The Mead Corp.v.Lisa Frank, Inc.

Trademark Trial and Appeal Board

Aug 20, 1998

No. 91095866 (T.T.A.B. Aug. 20, 1998)

Hearing: Paper No.
September 10, 1997 ejs
THIS DISPOSITION IS
NOT CITABLE AS PRECEDENT OF
THE TTAB AUG 20 ,98
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
_____
Trademark Trial and Appeal Board
______
The Mead Corporation
v.
Lisa Frank, Inc.
_____
Opposition No. 95,866
to application Serial No. 74/470,350
filed on December 16, 1993
_____
Cancellation No. 23,395
_____
J. Paul Williamson of Arnold, White & Durkee for The Mead
Corporation
Harris J. Kane of Rosenfeld, Meyer & Susman for Lisa Frank,
Inc.
______
Before Seeherman, Hohein and Hairston, Administrative
Trademark Judges.
Opinion by Seeherman, Administrative Trademark Judge:
Opposition No. 95,866
Cancellation No. 23,395
2
This proceeding involves both an opposition and
cancellation action brought by The Mead Corporation
(hereafter plaintiff).
Plaintiff has opposed the application of Lisa Frank,
Inc. (hereafter defendant) to register RAINBOW REEF for
“stationery-type portfolios, notebooks, writing tablets,
memo pads and stickers.1 As grounds for opposition,
plaintiff has alleged that it manufactures, distributes and
sells paper tablets under the mark RAINBOW; that it owns
Registration No. 559,737 for RAINBOW for paper tablets; that
plaintiff’s use of RAINBOW for paper tablets predates the
filing date of defendant’s application; and that defendant’s
mark so resembles plaintiff’s previously used and registered
mark as to be likely, when used in connection with the goods
of defendant, to cause confusion or mistake or to deceive.
Plaintiff has also petitioned to partially cancel
defendant’s registration for RAINBOW CHASER, with the word
RAINBOW disclaimed.2 Specifically, plaintiff seeks to
cancel from the registration “notebooks, folders, binders
and stationery.” As grounds for cancellation, plaintiff
alleges that it sells a wide variety of school and
stationery products; that it has adopted and continuously

1 Application Serial No. 74/470,350, filed December 16, 1993,
based on an asserted bona fide intention to use the mark in
commerce.
2 Registration No. 1,846,209, issued July 19, 1994.
Opposition No. 95,866
Cancellation No. 23,395
3
used the mark RAINBOW from at least as early as 1916 in
connection with the sale of paper tablets, which is well
prior to the date of first use alleged by defendant and
prior to the filing date of the application which matured
into the registration which is the subject of this
proceeding; that it owns Registration No. 559,737 for
RAINBOW for paper tablets; and that defendant’s mark RAINBOW
CHASER so resembles plaintiff’s previously used and
registered mark RAINBOW that, when used in connection with
notebooks, folders, binders and stationery, it is likely to
cause confusion or mistake or to deceive.
In its answers defendant admitted the allegation in the
petition to cancel that it has licensed the right to use the
mark RAINBOW CHASER, and has denied the remaining salient
allegations of both the notice of opposition and the
petition to cancel. Defendant has also affirmatively
asserted, in both of its pleadings, that there is no
likelihood of confusion, and that plaintiff lacks standing.
On the stipulated motion of the parties, and because
the cases involve common questions of law and fact, the
Board consolidated the proceedings after answers had been
filed. Accordingly, we will decide both cases on the same
record and in a single opinion.

