Workman Publishing Co., Inc.v.Lanard Toys, Ltd.

Trademark Trial and Appeal Board

Mar 8, 2007

No. 91112419 (T.T.A.B. Mar. 8, 2007)

Mailed:
8 March 2007
AD

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
______

Workman Publishing Co., Inc.
v.
Lanard Toys, LTD
_____

Opposition No. 91112419
to application Serial No. 75426465
_____

Edward Klagsbrun of McLaughlin & Stern, LLP for Workman
Publishing Co., Inc.

Paul J. Reilly of Baker Botts L.L.P. for Lanard Toys, LTD.
______

Before Walters, Drost and Taylor, Administrative Trademark
Judges.

Opinion by Drost, Administrative Trademark Judge:

On January 30, 1998, Lanard Toys, LTD (applicant)
applied to register the mark WORKMAN (in typed form) on the
Principal Register for “toy tools” in Class 28. The
application (Serial No. 75426465) contains an allegation
that applicant first used the mark anywhere and in commerce
in July 1993.
After the mark was published for opposition, Workman
Publishing Co., Inc. (opposer) filed a notice of opposition
on November 9, 1998. Opposer alleges that it “has used its
THIS OPINION IS NOT
A PRECEDENT OF THE
TTAB
Opposition No. 91112419
2
mark WORKMAN in interstate commerce since at least as early
as December 1985, in connection with a variety of toys and
games” and that “priority of use belongs to Opposer.”
Notice of Opposition at 2. Opposer then alleges that
applicant’s mark, as applied to applicant’s goods, is
confusingly similar to opposer’s mark as applied to its
goods and is likely to cause confusion, mistake, or
deception under Section 2(d) of the Trademark Act (15 U.S.C.
§ 1052(d)). In its answer, applicant denied the salient
allegations of the notice of opposition, and asserted
several “affirmative defenses” that are more in the nature
of a response to opposer’s allegation of likelihood of
confusion.1
The evidence of record consists of the file of the
involved application; opposer’s testimony deposition of
Janet Harris, “publisher of Storey Books, which is a
distributor line of Workman Publishing”2 with exhibits;

1 Applicant’s answer also asserted that it detrimentally relied
on opposer’s delay and inaction and that opposer “is barred from
bringing this Notice of Opposition under the doctrines of
estoppel by laches, estoppel by acquiescence and/or equitable
estoppel.” Notice of Opposition at 5. While these issues were
not developed, we note that the Federal Circuit has clearly
stated that the time for alleging estoppel by laches or by
acquiescence does not begin until the mark was published for
opposition. National Cable Television Association Inc. v.
American Cinema Editors Inc., 937 F.2d 1572, 19 USPQ2d 1424, 1432
(Fed. Cir. 1991) (“[I]n this case laches, with respect to
protesting the issuance of the registration for the mark, could
not possibly start to run prior to [the date when the]
application for registration was published for opposition”).
2 Harris dep. at 17.
Opposition No. 91112419
3
opposer’s notice of reliance on applicant’s responses and
documents submitted in response to opposer’s
interrogatories3; the testimony deposition of James
Hesterberg, applicant’s managing director and founder, with
exhibits; the testimony deposition of John Workman, owner of
Workman’s Specialty Merchandise, with exhibits; the
testimony deposition of Shawn LaPoint, president of Twin
Point Enterprises, with exhibits;4 applicant’s notice of
reliance on various documents including opposer’s discovery
responses and printed publications as well as portions of
the discovery depositions of opposer’s Rule 30(b)(6)
witnesses: Janet Harris, Peter Workman, and David Schiller;
and the declarations of Frank DiAngelis and Nanette LoDolce,
with exhibits, submitted pursuant to a stipulation of the
parties.
First, we consider whether opposer has standing. “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

