Wendy L. Reedv.ML Bonnell, Inc.

Trademark Trial and Appeal Board

Jul 17, 2008

No. 91171282 (T.T.A.B. Jul. 17, 2008)

Mailed:
17 July 2008
AD

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
______

Wendy L. Reed
v.
ML Bonnell, Inc.
_____

Opposition No. 91171282
to application Serial No. 78634920

_____

Wendy L. Reed, pro se.

Remy J. VanOphem of VanOphem & VanOphem, P.C. for ML
Bonnell, Inc.1
______

Before Bucher, Drost, and Cataldo, Administrative Trademark
Judges.

Opinion by Drost, Administrative Trademark Judge:

On May 23, 2005, ML Bonnell Inc. (applicant) applied to
register the mark SUGAR BUZZ in standard character form on
the Principal Register for “entertainment services, namely,
conducting children’s birthday parties” in Class 41. The
application (Serial No. 78634920) was based on applicant’s
allegation of a bona fide intent to use the mark in
commerce.

1 Applicant did not file a brief in this case.
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Opposition No. 91171282
2
Opposer, Wendy L. Reed, filed a notice of opposition to
the registration of applicant’s mark on June 7, 2006. In
her notice of opposition (p. 1), opposer alleges that she
“is the owner of Application Serial No. 78/637318 for the
mark SUGAR BUZZ” in standard character form for the goods
and services identified as follows and currently classified
in Class 9:
Prerecorded audio and video tapes and/or digital
featuring children's music and performances of interest
to children; Newsletters for subjects of interest to
children; “Party in the box”-- party hats, paper goods
(napkins, plates, cups, tablecloths), party games,
party streamers, party decorations (props, balloons,
table decorations, balloon weights, stickers, thematic
awards, trophies and prizes, thematic trinkets and
paperwork), party bags, party cards, party invitations,
picture frames, disposable cameras, paper party
ornaments and any party favors or promotional items
imprinted with the trademark; Goodie “Bags” in the form
of paper bags, boxes, trunks, cloth bags, buckets;
Picture frames; Mascots, puppets and other characters;
Adult and children's clothing and accessories, namely
jewelry, handbags, backpacks, wigs, make-up cases,
uniforms, sweatshirts, sweatpants, pants, socks, hats,
shirts, jackets, T-shirts, aprons, costumes, shoes and
shorts; Entertainment and amusement services, at
various locations of the client's choosing, in the
nature of theme parties, indoor games, imaginative play
and crafts, music, dance, face painting, yoga, outdoor
games; event planning, consultation and facilitation;
Nurseries and day care centers; Café restaurants with
Internet access; Retail establishment specializing in
parties and goods of interest to children and parents.

Opposer also alleges that applicant’s “filing date is
long after Opposer’s date of first use of its SUGAR BUZZ
mark and just two days after Opposer filed its application…
The registration of Applicant’s mark is inconsistent with
Opposition No. 91171282
3
Opposer’s prior rights in the SUGAR BUZZ mark.” Notice of
Opposition at 3.
Finally, opposer alleges that applicant’s “SUGAR BUZZ
mark is identical to Opposer’s prior used SUGAR BUZZ mark
and is identical in sound, meaning, appearance and
commercial impression to Opposer’s mark. In addition,
Applicant seeks to register its mark for services identical
to or nearly identical to the services long provided by
Opposer under its mark.” Notice of Opposition at 5.
Applicant denied the salient allegations of the notice
of opposition.
The Record
The record includes the file of the involved
application and the testimony deposition of opposer with
accompanying exhibits; the testimony deposition of Pam
Weaver, opposer’s business partner, with accompanying
exhibits; opposer’s two notices of reliance; and applicant’s
notice of reliance.
Opposer has filed an opening brief, but applicant has
not submitted a brief. It did file a paper that advised the
board “that it has chosen not to file a brief in this
matter. In view of the Opposer’s failure to prove
interstate commerce use by clear and convincing evidence,
the Applic[ant] will rely on the record as submitted.”
Paper dated April 11, 2008.
Opposition No. 91171282
4
Priority
Priority is the key issue in this case.2 We begin by
addressing applicant’s statement in its paper dated April
11, 2008, that opposer has failed “to prove interstate
commerce use by clear and convincing evidence.” Applicant
is incorrect on two points. While an applicant normally
must show that it has used the mark in commerce before it is
entitled to registration, an opposer does not need to show
use in interstate commerce before it can establish priority.
In the proceedings below, the Board based its analysis
on the assumption that an “opposer's claim of prior use
can succeed only if it has proved use of its marks in
connection with services rendered in commerce lawfully
regulated by Congress, as required under Section 45 of
the Trademark Act, 15 U.S.C. §1127.” Such an
assumption was unwarranted, however, in light of the
plain language of the statute, which merely requires
the prior mark to have been “used in the United States
by another.” 15 U.S.C. §1052(d).