Opposition No. 95,866
Cancellation No. 23,395
4
The record includes the pleadings; the files of the
opposed application and the registration sought to be
cancelled; the testimony, with exhibits, of plaintiff’s
witness Mark Davis and of defendant’s witness Kenneth Enos.3

3 In its brief plaintiff has moved to strike certain testimony
and exhibits defendant offered into evidence during the testimony
deposition of Kenneth Enos. The basis for the objections is that
defendant failed to provide this information in response to
discovery requests served by plaintiff. Defendant has opposed
the motion in its brief, and plaintiff has responded to
defendant’s arguments in its reply brief.
First, we note that, contrary to defendant’s assertion, it
is permissible for plaintiff to submit with its brief defendant’s
responses to plaintiff’s discovery requests even though “such
discovery responses are not included in Mead’s Notice of Reliance
and are not in evidence pursuant to Trademark Rule 2.122(e).”
Defendant’s brief, p. 6. (In fact, responses to document
production requests may not be made of record pursuant to a
notice of reliance.) Plaintiff has submitted these responses not
as part of its evidentiary record, but in support of its motion
to strike, and it is therefore acceptable to submit them as part
of the brief which contains the motion.
We will not burden this opinion by a discussion of each of
the many specific sections of testimony listed in plaintiff’s
Appendix 2. In general, plaintiff has moved to strike all
references to defendant’s evidence about references to its
characters which were made in fan letters. However, plaintiff’s
discovery requests asked defendant to produce any documents which
reflect any “studies, searches, or investigations” conducted at
any time with respect to consumer acceptance of or reaction to
the designation RAINBOW, RAINBOW CHASER or RAINBOW REEF, or any
documents which reflect any “survey, research or other studies”
done by defendant concerning the recognition level of consumers
of RAINBOW CHASER or RAINBOW REEF. We do not regard defendant’s
keeping a tally of references to character names in the fan
letters it receives as being a study, search, investigation,
survey or research that would require defendant to produce a
printout of this tally or the individual fan letters. Therefore,
the motion to strike such testimony and related exhibits is
denied.
Plaintiff has also moved to strike testimony relating to
defendant’s use of focus groups. We find focus groups as to
whether, for example, RAINBOW CHASER appeals to children as a
name for a horse character to constitute the type of study
referred to in the document production requests, and therefore
the motion to strike this testimony is granted. We would point
out, however, that even if the testimony were considered it would
have no impact on our decision, since Mr. Enos merely testified
Opposition No. 95,866
Cancellation No. 23,395
5

that he was sure such focus group tests were conducted, but did
not provide any information as to the results.
Plaintiff’s motion to strike Mr. Enos’ testimony with
respect to, e.g., the geographic scope of sales of products
bearing the mark RAINBOW CHASER or RAINBOW REEF, and the sales
channels for the goods, is denied. Plaintiff’s discovery
requests do not ask for such information. However, Mr. Enos’
testimony as to approximate unit volume of sales of such products
is stricken, since plaintiff did request this information in its
interrogatories, and defendant stated in response that it does
not keep records of sales volume for particular designs. Even
though defendant’s attorney and its witness characterized the
testimony as a rough approximation, defendant could have provided
a good faith estimate during discovery.
Plaintiff’s objection to Exhibit 12 (the current product
list) is denied. Plaintiff requested that defendant produce
“each different packaging or labelling” containing RAINBOW
CHASER, RAINBOW REEF or the designation RAINBOW. Although
plaintiff acknowledges that defendant “produced many products,
the number of products ... produced fell far short of the number
of products identified in ... Exhibit 12.” Plaintiff has not
supported its motion by providing us with the materials which
were produced. More importantly, we do not read the document
request as requiring defendant to produce one of each product
that it sells, but merely each different type of labeling. From
the products or product covers which have been made of record, it
appears that the designs and other information is generally the
same. Further, we note that defendant objected to the document
production request as overbroad, burdensome and oppressive, and
we agree that under such circumstances a party is required to
provide only a representative sample.
Plaintiff has listed as a category of testimony to be
stricken testimony as to defendant’s advertising of its RAINBOW
CHASER and RAINBOW REEF marks. However, the description in
Appendix 2 of the specific lines of testimony sought to be
stricken does not refer to advertising information, nor has
plaintiff identified specific exhibits. Given the broad category
of testimony to which plaintiff has objected, it would be unduly
burdensome for the Board to attempt to ascertain the specific
testimony and/or exhibits which plaintiff finds objectionable.
Accordingly, we have not further considered this portion of the
motion.
We would point out that whether all the objected-to evidence
were considered or were excluded, it would not affect the outcome
of our decision herein. Although the strength of a plaintiff’s
mark is a factor in determining likelihood of confusion, the
strength of a defendant’s mark does not have the same
significance. The only impact of defendant’s evidence with
respect to advertising, sales and recognition of its marks would
be in connection with the lack of evidence of actual confusion,
i.e., if defendant could show substantial use of its mark along
with plaintiff’s use of its mark without any confusion, that
would be a factor in showing that confusion is not likely to
Opposition No. 95,866
Cancellation No. 23,395
6
Plaintiff has also relied on defendants’ responses to
certain of plaintiff’s interrogatories; dictionary
definitions of certain of the items listed in the
identification of goods of defendant’s application and
registration; and a certified copy, showing status and
title, of plaintiff’s pleaded registration for RAINBOW,
depicted in the stylized form shown below, for paper
tablets4.
(IMAGE NOT AVAILABLE)
Defendant has made of record, under a notice of
reliance, plaintiff’s responses to certain of defendant’s
interrogatories.5