3 This notice of reliance is a substitute for an earlier notice
of reliance.
4 The Hesterberg, J. Workman, and LaPoint depositions were
depositions on written questions.
Opposition No. 91112419
4
wholly without merit.” Lipton Industries v. Ralston Purina
Co., 670 F.2d 1024, 213 USPQ 185, 189 (CCPA 1982).5
Opposer’s evidence of use of the term WORKMAN on books with
toys included with them establishes its standing to oppose
applicant’s WORKMAN mark for toy tools.
Regarding priority, opposer has submitted evidence that
it has used the term WORKMAN on products consisting of a
book with a physical object for a child to use such as the
Bug Book Bug Bottle and the Bones Book and Skeleton. Harris
Exhibits 3 and 6. Opposer’s witness testified that these
products were sold in June of 1987 and November of 1991
respectively. Harris dep. at 21 and 26 respectively. Both
products appear in opposer’s Workman Spring 1992 catalog.
Harris Ex. 32. Also, included in the catalog were such
items as BrainQuest (a question and answer game) and How To
Kazoo with a kazoo. At a minimum, by 1992, opposer was
using its WORKMAN mark on books for children with playthings
attached as well as games.
On the other hand, applicant filed its application on
January 30, 1998, which is applicant’s constructive date of
first use. Zirco Corp. v. American Telephone and Telegraph
Co., 21 USPQ2d 1542, 1544 (TTAB 1991). Applicant’s witness

5 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 No. 91112419
5
has testified that the mark was first used in commerce with
the United States in July 1993.6 Hesterberg dep. at 9.
However, even if we accept applicant’s July 1993 date as its
date of first use, it is subsequent to opposer’s dates of
first use. Inasmuch as opposer has shown that it has used
the mark WORKMAN on a product that is a combination of a
book with a child’s toy-like object before applicant’s first
use, we find that opposer has shown that it has used its
mark prior to applicant’s earliest constructive or alleged
date of first use.
Regarding priority, we are aware that in order to
prevail, opposer must show not only that it has used its
mark on its goods first but also that its mark is
distinctive.
Under 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, whether inherently or through the acquisition of
secondary meaning or through “whatever other type of
use may have developed a trade identity.” Otto Roth &
Co. v. Universal Foods Corp., 640 F.2d 1317, 209 USPQ
40, 43 (CCPA 1981).

Towers v. Advent Software Inc., 913 F.2d 942, 16 USPQ2d
1039, 1041 (Fed. Cir. 1990) (full citation added).

6 While applicant sold toy tools in 1992, it was under the mark
POWER SOUND; the trademark WORKMAN was not selected until 1993.
Hesterberg dep. at 10.
Opposition No. 91112419
6
Applicant has submitted evidence and argues that the
“company name ‘Workman Publishing’ also comprises a surname
that, as such, is inherently weak and not protectable as a
mark absent secondary meaning.” Brief at 2.7 Opposer “does
not concede that the mark WORKMAN is primarily a surname
(interestingly, the PTO did not object to registration of
Applicant’s mark or to the registration of third party
WORKMAN marks on the Principal Register under Section 2(e)
of the Trademark Law because the mark is a surname), Opposer
submits that even if the Board were to agree with
Applicant’s contention, the record clearly establishes that
Opposer’s mark WORKMAN is entitled to protection.” Reply
Brief at 8 (citation to record omitted) (parenthetical in
original).
In surname cases, if “the mark has well known meanings
as a word in the language and the purchasing public, upon
seeing it on the goods, may not attribute surname
significance to it, it is not primarily a surname. ‘King,’
‘Cotton,’ and ‘Boatman’ fall in this category.” Ex parte
Rivera Watch Corp., 106 USPQ 145, 149 (Comm’r 1955). See
also In re Isabella Fiore LLC, 75 USPQ2d 1564, 1570 (TTAB

7Interestingly, applicant’s managing director has admitted that
it selected the name WORKMAN because “[w]e felt that a name
should be adapted to the product that was more descriptive of
what the product was… We felt that the name was descriptive of
what the toy tools were used for in actual child involvement and
play patterns, i.e., they were predominantly males. Children
Opposition No. 91112419
7
2005) (FIORE, the Italian word for “Flower,” not primarily
merely a surname); In re United Distillers, 56 USPQ2d 1220,
1221 (TTAB 2000) (HACKLER not primarily merely a surname.
Dictionary definition of “Hackler” as “one that hackles;
esp.: a worker who hackles hemp, flax or broomcorn”
considered); and Fisher Radio Corp. v. Bird Electronic
Corp., 162 USPQ 265, 267 (TTAB 1969) (BIRD not primarily
merely a surname). In this case, “workman” is a common
English word.8 While there is evidence that it is also a
surname, we cannot find that it is primarily merely a
surname. Therefore, inasmuch as opposer’s mark is
inherently distinctive, opposer has priority of use of its
mark on book and toy combination products.
We will now briefly address several objections that
applicant has raised to opposer’s evidence. Applicant’s
objection to the evidence of secondary meaning is moot
inasmuch as we have found that opposer’s mark is inherently
distinctive, which does not require a showing of secondary
meaning.9 We overrule applicant’s objection to the
testimony of Janet Harris because she is “unduly biased.”
(Applicant’s Evidentiary Objection at 3). The witness, a
former employee of opposer and now an employee of an

