likelihood of confusion is to be avoided as much between weak marks as between strong marks
How later courts described this case
- likelihood of confusion is to be avoided as much between weak marks as between strong marks
- “We know of no reason why, in a particular case, a single duPont factor may not be dispositive”
Written by the judges who cited it.
The opinion
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