# Top Tobacco, L.P. v. North Atlantic Operating Co., Inc.

> Trademark Trial and Appeal Board · November 21, 2011

URL: https://www.frixlaw.com/law-library/cases/11283483

## Case

- **Court:** Trademark Trial and Appeal Board
- **Decided:** November 21, 2011
- **Precedential status:** Published
- **Opinion:** Opinion by Wellington
- **Judges:** Kuhlke, Wellington, Wolfson
- **Cited by:** 0 later opinions in the Frix Law Library

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## Opinion text

THIS OPINION IS A
PRECEDENT OF THE TTAB

Oral Hearing: Mailed:
April 26, 2011 November 21, 2011

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
______

Top Tobacco, L.P.

v.

North Atlantic Operating Co., Inc.
_____

Consolidated:
Opposition No. 91157248
Opposition No. 91157250
Opposition No. 91180231
Cancellation No. 92043186

_____

Lee J. Eulgen of Neal, Gerber & Eisenberg for Top Tobacco,
L.P.

Arlana S. Cohen of Cowan, Liebowitz & Latman, P.C. for North
Atlantic Operating Co., Inc.
______

Before Kuhlke, Wellington, and Wolfson,
Administrative Trademark Judges.

Opinion by Wellington, Administrative Trademark Judge:

North Atlantic Operating Co., Inc. (“North Atlantic”)

filed applications to register the following marks:

1. CLASSIC AMERICAN BLEND (in typed form) for
“smoking tobacco” in International Class 34;1

1
Application Serial No. 76357922 (filed on January 11, 2002) is
based on an allegation of first use in commerce on April 14,
Opposition No. 91157248 (parent)
Oppositions Nos. 91157250 and 91180231
Cancellation No. 92043186

2.
For “cigarettes, smoking tobacco, pocket
machines for rolling cigarettes, cigarette tubes,
pocket machines for filling cigarette tubes, and
filter tips for cigarettes” in International Class
34;2 and

3. CLASSIC AMERICAN BLEND (in standard characters)
for “loose tobacco” in International Class 34.3

North Atlantic is also the owner of a registration for

the mark ZIG ZAG CLASSIC AMERICAN BLEND (in typed form) for

“smoking tobacco” in International Class 34.4

In each of North Atlantic’s aforementioned applications

and registration, the wording AMERICAN BLEND has been

disclaimed.

Top Tobacco, L.P. (“Top”) has opposed registration of

North Atlantic’s marks and seeks to cancel its registration.

Top alleges priority and likelihood of confusion as its

ground for each opposition and as one of two pleaded grounds

1999, under Section 1(a). This application is subject of the
parent proceeding, Opposition No. 91157248.
2
Application Serial No. 76357543 (filed on January 11, 2002) is
based on an allegation of a bona fide intent to use the mark in
commerce, under Section 1(b). This application is subject to
Opposition No. 91157250.
3
Application Serial No. 78781115 (filed on December 27, 2005)
is based on an allegation of first use in commerce on April 1,
1999, under Section 1(a). This application is subject to
Opposition No. 91180231.
4
Registration No. 2780643 issued on November 4, 2003. Section 8
affidavit has been accepted by the USPTO. This registration is
subject to Cancellation No. 92043186.

2
Opposition No. 91157248 (parent)
Oppositions Nos. 91157250 and 91180231
Cancellation No. 92043186

for cancellation. Specifically, by way of the notices of

opposition and petition to cancel, Top alleges that it has

“for many years used the mark CLASSIC CANADIAN in connection

with the distribution and sale of smoking tobacco”; that its

CLASSIC CANADIAN mark “has acquired a distinctiveness and

secondary meaning signifying Top Tobacco and its goods”;

that it is the owner of Registration No. 1922338 for the

mark CLASSIC CANADIAN for “tobacco”;5 and that North

Atlantic’s proposed and registered marks, for the identified

goods, are “confusingly similar to Top Tobacco’s federally-

registered CLASSIC CANADIAN mark” and are “likely to cause

confusion or mistake, or to deceive purchasers, in that

purchasers would be likely to believe that [North

Atlantic’s] goods are Top Tobacco’s goods, or are in some

way legitimately connected with, sponsored by, or approved

by Top Tobacco in violation of [Section 2(d)].”

As a second ground in the cancellation proceeding, Top

alleges that North Atlantic failed to use its registered

mark in commerce prior to obtaining the registration.

Specifically, Top alleges that North Atlantic “has not used

and does not use the mark ZIG ZAG CLASSIC AMERICAN BLEND”;

that “as demonstrated by the specimen...[North Atlantic]

5
Issued on September 26, 1995; renewed. Section 8 affidavit
accepted and Section 15 affidavit acknowledged by USPTO. The
term CANADIAN has been disclaimed.

3
Opposition No. 91157248 (parent)
Oppositions Nos. 91157250 and 91180231
Cancellation No. 92043186

displays the mark ZIG ZAG in a stylized font that is larger

than, visually separated from, and more prominent and

identifiable than the phrase CLASSIC AMERICAN BLEND...”; and

that “[a]s a result, if anything, consumers will perceive

[North Atlantic’s] products as displaying the mark ZIG ZAG,

and possibly, also as a separate and distinct stylized mark

comprised of the terms CLASSIC AMERICAN BLEND, but not the

registered mark.”6

By way of its answers to the notices of opposition and

the petition for cancellation, North Atlantic has denied the

salient allegations of the likelihood of confusion and non-

use (of the registered mark) grounds.

The opposition and cancellation proceedings have been

consolidated, tried on a single record and the merits argued

in the same trial briefs.

Record

The record includes the pleadings and, by operation of

Trademark Rule 2.122(b)(1), the files of the opposed

applications and registration that Top seeks to cancel.

Top filed the testimonial deposition transcripts, with

exhibits, of: Seth Gold, Executive Vice President and

6
In its trial brief, North Atlantic argues that the allegations
constitute an impermissible attack on the sufficiency of the
specimens submitted by North Atlantic in support of the
application that matured into the registration. However, and as
explained previously in the Board’s November 4, 2004 order, the
allegations state a claim upon which relief may be granted.

