The Bear Partnership and Wings Research and Develop-ment, S.r.Lv.Bear U.S.A., Inc.

Trademark Trial and Appeal Board

Nov 30, 2004

No. 91119974 (T.T.A.B. Nov. 30, 2004)

Mailed:
30 November 2004
UNITED STATES PATENT AND TRADEMARK OFFICE
_____
Trademark Trial and Appeal Board
______
The Bear Partnership and Wings Research and Development,
S.r.L.1
v.
Bear U.S.A., Inc.
_____
Opposition Nos. 91119974 and 91120597
to application Serial Nos. 75063344 and 75063345
_____
Mitchell N. Reinis of Buchalter, Nemer, Fields & Younger for
The Bear Partnership and Wings Research and Development,
S.r.L.
Timothy J. Kelly of Fitzpatrick, Cella, Harper & Scinto for
Bear U.S.A., Inc.
______
Before Simms, Walters, and Drost, Administrative Trademark
Judges.
Opinion by Drost, Administrative Trademark Judge:
On February 26, 1996, Bear U.S.A., Inc. (applicant)
applied to register two marks for the term BEAR. Serial No.
75063344 is for the mark BEAR shown in typed form for “all
purpose athletic sport and duffel bags” in International
Class 18 and for “clothing, namely, parkas, jackets, shirts,
1 In a paper dated June 24, 2004, the board joined Wings Research
and Development, S.r.L., as a party plaintiff in view of the
assignment of the pleaded registration.
THIS DISPOSITION IS
NOT CITABLE AS
PRECEDENT OF THE TTAB
Opposition Nos. 91119974 and 91120597
2
hats, headbands and footwear” in International Class 25.
The application alleges a date of first use of May 1993 and
a date of first use in commerce of November 1993. The
second application (No. 75063345), based on an allegation of
a bona fide intention to use the mark in commerce, is for
the mark BEAR and design shown below for “clothing, namely,
parkas, jackets, T-shirts, technical pants, underwear, cold
weather hats, headbands, footwear (excluding golf shoes),
and denim products, namely, jeans, shorts, shirts, jackets
and hats” in International Class 25:
On August 10 and 18, 2000, The Bear Partnership
(opposer) filed oppositions to the registration of
applicant’s marks on the ground that applicant’s marks are
likely to cause confusion with opposer’s registered mark
(No. 2,221,077) shown below for “posters, stickers and
decals” in International Class 16; “beach towels” in
International Class 24; and “pants, pantsuits, shirts,
skirts, slacks, sweatsuits, sweaters, T-shirts, tank tops,
blouses, jackets, trousers, pull over shirts, vests,
Opposition Nos. 91119974 and 91120597
3
jumpers, coveralls, cardigans, dresses, rompers, jumpsuits,
leggings” in International Class 25.2
While it is not clear from the drawing above, the
registration contains the words BEAR SURF BOARDS. The
registration also indicates that the mark is lined for the
color red. The underlying application was filed on June 6,
1996 and it alleged a date of first use and a date of first
use in commerce on May 1992. The registration issued on
February 2, 1999.
Opposer also alleges that it “has adopted and has
continuously used the trademark BEAR SURFBOARDS (AND
DESIGN), a copy of which is attached as Exhibit ‘A’ hereto3
and incorporated herein, in interstate commerce, from at
least as early as May, 1992.” Opposer is, therefore, also
relying on its common law rights.
2 In its notice of opposition in No. 91119974 (pp. 1-2) involving
application No. 75063344 for goods in International Classes 18
and 25, opposer paid a single fee of $300. Opposer indicated
that “it will be damaged by registration of the mark in the
above-identified application Serial No. 75/063,344 as it relates
to goods in class 25.” Therefore, regardless of the outcome of
this proceeding, applicant will be entitled to a registration for
the goods in Class 18, to which there is no opposition.