First Niagara Insurance Brokers Inc. v. First Niagara
Financial Group Inc., 476 F.3d 867, 81 USPQ2d 1375, 1378
(Fed. Cir. 2007) (citation omitted). See also Bourns, Inc.
v. International Resistance Co., 341 F.2d 146, 144 USPQ 424,
425 (CCPA 1965) (“It is not necessary under 15 U.S.C. 1063
for an opposer to aver and prove use of the mark in

2 Inasmuch as “opposer has asserted a non-frivolous likelihood of
confusion claim, we find that opposer has established its
standing to oppose registration of applicant's” mark. Baseball
America Inc. v. Powerplay Sports Ltd., 71 USPQ2d 1844, 1847 (TTAB
2004).
Opposition No. 91171282
5
interstate commerce”) and Flatley v. Trump, 11 USPQ2d 1284,
1287-90 (TTAB 1989):
it is well established that a plaintiff in a proceeding
such as this need not establish prior use of a
designation in a technical trademark or service mark
manner in order to prevail when the proceeding is based
on the ground of likelihood of confusion, mistake, or
deception under Section 2(d) of the Act, it being
sufficient for the purpose that plaintiff establish
priority of use of the designation in connection with
a product or service in interstate or intrastate
commerce in a manner analogous to trademark or service
mark use, i.e., use as a grade mark, use in
advertising, use as the salient feature of a trade
name, or any other manner of public use, provided that
the use has resulted in the development of a trade
identity, i.e., is an open and public use of such
nature and extent as to create, in the mind of the
relevant purchasing public, an association of the
designation with the plaintiff's goods or services.

Accord National Cable Television Ass’n v. American Cinema
Editors, Inc. 937 F.2d 1572, 19 USPQ2d 1424, 1429 n.4 (Fed.
Cir. 1991) (“Were failure to show ‘use in commerce’ a bar to
petitioning for cancellation of a registration, a party
could never cancel a mark based solely on intrastate use.
This is not the law. Section 14 requires only prior use;
‘in commerce’ is noticeably absent”).3
Second, an opposer does not have to show by clear and
convincing evidence that it has priority. In a case

3 Also, there is no evidence that the mark SUGAR BUZZ is merely
descriptive so opposer does not have to establish the date its
mark acquired distinctiveness. Otto Roth & Co. v. Universal
Foods Corp., 640 F.2d 1317, 209 USPQ 40, 45 (CCPA 1981)
(“Assuming that the board properly held that BRIE NOUVEAU is
merely descriptive or deceptively misdescriptive, it did not
require, as it should have, that appellee prove secondary meaning
before applying the §2(d) likelihood of confusion test”).
Opposition No. 91171282
6
involving common law rights, the Federal Circuit held that
“the decision as to priority is made in accordance with the
preponderance of the evidence.” Hydro-Dynamics Inc. v.
George Putnam & Company Inc., 811 F.2d 1470, 1 USPQ2d 1772,
1773 (Fed. Cir. 1987). See also Standard Knitting Ltd. v.
Toyota Jidosha Kabushiki Kaisha, 77 USPQ2d 1917, 1929 (TTAB
2006) (“In order to establish priority based on common law
rights, opposer's burden is to demonstrate by a
preponderance of the evidence proprietary rights in TUNDRA
and TUNDRA SPORT for clothing prior to June 1, 1998, the
filing date of applicant's intent-to-use application”).4
Therefore, the question is whether opposer has shown
that it has used the mark in the United States before
applicant by the preponderance of the evidence. We begin by
examining the evidence to determine opposer’s priority date.
Opposer claims that she had “actual use in commerce as early
as 2001.” Brief at 3. To support this position, opposer
has testified that:

4 This is not a case where a party is seeking to allege an
earlier date of use than the one set forth in its application.
Hydro-Dynamics, 1 USPQ2d at 1774 (“Where an applicant seeks to
prove a date earlier than the date alleged in its application, a
heavier burden has been imposed on the applicant than the common
law burden of preponderance of the evidence”). “When a party
seeks to carry the date of first use back to a date prior to
that stated in the application, the proof of an earlier date must
be by clear and convincing evidence.” American Hygienic
Laboratories Inc. v. Tiffany & Co., 12 USPQ2d 1979, 1984 (TTAB
1989). Even if the requirement was, as applicant maintains,
clear and convincing, opposer’s evidence would meet this
standard.
Opposition No. 91171282
7
Sugar Buzz started out as a soda fountain and candy
store. But over the course of the next year I found
that more and more people requested the use of my shop
for birthday parties, so I decided to add birthday
party services. By the end of 2000 I had a toddler and
was stretched too thin, so I decided to close Artzy
Phartzy, focus all my energy on Sugar Buzz and formally
add birthday parties.

Reed dep. at 4.
Opposer’s other witness testified that:
I’ve been a personal friend of the plaintiff for many
years and know that she bought her Sugar Buzz shop in
1999. The shop was not originally a party place; it
was a candy shop and soda fountain. But I know she
started to offer parties when her son was about two
which was in 2001. We talked about these things at
regular social gatherings, and I would also regularly
see signs in the Sugar Buzz window that said, Closed
for a private party.

