Thomas and Linda Diak dba Dyakcraft (formerly Grafton Fibers)v.Crafts Americana Group, Inc.

Trademark Trial and Appeal Board

Oct 22, 2013

No. 91195102 (T.T.A.B. Oct. 22, 2013)

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB

Mailed:
October 22, 2013

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

Thomas and Linda Diak dba Dyakcraft (formerly Grafton Fibers)
v.
Crafts Americana Group, Inc.
_____

Opposition No. 91195102
Application Serial No. 77783068 for design mark.
Cancellation No. 92052510
Reg. No. 3739462 for the mark HARMONY
_____

Thomas and Linda Diak, pro se.

James L. Vana and Holly M. Simpkins of Perkins Coie LLP for Crafts Americana
Group, Inc.
_____

Before Quinn, Ritchie, and Gorowitz, Administrative Trademark Judges.

Opinion by Gorowitz, Administrative Trademark Judge:

Thomas and Linda Diak doing business as Dyakcraft, (jointly “Diaks”) have
opposed Crafts Americana Group’s (“Crafts”) application to register the design mark
set forth below for “knitting needles”:
Opposition No. 91195102
Cancellation No. 92052510

2

1 and have petitioned to cancel Crafts’ registration for
the mark HARMONY for “knitting needles.”2 The grounds for both the opposition
and cancellation action are priority, likelihood of confusion, and fraud on the PTO.
Crafts denied the salient allegations in the second amended notice of opposition and
asserted as affirmative defenses that “Opposer’s Claimed Trade Dress” was not
inherently distinctive and that it had not acquired distinctiveness. Crafts also

1 Application Serial No. 77783068, filed July 16, 2009; based on Section 1(a) of the
Trademark Act, with use in commerce alleged at least as early as September 10, 2007.
2 Registration No. 3739462, issued January 19, 2010.
Opposition No. 91195102
Cancellation No. 92052510

3

denied the salient allegations in the cancellation action and asserted laches as an
affirmative defense.3 The opposition and cancellation action were consolidated by
Board order dated August 13, 2010.
The case has been fully briefed.
Background.
Application Serial No. 77783068 is an application for trade dress protection
for the appearance of Crafts’ knitting needles. The description of the mark is:
The mark consists of the color combination green, purple,
orange, blue, and yellow in a repeated chevron-like
pattern as applied to the entire length of a knitting needle
on opposing quadrant sides of the needle. The dotted
outline of the goods is intended to show the position of the
mark on the goods, representing one such repetitive
segment of the mark on the goods, and is not a feature of
the mark;
The colors “purple, orange, blue, yellow, and green” are claimed as features of the
mark. The PTO refused registration on the ground that the “proposed color mark,
consisting of ‘the colors purple, orange, blue, yellow and green in a repeated pattern’
is merely an ornamental or decorative feature of such goods and thus would not be
perceived as a trademark.”4 Crafts claimed acquired distinctiveness pursuant to
Section 2(f) of the Trademark Act on the basis of substantially exclusive and
continuous use of the mark in commerce for 2.5 years during which there was more
than $7.4 million in revenue (sales in 2009 were over $2.9 million); more than
$625,000 spent promoting the “knitting needles featuring the Multi-colored Chevron

3 Crafts did not pursue this affirmative defense and thus we consider it waived.
4 Office Action dated September 23, 2009.
Opposition No. 91195102
Cancellation No. 92052510

4

Pattern”5; and between 1–2.5 million visitors to its website (number of visitors
covers the years 2007-2009).6 The evidence also included the declarations of more
than 20 customers.7 In his declaration, Mr. Petkun acknowledged Diaks’ use of a
“chevron pattern similar to that shown in the Multi-colored Chevron Pattern, in
connection with knitting needles.”8 To differentiate the Multi-colored Chevron
Pattern from Diaks’ pattern, Mr. Petkun stated that he is “not aware that
DyakCraft uses the same color pattern as that reflected in the Multi-colored
Chevron Pattern.”9 The examining attorney accepted Crafts’ evidence of acquired
distinctiveness and the application was published for opposition on June 1, 2010.
Opposition No. 91195102 was filed on the same date.
Registration No. 3739462 for the mark HARMONY for “knitting needles”
issued on January 19, 2010. Cancellation No. 92052510 was filed on May 28, 2010.
Evidentiary Issues.
Crafts has objected to the admission of the testimony deposition of Thomas
and Linda Diak (Diak Test.), Exhibit 1 to Diak Test., and to the majority of Diaks’
rebuttal evidence.