4
Opposition No. 91157248 (parent)
Oppositions Nos. 91157250 and 91180231
Cancellation No. 92043186

General Counsel for Top and Steven Sandman, Vice President

of Sales and Marketing for Republic Tobacco, an affiliate of

and distributor for Top. Under notice of reliance, Top also

submitted the following: a status and title copy of its

pleaded Registration No. 1922338, a copy of an article from

Roll Your Own Magazine Volume IV, No. 1 (Winter/Spring

2003), a copy of North Atlantic’s responses to Top’s Third

Set of Requests for Admissions, a copy of North Atlantic’s

responses to Top’s First Set of Interrogatories, a copy of

the direct examination, and exhibits discussed therein, from

the discovery deposition of James Dobbins, an officer for

North Atlantic, and a copy of the direct examination, and

exhibits discussed therein, from the Rule 30(b)(6)

deposition of North Atlantic.

North Atlantic submitted the testimonial deposition

transcript, with exhibits, of James Murray, Senior Vice

President for Business Planning at National Tobacco Company,

the operating company for North Atlantic. Under notices of

reliance, applicant submitted copies of the following:

printouts from Tobacco Encyclopedia, printouts of articles,

copies of third-party registrations, printouts from the

third-party website www.ryorevolution.com, Top’s responses

to North Atlantic’s first set(s) of requests for admissions

in several of the consolidated proceedings, Top’s responses

(including supplemental responses) to certain of North

5
Opposition No. 91157248 (parent)
Oppositions Nos. 91157250 and 91180231
Cancellation No. 92043186

Atlantic’s First Set of Interrogatories, Top’s responses to

certain of North Atlantic’s document requests, and a portion

of the cross-examination of the discovery deposition

transcript of Thomas J. Helms, III and Exhibits Nos. 1-8

thereto.

Top and North Atlantic filed trial briefs, including a

reply brief from Top.

Top’s Evidentiary Objections

Top has raised several objections to several of North

Atlantic’s evidentiary submissions.7

In response, North Atlantic contends that several of

the raised objections are moot because North Atlantic does

not rely on the objected-to evidence. Specifically, North

Atlantic states that it does not rely on the cross-

examination portion of the Helms testimony, and related

exhibits; the objected-to portions of the cross-examination

of Mr. Sandman; and Murray Dep. Exhibit 37 (also referred to

as “NAOC Exhibit 37”). Because North Atlantic does not rely

on the aforementioned evidence, we do not consider this

evidence and any objections thereto are moot.

7
Top filed a Statement of Objections, attached as an appendix to
its trial brief. Several objections were previously raised by
way of a motion to strike and were addressed in the Board’s July
14, 2010 order. We do not revisit these objections. To the
extent that certain previously raised objections were deferred
until final hearing, they are addressed herein.

6
Opposition No. 91157248 (parent)
Oppositions Nos. 91157250 and 91180231
Cancellation No. 92043186

Murray Dep. Exhibs. 24-31, 35-36

Top seeks to exclude Murray Dep. Exhibits 24-31 and 35-

36 (also referred to as “NAOC Exhibs. 24-31, 35-36”) on the

ground that North Atlantic failed to properly authenticate

the materials. In general, these exhibits comprise samples

of tobacco product packaging that North Atlantic seeks to

rely upon for purposes of showing “that these products exist

and they contain a reference to ‘Classic’ and/or a country

designation to designate the place where the tobacco comes

from.” Response to Objections, p. 3. North Atlantic argues

that these exhibits were authenticated by its witness, Mr.

Murray, as well as Top’s witnesses. North Atlantic also

argues that the documents are self-authenticating under

Federal Rule of Evidence 902(7).

We agree with Top that the aforementioned exhibits were

not properly authenticated by Mr. Murray (or any other

witness) because there is no testimony as to how and where

the product packaging was obtained.

As to North Atlantic’s argument that the exhibits are

self-authenticating under FRE 902(7), this rule provides:

Extrinsic evidence of authenticity as a condition
precedent to admissibility is not required with respect
to the following...
(7) Trade inscriptions and the like. Inscriptions,
signs, tags, or labels purporting to have been affixed
in the course of business and indicating ownership,
control, or origin.

7
Opposition No. 91157248 (parent)
Oppositions Nos. 91157250 and 91180231
Cancellation No. 92043186

In response to the self-authentication argument, Top

argues that North Atlantic “misunderstand[s]” the rule but

seems to acknowledge that the rule does allow self-

authentication of the exhibits to a certain extent.

Specifically, Top states “[t]he fact that the third party

materials are authenticated to show that they originated

from a certain company[] does not mean that they have been

authenticated as an example of a product that is regularly

distributed in the United States.” Objections Reply, p. 4.

Case law interpreting Rule 902(7) is sparse,

particularly in trademark matters. North Atlantic has cited

to a district court decision that addresses the issue of

whether third-party plastic credit cards, bearing a

trademark, are self-authenticating:

Although the court has found little case law discussing
Rule 902(7), the court believes that the rule is
properly applied here because each card displays a
label or inscription indicating its origin. However,
the court notes that defendant has offered no evidence
indicating the number of holders of each card or the
geographic region covered by each card. Further, there
is no evidence indicating whether or not these cards
are currently in use. Accordingly, the court finds
that this evidence has little probative value.

Universal Money Centers, Inc. v. American Tel. and Tel. Co.,

17 USPQ2d 1435 (D. Kan. 1990).

In similar fashion, we find FRE 902(7) applicable in

this matter and the exhibits are self-authenticating.

However, as the District Court pointed out, the materials

8
Opposition No. 91157248 (parent)
Oppositions Nos. 91157250 and 91180231
Cancellation No. 92043186

have limited probative value without further evidence

regarding their actual use in commerce. In this case, the

testimony regarding the exhibits, i.e., packaging, labels,

canisters, etc., does not establish that they were actually

used in commerce or what degree of exposure, if any, there

may have been on consumers. Thus, the exhibits are

essentially limited to what they show on their face. They

may be used in the same manner as third-party registrations

based on use in commerce, namely, to demonstrate any

suggestive meaning of the term “Classic” as it is found on

packaging for tobacco-related goods. The witnesses’

testimony, to the extent they have any personal knowledge of

the goods identified by the exhibits may also be of

relevance. For example, while Exhibit 24 is merely

packaging that has not been demonstrated to have been used

in commerce, Mr. Sandman testified that he was familiar with

the product “Stoker’s Chewing Tobacco” (see Sandman Dep.

54:7-24). Likewise, Mr. Murray’s testimony that he

recognizes Exhibits 28 and 30 comprising packaging or

cartons for “BaliShag Classic European handrolling tobacco”

may also be considered (see Murray Dep. 71:16-25).

