates, and electric grills

In view of the above, we find Petitioner’s and Respondent’s electric cooking
appliances inherently related products that are complementary in nature and may
emanate from the same source. The second du Pont factor also supports a finding of
likely confusion.
2. Channels of Trade
Considering the channels of trade and classes of purchasers, Respondent argues
that Petitioner’s goods are small kitchen appliances, while Respondent’s goods are

32 36 TTABVUE 144 (Petitioner’s NOR Ex. O). We have considered the TOASTMASTER
screenshot (144 TTABVUE 180) even though, as Respondent points out, such use is limited
to commercial cooking appliances. Daniel Murad testified that the mark KALORIK has been
used on professional toaster ovens (50 TTABVUE 43, 44, 67, and 70, and there are no
limitations in Respondent’s registration. The registration therefore covers domestic and
commercial cooking appliances. See, e.g., Levi Strauss & Co. v. Abercrombie & Fitch Trading
Co., 719 F.3d 1367, 101 USPQ2d 1167, 1173 (Fed. Cir. 2013).
33 Petitioner made of record a registration for the mark PANASONIC, but it was not use-
based. We therefore did not include it in the chart of third-party use-based registrations, but
we include it in the chart of webpage printouts.
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large kitchen appliances, and the goods are sold in different departments or aisles.
As such, Respondent contends that the established, likely-to-continue channels of
trade do not overlap.
Respondent’s argument is unpersuasive. Because there are no limitations as to
channels of trade or classes of purchasers in the registration, we must presume that
Respondent’s goods travel through all usual trade channels for such goods, including
buying clubs, online retailers, and traditional brick and mortar retail stores featuring
cooking appliances, both large and small, and to all classes of prospective purchasers
for those goods. See Paula Payne Prods Co. v. Johnson Publ’g Co., 473 F.2d 901, 177
USPQ 76, 77-78 (CCPA 1973).
The record confirms that Petitioner’s types of goods and Respondent’s types of
goods overlap in the same channels of trade. According to Daniel Murad, Petitioner
typically sells KALORIK cooking appliances “in department stores, online stores,
clubs, catalogs, discount stores” such as “BJ’s, Sam’s Club, Bloomingdales, Amazon,
Overstock, Kohl’s, Costco, Walmart Best Buy”34 and “Sears,”35 who generally sell
“electrical appliances, small and large,”36 and that the “end purchasers” are “[a]nyone
that likes to cook.”37 Likewise, Michael Stolle testified that “[w]e are covering most
channels of the distribution. We have retail stores. We have internet. We have catalog
companies. We have specialized stores. We have people who are more focusing on the

34 50 TTABVUE 49.
35 50 TTABVUE 51.
36 50 TTABVUE 51.
37 50 TTABVUE 49-50.
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sales of food like Aldi.”38 Mr. Stolle explained that Best Buy, Sam’s Club, and
“especially in the internet, internet-based customers they carry large and small
appliances.”39
Citing Federated Foods, 192 USPQ at 29, Respondent contends that “the law is
that products should not be deemed related simply because they are sold in the same
kind of store.”40 We agree. Indeed, we followed this well-settled principle when we
found, above, that the products are inherently and commercially related electric
cooking appliances. Contrary to Respondent’s argument, the instant proceeding is not
akin to the situation where disparate products, such as dog treats and human treats,
both are sold in supermarkets. See Recot, Inc. v. Becton, 214 F.3d 1322, 54 USPQ2d
1894, 1899-1900 (Fed. Cir. 2000) (absent some evidence that the products are sold in
close proximity to one another, the fact that the involved products are sold in
supermarkets did not weigh in favor of confusion being likely); Morgan Creek Prods.
Inc. v. Foria Int’l Inc., 91 USPQ2d 1134, 1142 (TTAB 2009) (“It has long been held
that the mere fact that two different items can be found in a supermarket,
department store, drugstore or mass merchandiser store is not a sufficient basis for
finding that the goods are related.”). Therefore, Daniel Murad’s and Michael Stolle’s
testimony that the electric cooking appliances offered by Petitioner and Respondent
generally are sold in different departments41 does not negate or in any way affect our