would use the tools, the toys, as to emulate what they saw adults
doing and that is acting as workmen.” Hesterberg dep. at 10-11.
8 “Workman” is defined as “1: Workingman 2. Artisan.” Merriam-
Webster’s Collegiate Dictionary (10th ed. 1997) (Harris Ex. D).
Opposition No. 91112419
8
affiliated company, is hardly unduly biased even if she did
not reveal whether, during an earlier deposition, there was
“anything put on the table at the time that you might be
receiving additional compensation either directly or
indirectly from Workman Publishing on the acquisition” of
her current company. Harris dep. at 120. It is not clear
why the testimony of an employee of a party or a company
affiliated with a party should be stricken for this reason
alone. Regarding the other objections, which go to the
probative value of the evidence, “because an opposition is
akin to a bench trial, the Board is capable of assessing the
proper evidentiary weight to be accorded the testimony and
evidence, taking into account the imperfections surrounding
the admissibility of such testimony and evidence. Thus, we
have considered the evidence, keeping in mind the
objections, and have accorded whatever probative value the
testimony and evidence merits.” United States Playing Card
Co. v. Harbro LLC, 81 USPQ2d 1537, 1540 (TTAB 2006).
We now turn to the issue of likelihood of confusion.
When we are considering the question of likelihood of
confusion, we look to the relevant factors set out in In re
Majestic Distilling Co., 315 F.3d 1311, 65 USPQ2d 1201, 1203
(Fed. Cir. 2003) and In re E. I. du Pont de Nemours & Co.,
476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973). See also Palm

9 We will discuss applicant’s objection to opposer’s evidence of
Opposition No. 91112419
9
Bay Imports, Inc. v. Veuve Clicquot Ponsardin Maison Fondee
En 1772, 396 F.3d 1369, 73 USPQ2d 1689 (Fed. Cir. 2005).
The first factor we consider is “the similarity or
dissimilarity of the marks in their entireties as to
appearance, sound, connotation and commercial impression.”
Palm Bay Imports Inc., 73 USPQ2d at 1691 (quoting du Pont,
177 USPQ at 567).
Applicant is seeking registration for the mark WORKMAN
in typed form. On the other hand, opposer is relying on its
common law rights. Therefore, we do look to see how opposer
uses its mark. Applicant points out that opposer uses the
mark most commonly in the following stylization:

We will consider this display in our likelihood of confusion
analysis.
Despite the fact that applicant has sought
registration of its mark in typed form, applicant argues
that it “uses WORKMAN in association with other
distinguishing matter relating to its toy tools, or images
and designs that relate to power tools and construction”
(Brief at 18) and it has included a representation of how it
uses its mark WORKMAN in association with the words “Power
Tools” and design (Brief at 1). However, an “argument