3 Interestingly, Attachment A actually is for the mark BEAR and
diamond design without the words SURF BOARDS or SURFBOARDS.
Opposition Nos. 91119974 and 91120597
4
Applicant has denied the salient allegations of the
notice of opposition. On September 14, 2001, the board
consolidated the two oppositions for “purposes of evidence
and final decision.”4 Both parties have filed briefs,5 but
subsequently proceedings were suspended so that the parties
could explore the possibility of settlement. When no
settlement agreement was reached, an oral hearing was held
on June 29, 2004.6
The Record
The record consists of the pleadings, the files of the
involved applications; the trial testimony deposition, with
accompanying exhibits, of Stephen Paul Holmes, opposer’s
licensee; the trial testimony deposition, with accompanying
exhibits, of Richard G. Reinis, opposer’s managing partner;
the trial testimony deposition, with accompanying exhibits,
of Thomas Hong, applicant’s president; and the rebuttal
testimony by affidavit of Richard G. Reinis submitted by
4 The decision consolidating the proceedings was miscaptioned.
5 On May 29, 2002, the board denied applicant’s motion to strike
opposer’s brief in Opposition No. 91120597 because of the
confusion regarding the consolidation order.
6 On December 31, 2001, applicant filed a petition to cancel (No.
92040216) opposer’s Registration No. 2,221,077 for the goods in
International Class 25. On June 24, 2004, the board denied
applicant’s motion to suspend proceedings in the oppositions
pending the outcome of the cancellation proceeding. The board
noted that “applicant waited for over two years, after trial,
briefing and rescheduling of the oral hearing, before notifying
the Board that its pending cancellation proceeding may have a
bearing on the instant opposition.” Order at 3. We agree and we
will not further delay this case that is ready for decision to
await the outcome of the cancellation proceeding that applicant
failed to bring to our attention for more than two years.
Opposition Nos. 91119974 and 91120597
5
consent; and applicant’s first Notice of Reliance filed
August 14, 2001 for numerous BEAR registrations of
applicant.7
In its brief in Opposition No. 91120597, opposer also
indicates that opposer’s responses to applicant’s first set
of interrogatories and applicant’s responses to opposer’s
first set of interrogatories are part of the record.
Applicant objects to these items as part of the record,
because they were not properly filed by Notice of Reliance.8
There is no record in either opposition file that these
responses were submitted. Therefore, we do not consider
them to be part of the record.
Discussion
The first issue we must address in these proceedings is
the status of opposer’s Registration No. 2,221,077. If this
registration is of record, priority would not be an issue.
See King Candy Co. v. Eunice King’s Kitchen, 496 F.2d 1400,
182 USPQ 108, 110 (CCPA 1974). There are several ways for a
party to introduce a registration it owns into evidence in a
7 After oral argument, opposer submitted a copy of a decision by
the Office for Harmonization in the Internal Market involving a
European Community Trade Mark opposition. On July 29, 2004,
applicant objected to the submission of this decision. Inasmuch
as we must determine the issues in this case under the laws of
the United States, we will not consider the decision of this
tribunal.
8 Applicant also correctly points out that it did not submit
opposer’s answers to its interrogatories and a party, therefore,
may not submit its own answers to interrogatories by Notice of
Reliance. 37 CFR § 2.120(j)(5).
Opposition Nos. 91119974 and 91120597
6
board proceeding. The most common way is to attach to the
notice of opposition two copies of the registration prepared
and issued by the USPTO showing both current status and
title or to submit such copies under notice of reliance. 37
CFR § 2.122(d). Opposer has not provided such copies.9
Other ways a party’s registration will be considered to be
of record include by identification and introduction during
the testimony period by a qualified witness who testifies
concerning the status and title of the registrations; by
admission in the applicant’s answer; or by the applicant
treating the registration as being of record in its brief.
TBMP § 702.03(a). While opposer’s witness (Reinis) did
introduce a copy of the registration certificate (Ex. 1) and
a copy of an assignment to Bear Partnership dated 1999 as
part of his testimony, the witness did not testify as to the
current status and title of the registration. Reinis dep.