5 “Multi-colored Chevron Pattern” is the term used by Crafts to describe its color mark.
6 Declaration of Robert Petkun, President of Crafts, pars. 5, 6, 7, and 12 (Exhibit to
Response to Office Action dated March 23, 2010).
7 Exhibits to Response to Office Action dated March 23, 2010 consisting of Customer
Declarations.
8 Petkun Declaration, par. 13.
9 Petkun Declaration, par. 13.
Opposition No. 91195102
Cancellation No. 92052510

5

• Testimony Deposition of Thomas and Linda Diak.
Both Thomas and Linda Diak were sworn in as witnesses in the deposition,
which was taken on December 14, 2012. The majority of the questions were asked
by Ms. Diak and answered by Mr. Diak. During cross-examination, it was
established that Mr. Diak read most of the answers from notes he had prepared
earlier in the day. The notes, which consisted of both the questions asked by Ms.
Diak and Mr. Diak’s answers thereto, were provided to Crafts’ counsel at his
request. Crafts objected on the ground that Mr. Diak’s testimony was contrary to
Federal Rules of Evidence, Rule 602, which states:
A witness may testify to a matter only if evidence is
introduced sufficient to support a finding that the witness
has personal knowledge of the matter. Evidence to prove
personal knowledge may consist of the witness’s own
testimony.
Relying on Genesco v. Martz, 66 USPQ2d 1260 (TTAB 2003), Crafts argues that “a
witness’s reliance on prepared notes in providing deposition testimony decreases the
probative value of the testimony.”10 In Genesco, opposer refused to submit the notes
used by the deponent because they included attorney-work product or were
protected by attorney-client privilege. In that case, the Board excluded the
testimony in which the notes were used. This case differs from Genesco because
upon request, the deponent promptly provided the notes, that he testified were
prepared by him on the day of the deposition.

10 Crafts’ Separate Statement of Evidentiary Objections, p. 5.
Opposition No. 91195102
Cancellation No. 92052510

6

Use of notes by a witness during testimony is only permitted to refresh a
witness’ recollection. See Hall v. American Bakeries Company, 873 F.2d 1133, 1136
(8th Cir. 1989). Moreover, the Court in Hall stated that “it is an error to allow a
witness to testify at trial from prepared notes under the guise of refreshing
recollection.” Id. The Hall decision can be distinguished from the case at bar.
Since testimony in Board proceedings is taken outside of the presence of the Board,
the Board cannot rule on the issue of the appropriateness of use of notes at the time
that testimony is taken. Moreover, in this case, since Crafts’ counsel appeared
telephonically, he was not aware during the deposition that the witness was relying
on notes and thus could not object on this basis. Accordingly, absent objection,
there was no opportunity for the witness to stop using the notes and thus testify
from memory. Nevertheless, counsel was able to effectively cross-examine the
witness, obtaining testimony that was given by Mr. Diak apparently from his
personal knowledge. For these reasons, we are not striking the testimony of the
Diaks. However, the probative value of the testimony is affected by the use of notes,
which will be taken into consideration in evaluating the evidence.
• Exhibit 1 to Diak Testimony.
Crafts objected to the admission of Exhibit 1 to the Diak Test. (consisting of a
copy of an unsigned document entitled “Trademark Assignment and License”) on
the ground that it constitutes an offer of settlement and thus is prohibited under
Federal Rules of Evidence, Rule 408. In its response, Diak argues that Exhibit 1 is
not a prohibited use of the document, but rather falls under the exceptions, set forth
Opposition No. 91195102
Cancellation No. 92052510

7

in Rule 408(b), which allow the admission of such evidence if it is “for another
purpose, such as proving a witness’s bias or prejudice, [or]negating a contention of
undue delay.” Specifically, Diak argues that the Trademark Assignment and
License is offered “as evidence that Crafts Americana and Robert and Kelley Petkun
were aware of us and of our products.”11 From this statement, we conclude that
Diaks relied on Exhibit 1 to establish priority. According to Diak’s testimony,
Exhibit 1 was provided to him in March 2010. (Diak Test. 18:11-12 and 22:7).
However, as set forth below, Diak testified that Robert Petkun was aware of Diaks’
use of its multi-colored design in 2007, three years before Petkun provided Diaks
with the agreement set forth in Exhibit 1:
Q. What happened when the needles appeared on
Stephanie’s blog in July of 2007?
A. …I received a phone call from Bob Petkun, owner of
Knit Picks and CEO of its parent company Crafts
Americana.
Diak Test. 10:2-8.
A. Well, Mr. Petkun said he was calling about our
knitting needles and wanted to know where we got them.
I advised him that I was the manufacturer. Mr. Petkun
expressed interest in carrying the needles. He said that
they were the largest catalog mailing company and
website, something along those lines.
Diak Test. 10:23-25 and 11:1-3. In addition, in the answer to the second amended
notice of opposition, Crafts admits that Mr. Petkun placed a phone call to Diak in

