TGC Int’l., Inc.v.Novus Marketing, Inc.

Trademark Trial and Appeal Board

Sep 30, 1998

No. 91096993 (T.T.A.B. Sep. 30, 1998)

THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB SEPT 30, 98
Hearing: Paper No. 22
September 25, 1997 RLS/TAF
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
_____
Trademark Trial and Appeal Board
______
TGC International, Inc.
v.
Novus Marketing, Inc.
_____
Opposition No. 96,993
to application Serial No. 74/463,461
filed on November 26, 1993
_____
John A. Clifford of Merchant, Gould, Smith, Edell, Welter &
Schmidt, P.A. for TGC International, Inc.
Jana P. Gonzalez of Meagher & Geer, PLLP for Novus
Marketing, Inc.
______
Before Sams, Simms and Walters, Administrative Trademark
Judges.
Opinion by Simms, Administrative Trademark Judge:
TGC International, Inc. (opposer), a Canadian
corporation, has opposed the application of Novus Marketing,
Inc. (applicant), a Minnesota corporation, to register the
mark NOVUS MARKETING, INC. for direct response advertising
services for others, namely, placing advertisements in print
media; list brokerage; list management; and bartering the
Opposition No. 96,993
2
goods and services of others.1 In the notice of opposition,
opposer has asserted that it and its predecessors (Novus,
Inc. and Novus Franchising, Inc.) have used the mark NOVUS
since 1974; that opposer is the world’s largest franchisor
of automotive glass repair and replacement services; that
opposer owns six registrations all containing the word NOVUS
for various goods and services such as insurance claims
administration, repair of windshields, polymerizable
material for glass repair, plastic polish and windshield
repair kits; that the mark NOVUS is famous and well-known
throughout the United States; that opposer offers marketing
assistance to its franchisees; and that its franchisees
advertise in print media and use direct response
advertising. Opposer alleges that applicant’s mark used in
connection with applicant’s services so resembles opposer’s
previously used and registered mark as to be likely to cause
confusion, to cause mistake or to deceive.2 In its answer,
applicant has denied the essential allegations of the
opposition and has asserted that the term NOVUS is “common”
and that it cannot be “distinctive”. Applicant has also

1 Application Serial No. 74/463,461, filed November 26, 1993,
based upon use in commerce since on or before January 1, 1987. In
the application, the words “MARKETING, INC.” have been
disclaimed.
2 We also note that, in Paragraph 11 of its pleading, opposer
asserted that registration to applicant “will result in damage to
Opposer under the provisions of §2(a)…” However, opposer has not
pressed any Section 2(a) claim. Therefore, no further
consideration will be given to this claim.
Opposition No. 96,993
3
asserted that opposer’s claim is barred by the defenses of
laches and estoppel.3
The record of this case consists of an official record
filed with the Minnesota state government (a Uniform
Franchise Offering Circular), submitted with applicant’s
notice of reliance; and testimony and exhibits taken by both
parties. The parties have submitted briefs and an oral
hearing was held.
The Record
According to the testimony of Ms. Sandra Henderson,
general counsel and chief administrative officer of Novus,
Inc., a wholly owned subsidiary of opposer, Novus, Inc. is
the largest franchisor in the field of windshield repair and
replacement. Founded in 1972, Novus, Inc. originally sold
windshield repair kits but has grown to be a large
franchisor having 474 franchisees in the United States which
conduct windshield repair and/or replacement business.
According to Ms. Henderson, Novus, Inc. promotes its
business to insurance companies, utilities, government, to
automobile fleet owners (rental car companies, automobile
dealers, etc.) and to the general public by a number of
means including television, radio, print media, direct mail,
billboard advertising and the Yellow Pages. Franchisees of
Novus, Inc. pay two percent of their gross sales into an

3 Applicant has offered no testimony or evidence concerning these
Opposition No. 96,993
4
advertising fund. Novus, Inc. provides marketing assistance
to its franchisees, which, according to Ms. Henderson,
includes placing direct response advertising for its
franchisees as well as “list management” for offering or
managing mailing lists. Over the last 25 years, Novus, Inc.
and its franchisees have replaced over 18 million
windshields.
According to Ms. Henderson, receptionists have told her
that they receive ten to twenty phone calls per month
intended for applicant.4 An exhibit shows that applicant’s
Yellow Pages listing is sandwiched between listings for
Novus, Inc. in the Minneapolis phone directory. Because of
these calls, applicant’s phone number is included in the
receptionists’ desktop phone directory.
Applicant took the testimony of Scott Jagodzinski, its
chief operating officer. Applicant, which began using its
mark in 1987, is engaged in print media buying, list