Ex. 35. Furthermore, applicant did not admit the existence
of the registration in its answer and, inasmuch as applicant
contests the validity of the assignment of the mark to
opposer, we cannot say that applicant has treated the
registration as being of record.
The Trademark Rules provide a means for implementing
this proof of a prima facie case. They require that,
9 While opposer did attach copies of its registration to the
notices of opposition, these copies do not contain status and
title information. They appear to be copies of the original
certificate of registration that issued approximately eighteen
months before the oppositions were filed.
Opposition Nos. 91119974 and 91120597
7
in an opposition proceeding, registrations may be
entered into evidence by (1) furnishing two copies of
each registration prepared and issued by the Patent and
Trademark Office showing both the current status of and
current title to the registration; (2) appropriate
identification and introduction of the registrations
during the taking of testimony; or (3) filing a notice
of reliance on the registrations during Opposer's
testimony period. 37 C.F.R. § 2.122(d) (emphasis
added). These rules are simple and clear, but Hewlett
did not follow them.
Hewlett-Packard Co. v. Olympus Corp., 931 F.2d 1551, 18
USPQ2d 1710, 1713 (Fed. Cir. 1991) (Federal Circuit affirmed
the Board’s dismissal of an opposition for failing to
present a prima facie case of likelihood of confusion). We,
therefore, conclude that opposer has not properly made its
registration of record.
Therefore, priority remains an issue and opposer must
demonstrate that it has priority in order to prevail on its
likelihood of confusion claim.
Even without the registration, we determine that
opposer has standing in these proceedings. An opposer must
have “a ‘real interest’ in the outcome of a proceeding in
order to have standing.” Ritchie v. Simpson, 170 F.3d 1092,
50 USPQ2d 1023, 1025 (Fed. Cir. 1999). “To establish a
reasonable basis for a belief that one is damaged by the
registration sought to be cancelled, a petition may assert a
likelihood of confusion which is not wholly without merit.”
Lipton Industries v. Ralston Purina Co., 670 F.2d 1024, 213
Opposition Nos. 91119974 and 91120597
8
USPQ 185, 189 (CCPA 1982).10 The evidence of record does
show that opposer is the source of clothing items with which
it uses its BEAR SURF BOARDS and design mark. Therefore,
opposer has a real interest in the outcome of these
proceedings.
Thus, the remaining issues in this case are priority
and likelihood of confusion. Opposer bears the burden of
proof, by a preponderance of the evidence, on these issues.
See Cerveceria Centroamericana, S.A. v. Cerveceria India
Inc., 892 F.2d 1021, 13 USPQ2d 1307, 1309 (Fed. Cir. 1989);
Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d
1842, 1848 (Fed. Cir. 2000).
The key issue in this case is whether opposer has
demonstrated that it has priority. Both applications in
this case were filed on February 26, 1996. An applicant is
entitled to rely on the application’s filing date for its
priority date. Zirco Corp. v. American Telephone and
Telegraph Co., 21 USPQ2d 1542, 1544 (TTAB 1991) (“[T]here
can be no doubt but that the right to rely upon the
constructive use date comes into existence with the filing
of the intent-to-use application and that an intent-to-use
applicant can rely upon this date in an opposition brought
10 Because of the linguistic and functional similarities of the
opposition and cancellation provisions of the Lanham Act, “we
construe the requirements of those two sections of the Lanham Act
consistently.” Ritchie, 50 USPQ2d at 1025 n. 2.