occur. However, here defendant has used its marks for a
relatively short period of time, such that we think the lack of
evidence of actual confusion is entitled to relatively little
weight. It is well known that evidence of actual confusion is
notoriously difficult to obtain, and that is even more the case
when the products are inexpensive.
Finally, the comments by both parties in connection with the
motion to strike are, to say the least, acrimonious, and we have
no intention of encouraging such debate by discussing each
party’s claim that the other should be sanctioned.
4 Registration No. 599,737, issued June 10, 1992; Sections 8 and
15 affidavit accepted; renewed twice.
5 Defendant also submitted with its notice of reliance a copy of
the registration sought to be cancelled, and a copy of the
application which has been opposed. These documents are
automatically of record because they form part of the application
and registration files. See Trademark Rule 2.122(b)(1).
Opposition No. 95,866
Cancellation No. 23,395
7
The parties have fully briefed the case,6 and both were
represented at an oral hearing held before the Board.
Plaintiff sells a wide variety of school and office
products. Mark Davis, plaintiff’s Vice President of
Marketing, testified that company records showed that
RAINBOW was first used as a trademark for tablets in 1916 by
Westab, plaintiff’s predecessor-in-interest. Mr. Davis also
testified that, since he began working for plaintiff in
1979, RAINBOW has been used by plaintiff as a trademark for
a 3x5 pocket tablet containing pages of different colors.
Although plaintiff’s registration depicts the mark in the
somewhat stylized form shown above, the mark has been and is
currently depicted on the tablets in plain block letters,
with the word RAINBOW above the word TABLET.7 The tablet is

In addition, defendant submitted with its notice of reliance a
copy of “Clubbin’! The Mini-Magazine for Members Only”; a
computer printout of what is entitled “Graphic/Design Mentions”
for 1994 and 1995; a computer printout of a paper headed “1994
Clubbin’ Survey Results”, and various fan letters. Plaintiff
objected to these materials because they were neither printed
publications nor official records within the meaning of Trademark
Rule 2.122(e). Plaintiff’s objection is well taken.
Accordingly, these materials have not been considered as being of
record pursuant to the notice of reliance. To the extent that
these documents, or portions thereof, are admissible as part of
Mr. Enos’ testimony, they have been considered.
6 With its brief defendant has submitted plaintiff’s response to
defendant’s interrogatory No. 4. Plaintiff has objected.
Because this response was not properly made of record by
defendant during its testimony period, plaintiff’s objection is
well taken.
7 Although plaintiff asserts in its brief and its reply brief
that its mark has been used continuously for over 80 years, Mr.
Davis’ testimony is only that based on his familiarity with
plaintiff’s files, the mark “was in use originally in 1916, was a
Opposition No. 95,866
Cancellation No. 23,395
8
marketed to home office and school consumers of all ages,
although its tablet product line is marketed principally to
children. The RAINBOW tablet is sold in such trade channels
as drug stores, food stores, discount stores, college
bookstores and office super stores. It is marketed
throughout the United States. Plaintiff does not do direct
advertising of the RAINBOW tablet, although it is listed and
appears in plaintiff’s annual School and Office Products
Catalog and in sell sheets. These materials are used by
plaintiff’s salespeople to pre-sell plaintiff’s products to
retailers, and the catalogs may also be used by these
retailers as a reference guide. Plaintiff also exhibits its
entire product line, which would include the RAINBOW tablet,
at trade shows.
Defendant sells stickers, stationery, writing
instruments, party favors, activity products and seasonal
products. Its primary target audience is girls aged six to
fourteen. The products are sold in such retail stores as
Wal-Mart, K-Mart and Toys-R-Us, and defendant advertises its
goods, inter alia, on television and in consumer magazines
such as “Barbie Magazine” and in trade publications.