In sum, we find that Exhibits 24-31 and 35-36 are self-

authenticating under FRE 902(7); however, they are not

evidence that the labels or packaging shown or comprising

the exhibits have been used in commerce. To the extent that

9
Opposition No. 91157248 (parent)
Oppositions Nos. 91157250 and 91180231
Cancellation No. 92043186

any witnesses testified based on their personal knowledge

regarding any products identified by the exhibits, the

testimony may also be considered. We hasten to add that the

Board is capable of weighing the probative value of all

evidence in the record, bearing in mind any limitations that

may be present, and we make all determinations based on the

entire record.

Cross-Examination of Gold

Top has objected to the cross-examination of Mr. Gold

as being beyond the scope of the direct examination. In

response, North Atlantic disputes the characterization of

the objected-to testimony as being outside the scope of

direct examination and further states that it is only

seeking to rely on Mr. Gold’s testimony “regarding Top’s

knowledge of third parties’ uses of the term ‘Classic,’” and

points specifically to page 143 of the deposition

transcript. Essentially, this portion of objected-to

testimony involves Mr. Gold’s reaction to an exhibit and a

discussion concerning whether the goods identified by the

exhibit constitute a “tobacco product.” Ultimately, the

line of questioning and responses thereto on page 143 (Gold

Dep. 143:3-24) have no bearing on our decision in the

consolidated proceedings. Because the objected-to

testimony, whether considered or not, would play no part in

10
Opposition No. 91157248 (parent)
Oppositions Nos. 91157250 and 91180231
Cancellation No. 92043186

our determinations in this matter, we decline to decide this

objection.

The Parties and the RYO (or MYO) Tobacco

The record establishes the following facts that are of

relevance in this proceeding.

Top and North Atlantic are competitors in the “roll

your own” (RYO) or “make your own” (MYO) tobacco industry,

an industry based on consumers purchasing loose tobacco and

related products to either roll or make their own

cigarettes. Top is a market leader in this industry. There

are several ways for consumers to roll or make their own

cigarettes, e.g., simply rolling the tobacco by hand into a

special cigarette paper, using a small device to assist with

the rolling, inserting the loose tobacco into pre-made

tubes, etc. The parties, either by themselves or through

related companies, sell the actual tobacco, and related

products, under various brand names directly to wholesale

distributors and retailers. The distributors sell to the

retailers who, in turn, offer these products directly for

purchase by the ultimate consumers.

Top sells a mainstream RYO tobacco under the marks TOP

and GAMBLER; however, it also sells specialty blend RYO

tobaccos. The mainstream product is less expensive and some

purveyors sell the tobacco in larger one-pound bags. The

analogy has been made that a specialty blend of tobacco is

11
Opposition No. 91157248 (parent)
Oppositions Nos. 91157250 and 91180231
Cancellation No. 92043186

akin to a microbrew beer. These pouches or canisters of

specialty RYO or MYO tobacco come in blends of tobacco

leaves from different sources and may have flavoring added.

Some blends of tobacco leaves are descriptively referred to

as “European”, “Turkish”, “Oriental” and “American”

(sometimes also referred to as “Virginia style”). These

names do not necessarily indicate the geographic source for

the tobacco contained in the pouch, but rather a style or

flavor. The tobacco may also be sold as “full flavor” or

“menthol” or “light.” A six or seven-ounce container of

loose RYO or MYO tobacco retails for approximately $20-30.

The products may be purchased in tobacco shops, convenience

stores and certain grocery stores. The advertising of RYO

or MYO related products is restricted by law; the goods may

not be advertised on television, radio or in mainstream

magazines or newspapers. The goods may be advertised in

adult or trade publications. Point of sale displays are

also frequently used to advertise the RYO or MYO tobacco and

related goods, and may be found in the same retail stores in

proximity to one another.

Standing

Top has established that it is the owner of the pleaded

registration for the mark CLASSIC CANADIAN for tobacco and

that said registration is valid and subsisting. It is also

clearly a competitor of North Atlantic in the RYO and MYO

12
Opposition No. 91157248 (parent)
Oppositions Nos. 91157250 and 91180231
Cancellation No. 92043186

markets. Accordingly, Top has shown that it has a personal

interest in this proceeding and proven its standing. See

Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842

(Fed. Cir. 2000); Ritchie v. Simpson, 170 F.3d 1092, 50

USPQ2d 1023 (Fed. Cir. 1999); and Lipton Industries, Inc. v.

Ralston Purina Co., 670 F.2d 1024, 213 USPQ 185 (CCPA 1982).

We now address the merits of the grounds for opposition

and cancellation. Initially, we consider the ground of

priority and likelihood of confusion which has been asserted

in each consolidated proceeding.

Priority

Top’s proof of ownership of its pleaded registration

removes priority as an issue with respect to the goods,

i.e., tobacco, covered by the registration, vis-à-vis the

goods identified in the opposed applications. King Candy,

Inc. v. Eunice King’s Kitchen, Inc., 496 F.2d 1400, 182 USPQ

108 (CCPA 1974).

With respect to the petition to cancel North Atlantic's

ZIG ZAG CLASSIC AMERICAN BLEND mark, Top must prove that it

has a proprietary interest in the mark CLASSIC CANADIAN and

that interest was obtained prior to either the filing date

of North Atlantic's application for registration or the

North Atlantic's date of first use. Herbko International

Inc. v. Kappa Books Inc., 308 F.3d 1156, 64 USPQ2d 1375,

13
Opposition No. 91157248 (parent)
Oppositions Nos. 91157250 and 91180231
Cancellation No. 92043186

1378 (Fed. Cir. 2002); Otto Roth & Co., Inc. v. Universal

Corp., 640 F.2d 1317, 209 USPQ 40, 43 (CCPA 1981); Miller

Brewing Co. v. Anheuser-Busch Inc., 27 USPQ2d 1711, 1714

(TTAB 1993). North Atlantic has admitted that it did not

use its registered mark prior to 1999,8 and the underlying

application for Top’s registration was filed in 1992. See

Trademark Act Section 7(c), 15 U.S.C. §1057 (c). See also

Larami Corp. v. Talk to Me Programs, Inc., 36 USPQ2d 1840

(TTAB 1995)(parties may rely on these constructive use

(filing) dates for purposes of priority). Top has therefore

established priority between its registered CLASSIC CANADIAN

mark and North Atlantic’s registered ZIG ZAG CLASSIC

AMERICAN BLEND mark.

Likelihood of Confusion

Our determination of the issue of likelihood of

confusion is based on an analysis of all of the probative

facts in evidence that are relevant to the factors set forth

in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177

USPQ 563 (CCPA 1973). See also, In re Majestic Distilling

Co., Inc., 315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir. 2003).