38 49 TTABVUE 39-40.
39 49 TTABVUE 42.
40 51 TTABVUE 45.
41 50 TTABVUE 83 (Daniel Murad Test.), 49 TTABVUE 42 (Michael Stolle Test.).
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finding that the goods move in the same channels of trade. The third du Pont factor
also favors likely confusion.
3. Conditions of Sale
With regard to the conditions of sale, Michael Lee testified that “the products that
we have sold under the Caloric mark … are in the thousands of dollars. They’re large
stainless steel built-in goods that you would go into like a Home Depot or a Lowe’s or
another retailer and spend time looking at and spending significant money on as part
of a remodel or, like I said, new construction.”42 On the other hand, Michael Stolle
testified that typical end purchasers of KALORIK branded cooking appliances are
“basically budget-minded customers. We are not – the Kalorik mark is not high end.
So we will be looking for younger families, families with lower income. I would say
our final customer is not overly sophisticated actually.”43
While purchasers of certain large electric cooking appliances, such as ranges and
barbecue grills, may be somewhat more discriminating in their purchases, that is not
true of all electric cooking appliances. For example, microwave ovens are relatively
inexpensive appliances that will be purchased by members of the general public,
including college and graduate students, who likely will exercise no more than
ordinary care in their purchasing decisions. Likewise, purchasers of inexpensive
toaster ovens and other small electric cooking appliances of the type Petitioner sells
under its mark KALORIK are ordinary consumers who use nothing more than

42 53 TTABVUE 29-30.
43 49 TTABVUE 41.
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ordinary care in making purchasing decisions. Moreover, even where there may be
some care taken in the purchasing process, consumers sophisticated or
knowledgeable in a particular field are not necessarily immune to source confusion.
See In re Shell Oil Co., 992 F.2d 1204, 26 USPQ2d 1687, 1690 (Fed. Cir. 1993); Top
Tobacco, LP v. N. Atl. Operating Co., 101 USPQ2d 1163, 1170 (TTAB 2011). We find
this factor to be neutral.
C. Respondent’s Additional Arguments
Respondent asserts in its brief that during prosecution of the application
underlying Petitioner’s pleaded registration, Petitioner argued that there was no
likelihood of confusion between its mark KALORIK and the (now expired) mark
CALORIC owned by a third party, and that “despite the PTO’s decision” to refuse
registration, “Petitioner commenced use of the KALORIK mark in commerce as if no
confusion existed, thereby indicating that it rejected the PTO’s position regarding
likelihood of confusion.”44 Respondent urges us to “explore Petitioner’s inconsistent
position related to likelihood of confusion”45 to demonstrate that Petitioner did not
believe there was confusion between KALORIK and CALORIC when Petitioner began
to use the KALORIK mark.46 We decline to make this leap in logic, as it is a purely
speculative position.

44 51 TTABVUE 31.
45 51 TTABVUE 30.
46 As noted above, the Board previously struck Respondent’s affirmative defense of “estoppel,”
which had been based on essentially the same contentions. 32 TTABVUE 13-14.
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Moreover, as the Board previously instructed, and as Respondent acknowledges
in its brief, to the extent that Petitioner took a contrary position during prosecution
of the application underlying its pleaded registration, Petitioner’s actions are “merely
illuminative of shade and tone in the total picture confronting the decision maker,”
and cannot serve as an admission against interest or substitute for the Board in
reaching its own ultimate conclusion on the record now before us.47 See Specialty
Brands, Inc. v. Coffee Bean Distributors, Inc., 748 F.2d 669, 223 USPQ 1281, 1283
(Fed. Cir. 1984) (“[T]hat a party earlier indicated a contrary opinion respecting the
conclusion in a similar proceeding involving similar marks and goods is a fact, and
that fact may be received in evidence as merely illustrative of shade and tone in the
total picture confronting the decision maker.”); Interstate Brands, Corp. v. Celestial
Seasonings, Inc., 576 F.2d 926, 198 USPQ 151, 154 (CCPA 1978) (finding that a
likelihood of confusion argument made in support of an application for registration is
a legal conclusion, and therefore, cannot constitute an admission because only facts
may be admitted). See also Domino's Pizza Inc. v. Little Caesar Enters. Inc., 7
USPQ2d 1359, 1365 (TTAB 1988) (“the fact that opposer once indicated a different
opinion that it now maintains would simply be one fact to be considered, together
with all of the other facts of record (which, in our opinion, would far outweigh this
one “fact”), in our determination of this case.”).