11 Response to Evidentiary Objections, p. 2.
Opposition No. 91195102
Cancellation No. 92052510

8

July 2007.12 As discussed, supra, Exhibit 1 is not required to establish that Crafts
and Robert Petkun were aware of Diaks. Moreover, to the extent that Exhibit 1 was
submitted to establish that Crafts and Robert Petkun were aware of Diaks prior to
Crafts use of the Multi-colored Chevron Pattern, the document is irrelevant since it
was created after Crafts commenced use and after Crafts filed its use-based
application. Accordingly, the document does not establish Diak’s priority.
On the basis of the foregoing, we find that Diaks’ use of the document does
not constitute an exception to Federal Rules of Evidence, Rule 408. Accordingly,
Crafts’ objection is sustained and neither Exhibit 1 to the Diaks Test. nor the
testimony relating thereto will be considered.
• Rebuttal Testimony
Diaks introduced sixty exhibits by notice of reliance during its testimony
period. With the exception of exhibits 1-2 (Crafts’ website and blog), and exhibits 9-
11 and 51 (documents in opposed application), Crafts has objected to all sixty
exhibits on the ground that they constitute improper rebuttal. The documents
produced were purported to rebut the testimony of Kelley Petkun on a number of
issues, including priority of use, reputation of Crafts’ products, notoriety of Diaks’
products, Crafts’ intent to deceive the USPTO, and consumer confusion. Ms.
Petkun’s testimony primarily consisted of the authentication of documents, i.e.,
Crafts’ website and catalogs (including the distribution of said catalogs), and
knitted products with chevron patterns. She also authenticated pages from four

12 Answer to Second Amended Notice of Opposition, pars. 29-32.
Opposition No. 91195102
Cancellation No. 92052510

9

issues of knitting magazines that featured Crafts’ products. In large part, Diaks’
rebuttal evidence did not rebut the evidence introduced by Crafts. “It is axiomatic
that rebuttal testimony may be used only to rebut evidence offered by the
defendant.” Life Zone Inc. v. Middleman Group Inc., 87 USPQ2d 1953, 1958 (TTAB
2008), citing Wet Seal Inc. v. FD Mgmt. Inc., 82 USPQ2d 1629 (TTAB 2007)
(rebuttal evidence proffered because defendant would not concede issues during
cross-examination stricken). Moreover, Diaks bears the burden of proof in these
proceedings. Thus, evidence of priority, the notoriety of Diaks’ products, and Crafts’
intent to deceive the USPTO should have been introduced during Diaks’ testimony
period. Id.
However, not all of the documents introduced by Diaks constituted improper
rebuttal. During their testimony in chief, Diaks testified that looms and knitting
needles are marketed to the same target audience through the same trade channels.
Diak Test. 26:9-11. Diaks supported this statement by testifying that “considering
that Knit Picks,13 sells other looms in their catalog and on their website, I would
have to say they are marketed to the same target audience.” Diak Testimony 26:15-
17. In their rebuttal, Diaks submitted pages from the Knit Picks web site
evidencing the sale of looms (Exhibit 6-8 to Diaks’ Notice of Reliance). These
documents rebut the implication that Knit Picks does not sell looms, which is
inferred in Kelley Petkun’s testimony that Knit Picks sells “knitting supplies.” K.