Opposition Nos. 91119974 and 91120597
9
by a third party asserting common law rights”). However, an
applicant can establish a priority date earlier than its
application’s filing date. Corporate Document Services inc.
v. I.C.E.D. Management Inc., 48 USPQ2d 1477, 1479 (TTAB
1998) (“[A]n intent-to-use applicant is entitled to rely
upon actual use, or use analogous to trademark use, prior to
the constructive use date of the intent-to-use
application”). In this case, one application is a use-based
application (No. 75063344) and the other is an intent-to-use
application (No. 75063345). If an applicant is attempting
to prove a date of use earlier than that alleged in its use-
based application, the applicant must prove this date by the
clear and convincing evidence standard. Martahus v. Video
Duplication Services Inc., 3 F.3d 417, 7 USPQ2d 1846, 1852
n.7 (Fed. Cir. 1993) (“VCDS alleges use prior to the date
that it apparently listed in its registration application as
its date of first use, i.e., prior to May of 1985, and
therefore VCDS has the burden of establishing that use by
clear and convincing evidence instead of mere preponderance
of the evidence”). Otherwise, the preponderance of the
evidence standard is the appropriate standard. Hydro-
Dynamics Inc. v. George Putnam & Company Inc., 811 F.2d
1470, 1 USPQ2d 1772, 1773 (Fed. Cir. 1987) (“Where an
applicant seeks to prove a date earlier than the date
alleged in its application, a heavier burden has been
Opposition Nos. 91119974 and 91120597
10
imposed on the applicant than the common law burden of
preponderance of the evidence”).
We begin our analysis with a review of the evidence
that applicant has used the mark BEAR for the goods
identified in its applications,11 i.e., parkas, jackets,
shirts, hats, headbands and footwear.12 In its brief (p.
11), applicant alleges that “in 1993, Bear [applicant] sold
its first products, which consisted of down vests and parkas
carrying the trademarks BEAR MOUNTAIN and BEAR.”
Applicant’s witness was Thomas Hong, applicant’s president
since applicant’s inception in April of 1994. Hong dep. at
8-9. Prior to that, he worked for his parents’ store, KP
Original, in New York City. Hong dep. at 9-10. “KP
Original was the predecessor to Bear U.S.A.” Hong dep. at
22. The witness testified that applicant’s predecessor
marketed a parka (Ex. 3) that “had the word ‘Bear’ and the
leather patches on the back neck collar since 1993.” Hong
dep. at 31. See also Hong dep. at 18 (Sold the “latter part
of 1993”), Ex. 2 (vest). Applicant’s invoices (Hong Ex. 24)
show sales of Bear products in 1993. See, e.g., # 1066
dated December 10, 1993 (“6 Bear Blk XL 3534B”) and # 1081
dated December 15, 1993 (“24 Bear Blk 3534B L”). Indeed,
some invoices are even earlier. See, e.g., # 1036 dated
11 These goods are virtually the same in both applications.
12 As noted earlier, the opposition does not seek to oppose the
goods in International Class 18.
Opposition Nos. 91119974 and 91120597
11
November 12, 1993 (“12 Bear BLK vest”); # 1007 dated
November 24, 1993 (“20 Bear 3534 Navy XL); and # 1009 dated
November 12, 1993 (“20 Bear BLK 3834, 20 Bear vest BLK
3524”). In its testimony, applicant identified clothing
items and testified that they were sold in 1993 and
applicant’s invoices support this use. Thus, the evidence
supports applicant’s use of the mark BEAR on parkas and down
vests since at least December of 1993.
Both applicant’s word mark and word mark with the polar
bear design are still in use. See Hong dep. at 43 and
Exhibits 5, 28, and 39.