The Goods

We initially address the du Pont factors involving the

level of similarity or dissimilarity of the parties’ goods.

In this regard, we readily find that the parties’ goods are

8
North Atlantic’s response to Admission Request No. 15.

14
Opposition No. 91157248 (parent)
Oppositions Nos. 91157250 and 91180231
Cancellation No. 92043186

legally identical because the identification in Top’s

registration, i.e., “tobacco,” encompasses goods identified

in each of North Atlantic’s applications and registration,

i.e., “smoking tobacco” or “loose tobacco.” Thus, the

parties’ respective goods, as identified, could include

tobacco for pipes, cigars and cigarettes. While we must

entertain all such possible uses for the tobacco, as

identified, this decision is focused primarily on the RYO or

MYO tobacco market because the record and parties’ arguments

are directed thereto. To the extent that the broader

interpretation of the goods may be relevant, we address this

in the appropriate portions of our decision.

As to the identified goods other than tobacco in one of

North Atlantic’s applications, namely, “cigarettes, pocket

machines for rolling cigarettes, cigarette tubes, pocket

machines for filling cigarette tubes, and filter tips for

cigarettes,” these goods are closely related Top’s tobacco

inasmuch as they are complementary. That is, consumers of

Top’s RYO tobacco may use North Atlantic’s related goods to

roll or make their own cigarettes. As noted below, these

goods will be sold to the same classes of purchasers through

similar trade channels.

Accordingly, this factor weighs in favor of finding a

likelihood of confusion.

15
Opposition No. 91157248 (parent)
Oppositions Nos. 91157250 and 91180231
Cancellation No. 92043186

Trade Channels and Class of Purchasers

Because the goods are legally identical, with respect

to the tobacco, we must presume that said tobacco would be

found in the same channels of trade and be subject to

purchase by the same consumers. See Hard Rock Cafe

Licensing Corp. v. Elsea, 48 USPQ2d 1400 (TTAB 1998). In

any event and as previously noted, the record demonstrates

that all of the parties’ goods, whether it be the tobacco

itself or the pocket machines, tubes, filters, etc., are

directed to the same class of purchasers, namely, persons

interested in rolling or making their own cigarettes. The

record also establishes that the parties’ goods will likely

be advertised in the same media, i.e., trade and adult

magazines, and through point of sale displays that will

likely be in proximity to one another in the same retail

stores, e.g., tobacco specialty shops, convenience stores,

etc. We further note that both parties sell their

respective goods to wholesale distributors for such goods.

In other words, the trade channels and class of purchasers

are the same.

Thus, the factors involving trade channels and classes

of purchasers weigh in favor of finding a likelihood of

confusion.

16
Opposition No. 91157248 (parent)
Oppositions Nos. 91157250 and 91180231
Cancellation No. 92043186

Purchasing Conditions:
Impulse v. Careful Consideration

Although we have concluded that the classes of

purchasers are the same, we must also consider the

conditions under which the goods are likely to be purchased,

e.g., whether on impulse or after careful consideration, as

well as the degree, if any, of sophistication of the

consumers.

North Atlantic argues that there are two levels of

purchasers for the parties’ goods, the wholesale

distributors and the ultimate consumers, and that at both

levels there is a sophisticated purchaser who is less prone

to confusion between the two marks. As to the former, North

Atlantic did not provide any evidence to support this

argument, but relies on case law and treatise information in

arguing that “it is reasonable to set a higher standard of

care than exists for consumers.” While we agree that it

stands to reason that wholesale buyers should be accorded a

higher degree of purchaser sophistication over the general

public in terms of determining susceptibility to confusion,

we have often noted that even consumers who exercise a

higher degree of care are not necessarily knowledgeable

regarding the trademarks at issue, and therefore immune from

source confusion. In re Wilson, 57 USPQ2d 1863, 1865-66

(TTAB 2001); In re Decombe, 9 USPQ2d 1812, 1814-1815 (TTAB

17
Opposition No. 91157248 (parent)
Oppositions Nos. 91157250 and 91180231
Cancellation No. 92043186

1988) (“Being knowledgeable and/or sophisticated in a

particular field does not necessarily endow one with

knowledge and sophistication in connection with the use of

trademarks.”).

As to the consumers, North Atlantic argues that they

too are exercising a higher degree of care because the

parties’ specialty blends of RYO or MYO tobacco invite a

discerning buyer who is paying a premium for specialty blend

over a “generic” RYO tobacco. We agree with North Atlantic

that the evidence indicates that specialty blends are more

expensive than non-specialty blends and purchasers will

likely exercise more care in their purchase; however, we

cannot ignore the fact that both parties’ identifications of

goods leave open the possibility that their marks may be

used on the bulk or generic (less expensive) RYO tobacco.

In such case, the buyers would not necessarily exercise any

greater degree of caution and the goods themselves are

relatively inexpensive.

Thus, while it is possible that certain consumers of

RYO or MYO tobacco, and related products, will exercise a

higher degree of care in making their purchase, this is not

necessarily always the case. In the event that the parties’

marks are used on the relatively inexpensive bulk RYO or MYO

tobacco, it is feasible that consumers exercising only the

usual amount of care or diligence would make an impulse

18
Opposition No. 91157248 (parent)
Oppositions Nos. 91157250 and 91180231
Cancellation No. 92043186

purchase. Moreover, even as to the more expensive tobaccos,

the facts here are distinguishable from circumstances where

the goods are complex and extremely expensive, e.g.,

scientific or medical equipment, and the overlapping

potential purchasers are limited to very knowledgeable

purchasers in the particular field. In short, the record

does not support a finding that the goods and purchasing

process are of such a nature that purchasers would exercise

unusual care or otherwise would distinguish similar marks

for related goods. See, e.g., Electronic Design & Sales,

Inc. v. Electronic Data Sys. Corp., 954 F.2d 713, 21 USPQ2d

1388 (Fed. Cir. 1992). Accordingly, to the extent this

factor weighs at all in favor of North Atlantic, it is not

sufficient to outweigh the other du Pont factors.

Du Pont Factors 5 & 6:
Number and Nature of Similar Marks in Use
On the Same or Similar Goods
and
Strength of
Top’s Mark, CLASSIC CANADIAN

Before addressing the ever important du Pont factor

involving the degree of similarity of the parties’ marks, we

first consider several additional factors argued by North

Atlantic that go to the essence of its defense. That is,

North Atlantic argues in its brief that there is extensive

use by third parties of marks containing the term CLASSIC,

for tobacco-related products, and “[i]t is clear...that both

19
Opposition No. 91157248 (parent)
Oppositions Nos. 91157250 and 91180231
Cancellation No. 92043186

consumers and the Trademark Office have easily distinguished

among these marks when viewing them in their entireties.”