13 Knit Picks is the subsidiary of Crafts that sells knitting supplies. K. Petkun Test. 6:3-8.
Opposition No. 91195102
Cancellation No. 92052510

10

Petkun Test. 6:6. As such, Crafts’ objections to Exhibits 6-8 are overruled. Crafts’
objections to other evidence submitted during Diaks’ rebuttal period are sustained.
The Record.
By rule, the record includes Crafts’ application file, Crafts’ registration file,
and the pleadings. Trademark Rule 2.122(b), 37 CFR § 2.122(b). The record also
includes the testimony of Thomas and Linda Diak and the rebuttal evidence
introduced by Diak, consisting of pages from Crafts’ website and blog, and
documents in the opposed application; the testimony (with related exhibits) of
Kelley Petkun and the following evidence introduced by notice of reliance by Crafts:
web pages evidencing use of the mark HARMONY, web pages evidencing use of
chevron designs on knitted and crocheted products, web pages regarding
Dymondwood wood products, web pages evidencing use of design patterns on
knitting needles and crochet hooks, Wikipedia entries, third-party registrations
which include both knitting needles and crochet hooks in the identifications of
goods, a third-party application file, third-party registrations for marks consisting
of ornamental designs that are used on the goods (knitting needles), and notes used
by Thomas Diak during his deposition.
Standing.
Standing is a threshold issue that must be proved in every inter partes case.
The facts regarding standing must be affirmatively proved by the party in the
position of plaintiff See Lipton Industries, Inc. v. Ralston Purina Co., 670 F.2d
1024, 213 USPQ 185, 188-189 (CCPA 1982). (“[A party] is not entitled to standing
Opposition No. 91195102
Cancellation No. 92052510

11

solely because of the allegations in its [pleading].”) To establish standing in an
opposition or a cancellation proceeding, “opposer [or petitioner] must have a ‘real
interest’ in the proceeding and must have a ‘reasonable’ basis for its belief of
damage.” Ritchie v. Simpson, 170 F.3d 1092, 50 USPQ2d 1023, 1025 (Fed. Cir.
1999). “A belief in likely damage can be shown by establishing a direct commercial
interest.” See Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842,
1844 (Fed. Cir. 2000). In the case at bar, Diaks have established that they are a
direct competitor of Crafts; that they use a colored chevron design in connection
with their knitting needles and crochet hooks, and that they have used the mark
HARMONY in connection with looms. As such, Diaks have established a direct
commercial interest and has standing to bring these proceedings.
Having established standing for both proceedings, we will now discuss the
opposition and the cancellation action separately.
Opposition to Registration of Multi-Colored Chevron Pattern.
Priority and Likelihood of Confusion.
“The question of priority is an issue in this case because opposer has asserted
common law rights … and does not own an existing registration upon which it can
rely under Section 2(d).” Threshold.TV Inc. v. Metronome Enterprises Inc., 96
USPQ2d 1031, 1036 (TTAB 2010). Cf., King Candy Co., Inc. v. Eunice King's
Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108 (CCPA 1974). “In order to establish
priority of use, opposer must prove that it acquired trademark rights prior to the
applicant's first use. Thus, opposer must prove that its trademark is inherently
Opposition No. 91195102
Cancellation No. 92052510

12

distinctive, or acquired distinctiveness before the date on which applicant can
establish its rights.” Threshold.TV Inc., 96 USPQ2d at 1036; Cf. Otto Roth & Co. v.
Universal Foods Corp., 640 F.2d 1317, 209 USPQ 40, 44 (CCPA 1981). Thus,
“[u]nder the rule of Otto Roth, a party opposing registration of a trademark due to a
likelihood of confusion with his own unregistered term cannot prevail unless he
shows that his term is distinctive of his goods [or services], whether inherently or
through the acquisition of secondary meaning or through ‘whatever other type of
use may have developed a trade identity.’ ” Towers v. Advent Software, Inc., 913
F.2d 942, 16 USPQ2d 1039, 1041 (Fed. Cir. 1990), citing Otto Roth, 209 USPQ at 43.
Diaks testified that they have sold knitting needles, with a multi-colored
chevron design covering the needles, since 2003. This ornamental design
constitutes the trade dress of Diaks’ product, knitting needles. Ornamental design
on a product is not inherently distinctive. See Wal-Mart Stores, Inc. v. Samara
Bros., 529 U.S. 205, 54 USPQ2d 1065 (2000), which held that the type of trade dress
consisting of spring/summer seersucker outfits decorated with appliques of hearts,
flowers, fruits and the like is product design, which is not inherently distinctive. As
such, to establish priority and likelihood of confusion, Diaks must prove acquired
distinctiveness. However, in their case in chief, Diaks submitted no evidence of use,
e.g. photographs of the asserted mark, sales figures, advertising figures, or any
other information or documentation establishing that the design has acquired
distinctiveness. Therefore, since they have not proven priority with respect to the
use of a mark with either inherent or acquired distinctiveness, Diaks cannot prevail
Opposition No. 91195102
Cancellation No. 92052510