actual confusion subsequently.
Opposition No. 91112419
10
concerning a difference in type style is not viable where
one party asserts rights in no particular display. By
presenting its mark merely in a typed drawing, a difference
cannot legally be asserted by that party. Tomy asserts
rights in SQUIRT SQUAD regardless of type styles,
proportions, or other possible variations. Thus, apart from
the background design, the displays must be considered the
same.” 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”); Phillips
Petroleum Co. v. C. J. Webb, Inc., 442 F.2d 1376, 1378, 170
USPQ 35, 36 (CCPA 1971) ("The drawing in the [opposed]
application shows the mark typed in capital letters, and …
this means that [the] application is not limited to the mark
depicted in any special form").
Also, applicant cannot point to other matter that it
uses on its specimens or promotional material that are not
part of its mark that it presented for registration to avoid
confusion. Dan Robbins & Associates, Inc. v. Questor
Corporation, 599 F.2d 1009, 202 USPQ 100, 104 n.6 (CCPA
1979) (“The mark, not the specimen, is submitted for
registration”).
Opposition No. 91112419
11
We add that the use of a mark on the specimen may
demonstrate that a mark depicted in typed or standard
character form is even more similar to an opposer’s mark.
Phillips Petroleum Company, 170 USPQ at 36:
We admit that on first sight the mark CRC MARINE
FORMULA 6-66 bears little resemblance to Phillips’ mark
“66.” However, we must not be misled by considering
Webb's mark only in its printed or typewritten form,
with all the characters being of equal height. The
drawing in the instant application shows the mark typed
in capital letters, and under Rule 2.51(d) of the
Trademark Rules of Practice this means that Webb's
application is not limited to the mark depicted in any
special form. In trying to visualize what other forms
the mark might appear in, we are aided by the specimens
submitted with Webb's application as illustrating “the
mark as actually used.” The specimen included with the
application papers in the record shows the 6-66 portion
of the mark much more prominently than the CRC MARINE
FORMULA portion. Moreover, the 66 portion appears at a
different level from the first 6. The specimen is quite
similar to the label shown in exhibit A-4, introduced
by Webb, which we reproduce below.

However, the use of the mark on the specimen does not limit
our consideration of applicant’s mark depicted in typed form
in the application. Fossil Inc. v. Fossil Group, 49 USPQ2d
1451, 1454 (TTAB 1998):
Accordingly, in any likelihood of confusion analysis,
we “must consider all reasonable manners in which [the
word FOSSIL] could be depicted.” INB National Bank v.
Metrohost, 22 USPQ2d 1585, 1588 (TTAB 1992). Thus,
opposer's typed drawing registrations of FOSSIL afford
opposer a scope of protection which encompasses all
reasonable manners in which the word FOSSIL could be
depicted including, simply by way of example, all lower
case block letters, all upper case block letters, a
mixture of lower case and upper case block letters and
various script forms.

Opposition No. 91112419
12
Inasmuch as applicant is applying to register the mark
WORKMAN, without regard to stylization or design feature, we
will not consider that it is limited to any particular
stylization or display and applicant’s specimens of use do
not limit applicant’s mark for likelihood of confusion
purposes.10
Except for the rather nondescript oval surrounding the
word WORKMAN, opposer’s mark is presented in ordinary block
form. The simple overall design would not likely be a
feature that would be relied upon by customers to
distinguish the goods. In re Dixie Restaurants Inc., 105
F.3d 1405, 41 USPQ2d 1531, 1534 (Fed. Cir. 1997) (“Neither
the design element nor the generic term ‘café’ offers
sufficient distinctiveness to create a different commercial
impression. Indeed, as the board found, the design is an
ordinary geometric shape that serves as a background for the
word mark”). We conclude that the marks are very similar,
if not virtually identical, in appearance.
Furthermore, applicant’s argument that the “marks are
pronounced differently” (Brief at 18) is not legally
significant. Even if applicant or opposer promotes their
marks with different pronunciations, many purchasers are

10 Obviously, if applicant considered the scope of its mark to be
limited, it could have filed a drawing with its application that
depicted the mark in stylized form and with any additional words
or designs.
Opposition No. 91112419
13
likely to pronounce the same common English word
identically. Centraz Industries Inc. v. Spartan Chemical
Co., 77 USPQ2d 1698, 1701 (TTAB 2006) (There “is no correct
pronunciation of a trademark, and it obviously is not
possible for a trademark owner to control how purchasers
will vocalize its mark”).
Applicant also argues that the marks’ meanings would be
different inasmuch as opposer “uses the family name of its
founder” while applicant’s mark conveys “that the toy tools
bearing that mark are intended for use by children in
emulating jobs of a ‘working man.’” Brief at 5. We cannot
agree. Many purchasers are likely to attribute the same
dictionary meaning to opposer’s mark, unaware of the name of
opposer’s founder. In addition, the commercial impressions
of the marks WORKMAN and WORKMAN and design are again
similar, if not identical. Therefore, when we compare the
marks, both applicant and opposer use the identical term
WORKMAN. Even if we consider that opposer uses its mark
with an oval design, we would have to conclude that the
marks are virtually identical in appearance, pronunciation,
meaning, and commercial impression.11