part of the property of Westab, and sometime in the early ‘70’s
was transferred to Mead as a result of the acquisition of
Westab.” p. 10. He also testified that plaintiff has used the
RAINBOW mark for tablets since he started with the company in
1979. Plaintiff also made of record some invoices and catalogs
showing use in 1967, 1977 and 1978.
Opposition No. 95,866
Cancellation No. 23,395
9
Defendant’s products are known as fashion items, in
which the design is a key element of the product’s appeal.
Defendant’s designs are part of what defendant refers to as
“The Fantastic World of Lisa Frank,” which is a fantasy
world in which all defendant’s characters live. In 1992
defendant began using a horse design for its products, and
named this character RAINBOW CHASER. The character is
supposed to be a high-spirited horse which is fast enough to
chase a rainbow. Any items which are large enough to do so
contain “biographical information” about the RAINBOW CHASER
horse, e.g., “Rainbow Chaser is a pretty little Appaloosa
filly who can run like the wind”; or “Rainbow Chaser has a
special place she loves to visit that no one else knows
about.”
In 1993 defendant began using RAINBOW REEF in
connection with its products having a design containing a
seal pup and colorful fish and sea life. If space permits,
defendant’s RAINBOW REEF products contain a description
showing that RAINBOW REEF refers to this habitat: “A secret
playground lies deep in the hidden waters of Rainbow Reef.”
...In fact everything in the reef is so colorful, the
reflections are cast above the water, creating a rainbow
that lights up the sky above the lagoon.”