Therefore, we now look at opposer’s evidence to
determine primarily if it has been using the mark prior to
applicant’s earliest priority date of December 1993. Much
of opposer’s evidence for priority involves the movie “Big
Wednesday.” “Warner Brothers featured a film called Big
Wednesday, directed by John Milius, which first ran in 1978,
and it is considered to be the second most successful surf
film ever made.” Reinis dep. at 9. The BEAR SURF BOARDS
mark was “featured prominently in the film.” Reinis dep. at
19. While there is some evidence that another entity
advertised some clothing items and surfboards with the BEAR
SURF BOARD logo shortly after the movie was released, we
cannot conclude that this use has been continuous or that
opposer can rely on this use. See, e.g., Reinis Ex. 59
Opposition Nos. 91119974 and 91120597
12
(Surfer magazine December 1978 “Don’t wait, or you’ll be too
late! Rare underground special. Two special T-shirt
designs you’ll never again have a chance to score”).13
While opposer refers to these earlier uses, it essentially
argues that it “has continuously used its ‘BEAR AND DESIGN’
mark in connection with its goods since at least as early as
May 1992.” Opposer’s Brief at 19.14 If opposer had used
the mark in May of 1992, it would have priority. Most of
opposer’s evidence postdates applicant’s priority date of
December 1993. Exhibits 2 (1995), 3 (1995), 4 (2001), 9
(1995), 11 (2001), 12 (2001), 13 (1997), 14 (1996), 15
(1996), 16 (1998), 17 (2000), 20 (1995), 21 (2000), 22
(2000), 23 (2000), 25 (1999), 26 (1997), 27 (1996), 28
(1996), 29 (1999), 30 (2001), 31 (2000), 32 (2000), 35
(1999), 39 (1995), 43 (1995), 44 (1995), 45 (1996), 49
(1997), 50 (1996), 51 (2000), 52 (1995), 54 (1996), 56
(1996), 58 (1997), 61 (1996), and 62 (1999).
However, opposer’s witness did testify about exhibit 6
and identified it as “a T-shirt similar to T-shirts that The
Bear Partnership sold directly or though licensees since
13 Reinis Ex. 60 involves a 1986 license but under “Trademarks”
the license refers to “Logo from Licensor’s motion picture
entitled “Big Wednesday’” and, under “Licensed Product(s),” it
refers to the “‘Big Wednesday’ logo will be utilized on apparel,
hangtags and labels.”
14 Indeed, opposer’s Exhibit 52, p.3, suggests that there was a
hiatus in the use of the BEAR trademark (“In closing I feel that
it is very important that the licensee and licensor work very
closely to execute bringing the bear label back to the market
place”).
Opposition Nos. 91119974 and 91120597
13
1992 or three.” Reinis dep. at 24. The same witness
described exhibit 7 as follows: “this is likely to be a
heavier weight T-shirt or lighter weight sweatshirt – it’s
hard to tell from this photograph – with the Bear logo, and
it’s used in this context in the way it’s been used since
1992 or 1993.” Reinis dep. at 24-25. This vague and
general testimony is not definite enough to establish that
opposer was using the mark on these clothing items prior to
applicant’s priority date. The witness could only specify a
twenty-four month period as a date of possible use (1992-
93). It is possible that this window could be somewhat
longer and include 1994. This vague testimony is not
supported by documentation. Elder Mfg. Co. v. International
Shoe Co., 194 F.2d 114, 92 USPQ 330, 333 (CCPA 1952) (“The
testimony shows [appellant] carried on an extensive business
and sold collars on a large scale. However, there is no
evidence of any advertising or of sales of any product to
any particular customers, nor is there any evidence which
would indicate use of the trade mark “Mark Twain” on collars
prior to October 1, 1921, except the oral testimony of the
three witnesses aforementioned. The only specimen produced
showing use of the mark was the above-mentioned collar which
was manufactured in 1937”).
Indeed, opposer’s other evidence seems to contradict a
1993 or earlier date of first use. Opposer’s Exhibit 42
Opposition Nos. 91119974 and 91120597
14
(p.3) is a “Holiday Price List ’94” and it identifies
delivery dates beginning in September 1994. Opposer’s
Exhibit No. 19, “Royalty Summary for 1994/1995/1996” for
“‘BEAR’ Surf Clothing” contains no entries for January and
February 1994. The first entry is in March 1994. Opposer’s
Exhibit No. 18, a list of invoices, but it does not contain
any entries prior to September 1994. Opposer’s literature
(Exhibit No. 52) discusses sales in 1995 and it refers to
“the first season of bringing the Bear label back…” “[O]ral
testimony, if sufficiently probative, is normally
satisfactory to establish priority of use in a trademark
proceeding.” Powermatics, Inc. v. Globe Roofing Products
Co., 341 F.2d 127, 144 USPQ 430, 432 (CCPA 1965). However,
such testimony should “not be characterized by
contradictions, inconsistencies and indefiniteness.” B.R.