11 Opposer has also used the term WORKMAN on its books as part of
its trade name “Workman Publishing New York.” However, opposer’s
argument is that the “applied mark WORKMAN is indistinguishable
from opposer’s mark WORKMAN” and “the dominant usage of the mark
in its product and catalogs is the term WORKMAN, solus.” Reply
Brief at 3 and 5. Therefore, for our purposes, we will only
consider opposer’s mark WORKMAN without additional wording.
Opposition No. 91112419
14
The next factor we consider is the similarity or
dissimilarity of the parties’ goods. As set out in its
application, applicant’s goods are toy tools. Examples of
applicant’s toy tools include “a work light, tool box with
tools, toolbelt with tools, power drill, circular saw, power
driver, saber saw, chain saw and hedgetrimmer.” Hesterberg
dep. at 9. Opposer is a book publisher who makes a series
of books that include a toy related to the topic of the
book. Applicant argues that: “Opposer clearly sells books,
not toys” (Brief at 7); that “Clothing and microscopes are
not toys” (Brief at 8); “even if these enhancements are
deemed toys, toy sets or games, [opposer] is not selling
power tools and accessories which are clearly distinct from
Opposer’s promotional items” (Id.). Opposer argues that it
“does not sell books packaged with a novelty toy item but
rather, products that are toys and games.” Reply Brief at
6. “Toys” are defined as “an object, often a small
representation of something familiar, as an animal or
person, for children or others to play with, plaything.”
The Random House Dictionary of the English Language
(unabridged) (2d ed. 1987).12 Opposer’s cameras, puppets,
beach buckets, microscopes, skeletons, and similar items

12 We take judicial notice of this definition. University of
Notre Dame du Lac v. J.C. Gourmet Food Imports Co., 213 USPQ 594,
596 (TTAB 1982), aff'd, 703 F.2d 1372, 217 USPQ 505 (Fed. Cir.
1983).
Opposition No. 91112419
15
sold as part of a set designed for children would be
considered, at a minimum, children’s educational toys.
Opposer promotes its goods as more than simply books with a
novelty item attached. Its goods are also toys that promote
interaction with the book:
Kids books with “attachments” – packaged items that
promote interaction with the book – seem to be
cascading from publishers.

Parents, grandparents and teachers think kids will read
educational books – and remember what they read – if
they are accompanied by fun activities, said Sabra
Smith of Running Press in Philadelphia, which first
combined the “Velveteen Rabbit” book with a stuffed
rabbit in 1985 and moved on to very complex kits with
books…

Workman Press fields the popular “Kirby Puckett
Baseball Games” ($13.95) with a ball marked with finger
positions; “The Bones Book” ($15.95) with a plastic
skeleton to assemble; and animal figurines with
booklets for the American Museum of Natural History
($10.95 each).