Brief, p. 26. In support, it relies on numerous third-party

registrations for marks containing the term CLASSIC as well

as several examples of use of the same term either as an

element of a mark or being used in the description of the

goods. North Atlantic also argues that Top’s pleaded mark,

CLASSIC CANADIAN, is inherently a weak mark in reference to

tobacco products because CLASSIC is a highly suggestive term

and CANADIAN merely describes a tobacco style or blend.

The sixth du Pont factor requires us to consider

evidence pertaining to the number and nature of similar

marks in use on similar goods. “The purpose of a defendant

introducing third party uses is to show that customers have

become so conditioned by a plethora of such similar marks

that customers have been educated to distinguish between

different such marks on the bases of minute distinctions.”

Palm Bay Imports Inc. v. Veuve Clicquot Ponsardin Maison

Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1694 (Fed.

Cir. 2005).

On this record, we cannot conclude that there has been

such an impact in the marketplace as a result of the term

CLASSIC being widely used in marks on tobacco products.

Third-party registrations, as acknowledged by the parties,

are not evidence that the registered marks actually have

20
Opposition No. 91157248 (parent)
Oppositions Nos. 91157250 and 91180231
Cancellation No. 92043186

been used in commerce. As to the evidence of actual use of

the term CLASSIC in third-party marks on tobacco products,

this is not accompanied by any other evidence indicating the

length of time said marks have been in use, the degree of

exposure, or the popularity of such marks vis-à-vis the

relevant purchasing public. Accordingly, this factor

remains neutral in our analysis.

As to the strength of its CLASSIC CANADIAN mark, Top

does not assert that it is famous. Rather, it argues that

the mark is “distinctive and strong.” Brief, p. 35. Top

points to its use of the mark since 1992, promotional

efforts, and its policing efforts with respect to other

marks containing the term CLASSIC in connection with RYO

tobacco products. Top’s witness, Mr. Gold, testified that

the CLASSIC CANADIAN mark has acquired “considerable

consumer recognition” because he believes consumers are

“will[ing to] pay more for Classic Canadian than they would

for a generic brand.” Gold dep. 131:16-132:5. In

contrast, and as previously indicated, North Atlantic argues

that the CLASSIC CANADIAN mark is entitled to a narrow scope

of protection in view of the inherent weakness of the mark.

In assessing the overall strength of Top’s CLASSIC

CANADIAN mark, we consider both its inherent strength based

on the nature of the mark itself and its commercial

strength, based on the marketplace recognition value of the

21
Opposition No. 91157248 (parent)
Oppositions Nos. 91157250 and 91180231
Cancellation No. 92043186

mark. See Tea Board of India v. Republic of Tea Inc., 80

USPQ2d 1881, 1899 (TTAB 2006); McCarthy on Trademarks and

Unfair Competition § 11:83 (4th ed. 2011) (“The first

enquiry focuses on the inherent potential of the term at the

time of its first use. The second evaluates the actual

customer recognition value of the mark at the time

registration is sought or at the time the mark is asserted

in litigation to prevent another’s use.”)

The record overwhelmingly establishes that the CLASSIC

CANADIAN mark has little intrinsic distinctiveness. The

term CANADIAN has been disclaimed and the evidence

establishes that it is descriptive or generic for one of

several styles or blends of RYO tobacco. As to the term

“classic,” it is defined as “having lasting significance or

worth; enduring...Of a well-known type; typical.”9 In its

prosecution of the pleaded registration and in response to

an Office Action, Top relied on a similar definition of

“Classic” and acknowledged the suggestive nature of the term

when used with the term CANADIAN and in the context of the

goods:10

9
The American Heritage Dictionary of the English Language (4th
ed. 2000). 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).
10
Copy of response to Office Action submitted under North
Atlantic’s notice of reliance.

22
Opposition No. 91157248 (parent)
Oppositions Nos. 91157250 and 91180231
Cancellation No. 92043186

Moreover, in [Top’s] mark, CANADIAN is modified by
CLASSIC, which means “of the highest class; being a
model of its kind; excellent; standard; authoritative;
established.” Webster’s New World Dictionary (2d
College ed.) Thus, while use of the term CANADIAN
alone for tobacco goods merely suggests a particular
style of goods, [Top’s] CLASSIC CANADIAN mark, in its
entirety, literally means “model Canadian” or “of a
Canadian standard” or “of an established Canadian
style.”
(emphasis in original)

Top’s statement may be used in evidence to

“illumin[ate] the shade and tone in the total picture

confronting the decision maker.” Interstate Brands Corp. v.

Celestial Seasonings, Inc., 576 F.2d 926, 198 USPQ 151, 154

(CCPA 1978); see also, Specialty Brands, Inc. v. Coffee Bean

Distributors, Inc., 748 F.2d 669, 223 USPQ 1281, 1283 (Fed.

Cir. 1984) (applicant’s earlier contrary position taken

before the examining attorney as to the meaning of its mark,

as demonstrated by statements in the application

illustrating the variety of meanings that may be attributed

to, and commercial impression projected by, applicant’s

mark, may be relevant); See also, TBMP §§ 704.03(b)(2) and

704.04 (3rd ed. 2011) and authorities cited therein.

Nevertheless, “a party’s earlier contrary opinion may be

considered relevant and competent. Under no circumstances,

may a party’s opinion, earlier or current, relieve the

decision maker of the burden of reaching his own ultimate

conclusion on the entire record.” Interstate Brands, 198

USPQ at 154. Thus, we do not construe Top’s previous

23
Opposition No. 91157248 (parent)
Oppositions Nos. 91157250 and 91180231
Cancellation No. 92043186

statement by itself as conclusive on the issue of the

commercial impression or connotation of its mark; rather, it

is relevant evidence in support of our conclusion, based on

the entire record, that the term CLASSIC and the mark as a

whole are highly suggestive in connection with the goods.