Baker Co. v. Lebow Bros., 150 F.2d 580, 66 USPQ 232, 236
(CCPA 1945). The conflicting evidence of record and the
indefiniteness of the testimony itself preclude us from
relying on Mr. Reinis’ testimony of a priority date of 1993
or earlier.
Opposer’s other evidence is no more persuasive. One
exhibit is a copy of a U.S. district court consent judgment
filed August 26, 1993 (Opposer’s Ex. 48). However, the
consent judgment addresses the issue of copyright
infringement. See, e.g., p. 48-4 (“Plaintiff is the sole
Opposition Nos. 91119974 and 91120597
15
owner of the copyright of the Bear artwork” and “As the
owner of a valid copyright, plaintiff is the proper
plaintiff”); and p. 48-5 (“Defendant’s use … constitutes a
substantially similar use of the copyrighted artwork”).
Opposer’s copies of four California trademark registrations
in the name of Valkyrie Corp. and dated November 14, 1994 do
not corroborate opposer’s use of a mark prior to applicant’s
priority date. See West Florida Seafood Inc. v. Jet
Restaurants Inc., 31 F.3d 1122, 31 USPQ2d 1660, 1665 (Fed.
Cir. 1994) (“Indeed, where there is additional evidence of
actual use, such a [regulatory] license becomes quite
probative in that it further corroborates the other
evidence. The same applies to a state registration”).
In this case, we are also mindful of the Federal
Circuit’s admonition on the question of evidence of
priority. “[W]hether a particular piece of evidence by
itself establishes priority is not necessarily dispositive
as to whether a party has established prior use by a
preponderance. Rather, one should look at the evidence as a
whole, as if each piece of evidence were part of a puzzle
which when fitted together, establishes prior use.” Id. at
1663. When we look at the evidence as a whole, we are not
convinced that opposer has established by a preponderance of
evidence that it was using the BEAR trademark prior to
applicant’s December 1993 priority date. Most of opposer’s
Opposition Nos. 91119974 and 91120597
16
evidence is subsequent to that date. Its earlier evidence
is often related to copyright ownership.15 Other evidence
is simply too vague to lead us to the conclusion that
opposer has priority over applicant at least with regard to
the typed mark BEAR.
A more difficult question is raised by the BEAR and
polar bear design mark. The application for that mark is an
intent-to-use application. In addition, applicant filed a
separate appeal brief in that case and, in that brief, it
does not directly argue that it has priority. However,
applicant has not conceded priority and opposer must
establish its priority in order to prevail in this
proceeding.
Applicant is seeking to register the mark shown below:
Applicant’s evidence shows that it has used the word BEAR
with a similar design of a polar bear. Applicant’s Exhibit
15 We note that opposer has not pleaded in its notice of
opposition its ownership of a copyright. Even if had, an
“allegation of copyright infringement alone does not constitute
the necessary statutory ground which negates the appellant’s
right to the subject registration. Selva & Sons, Inc. v. Nina
Footwear, Inc., 705 F.2d 1316, 217 USPQ 641 (Fed. Cir. 1983),
citing Knickerbocker Toy Co. v. Faultless Starch Co., 467 F.2d
Opposition Nos. 91119974 and 91120597
17
2 has the word BEAR with a similar polar bear standing above
the word BEAR and facing to the right. Applicant’s witness
testified that these vests were sold by its predecessor in
the “latter part of 1993.” Hong dep. at 18. By 1994,
applicant was using the same polar bear design except the
word BEAR and the left-facing polar bear design were side-
by-side rather than overlapping. See Hong dep. at 36 and
Ex. 4. The words and the bear design do not overlap as they
do in the mark for which registration is sought. The parka
with the design in the ‘345 application was manufactured in
the 1996/1997 timeframe. Hong dep. at 43. Ex. 5.