Opposition No. 95,866
Cancellation No. 23,395
10
We turn first to the question of priority. The
evidence shows that plaintiff used its RAINBOW mark for
writing tablets for many years prior to the October 26, 1992
filing date of defendant’s application for RAINBOW CHASER,
and the December 16, 1993 filing of the application which
matured into a registration for RAINBOW REEF. Because both
of these applications were based on intent-to-use, and
because defendant has not proven an earlier use date, the
filing dates are the earliest dates on which defendant may
rely. Moreover, plaintiff has made its registration for
RAINBOW and design of record, so that, in connection with
the opposition proceeding, priority is not in issue. See
King Candy Co. v. Eunice King’s Kitchen, Inc., 496 F.2d
1400, 182 USPQ 108 (CCPA 1974).
This brings us to the issue of likelihood of confusion.
With respect to the goods, plaintiff’s goods are “paper
tablets,” while defendant’s goods identified in its RAINBOW
REEF application are “stationery type portfolios, notebooks,
writing tablets, memo pads, stationery and stickers” and the
goods sought to be cancelled in defendant’s registration for
RAINBOW CHASER are “notebooks, folders, binders and
stationery.” Obviously, the writing tablets identified in
defendant’s RAINBOW REEF application are encompassed within
the “writing tablets” listed in plaintiff’s identification,
while the other goods identified in defendant’s application
Opposition No. 95,866
Cancellation No. 23,395
11
and registration, and in particular “notebooks,” are closely
related to plaintiff’s goods. Moreover, defendant’s witness
testified that its various goods are sold in grocery and
drug stores and mass merchandisers; plaintiff’s writing
tablets are sold in the same trade channels.
We recognize that there are clear differences in the
specific goods the parties sell, plaintiff’s writing tablet
being a non-fashion item bought for its utilitarian nature,
while defendant’s fashion products are purchased because the
designs on them are the key element of their appeal. We
further recognize that defendant’s goods are designed to
appeal to young girls, while plaintiff’s goods would be
purchased by adults as well as children, that is,
plaintiff’s customers are anyone needing a tablet with
colored pages. However, we must determine the issue of
likelihood of confusion on the basis of the goods recited in
the respective registrations and application, rather than on
what the evidence shows the goods to be. See Canadian
Imperial Bank of Commerce v. Wells Fargo Bank, NA, 811 F.2d
1490, 1 USPQ2d 1813 (Fed Cir. 1987). Thus, we must treat
these goods as being identical or very closely related, and
as being sold in the same channels of trade to the same
classes of consumers.
Plaintiff’s and defendant’s goods are also very
inexpensive. Plaintiff’s tablets, and many of defendant’s
Opposition No. 95,866
Cancellation No. 23,395
12
products, sell for only a dollar or two. By their very
nature they must be treated as impulse items which would not
be purchased with great care.
These factors—-the legal identity or closely related
nature of the goods, the fact that they are sold in the same
channels of trade to some of the same classes of purchasers,
the inexpensive nature of the goods and the fact that they
are sold to the general public, rather than discriminating
purchasers—-all favor plaintiff. Nevertheless, in view of
the following factors which favor defendant, we find that
confusion is not likely to occur from the contemporaneous
use of the parties’ marks.
Most importantly, the commercial impressions of the
marks are different. Obviously, defendant’s marks differ
from plaintiff’s in that they include the arbitrary words
CHASER and REEF. These additional words give RAINBOW CHASER
and RAINBOW REEF a different appearance and pronunciation
from the word RAINBOW alone.
We do recognize that defendant’s marks both begin with
the word RAINBOW, which is the sole word in plaintiff’s
mark. However, this is not a situation where a defendant
has appropriated a plaintiff’s mark and merely added
descriptive or subordinate matter to it. See Miller Brewing
Co. v. Premier Beverages, Inc., 210 USPQ 43, 49 (TTAB 1981),
(“Here, although ‘MILLER’ forms a part of applicant’s mark,
Opposition No. 95,866
Cancellation No. 23,395
13
it is our view that, considered in its entirety, ‘OL’ BOB
MILLER’S is readily distinguishable from ‘MILLER’ in every
material respect and creates a commercial impression that is
distinctive in its own right and would not be equated with
or suggest ‘MILLER’ alone.”)
RAINBOW is not the dominant portion of either RAINBOW
CHASER or RAINBOW REEF. Rather, these terms will be viewed
as unitary, with neither one word nor the other making a
stronger impression on purchasers. Simply put, their
commercial impression is that of the words together.
RAINBOW CHASER, taken literally, connotes someone or
something that chases rainbows. The phrase “chasing
rainbows” is also commonly used to refer to a dreamer,
someone who is not practical.8 As for RAINBOW REEF, it has
the connotation of a place, such as a colorful coral reef or
a reef with colorful sea life.9
On the other hand, plaintiff’s mark RAINBOW, as applied
to a tablet containing pages of different colors, indicates