affirmative defenses.
4 Applicant has objected to this testimony of misdirected phone
calls by the general counsel on the basis of lack of foundation
and hearsay. Even if considered, however, applicant maintains
that these calls are not evidence of actual confusion and, in any
event, are de minimis. Because it appears that the receptionists
report to the general counsel, we will consider this evidence.
See Finance Co. of America v. BankAmerica Corp., 205 USPQ 1016,
1035 (TTAB 1979, amended 1980), aff’d. unpub’d., Appeal No. 80-
558 (Feb. 12, 1981, CCPA)(testimony allowed from employees
involved in receipt or tabulation of misdirected mail or calls,
from solicitors, and from a bank official who detailed matters
occurring in his sphere of operations). See also, Roux
Laboratories, Inc. v. La Cade Products Co., 192 USPQ 458, 460-61
(TTAB 1976) and Procter & Gamble Co. v. Keystone Automotive
Warehouse, Inc., 191 USPQ 468, 471 (TTAB 1976).
Opposition No. 96,993
5
brokerage and list management services. In connection with
its media buying services, applicant buys direct response
print advertisements for its clients in newspapers and
magazines, and, with respect to its list services, markets
customer files to its clients. Applicant’s services are
rendered to executives at direct marketing companies such as
Nordic Track, Select Comfort, Gateway 2000 and Sharper
Image, and the mark is not exposed to the general public
(Jagodzinski dep., 8). Applicant has over 100 customers.
When asked about third-party uses of the mark or name
NOVUS, Mr. Jagodzinski testified that he knew of Novus
Financial Network, and that some inquiries have been
received concerning applicant’s relationship, if any, to
that entity (dep., 38). However, applicant has never
received phone calls or misdirected mail intended for
opposer.
According to applicant’s testimony, applicant does not
engage in the franchising business. The witness conceded
opposer’s prior use, but maintains that confusion is
unlikely because the parties are engaged in different and
non-competing activities.
Applicant’s record also consists of a copy of the
Uniform Offering Circular for Prospective Franchisees filed
in March 1996 with the State of Minnesota. In this
statement, opposer indicated that it “knows of no rights
Opposition No. 96,993
6
held by others, nor any infringing uses that could
materially affect [franchisees’] use of any of [opposer’s
marks].”
According to the testimony of Ms. Jennifer Jasper, a
receptionist working for applicant, she has never received
any calls or mail which was intended for opposer or one of
opposer’s affiliated companies.
Arguments of the Parties
Opposer argues that the evidence shows that it is a
franchisor and that it also provides business support and
marketing services to its franchisees under the mark.
Opposer argues that applicant, too, provides marketing
assistance to businesses. Both parties, therefore, provide
such services as purchasing print advertising and offering
mailing lists. Opposer points out that applicant’s
identification of services is not restricted as to channels
of trade or class of purchasers.
With respect to the marks, opposer maintains that its
mark is famous in the field with about 500 franchisees
offering windshield repair and replacement services, and
that NOVUS is the dominant part of both parties’ marks.
Since there is no evidence of third-party use and because
opposer contends there has been actual confusion, opposer
asks that the opposition be sustained.
Opposition No. 96,993
7
Applicant, on the other hand, argues that opposer’s
registrations pertain to windshield repair and replacement
goods and services, and that opposer’s advertising services
are rendered to those who own and operate its glass repair
franchisees. In other words, opposer’s media services are
not offered to the general public, applicant maintains, and
opposer’s franchisees must be assumed to know the entity
which is rendering marketing assistance to them and are not
likely to be confused.5 Applicant maintains that there is
no overlap in potential purchasers because it offers its
direct marketing services to the direct advertising market,
and, more particularly, to marketing directors of direct
marketing companies. Because the purchasers of applicant’s
services are not impulse purchasers but high-level
executives who use care before spending considerable sums on
advertising services, applicant argues that confusion is not
likely. Finally, applicant argues that the incidents of
misdirected calls and mail, if considered by the Board, do
not constitute actual confusion if caused by inattentiveness
by the caller or by the letter-sender.
Opinion
First, it is well established that priority is not an
issue in an opposition where the opposer makes of record its

5 In its reply brief, 7, opposer maintains that franchisees are
among the group of people who may be confused by the use of
applicant’s mark.
Opposition No. 96,993
8
valid and subsisting registrations. King Candy Co. v.
Eunice King’s Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108
(CCPA 1974). Of course, opposer may also rely on its common
law use of the pleaded mark NOVUS, and applicant does not
dispute opposer’s priority with respect to this use. Of
course, we must determine the issue of likelihood of
confusion on the basis not only of the pleaded registrations
but also on the basis of whatever common law uses opposer
has shown. Squirtco v. Tomy Corp., 697 F.2d 1038, 216 USPQ
937, 939 (Fed. Cir. 1983).
Upon careful review of this record, we believe that,
although the dominant parts of the respective marks are
clearly similar, opposer’s marketing services rendered only
to its franchisees, and applicant’s advertising services,
are sufficiently unrelated as to channels of trade and
potential purchasers that confusion is unlikely. As
applicant has pointed out, opposer’s services are offered
only to its franchisees, who must be considered relatively
sophisticated purchasers who know with whom they are
dealing. They are not likely to contact applicant to
provide advertising services, but will contact the
franchisor for marketing assistance. Even considering
applicant’s description broadly, as we must, we believe it
unlikely that any of opposer’s advertising customers will be
confused.
Opposition No. 96,993
9
While there is evidence of misdirected phone calls in
the Minneapolis area, we believe that those calls can
largely be explained by the placement of applicant’s Yellow
Pages listing between those of Novus, Inc. In any event,
the testimony is not precise enough for us to conclude that
the phone calls were instances of actual confusion.
As to opposer’s pleaded registrations relating to
windshield repair and replacement goods and services, we
conclude that those goods and services are simply too
unrelated to applicant’s direct response advertising
services to be likely to cause confusion.
Decision: The opposition is dismissed.
J. D. Sams
R. L. Simms
C. E. Walters
Administrative Trademark
Judges, Trademark Trial
and Appeal Board