Plain Dealer, November 24, 1996 (Harris Ex. 49 (00885).
These book/toy kits are more than simply books with a
promotional item, they are interactive kits that have
characteristics of both books and toys. In addition,
opposer has promoted the toy aspects of its products.
See Harris dep. at 16, 73, and 110 (Opposer was “the first
publisher to introduce toy products into the marketplace
with the introduction of the How To Kazoo book”); (“All new
children’s toy titles are promoted heavily at the Toy
Fair”); and (These photographs “would be Toy Fair booths
where we would have been promoting our toy set product and
Opposition No. 91112419
16
related calendars”). Opposer’s witness testified that these
products are “sold in toy stores and toy markets.” Harris
dep. at 145.
It is settled that it is not necessary that the
respective goods be identical or even competitive in order
to support a finding of likelihood of confusion. That is,
the issue is not whether consumers would confuse the goods
themselves, but rather whether they would be confused as to
the source of the goods. It is sufficient that the goods
are related in some manner, or that the circumstances
surrounding their use are such that they would be likely to
be encountered by the same persons in situations that would
give rise, because of the involved marks, to a mistaken
belief that they originate from or are in some way
associated with the same source or that there is an
association or connection between the sources of the
respective goods. See In re Melville Corp., 18 USPQ2d 1386,
1388 (TTAB 1991) and Time Warner Entertainment Co. v. Jones,
65 USPQ2d 1650, 1661 (TTAB 2002).
Here, many consumers familiar with opposer as a source
of WORKMAN book/toy kits are likely to believe that it is
now also the source of or in some way associated with the
toy tools sold with or without a related book. Therefore,
we find that toy tools and book/toy kits are related
products. Dan Robbins & Associates, 202 USPQ at 104 (Games,
Opposition No. 91112419
17
toys, and children's building blocks and children's books
are related); and Squirtco, 216 USPQ at 939 (“Nothing in the
specific nature of balloons and floating water toys negates
the likelihood that such goods could be thought to come from
the same source”).
The third likelihood of confusion factor is the
similarity of trade channels. Opposer markets its goods
through bookstores but also general merchandise stores.
While applicant acknowledges that opposer “distributes its
books through book stores or mass merchandise stores” (Brief
at 9), it argues that “in those instances when [opposer’s]
books are sold at a store that sells Lanard’s toys, they are
not presented on the same shelves as Lanard’s toys.” Id.
The mere fact that goods are sold in the same stores is
not necessarily conclusive on the subject of overlapping
trade channels. Irwin Auger Bit Co. v. Irwin Corp., 134
USPQ 37, 39 (TTAB 1962) (“It is common knowledge that there
are sold in many hardware, grocery, variety and drug stores
an almost unlimited variety of goods including tools,
housewares, electrical appliances, seed, fertilizer,
furniture and toys. The public being well aware of the
diversity of goods to be found in such stores is not going
to believe that all of those goods could originate with a
single source”). See also Federated Foods, Inc. v. Fort
Opposition No. 91112419
18
Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976)
(supermarkets).
Here, we tend to agree with applicant that the goods of
applicant and opposer are unlikely to be found on the same
shelf, however, that is not the requirement to resolve this
factor in opposer’s favor. It does appear that toy tools
and book/toy kits would be found not only in the same stores
but also in the same toy sections. Also, applicant’s
witness has indicated that its goods are sold “in some
cases, in the preschool department.” Hesterberg dep. at 27.
Opposer’s book/toy kits and similar products could also be
found in this department inasmuch as they are promoted for
preschool children. Harris Ex. 32 (“My First Play Town”
(ages 3-7)); “My First Drawing Book” (ages 4-7)); and “My
First Camera Book (ages 4-8)) and Ex. 33 (“Go to Bed, Fred A
Good Night Book & Muppet Puppet” (ages 6 months and up). In
addition, opposer’s and applicant’s goods have been promoted
by the same catalog sales company. Harris dep. at 114 and
Ex. 54. We conclude that the channels of trade for
opposer’s and applicant’s goods are similar. See Dan
Robbins & Associates, 202 USPQ at 104 (“Questor's games,
toys, and children's building blocks, and Robbins’
children's books, all have a common marketing environment,
being sold generally in toy stores and toy departments of
retail stores to the same purchasers”).
Opposition No. 91112419
19
Regarding the fourth factor, the conditions under which
and buyers to whom sales are made, we must conclude that
this factor favors opposer. While applicant argues that its
“sales representatives make personal presentations to
professional buyers” (Brief at 9), the ultimate consumers of
both applicant’s and opposer’s products are parents and
other ordinary consumers seeking gifts and items to amuse
children. Furthermore, we cannot find, as applicant argues,
that the purchasers would be discriminating as opposed to
ordinary purchasers. In addition, the fact that some of
applicant’s products can “cost close to $50.00 and even
[opposer’s] books can sell at retail for near $20” (Brief at
29) does not disqualify them from being impulse purchases.
Certainly, considering the nature and cost of applicant’s
and opposer’s products, many consumers would purchase these
goods as gifts for children without careful consideration.
The fifth du Pont factor requires us to consider
evidence of the fame of opposer’s mark and to give great
weight to such evidence if it exists. See Bose Corp. v. QSC
Audio Products Inc., 293 F.3d 1367, 63 USPQ2d 1303, 1305
(Fed. Cir. 2002)
Fame of an opposer’s mark or marks, if it
exists, plays a “dominant role in the process of
balancing the DuPont factors,” Recot, 214 F.3d
at 1327, 54 USPQ2d at 1456, and “[f]amous marks
thus enjoy a wide latitude of legal protection.”
Id. This is true as famous marks are more
likely to be remembered and associated in the
public mind than a weaker mark, and are thus
Opposition No. 91112419
20
more attractive as targets for would-be
copyists. Id. Indeed, “[a] strong mark … casts
a long shadow which competitors must avoid.”
Kenner Parker Toys [v. Rose Art Industries Inc.,
963 F.2d 350, 22 USPQ2d 1453, 1456 (Fed. Cir.
1992)]. A famous mark is one “with extensive
public recognition and renown.” Id.