13

on a claim of likelihood of confusion. Accordingly, based on the evidence of record,
we find that there is no likelihood of confusion.
Fraud on the PTO.
Diaks base their allegations of fraud on: allegations that (1) “[Crafts] was
aware of the existence of [Diaks’] chevron patterned knitting needles prior to the
distribution of [Crafts’] product…[and] [Crafts] falsely stated in its application that
Crafts] was the owner of the mark” (Amended Notice of Opposition, par. 28); (2)
Crafts’ asserted the wrong date of first use in the declaration it submitted to
establish distinctiveness (Amended Notice of Opposition, par. 60); and (3) Crafts’
remunerated customers who signed declarations of acquired distinctiveness
(Amended Notice of Opposition, pars. 66-67).
To establish fraud, Diaks’ must prove that Crafts’ knowingly made false,
material representations of fact in connection with its application. See Torres v.
Cantine Torresella S.r.l., 808 F2d 46, 1 USPQ2d 1483, 1484 (Fed. Cir. 1986).
In the seminal case, In re Bose Corp., 580 F3d 1240, 91 USPQ2d 1938, 1939
(Fed. Cir. 2009), the Court stated:
[A] party seeking cancellation of a trademark registration
[or opposition to the registration of a trademark] for
fraudulent procurement bears a heavy burden of proof.
Indeed, “the very nature of the charge of fraud requires
that it be proven ‘to the hilt’ with clear and convincing
evidence. There is no room for speculation, inference or
surmise and, obviously, any doubt must be resolved
against the charging party.
Moreover,
Opposition No. 91195102
Cancellation No. 92052510

14

Subjective intent to deceive, however difficult it may be to
prove, is an indispensable element in the analysis. Of
course, because direct evidence of deceptive intent is
rarely available, such intent can be inferred from indirect
and circumstantial evidence. But such evidence must still
be clear and convincing, and inferences drawn from lesser
evidence cannot satisfy the deceptive intent requirement.
Id. at 1941.
Diaks have not established the deceptive intent required to establish that
Crafts did not believe it was the owner of the Multi-colored Chevron Pattern mark
when it filed its application. To the contrary, in its response to an inquiry regarding
third-party use, Crafts advised the examining attorney that “[Crafts] is not aware of
any other party using the color combination and pattern reflected in the Mark.
[Crafts] is aware of one third party (DyakCraft, Saxtons River, Vermont -
www.dyakcraft.com) making use of a chevron pattern similar to that shown in the
Multi-colored Chevron Pattern, in connection with knitting needles. However,
[Crafts] believes that DyakCraft's sales of the needles in question are extremely
small.”14 This acknowledgement of Diaks and explanation of its belief regarding
Diaks’ use, negates Diaks’ allegation of deceptive intent.
Similarly, the assertion of an incorrect date of first use does not constitute
fraud on the PTO. “In an application based on use in commerce under §1(a) of the
Trademark Act, 15 U.S.C. §1051(a), the applicant must use the mark in commerce
on or in connection with all the goods and services listed in the application as of the
application filing date.” TMEP § 901. Therefore, as long as the date of use asserted

14 March 23, 2010 Response.
Opposition No. 91195102
Cancellation No. 92052510

15

is prior to the filing date of the application, it does not affect the prosecution of the
application. See Georgia-Southern Oil Inc. v. Richardson, 16 USPQ2d 1723, 1726-
27 (TTAB 1990). Moreover, the two-month difference between the date asserted by
Robert Petkun in his declaration to establish distinctiveness (June 2007), and the
dates alleged both in the application (September 7, 2007) and in Crafts’ response
(September 2007), is not material and would not affect the registrability of the
mark. As such, the error relating to the date of first use does not constitute fraud
on the PTO.
Finally, Diak asserts that Crafts’ remuneration of customers who signed
declarations of acquired distinctiveness constitutes fraud on the PTO. However,
there is no evidence that the declaration of any of the customers was false.
Therefore, Crafts’ actions do not constitute fraud on the PTO.
Accordingly, we find that Crafts did not engage in fraud on the PTO in its
application.
Having found that there is no likelihood of confusion and that Crafts did not
engage in fraud on the PTO with respect to its application for the Multi-colored
Chevron Pattern mark, the opposition is dismissed.
Cancellation of Registration for the mark HARMONY.
Priority.
To establish priority in a cancellation action, a petitioner must show prior
proprietary rights in the marks asserted. Otto Roth & Co. v. Universal Foods Corp.,
209 USPQ at 43. In the absence of a registration, these proprietary rights may
Opposition No. 91195102
Cancellation No. 92052510