North Atlantic has submitted several third-party

registrations for marks incorporating the term “Classic” in

connection with tobacco-related products.11 These include:

• CLASSIC COLLECTION for “cigars, little cigars, pipe
tobacco and smokeless tobacco”;12

• CLASSIC DUMAURIER FLAVOUR DUE M LA SAVEUR CLASSIQUE
DUMAURIER (with design) for “cigarettes, tobacco,
cigarette cases not of precious metal, ashtrays not of
precious metal, tobacco pipes not of precious metal,
lighters not of precious metal, matches” (the terms
CLASSIC, FLAVOUR and LA SAVEUR CLASSIQUE, are
disclaimed);13

• SOUTHERN CLASSIC for “cigarettes, smoking tobacco,
cigars, cigarillos”;14

• STOKER’S CLASSIC for “smokeless tobacco”;15 and

• ZINO CLASSIC BRAZIL for “cigars” (BRAZIL disclaimed).16

While these registrations are not evidence that said

marks are in actual use, their existence indicates the term

11
We note that of the 20 registrations submitted, several have
(since the trial) been cancelled.
12
Reg. No. 3681480 issued on September 8, 2009.
13
Reg. No. 3260348 issued on July 10, 2007.
14
Reg. No. 2813638 issued on November 28, 2011, Section 8
affidavit accepted and Section 15 affidavit acknowledged.
15
Reg. No. 2359709 issued on June 20, 2000; renewed, Section 8
affidavit accepted and Section 15 affidavit acknowledged.
16
Reg. No. 2026863 issued on December 31, 1996; renewed, Section
8 affidavit accepted and Section 15 affidavit acknowledged.

24
Opposition No. 91157248 (parent)
Oppositions Nos. 91157250 and 91180231
Cancellation No. 92043186

CLASSIC has a suggestive meaning as applied to tobacco

products. Tektronix, Inc. v. Daktronics, Inc., 187 USPQ

588, 592 (TTAB 1975) (the third-party registrations may be

considered in the same manner as a dictionary to show a

possible meaning or significance in a particular trade).

Given its defined meaning and in the context of tobacco, the

term may be understood as suggestive of the type of tobacco,

cigarettes, cigars, etc., as having a lasting worth or being

of a well-known type. The suggestive attributes of this

term are not lost in Top’s mark; rather, those attributes

are accentuated by the latter term, CANADIAN, a particular

blend or style of tobacco. In other words, Top’s mark will

be understood as suggesting a “Canadian” blend of tobacco

that is “of a well-known type” or is “typical” of such

blend. The fact that the USPTO has allowed so many

registrations for the tobacco-related goods containing a

shared term to co-exist on the Principal register may be

used “to establish that [the] portion common to the marks

involved in a proceeding has a normally understood and well-

known meaning [and] that this has been recognized by the

[USPTO]...; and that therefore the inclusion of [the shared

term] in each mark may be an insufficient basis on which to

predicate a holding of confusing similarity.” Red Carpet

Corp. v. Johnstown American Enterprises Inc., 7 USPQ2d 1404,

1406 (TTAB 1988).

25
Opposition No. 91157248 (parent)
Oppositions Nos. 91157250 and 91180231
Cancellation No. 92043186

As to the commercial or market strength of Top’s

CLASSIC CANADIAN mark, we are able to conclude on the record

before us that while Top has had some commercial success in

sales, there is not enough context or evidence of consumer

exposure to the mark sufficient to establish that it is a

strong mark. Although Top has been using the mark for

approximately twenty years and has enjoyed what appears to

be significant annual sales for its CLASSIC CANADIAN

tobacco, it has not been established that this mark has

acquired renown or a high degree of consumer recognition.

In view of the foregoing, we find that the CLASSIC

CANADIAN mark is inherently a weak mark because it is highly

suggestive for tobacco and that the evidence regarding the

commercial strength of that term does not overcome the

mark’s intrinsic shortcoming. This certainly favors North

Atlantic to the extent that such marks are often accorded a

narrower scope of protection. Nevertheless, we are mindful

that even a weak mark is entitled to protection against the

registration of a very similar mark for closely related

goods. See King Candy Co. v. Eunice King's Kitchen, Inc.,

496 F.2d 1400, 182 USPQ 108, 109 (CCPA 1974) (likelihood of

confusion is to be avoided as much between weak marks as

between strong marks).

26
Opposition No. 91157248 (parent)
Oppositions Nos. 91157250 and 91180231
Cancellation No. 92043186

Similarity of the Marks

With the above in mind, particularly the immediately

preceding section discussing the relative strength of Top’s

pleaded mark, we turn now to the du Pont factor concerning

the similarity or dissimilarity of the parties’ marks. In

comparing the marks, they are viewed in their entireties in

terms of appearance, sound, connotation and commercial

impression. See Palm Bay Imports, Inc., 73 USPQ2d 1689.

While we have considered the relative weakness of Top’s

CLASSIC CANADIAN mark, we also keep in mind that when marks

would appear on identical goods, as they do in part here,

the degree of similarity between the marks necessary to

support a finding of likelihood of confusion declines. See

Century 21 Real Estate v. Century Life, 970 F.2d 874, 23

USPQ2d 1698 (Fed. Cir. 1992).

We first compare Top’s CLASSIC CANADIAN mark to North

Atlantic’s CLASSIC AMERICAN BLEND marks. The most obvious

similarity between these marks, in terms of appearance and

sound, is they all begin with the word CLASSIC. The marks

are also similar in their syntax to the extent that the term

CLASSIC is followed by a name of a specialty blend of

tobacco, CANADIAN and AMERICAN, respectively. The

additional term, BLEND, in North Atlantic’s mark is generic

and does very little to distinguish it from Top’s mark. In

terms of commercial impression and connotation, the marks

27
Opposition No. 91157248 (parent)
Oppositions Nos. 91157250 and 91180231
Cancellation No. 92043186

are equally highly suggestive of a style of tobacco. As

previously explained, Top’s mark will be understood, in the

context of tobacco, as describing the blend of tobacco,

i.e., Canadian, and suggesting that said blend is “of a

well-known type” or is “typical.” North Atlantic’s mark,

likewise, also describes a blend of tobacco, i.e., an

American blend, and suggests that the tobacco is “of a well-

known type” or is “typical.” The parties’ marks are similar

in that they have a simplistic commercial impression, a

“classic” specialty blend of tobacco.

We do note, however, that in North Atlantic’s mark:

the term AMERICAN is accentuated. While the term AMERICAN

is larger, again, it is descriptive of the goods, and as

such the source-identifying element remains the term

“classic.” The banner-style design also does not

sufficiently distinguish the marks so as to overcome the

similarities based on the common element CLASSIC and the

similar overall structure of the marks, i.e. combining

CLASSIC with the name of a specialty blend of tobacco. In

view thereof, we find that North Atlantic’s CLASSIC AMERICAN

BLEND marks are similar to Top’s mark.