Opposer argues that it “has used the mark WORKMAN for
toys and game products for over twenty years. Moreover,
Opposer has spent significantly in promoting its mark, to
wit during the twelve year period of [1989] through March
2001, it spent close to $1,000,000 each year for this
purpose. This evidence suffices to establish the ‘fame’ of
Opposer’s WORKMAN mark.” Brief at 23. Opposer goes on to
argue that “by virtue of its significant and long-term usage
of the mark [it] is entitled to at least a presumption that
its mark has become distinctive and famous.” Brief at 24.
While this evidence shows that opposer’s mark is not a weak
mark, we decline to find that opposer’s mark is famous in
the field of toys.
The sixth du Pont factor requires us to consider
evidence of “use of similar marks on similar goods [or
services].” See Olde Tyme Foods Inc. v. Roundy’s Inc., 961
F.2d 200, 22 USPQ2d 1542 (Fed. Cir. 1992). Applicant has
sought to include evidence of several registrations that
include the word WORKMAN.13 Evidence of third-party

13 One registration was for the non-identical word WORKIN’MAN for
board games. This registration expired in 2002. A "canceled
registration does not provide constructive notice of anything."
Opposition No. 91112419
21
registrations does not demonstrate that there is no
likelihood of confusion. AMF Inc. v. American Leisure
Prods., Inc., 474 F.2d 1403, 177 USPQ 268, 269 (CCPA 1973)
("The existence of [third party] registrations is not
evidence of what happens in the market place or that
customers are familiar with them"). “While third-party
registrations may be used to demonstrate that a portion of a
mark is suggestive or descriptive, they cannot be used to
justify the registration of another confusingly similar
mark.” In re J.M. Originals Inc., 6 USPQ2d 1393, 1394 (TTAB
1987).
Regarding applicant’s other evidence of third parties
using the term WORKMAN, we note that it is not extensive.
Applicant has submitted the testimony of John Workman and
his company, Workman’s Specialty Merchandise. However, the
website associated with this company, as of the end of 2002,
is no longer active. J. Workman dep. at 25 and Ex. BJ.
Furthermore, the catalog that Workman’s Specialty
Merchandise published is actually entitled “World Of
Products” and the “only reference to Workman is on the back
page where there appears a reference to the trade name
Workman’s Specialty Merchandise followed by a business
address and a web address http://www.workmans.com.” J.

Action Temporary Services v. Labor Force Inc., 870 F.2d 1563, 10
USPQ2d 1307, 1309 (Fed. Cir. 1989).
Opposition No. 91112419
22
Workman dep. at 24. In addition, this company was only in
existence from 1997 to 2002 and the company’s principal
described its sales as: “Not much. With – I’d say an
average of two to $5,000 a year in sales.” J. Workman dep.
at 5, 6 and 10. The witness also testified that “[n]o
products bear the name Workman.” J. Workman dep. at 24.
This evidence hardly establishes that opposer’s mark is weak
and entitled to only a narrow scope of protection.14 Also,
the listing of various businesses in Yellow Pages
directories (DeAngelis Dec., Ex. B) is not significant
evidence that the mark WORKMAN is a weak mark for opposer’s
goods, i.e., book/toys kits. See Penguin Books Ltd. v.
Eberhard, 48 USPQ2d 1280, 1284 n.5 (TTAB 1998):
Opposer has objected to this evidence [telephone
directories] on the ground that it does not show actual
use of this name by others. Opposer is, of course,
correct that these white pages listings of companies
with the word Penguin in their names do not show actual
use in the marketplace of these trade names and company
names. These listings are of limited probative value
because they do not demonstrate that these businesses
actually exist or that the public is aware of them.
See Helene Curtis Industries Inc. v. Suave Shoe Corp.,
13 USPQ2d 1618, 1622 (TTAB 1989) and In re Hub
Distributing, Inc., 218 USPQ 284, 285 (TTAB 1983).
However, they are admitted for what they show on their
face. We should note, however, that the use of the
name “Penguin” in connection with various companies
whose businesses are as diverse as a laundry business,