Weaver dep. at 4.

Opposer also submitted other evidence to support her
2001 date of first use. An article in the Indianapolis Star
dated May 19, 2001 reports that “Offbeat Broad Ripple shop
[Artzy Phartzy] planning to close its doors.” The article
goes on to explain:
“I feel like Artzy Phartzy is a real Broad Street
staple,” Martin said, “For the village itself, it’s
really too bad.” Still, it’s a good thing for Reed,
who says that the closing will give her time to focus
on Cooper. And her latest endeavor – the Sugar Buzz, a
homemade ice cream shop opened this month next door to
Artzy Phartzy – allows Reed to mix her business with
motherhood. In addition to selling the frozen treats,
she’s offering a party service for children’s birthdays
and other special occasions.

Notice of Reliance dated June 28, 2007.

Opposition No. 91171282
8
Other articles also refer to the SUGAR BUZZ services in
2002. Notice of Reliance dated June 28, 2007.
The main attraction of Sugar Buzz are the all-inclusive
parties for kids, according to the 42-year old store
owner.
Topics (North Central Edition) July 4, 2002

Sundae’s has developed a name awareness said Wendy
Reed, owner of Sugar Buzz, a Sundae’s client that hosts
children’s parties in addition to running a retail
shop.
Indianapolis Business Journal, July 1, 2002.

Opposer also submitted SUGAR BUZZ party services
advertisements in the Indianapolis Kids’ Directory from
2001, 2003, 2004, and 2005.
The evidence of record convinces us that opposer has
established a date of first use at least as early as 2001.
Now that we have determined opposer’s date of first
use, we turn to applicant’s date of actual or constructive
first use date. Inasmuch as its application was filed on
May 23, 2005, it is entitled to rely on the filing date of
this application as its constructive use 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 by a third party asserting common
law rights”).
Opposition No. 91171282
9
In addition, applicant has submitted a notice of
reliance that sets out some evidence that shows that
applicant may have used its mark earlier. However, even if
we considered all the evidence as admissible, none of it
predates opposer’s 2001 date. In addition, much of the
evidence does not even mention the mark, such as Exhibits 1-
3 (2004), which discuss the “bee” logo, and Exhibits 14,
applicant’s Articles of Incorporation dated May 22, 2002 and
other corporate filings (Exhibits 15, 16, 18, and 19),5 as
well as other exhibits (Nos. 20 and 21). Others are either
undated (Exhibits 6, 7, 8, 10, and 30) or the identified
date is well after opposer’s priority date (Exhibits 5
(“Expires May 31, 2007),” 11 (May 25, 2004), 17 (July 6,
2004), 22-28 (May 2005), 29 (June 1, 2006), and 31 (July 31,
2006)). When we consider all of applicant’s evidence both
individually and as a whole, it does not show that applicant
has a date of first use prior to opposer’s 2001 priority
date.
Likelihood of Confusion
Finally, we address the likelihood of confusion issue.
In these cases, we look to the relevant factors set out in
In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177

5 We note that Ex. 15, a 2003 Michigan Profit Corporation Update,
contains the following response under the block “Describe the
general nature and the kind of business in which the corporation
is engaged:” “Corp. Inactive at this time.”
Opposition No. 91171282
10
USPQ 563, 567 (CCPA 1973). See also In re Majestic
Distilling Co., 315 F.3d 1311, 65 USPQ2d 1201, 1203 (Fed.
Cir. 2003) and Recot, Inc. v. Becton, 214 F.3d 1322, 54
USPQ2d 1894, 1896 (Fed. Cir. 2000). The Court of Customs
and Patent Appeals has noted that “[t]he fundamental inquiry
mandated by § 2(d) goes to the cumulative effect of
differences in the essential characteristics of the goods
[or services] and differences in the marks.” Federated
Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192
USPQ 24, 29 (CCPA 1976). Here, applicant has sought
registration of the mark SUGAR BUZZ in standard character
form. Opposer uses the identical words. Inasmuch as
applicant’s mark is depicted in standard character form,
there can be no difference in the marks based on the
stylization of the marks. Squirtco v. Tomy Corp., 697 F.2d
1038, 216 USPQ 937, 939 (Fed. Cir. 1983). See also
Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d
1842, 1847 (Fed. Cir. 2000) (“Registrations with typed
drawings are not limited to any particular rendition of the
mark and, in particular, are not limited to the mark as it
is used in commerce”). Therefore, the marks are legally
identical.
Next, we look at applicant’s services, which are
entertainment services, namely, conducting children’s
birthday parties. The evidence shows that opposer is using
Opposition No. 91171282
11
her mark on the same services of providing children’s
birthday parties.
When we consider that applicant and opposer are using
the legally identical mark on the same services as well as
all the other evidence of record, we conclude that there is
a likelihood of confusion. In view of our determination
that opposer has priority, she is entitled to prevail in
this proceeding.
Decision: The opposition is sustained, and
registration to applicant is refused.