8 See the following definition of “rainbow-chase”: “A quest
which is rendered pointless by the illusory nature of its object;
hence rainbow-chaser, -chasing.” The Oxford English Dictionary,
2d ed.  1989. The Board may take judicial notice of dictionary
definitions. University of Notre Dame du Lac v. J. C. Gourmet
Food Imports Co., Inc., 213 USPQ 594 (TTAB 1982, aff’d, 703 F.2d
1372, 217 USPQ 505 (Fed Cir. 1983).
9 The record also reflects that, as the mark RAINBOW CHASER is
actually used, it is always shown along with the prominent
picture of a horse, and thus it will be viewed as the name of the
horse. As for RAINBOW REEF, the connotation of a colorful reef
is reinforced by the water and sea life picture which covers the
products on which the mark is used.
Opposition No. 95,866
Cancellation No. 23,395
14
that the tablet has multiple colors. In fact, one of the
dictionary definitions for “rainbow” is “any brightly
multicolored arrangement or display.”10 While we recognize
that the identification of goods in plaintiff’s pleaded
registration is not limited to paper tablets containing
pages of different colors, we note that if the mark were
applied to plain white or single-colored paper tablets, the
parties’ marks per se still convey different connotations
and hence different overall commercial impressions.
Moreover, these different connotations are reinforced
by the trade dress of the items with which the marks are
used. This Board and our primary reviewing Court have held
that it is appropriate to consider the commercial impression
created by the marks by looking to the manner in which they
are used. See Burns Philip Food Inc. v. Modern Products
Inc., 24 USPQ2d 1157 (TTAB 1992), aff’d unpub. opin., 28
USPQ2d 1687 (Fed. Cir. 1993); Vornado Inc. v. Breuer
Electric Mfg. Co., 390 F.2d 724, 156 USPQ 340, 342 (CCPA
1968 (“...the trade dress may nevertheless provide evidence
of whether the word mark projects a confusingly similar
commercial impression”); In re Nationwide Industries, Inc.,
6 USPQ2d 1882, 1883 (TTAB 1988) (“... evidence of the

10 The Random House Dictionary of the English Language, 2d ed.,
unabridged,  1987.
Opposition No. 95,866
Cancellation No. 23,395
15
context in which a mark is used on labels, packaging,
advertising, etc., is probative of the significance which
the mark is likely to project to purchasers”). See, also,
In re P. Ferrero & C.S.p.A., 479 F.2d 1395, 178 USPQ 167
(CCPA 1973), in which the Court looked to the specimens
showing applicant’s checkerboard-colored ice cream to
determine that the mark TIC TAC TOE was tied to the product
and was not an arbitrary term.11
As indicated above, plaintiff’s mark RAINBOW for a
tablet containing pages of different colors is highly
suggestive of the goods, and therefore it is not entitled to
a broad scope of protection. Although plaintiff, through
its predecessor-in-interest, began using the mark in 1916,
and has provided evidence of continuous use since 1977, we
cannot find that plaintiff has demonstrated that its mark
has acquired strength either through sales or promotion.
Plaintiff has submitted its sales figures under seal, so we
cannot recite them here, but they fall far short of showing
that its mark has become strong, let alone famous. Nor has
plaintiff advertised its RAINBOW tablets in a fashion which
would give consumers an awareness of the mark. The only

11 While we have looked to the products and trade dress to
determine the commercial impressions created by the marks, we
have not considered the facts, as urged by defendant, that
defendant’s products feature bright, vibrant colors, or that the
parties use their house marks as well as their respective
trademarks.
Opposition No. 95,866
Cancellation No. 23,395
16
promotion that plaintiff does of its RAINBOW tablets is
directed to retailers through its listing in plaintiff’s
annual catalog and its listing in sell sheets, where the
item appears periodically.12 In the annual product
catalogs, the RAINBOW tablet is listed along with over 1,200
other products. Nor does it stand out in these hundreds of
items. For example, while the RAINBOW POCKET TABLET is
listed in Section 7 of the 22-section 1996 catalog, it is
not pictured at the beginning of the section, although many
of the other items which are featured in this section do
appear. Even in the much smaller sell sheet which is of
record, the RAINBOW tablet is only one of 42 items listed,
and it is pictured in a fairly small size with a group of 22
memo books and papers in the inside of the 4-page 8½ x 11
brochure.
In short, plaintiff has provided no evidence of
consumer recognition of its RAINBOW brand for tablets, nor