47 32 TTABVUE 14 (February 27, 2012 Board Order); 51 TTABVUE 32 (Respondent’s brief).
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Respondent also asks us to “touch on Petitioner’s offer to purchase Respondent’s
CALORIC mark,” 48 suggesting that Petitioner intended to use the mark in commerce,
and “[t]hus, Petitioner’s argument that the two marks are confusing has been
debunked by Petitioner’s own attempt to acquire and use a mark that it now claims
can’t coexist without confusion.”49 However, the record does not support a finding that
there was such an “offer,” that if there was an “offer,” it was made by, or on behalf of,
Petitioner, or that Petitioner intended to use the mark CALORIC. Indeed,
Respondent’s witnesses Uri Murad50 and Ray Uhlir51 confirm that there were
discussions between them concerning the purchase of Respondent’s mark CALORIC,
but neither testified that Petitioner offered or accepted an offer to purchase the mark
CALORIC. Rather, they both testified that Respondent made an offer to sell the
mark.52 In addition, Uri Murad testified that he is not and never has been an
employee of Petitioner (“I’ve never worked in that company in my life and I’ve never
received any salary from them ever in my life.”53), and that he considered leaving
TIGA and purchasing Respondent’s mark CALORIC for his own use.54 Although
Respondent in its brief questions the veracity of this testimony, the testimony stands

48 51 TTABVUE 30.
49 51 TTABVUE 33.
50 54 TTABVUE 14-15.
51 53 TTABVUE 242-243
52 54 TTABVUE 14-15 and 53 TTABVUE 242-243, 247.
53 54 TTABVUE 29. See generally 54 TTABVUE 21-27.
54 54 TTABVUE 12-19.
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unrebutted. Finally, Respondent’s contention about Petitioner’s purported intention
to use the mark CALORIC lacks evidentiary support.
VI. Affirmative Defense - Unclean Hands/Misuse of Registration Symbol
We now address Respondent’s affirmative defense that Petitioner has unclean
hands based on Petitioner’s improper use of the federal registration symbol on goods
for which Petitioner has no registration. To establish this defense, Respondent must
show that Petitioner’s alleged misuse of the symbol “was undertaken with fraudulent
intent.” Barbara’s Bakery Inc. v. Landesman, 82 USPQ2d 1283, 1292 (TTAB 2007)
(unclean hands defense based on plaintiff’s alleged misuse of the federal registration
symbol). Accord Winnebago Indus., Inc. v. Oliver & Winston, Inc., 207 USPQ 335, 342
(TTAB 1980) (where opposer raised affirmative defense of unclean hands in its
answer to applicant’s counterclaim, Board stated: “It is well settled that the use of
the registration symbol in connection with a mark that has not been registered in the
United States Patent and Trademark Office may constitute an erroneous use, but to
show that such use constitutes ‘unclean hands’ so as to bar the registration of
applicant’s mark, it is incumbent upon opposer to show an intent to mislead or deceive
in fact.”). Cf. Copeland’s Enters. Inc. v. CNV Inc., 945 F.2d 1563, 20 USPQ2d 1295,
1298 (Fed. Cir. 1991) (opposer must “conclusively establish” that applicant misused
the symbol “with the intent to deceive or mislead the purchasing public or others in
the trade into believing that the mark was registered.”) (quoting Johnson Controls,
Inc. v. Concorde Battery Corp., 228 USPQ 39, 44 (TTAB 1985)); Fort Howard Paper
Co. v. Federated Foods, Inc., 189 USPQ 310, 314 (TTAB 1975) (“improper use of a
Cancellation No. 92057196
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registration notice by an applicant is actionable only when it can be conclusively
established that such use was occasioned by an intent, actual or implied, to deceive
the purchasing public or even others in the trade into believing that the mark is in
fact a registered mark entitled to all the presumptions under Section 7(b) of the
Statute.”), aff’d, 544 F.2d 1098, 192 USPQ 24, 27 (CCPA 1976).
Petitioner has been on notice regarding Respondent’s assertion that it misused
the federal registration symbol since Respondent filed its answer on June 24, 2013.
Generally, however, a party rebuts any inference of fraudulent intent raised by the
notice by either correcting the misuse or offering an explanation to establish mistake
or inadvertence. See Barbara’s Bakery, 82 USPQ2d at 1292; Indep. Grocers’ Alliance
Distrib. Co. v. Zayre Corp., 149 USPQ 229, 230 (TTAB 1966) (improper use of
registration symbol does not constitute unclean hands because opposer has no
intention to deceive public and opposer has started to “purge[] itself” of merchandise
shipped in boxes bearing the registration symbol”).
Michael Stolle testified that he believed Petitioner was entitled to use the
registration symbol because Petitioner owns registrations for the KALORIK mark in
the United States, China, and most countries in Europe.55 Daniel Murad shared this
belief (“Because the Kalorik mark has been registered for many years in Europe and
worldwide, so we basically just used that same European logo with the ‘R’ and placed
it on the U.S. products.”56). This testimony, which we find plausible and credible,