28
Opposition No. 91157248 (parent)
Oppositions Nos. 91157250 and 91180231
Cancellation No. 92043186

As to North Atlantic’s registered mark, ZIG ZAG CLASSIC

AMERICAN BLEND, while it contains the same phrase “CLASSIC

AMERICAN BLEND” as the marks discussed above, the addition

of the distinctive house mark ZIG ZAG to the highly

suggestive phrase is sufficient in this case to outweigh the

similarities. Our comparison of these marks is quite

different due to the presence of this distinctive house

mark. Indeed, the Board has frequently determined that

additional distinctive elements, such as North Atlantic’s

ZIG ZAG house mark, may avoid likely confusion where the

marks in their entireties convey significantly different

commercial impressions or the matter common to the marks is

so suggestive or weak that any source-indicating value it

has is overwhelmed by the addition of an arbitrary,

distinctive element. See, e.g., Rocket Trademarks Pty Ltd.

v Phard S.p.A., 98 USPQ2d 1066 (TTAB 2011)(ZU ELEMENTS

(stylized) not confusingly similar to ELEMENTS in connection

with identical clothing goods due, in part, to

suggestiveness of term “elements”); and Knight Textile Corp.

v. Jones Investment Co., 75 USPQ 1313 (TTAB 2005)(the mark

ESSENTIALS found so highly suggestive that addition of house

mark NORTON MCNAUGHTON sufficed to distinguish the marks).

Again, we do not find that the common element, CLASSIC, in

the parties’ marks is merely descriptive but the record does

29
Opposition No. 91157248 (parent)
Oppositions Nos. 91157250 and 91180231
Cancellation No. 92043186

show that it is highly suggestive and weak.17 As used in

North Atlantic’s ZIG ZAG CLASSIC AMERICAN BLEND mark, the

term CLASSIC will not likely be perceived by purchasers as

distinguishing source. That is, consumers encountering this

mark will focus on the ZIG ZAG element and relegate the

wording CLASSIC AMERICAN BLEND as highly suggestive of the

tobacco goods. In view thereof, we find in the case of

applicant’s ZIG ZAG CLASSIC AMERICAN BLEND mark, the

dissimilarities outweigh the similarities.

Lack of Instances of Actual Confusion

North Atlantic has argued that the parties’ marks have

coexisted for over ten years without any instances of known

actual confusion, being used on the same type of RYO tobacco

and advertised to the same class of customers in the same

trade channels. We further note that while Top’s sales of

goods have been impressive, North Atlantic has enjoyed more

success in the sales of its RYO or MYO tobacco goods being

sold under the objected-to marks. Indeed, on this record,

we can find that there has been a significant period of time

and reasonable opportunity for confusion to have existed.

Under such circumstances, the absence of any actual

17
Top’s CLASSIC CANADIAN registration is on the Principal
Register without a disclaimer of the term CLASSIC; nor did it
register under Section 2(f). It is also not the subject of a
counterclaim. Accordingly, under Section 7 of the Act, we cannot
entertain any attack on this registration, or the term CLASSIC
itself, as being merely descriptive.

30
Opposition No. 91157248 (parent)
Oppositions Nos. 91157250 and 91180231
Cancellation No. 92043186

confusion may be probative. Gillette Canada Inc. v. Ranir

Corp., 23 USPQ2d 1768, 1774 (TTAB 1992); see also, e.g.,

Barbara’s Bakery Inc. v. Landesman, 82 USPQ2d 1283, 1287

(TTAB 2007) (the probative value of the absence of actual

confusion depends upon there being a significant opportunity

for actual confusion to have occurred); Red Carpet Corp. v.

Johnstown American Enterprises Inc., 7 USPQ2d 1404, 1406-

1407 (TTAB 1988); Central Soya Co., Inc. v. North American

Plant Breeders, 212 USPQ 37, 48 (TTAB 1981) (“the absence of

actual confusion over a reasonable period of time might well

suggest that the likelihood of confusion is only a remote

possibility with little probability of occurring”).

Accordingly, we find that the lack of any evidence of

actual confusion slightly weighs in favor of a finding that

confusion would not be likely to occur from the continued

contemporaneous use of the marks.

Top’s Reverse Confusion Argument

In its brief, Top acknowledges that “sales under [North

Atlantic’s] ZIG ZAG CLASSIC AMERICAN BLEND and CLASSIC

AMERICAN BLEND Marks have now likely exceeded Top’s sales of

its CLASSIC CANADIAN Mark, despite Top being the senior

user.” Brief, p. 39. Top argues that, in light of North

Atlantic’s success, consumers may first become familiar with

North Atlantic’s marks and later encounter Top’s mark. Top

31
Opposition No. 91157248 (parent)
Oppositions Nos. 91157250 and 91180231
Cancellation No. 92043186

argues that “reverse confusion” is thus likely as consumers

may then mistakenly believe that tobacco or related goods

being sold under Top’s mark emanate from North Atlantic.

The Federal Circuit, our primary reviewing court, has

elaborated on the subject of “reverse confusion.”

The term “reverse confusion” has been used to describe
the situation where a significantly larger or prominent
newcomer “saturates the market” with a trademark that
is confusingly similar to that of a smaller, senior
registrant for related goods or services. The junior
user does not seek to benefit from the goodwill of the
senior user; however, the senior user may experience
diminution or even loss of its mark’s identity and
goodwill due to extensive use of a confusingly similar
mark by the junior user.

The avoidance of confusion between users of disparate
size is not a new concept; however, the weighing of the
relevant factors must take into account the confusion
that may flow from extensive promotion of a similar or
identical mark by a junior user. In considering
likelihood of confusion as to the source of services
that are not identical, or likelihood of confusion as
to whether there is a relation between the source of
the services, the extent of the registrant’s and the
newcomer’s activities relating to the mark must be
given weight appropriate to the circumstances.

In re Shell Oil Co., 992 F.2d 1204, 1207, 26 USPQ2d 1687,
1690 (Fed. Cir. 1993)(citations omitted.)

On the record before us, we find that reverse confusion

is not any more likely than “forward” confusion or that the

relevant facts are such that our likelihood of confusion

analysis requires any adaptation. In particular, it has not

been shown that North Atlantic is a ‘significantly larger or

prominent newcomer’ who has ‘saturated the market’ with its

RYO tobacco-related goods sold under the objected-to marks.