12 Mr. Davis’ specific testimony on this subject, is as follows:
Q: Mr. Davis, what kind of advertising promotional
activity, if any, does Mead conduct with respect to the Rainbow
Tablet?
A: None directly to the Rainbow Tablet. We do incur,
obviously, some cost in resetting schematics where this item is
merchandised, and we do produce sell sheets, obviously, to
support that item. But in terms of any print, trade or
television advertising, we do not spend money to promote that
item.
Davis, p. 23
It is unclear from the evidence of record what the
schematics which Mr. Davis referred to are.
Opposition No. 95,866
Cancellation No. 23,395
17
any evidence on which we could conclude that such
recognition exists.
Plaintiff has argued that in the past it has used
RAINBOW on fashion tablets and that, as a result, consumers,
encountering RAINBOW CHASER or RAINBOW REEF on fashion
tablets, are likely to believe that plaintiff “has renewed
its use of RAINBOW on other fashion tablets.” Brief, p. 16.
Plaintiff specifically refers to its use of “SOPHISTICATS
RAINBOW fashion tablets and MICKEY’S STUFF FOR KIDS RAINBOW
DOODLE PAD”, brief, p. 9. Plaintiff has not provided any
examples of this usage, such that we can determine the
commercial impression that it might have made on consumers.
Certainly the listing in its annual catalog as MICKEY’S
STUFF FOR KIDS RAINBOW DOODLE PAD, immediately following
MICKEY’S STUFF FOR KIDS DRAWING PAD, gives the impression
that RAINBOW is being used in a descriptive manner. The
same is true of the listing in its Exhibit 12, its corporate
price key pages, in which the product, a “memo pad
containing 100 sheets of colored writing paper,” is listed
as “SOPHISTICATS RAINBOW PAD. Further, there is no
evidence of the extent of the past sales of these fashion
items which would support the position that consumers are
familiar with the formerly sold items, would remember them,
and would therefore assume that plaintiff’s products and
defendant’s emanate from the same source.
Opposition No. 95,866
Cancellation No. 23,395
18
Finally, we note that plaintiff at one time sold
RAINBOW BRITE stationery under license from Hallmark.
Because this use would inure to the benefit of Hallmark, we
must assume that plaintiff did not regard Hallmark’s rights
in RAINBOW BRITE as infringing on plaintiff’s rights in its
RAINBOW mark. The fact that plaintiff did not find RAINBOW
BRITE for stationery objectionable, and to the contrary
endorsed such use by selling RAINBOW BRITE stationery under
license, is further evidence that RAINBOW CHASER and RAINBOW
REEF are not likely to cause confusion with RAINBOW, since
these marks are even more different from RAINBOW than is
RAINBOW BRITE. 13
Decision: The opposition is dismissed, and the
petition for partial cancellation is denied.
E. J. Seeherman

13 We would point out that our decision has not considered this
evidence about the RAINBOW BRITE mark as favoring defendant in
terms of traditional third-party use, i.e., as indicating that
the public is so familiar with RAINBOW marks that it would look
to other elements to distinguish the marks. Although plaintiff’s
use of RAINBOW BRITE under license would inure to the benefit of
Hallmark, and thus must be treated as third-party use, defendant
has not submitted any other evidence of third-party use. In this
connection, we would point out that the introduction of a private
company’s search report does not make the registrations listed
therein of record. Further, evidence of third-party
registrations is not evidence of use of the marks shown in the
registration. The single instance of third-party use is
insufficient to demonstrate that the public is familiar with
RAINBOW marks, and, moreover, the use of RAINBOW BRITE is not
only not current, but we have no information as to the extent of
the use when it did occur.
Opposition No. 95,866
Cancellation No. 23,395
19
G. D. Hohein
P. T. Hairston
Administrative Trademark Judges
Trademark Trial and Appeal Board