14 Applicant also submitted the testimony of Shawn LaPoint of Twin
Point Enterprises, Inc. Mr. LaPoint testified that its
subsidiary, Workman Electronic Products, is “a manufacturing
importer of electronic parts and accessories for CB radio and
amateur radio” (p. 6) and uses a WORKMAN mark. This testimony is
hardly relevant in determining whether WORKMAN is weak for
various toy items.
Opposition No. 91112419
23
a yogurt retailer, a cafe, a heating and air
conditioning company, a company that sells pools and
spas, and a sporting goods company, do not show that
opposer's registered mark PENGUIN is weak for its
goods.

We agree with applicant that when we consider the
seventh and eight factors, the lack of any significant
evidence of actual confusion and the period of concurrent
use favors applicant’s position that there is no likelihood
of confusion. The parties have attended some of the same
trade shows and opposer’s witness “was alarmed to see
[Lanard Toys product] being sold in the same venue as other
Workman products.” Harris dep. 114 and Ex. 54. However,
despite this period of use, there has been no evidence of
actual confusion.15 Both parties have used their marks
since at least 1993 and they have made a significant number
of sales of their products under their respective marks.
While the actual sales figures are confidential, applicant
has enjoyed some success with its WORKMAN toy tools.
However, the sales figures are not so large that we are
convinced that there has been an adequate opportunity for
confusion to occur and to be brought to the attention of the
parties. See Hesterberg dep. at 19 and Ex. AP. While we

15 Opposer refers to an instance where an unnamed sales
representative inquired as to “why the name was being used on
someone else’s product.” Harris dep. at 117. Not only are the
facts surrounding this incident very nebulous, it appears that
the unnamed representative was not a customer and recognized that
the mark was not opposer’s. Inasmuch as we do not consider this
Opposition No. 91112419
24
have considered that there is no evidence of actual
confusion, we are also aware that “the lack of any
occurrences of actual confusion is not dispositive inasmuch
as evidence thereof is notoriously difficult to come by.”
Gillette Canada Inc. v. Ranir Corp., 23 USPQ2d 1768, 1774
(TTAB 1992). The Federal Circuit has noted that: “Before
this court, the test is likelihood of confusion not actual
confusion. It is unnecessary to show actual confusion in
establishing likelihood of confusion.” Weiss Associates
Inc. v. HRL Associates Inc., 902 F.2d 1546, 14 USPQ2d 1840,
1842-43 (Fed. Cir. 1990) (Citations omitted). Therefore,
while we find that this factor favors applicant, we do not
find that it strongly supports applicant’s position.
Penguin Books Ltd. v. Eberhard, 48 USPQ2d at 1287 (“We have
also considered the fact that there have been no instances
of actual confusion despite approximately ten years’
contemporaneous use of the respective marks, but we
attribute such lack of actual confusion to such facts as
applicant's actual manner of distribution and sale, which is
irrelevant in the absence of a meaningful restriction in
his application”).16
When we consider all the evidence on the question of
likelihood of confusion, we find that the marks are

testimony as evidence of actual confusion, we find that
applicant’s objection to this testimony is moot.
Opposition No. 91112419
25
virtually identical in sound, appearance, meaning, and
commercial impression. The parties’ goods, toy tools and
book/toy kits are related and they would be found in the
same stores in similar channels of trade. The customers of
both parties goods would at least overlap. While there has
been no evidence of actual confusion, we are
convinced that confusion is likely under the facts of record
here and because opposer has priority, it is entitled to
prevail.
Decision: The opposition to the registration of
application No. 75426465 is sustained.

16 We add that the remaining factors do not significantly favor
either party.