55 49 TTABVUE 50-52.
56 50 TTABVUE 61.
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demonstrates that any “misuse” was an honest mistake based on an erroneous belief,
rather than fraudulent behavior. Mr. Stolle57 and Mr. Murad58 also testified that they
never intended to deceive the public by using the registration symbol, and
Respondent has not disputed this testimony.
In addition, Mr. Stolle and Mr. Murad testified that although Petitioner did not
recall any KALORIK products that were already in the United States market,
Petitioner immediately stopped using the registration symbol on new KALORIK
products that would be shipped to the United States when it learned that such use
could be improper in the United States.59 Respondent has cited no authority, and we
are aware of none, that requires a party to “immediately cease using the registration
symbol on its goods and boxes after being told to cease such use.”60
Petitioner has offered a credible explanation for its technical misuse of the
registration symbol, and Petitioner has taken action to correct the “misuse. On this
record, we cannot conclude that Petitioner’s “misuse” of the registration symbol was
undertaken with fraudulent intent or that it constitutes unclean hands. We therefore
find that Respondent has failed to prove this affirmative defense.

57 49 TTABVUE 53.
58 50 TTABVUE 61.
59 49 TTABVUE 49-53 (Stolle Test.); 50 TTABVUE 59-60 (Murad Test.). On cross-
examination, Mr. Murad explained that the registration symbol only appeared on boxes for
the KALORIK products, and that Petitioner had to “phase away from the boxes that had the
‘R’ symbol and start bringing them without the ‘R’ symbol.” 50 TTABVUE 80-81.
60 51 TTABVUE 52.
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VII. Conclusion
We conclude, after considering all evidence and arguments bearing on the relevant
du Pont factors, including the evidence and arguments that we have not specifically
discussed herein, that Respondent’s mark CALORIC, as used on the goods identified
in the registration, so resembles Petitioner’s pleaded common law mark KALORIK,
displayed as , as used on inherently and commercially related electric
cooking appliances, as to be likely to cause confusion, mistake, or deception. The
apparently inconsistent position Petitioner took with respect to a third-party’s now-
expired registration does not, in our judgment, outweigh these considerations. In view
thereof, Petitioner has proved its claim under Section 2(d) of the Trademark Act. We
further find that Respondent has not proved the affirmative defense of unclean
hands.61
Decision: The petition to cancel is sustained. The registration will be cancelled
in due course.

61 Accordingly, we need not and do not reach the merits of Petitioner’s abandonment and
fraud claims. Nor do we need to decide whether the parties tried, by implied consent,
Petitioner’s claim (raised for the first time it Petitioner’s brief) that Respondent was not the
owner of the mark when it filed the application underlying the subject registration.