In addition, we note that applicant has obtained
registrations for several similar marks. See Registration
No. 2,282,358 for “clothing, namely, parkas and jackets”;
and 2,285,696 for “clothing, namely, cold weather hats,
headbands, and footwear (excluding golf shoes)” for the
following mark:
501, 175 USPQ 417 (CCPA 1972).” Carano v. Vina Concha Y Toro
S.A., 67 USPQ2d 1149, 1151 (TTAB 2003).
Opposition Nos. 91119974 and 91120597
18
Registration No. 2,276,955 for “clothing, namely, parkas and
jackets” is for the same design with the words “U.S.A.,
Inc.” underneath the word BEAR.
The differences between the marks with the word BEAR
and a polar bear design in different positions are de
minimis. See, e.g., Visa International Services Association
v. Life-Code Systems, Inc., 220 USPQ 740, 743-44 (TTAB 1983)
(Mark with words OMNI-VISA below an upward pointing plane
not a material alteration of the same words above a downward
pointing plane). See also In re Larios, 35 USPQ2d 1214
(TTAB 1995) (VINO DE MALAGA LARIOS and label design not a
material alteration of GRAN VINO MALAGA LARIOS and label
design). Our case law recognizes that a party may have
priority if there are minor differences between the prior
mark and the current mark. In a case in which applicant was
seeking registration of the mark BLUE ROBIN and design of a
bird, the board found that the applicant could rely on
several blue bird designs with the words BLUE BIRD to
establish priority.
Opposer in its brief makes much of the fact that the
word and design marks now used by applicant in
connection with the sale of its goods are not the same
as the word and design marks for which applicant has
established priority, but this is considered here to be
of no particular consequence insofar as applicant's
rights as against opposer are concerned. That is to
say, while the marks in question differ in a number of
respects, they nevertheless create substantially the
same general impression, namely, that of a blue-colored
bird, and hence are believed to symbolize a single and
continuing trademark right in applicant.
Opposition Nos. 91119974 and 91120597
19
Laura Scudder’s v. Pacific Gamble Robinson Co., 136 USPQ
418, 419 (TTAB 1962). The Federal Circuit noted that the
“Board permitted tacking of the mark ‘BLUE BIRD’ to the use
of ‘BLUE ROBIN’ because both marks ‘create substantially the
same general impression, namely, that of a blue-colored
bird.” Van Dyne-Crotty inc. v. Wear-Guard Corp., 926 F.2d
1156, 17 USPQ2d 1866, 1869 (Fed. Cir. 1991). We find that
there are even less differences between applicant’s use of
the word BEAR with a polar bear design with the polar bear
above the term and this application in which the word BEAR
partially obscures a very similar polar bear design.
Therefore, we find that applicant has established its
priority date for its word BEAR and polar bear design in
December 1993.16 Inasmuch as we found previously that
opposer could not establish a date earlier than this in
regards to applicant’s word mark BEAR, similarly opposer has
not met its burden to show a priority date earlier than
applicant’s BEAR and polar bear design mark.
Therefore, inasmuch as we find that opposer has not
established its priority, opposer cannot prevail and we do
not address the issues of likelihood of confusion and
16 Even if an intent-to-use applicant would be required to prove a
use date earlier than its application’s filing date by the clear
and convincing standard, we would still find that applicant has
met this burden.
Opposition Nos. 91119974 and 91120597
20
whether opposer has acquiesced to applicant’s registration
of its marks.
Decision: The oppositions to the registration of
application Nos. 75063344 and 75063345 are dismissed.