16

arise from “prior use of a technical ‘trademark,’ prior use in advertising, prior use as
a trade name, or whatever other type of use may have developed a trade identity.”
Id. The mark HARMONY as used in connection with looms is inherently
distinctive.
The cases are legion to the effect that for inherently
distinctive marks, ownership is governed by priority of
use. For such marks, the first to use a designation as a
mark in the sale of goods or services is the ‘owner’ and the
‘senior user.’ These marks are given legal protection
against infringement immediately upon adoption and use
in trade. A technical trademark, consisting of a coined or
fanciful expression, comes into being as soon as it is
affixed and the goods are sold.
2 McCarthy on Trademarks and Unfair Competition § 16:4 (4th ed. 2013). See, for
example Hydro-Dynamics, Inc. v. George Putnam & Co., Inc., 811 F.2d 1470, 1473, 1
USPQ2d 1772 (Fed. Cir. 1987) (“[T]rademark rights in the United States are
acquired by such adoption and use, not by registration.”) and National Chemsearch
Corporation v. Chemtek Corporation, 170 USPQ 110 (TTAB 1971) (“It is however,
well settled that as between conflicting claimants, the right to use the same mark is
based on priority of appropriation.”).
Mr. Diak testified that Diaks started using the mark HARMONY in
connection with looms in 2003. Diak Test. 25:15-17. When asked if the HARMONY
loom is currently in production, Mr. Diak responded:
Opposition No. 91195102
Cancellation No. 92052510

17

We have the parts to build looms on hand. We hope to
have enough staff to support putting the looms back on
the website this coming year.15
Diak Test. 25:19-21. Crafts asserts that since the only evidence offered was Mr.
Diak’s oral testimony, there was no evidence of use of the mark in association with
the looms, in association with advertising and promotion, or regarding consumer
exposure to such use. Such evidence is required to establish acquired
distinctiveness, however, the mark HARMONY is arbitrary and thus it is
inherently distinctive. Proof of acquired distinctiveness is not required to establish
priority.
Mr. Diak’s testimony, which is based on personal knowledge, is clear,
convincing, and uncontradicted and is sufficiently probative to establish both Diaks’
date of first use of the HARMONY mark and that the mark has not been
abandoned. “Oral testimony, if sufficiently probative, is normally satisfactory to
establish priority of use.” Powermatics, Inc. v. Globe Roofing Products Co., 341 F.2d
127, 144 USPQ 430, 432 (CCPA 1965). See Liqwacon Corp. v. Browning-Ferris
Industries, Inc., 203 USPQ 305, 316 (TTAB 1979) (oral testimony may be sufficient
to establish both prior use and continuous use when the testimony is proffered by a
witness with knowledge of the facts and the testimony is clear, convincing,
consistent, and sufficiently circumstantial to convince the Board of its probative
value).

15 This establishes that Diaks, despite a break in their use of the HARMONY mark,
intended to reconvene use and thus did not intend to abandon their rights.
Opposition No. 91195102
Cancellation No. 92052510

18

Crafts argues that Mr. Diak’s testimony was not sufficient enough to
establish Diaks use of the mark HARMONY in connection with looms. Crafts relies
on H.D. Lee Co. v. Maidenform, 87 USPQ2d 1715 (TTAB 2008) to support its
position. Crafts’ reliance on H.D. Lee is misplaced. In that case, the question posed
was whether testimony concerning the date of first use of a mark in connection with
various clothing items was sufficient to establish the date of first use of the mark in
connection with one specific item. The Board held that it was not. In the case at
bar, Mr. Diak’s testimony regarding Diaks’ use of the HARMONY mark was limited
to use of the mark in connection with one specific item, looms. We find that Mr.
Diak’s testimony regarding Diaks’ use of the HARMONY mark in connection with
looms was sufficient to establish use starting in 2003.
Further, contrary to Crafts’ arguments asserting lack of testimony regarding
sales of the HARMONY looms and consumer recognition of the mark, Mr. Diak
testified about the effect that Crafts’ use of the Harmony name in connection with
its needles had on his business:
Q. What impact did the introduction of the Harmony
needles have on you and your business?
A. It was devastating…To attach the Harmony name,
the name of our loom, to a look we had designed and sold
for years was a compounded injury. Confusion set in
immediately. Stores thought we were undercutting them,
selling needles to Knit Picks at rates far below what we
were charging them. Due to both the look of the Knit
Picks needles … and the Harmony name, retail
consumers assumed we were making them. We began to
receive inquiries, and within a week we received
Harmony needles sent in for repair as they had already
broken.
Opposition No. 91195102
Cancellation No. 92052510