32
Opposition No. 91157248 (parent)
Oppositions Nos. 91157250 and 91180231
Cancellation No. 92043186

Accordingly, Top’s arguments concerning reverse confusion do

not compel any change in our ultimate determination

regarding likelihood of confusion between the parties’

marks.18

Conclusion

Having found that Top’s CLASSIC CANADIAN mark and North

Atlantic’s marks CLASSIC AMERICAN BLEND and CLASSIC AMERICAN

BLEND with design are similar, that the goods are identical

in part, and that said goods move in the same trade channels

and are available to the same classes of purchasers, we find

that North Atlantic’s use of said marks is likely to cause

confusion with Top’s mark. To the extent that any doubt

might exist as to the correctness of our likelihood of

confusion conclusion, we resolve such doubt against

applicant. See Century 21 Real Estate Corp., supra; Ava

Enterprises Inc. v. Audio Boss USA Inc., 77 USPQ2d 1783

18
North Atlantic objected to Top’s raising the issue of “reverse”
confusion for the first time in its trial brief, and requests
said argument be stricken. Brief, p. 36. North Atlantic asserts
that “reverse confusion is a distinct claim from forward
confusion and differs in several key respects.” Brief, p. 37.
The Board has previously found that “[reverse confusion] does not
have to be specifically pleaded so long as the plaintiff asserts
that the respective marks are so similar as applied to the
respective goods or services as to be likely to cause confusion.”
American Hygienic Laboratories, Inc. v Tiffany & Co., 12 USPQ2d
1979, at footnote 7 (TTAB 1989). Inasmuch as Top did plead a
likelihood of confusion, as described previously, we find no
prejudice to North Atlantic in this regard and the objection is
overruled.

33
Opposition No. 91157248 (parent)
Oppositions Nos. 91157250 and 91180231
Cancellation No. 92043186

(TTAB 2006); and Baseball America Inc. v. Powerplay Sports

Ltd., 71 USPQ2d 1844 (TTAB 2004).

On the other hand, we find that North Atlantic’s mark

ZIG ZAG CLASSIC AMERICAN BLEND is sufficiently dissimilar

from Top’s mark CLASSIC CANADIAN to make confusion unlikely

and that this du Pont factor is dispositive. Kellogg Co. v.

Pack’em Enterprises Inc., 951 F.2d 330, 21 USPQ2d 1142, 1145

(Fed. Cir. 1991) (“We know of no reason why, in a particular

case, a single duPont factor may not be dispositive”).

Alleged Failure to Use Mark Prior to Registration

With regard to Top’s claim that North Atlantic failed

to use the registered mark ZIG ZAG CLASSIC AMERICAN BLEND in

commerce prior to obtaining the registration, it is not in

dispute that North Atlantic sold RYO or MYO tobacco in

commerce prior to the issuance of its registration using the

following packaging (photographs of canisters):

34
Opposition No. 91157248 (parent)
Oppositions Nos. 91157250 and 91180231
Cancellation No. 92043186

The side of this canister is depicted as follows,

including a close-up photograph of bordered text describing

the contents:

Top argues that this packaging does not show use of the

registered mark “as a single, contiguous mark with a unitary

commercial impression.” Brief, p. 41. In particular, Top

contends that the elements ZIG ZAG and CLASSIC AMERICAN

35
Opposition No. 91157248 (parent)
Oppositions Nos. 91157250 and 91180231
Cancellation No. 92043186

BLEND on the front of the canister are displayed in

“radically different fonts” and have the wording “Cigarette

Tobacco” separating them. Id. As to the side of the

canister, Top argues that the highlighted portion is “an

informational text box” displaying the element ZIG ZAG in a

stylized font different from the CLASSIC AMERICAN BLEND

element which, according to Top, is “in standard font in the

same black text as the rest of the text” in the paragraph.

Id. at 42.

We disagree with Top. We find that the canister shows

use of North Atlantic’s registered mark and, accordingly,

Top’s claim that North Atlantic failed to use the mark prior

to its registration fails.

Although the front of the canister displays the element

ZIG ZAG separated from CLASSIC AMERICAN BLEND with the

wording “Cigarette Tobacco,” the two elements forming North

Atlantic’s registered mark remain in relative proximity to

each other. The wording “cigarette tobacco” is generic for

the goods and does not impart or inject a separate

commercial impression between the two elements. Even if we

were to conclude that consumers would not view the front of

the canister and perceive ZIG ZAG CLASSIC AMERICAN BLEND as

a single, unitary mark, the side of this canister clearly

shows the registered mark without any matter separating the

36
Opposition No. 91157248 (parent)
Oppositions Nos. 91157250 and 91180231
Cancellation No. 92043186

elements.19 ZIG ZAG (in stylized lettering) is immediately

followed by “Classic American Blend.” Although the latter

element appears in a different font from the former, the

first letter of each word is capitalized and thus separates

it from the remaining text. Such use has been determined as

sufficiently separating the mark from other elements. See,

e.g., Plyboo America Inc. v. Smith & Fong Co., 51 USPQ2d

1633, 1638 (TTAB 1999) [“the term ‘plyboo’ is clearly used

as a trademark for applicant's goods -- in that the first

letter of such term (like a proper noun or proper adjective)

is capitalized, or the term is otherwise set off by

quotation marks, and the term is followed (or preceded) by

generic terminology for the goods”]. The notion that

consumers would likely perceive the ZIG ZAG CLASSIC AMERICAN

BLEND as a single, unitary mark is reinforced due to its

repetition (in the same style lettering) near the end of the

same informational box.

Ultimately, we conclude that the tobacco canister,

which again Top conceded was being sold in commerce prior to

registration of North Atlantic’s mark, is sufficient for

19
North Atlantic’s use of the registration symbol ® following the
term ZIG ZAG indicates that it has registered the term ZIG ZAG by
itself as a separate trademark. This does not preclude North
Atlantic from asserting rights in ZIG ZAG, by itself, as well as
incorporating that mark with additional elements to form a
second, different trademark. In this regard, we note we have
long held that packaging for a product may contain multiple

37
Opposition No. 91157248 (parent)
Oppositions Nos. 91157250 and 91180231
Cancellation No. 92043186

purposes of establishing use of the mark ZIG ZAG CLASSIC

AMERICAN BLEND.

Decision: Oppositions Nos. 91157248, 91157250 and

91180231 are sustained and registration is refused to North

Atlantic with respect to the subject applications.

Cancellation No. 92043186 is dismissed.

marks. See Safe-T Pacific Company v. Nabisco, Inc., 204 USPQ 307,
315 (TTAB 1979).

38

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Source: Frix Law Library, https://www.frixlaw.com/law-library/cases/11283483. Public record. Not legal advice.