19

Diak Test., 12:5-7 and 16-25, and 13:1-2. This testimony is evidence both of Diaks’
use of HARMONY and of consumers’ recognition thereof.
Crafts filed its application for the mark HARMONY on June 12, 2009 and
asserted September 10, 2007 as its date of first use and first use in commerce of the
mark HARMONY in connection with “knitting needles.”
Diaks’ use of the HARMONY mark precedes Crafts’ use by at least four
years. Accordingly, Diaks has established priority.
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 likelihood of
confusion factors set forth in In re E. I. du Pont de Nemours and Co., 476 F.2d 1357,
177 USPQ 563 (CCPA 1973). In considering the evidence of record on these factors,
we keep in mind that “[t]he 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.” Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d
1098, 192 USPQ 24, 29 (CCPA 1976). See also, In re Dixie Restaurants Inc., 105
F.3d 1405, 41 USPQ2d 1531 (Fed. Cir. 1997).
In the case at bar, the marks at issue are identical. Where identical marks
are involved, the degree of similarity between the parties’ goods and/or services that
is required to support a finding of likelihood of confusion declines. In re Shell Oil
Co., 992 F.2d 1204, 26 USPQ2d 1687, 1688-1689 (Fed. Cir. 1993) (“even when the
goods or services are not competitive or intrinsically related, the use of identical
Opposition No. 91195102
Cancellation No. 92052510

20

marks can lead to the assumption that there is a common source”); Time Warner
Entertainment Co. v. Jones, 65 USPQ2d 1650 (TTAB 2002); and In re Opus One
Inc., 60 USPQ2d 1812 (TTAB 2001). It is only necessary that there be a viable
relationship between the two to support a finding of likelihood of confusion. In re
Concordia International Forwarding Corp., 222 USPQ 355, 356 (TTAB 1983). The
issue here, of course, is not whether purchasers would confuse the parties’ goods
and/or services, but rather whether there is a likelihood of confusion as to the
source of these goods and/or services. In re Rexel Inc., 223 USPQ 830 (TTAB 1984).
In this case, both looms and knitting needles are used to create fabric. Diak
Test. 26:22-25 and 27:1-3. Moreover, Diaks and Crafts both sell knitting needles
and looms. Diak Test. 4:18-19, 25:17, 26:15-17 and webpages from Crafts’ website
establishing the sale of both knitting needles and looms. Diaks’ Exhibits 6-8
introduced by Notice of Reliance and K. Petkun’s Test .7:5-7 and 12-13, 9:17-24 and
Exhibits 1-2 thereto. Accordingly, we find that knitting needles and looms are
closely related goods.
We also find that knitting needles and looms are sold in the same channels of
trade. Mr. Diak’s testified that his knitting needles are sold:
through eBay, through our website, through trade shows,
traveling to fairs and festivals coast to coast, and by
participating in numerous internet forums and websites
devoted to the fiber arts as well as marketing them to our
previous customers via mass emails. Our products were
also featured in a number of knitting-related magazines
and books. We sold to the retail consumer and to yarn
stores worldwide.
Opposition No. 91195102
Cancellation No. 92052510

21

Diak Test., 7:3-11. Since there is no limitation on the cost, channels of trade or
classes of purchasers of Crafts’ knitting needles, we presume that they are sold in
the same channels of trade in which Diaks’ knitting needles are sold. It has long
been held that “where the goods in a cited registration are broadly described and
there are no limitations in the identification of goods as to their nature, type,
channels of trade or classes of purchasers, it is presumed that the scope of the
registration encompasses all goods of the nature and type described, that the
identified goods move in all channels of trade that would be normal for such goods,
and that the goods would be purchased by all potential customers.” In re Elbaum,
211 USPQ 639, 640 (TTAB 1981).
As Mr. Diak testified, Diaks’ Harmony looms are also marketed through
eBay, trade shows, fairs, Diaks’ website, and internet forums for people interested
in the fiber arts. Diak Test., 26:2-4. This testimony establishes an overlap in the
channels of trade. Further, as discussed supra, Diaks and Crafts both sell knitting
needles and looms on their websites.
Crafts also asserts that given the price of Diaks’ looms, the purchasers of said
looms are sophisticated customers who would exercise some level of care,
submitting evidence that the costs may be $35 for a 6-inch loom or $125 for a 16-
inch loom. However, in that price range, there is no evidence that the knitting
needles or looms are the types of products for which consumers would exercise care
in purchasing. Cf. Astra Pharmaceutical Products, Inc. v. Beckman Instruments,
Inc., 718 F.2d 1201, 220 USPQ 786 (1st Cir. 1983) (Purchasers of ASTRA local
Opposition No. 91195102
Cancellation No. 92052510

22

anesthetic and an anti-arrhythmic, for hospitals, clinical laboratories, universities
and other research institutions, retail drug stores, and dentists and ASTRA
computerized blood analyzer machine and various other products related to the
machine, which costs between $35,000 and $60,000, held to be sophisticated). As
such, we do not find that purchasers of Diaks’ and Crafts’ goods exercise significant
care with regard to these goods.
Crafts also contends that there is no evidence of actual confusion. We agree
with Crafts that the evidence is not sufficient to establish actual confusion. “The
ultimate consideration, however, is likelihood of confusion. Absence of proof of
actual confusion is of minor relevancy in the resolution of the issue.” J.C. Hall Co.
v. Hallmark Cards, Inc., 340 F.2d 960, 964, 144 USPQ 435, 438 (CCPA 1965).
Having considered all the evidence and argument on the relevant du Pont
factors, whether specifically discussed herein or not, we find that Crafts’ use of the
mark HARMONY for knitting needles is likely to cause confusion with Diaks’ use of
the mark HARMONY for looms.
Fraud on the PTO.
Diaks contends that Crafts committed fraud on the PTO because it was
aware of Diaks’ use of the mark HARMONY for looms when it filed its application
and because it uses the HARMONY in connection with the wood used to make its
knitting needles and not the knitting needles themselves.
As fully discussed, supra, to establish fraud, Diaks’ must prove that Crafts’
knowingly made false, material representations of fact in connection with its
Opposition No. 91195102
Cancellation No. 92052510

23

application. See Torres v. Cantine Torresella S.r.l, 1 USPQ2d at 1484. Diaks have
submitted no evidence establishing that Crafts was aware of Diaks’ use of the mark
HARMONY for looms when Crafts filed its application or that even if Crafts was
aware of such use, that they believed there was a likelihood of confusion and
knowingly made a false material representation of fact intending to deceive the
PTO. Moreover, as discussed, supra, that “the very nature of the charge of fraud
requires that it be proven ‘to the hilt’ with clear and convincing evidence. There is
no room for speculation, inference or surmise and, obviously, any doubt must be
resolved against the charging party.” In re Bose Corp., 91 USPQ2d at 1939.
The evidence/argument submitted by Diaks does not establish that Crafts
committed fraud on the PTO in the filing of its application for the mark
HARMONY. Moreover, Crafts submitted evidence of its use of the HARMONY
mark on knitting needles, which was accepted by the PTO. Diaks’ argument that
Crafts uses the mark HARMONY to identify the wood used to make the knitting
needles, not the knitting needles themselves, was not established, nor does it
establish fraud.
Accordingly, we find that Crafts did not engage in fraud on the PTO in its
application for the mark HARMONY.
The petition is granted on the ground of likelihood of confusion and denied on
the ground of fraud.
Having found that the evidence does not establish likelihood of confusion
with respect to the Multi-colored Chevron Pattern mark, and that Crafts did not
Opposition No. 91195102
Cancellation No. 92052510

24

engage in fraud on the PTO with respect to its application for the said mark, the
opposition is dismissed. Fraud was not found in Crafts’ filing and prosecution of its
application for the mark HARMONY, however, we found a likelihood of confusion
between Crafts’ use and registration of the mark HARMONY for knitting needles
and Diaks’ use of the mark HARMONY for looms.
Decision: Opposition No. 91195102 is dismissed. Serial No. 77783068 will be
processed for registration. Cancellation No. 92052510 is granted on the ground of
likelihood of confusion and denied on the ground of fraud. Registration No. 3739462
will be cancelled in due course.