Trademark Trial and Appeal Board
Patent and Trademark Office (P.T.O.)
*1 LOCAL TRADEMARKS, INC.
THE HANDY BOYS, INC.
Opposition No. 77,161, to application Serial No. 660,664 filed May 13, 1987
Kirschstein, Ottinger, Israel & Schiffmiller for Local Trademarks, Inc.
Norman E. Lehrer for The Handy Boys, Inc.
Before Sams, Rice and Seeherman
Local Trademarks, Inc. has opposed the application of The Handy Boys, Inc. to register LITTLE PLUMBER for liquid drain opener. [FN1] As grounds for opposition opposer has alleged that since prior to applicant's claimed date of first use opposer has used the service mark LITTLE PLUMBER and design, shown below, for advertising services, namely, the formulation and preparation of advertising copy and literature in the plumbing field; that opposer owns a federal registration for this mark for advertising services--namely, the formulation and preparation of advertising copy and literature; [FN2] that opposer's clients throughout the country have used its LITTLE PLUMBER and design advertising services in the plumbing profession and are using opposer's advertising copy and literature bearing the mark in the advertising of their plumbing services; that applicant's mark LITTLE PLUMBER is identical to the word portion of opposer's mark; that applicant applies its mark to a product used for plumbing purposes and which product is employed by members of the public and is or could be employed by professional plumbers; that opposer's services and applicant's product are sufficiently related such that the use of applicant's mark is likely to cause confusion or mistake among purchasers and users in the general public and the plumbing field and that purchasers of applicant's product will be deceived into believing that the product is associated with opposer or its clients. [FN3]
Applicant has admitted that its mark is identical to the word portion of opposer's mark, that it applies its mark to a product used for plumbing purposes and that this product is used by members of the public and is or could be used by professional plumbers. Applicant has essentially denied the remaining allegations in the notice of opposition.
The record includes the pleadings; the file of the opposed application; opposer's responses, with exhibits, to interrogatories served by applicant; applicant's responses to interrogatories and document production requests served by opposer; [FN4] and opposer's registration for LITTLE PLUMBER and design. [FN5] The parties have fully briefed the case, but no oral argument was requested.
The record shows that opposer's LITTLE PLUMBER service is an advertising service which is purchased and used by licensed plumbing contractors. The mark LITTLE PLUMBER appears on contracts between opposer and its clients. According to the contracts which have been submitted as exhibits, the plumbing contractor is given the exclusive rights to use the "copyrighted and patented" Little Plumber Advertising Service to advertise its business in newspapers and other media in a specific geographic area. Opposer provides to the contractor mats or proofs and reading matter from the "copyrighted and patented" Advertising Service.
*2 Opposer has provided advertising services under the mark for the five years preceding its responses to the interrogatories, i.e., 1984 to 1988, and opposer's clients, which are located throughout the United States, have used the mark during this period. The mark LITTLE PLUMBER is used by these clients in advertising materials, such as newspaper advertisements.
Opposer's annual sales under the mark ranged between $4,200 and $6,300 from 1983 to 1988. Its advertising of its services is done verbally by its president and by part time sales people.
Applicant first used the LITTLE PLUMBER mark on March 19, 1987, and from then until June 1988 (the date of applicant's responses to opposer's interrogatories), it sold $30,000 worth of product, corresponding to 60,000 bottles. Applicant's product is distributed through wholesalers and distributors to retail outlets, and it is ultimately purchased by the average homeowner. The product is sold throughout the United States. Applicant has done no advertising of its product.
The parties concede, and we agree, that their marks are substantially identical and that opposer has established its priority. The issue, thus, is whether the services and goods are sufficiently related that confusion is likely to result.
It is opposer's position that confusion is likely because members of the public seeing a LITTLE PLUMBER advertisement by one of opposer's plumber clients and an advertisement for or a product bearing applicant's mark LITTLE PLUMBER would relate the services and the product and believe they emanated from the same source.
While we would agree that plumbing services and liquid drain cleaner are related, opposer has not demonstrated that it has any rights in its mark for plumbing services. Its registration is for advertising services, namely the formulation and preparation of advertising copy and literature. The record shows that these advertising services are rendered to plumbers, but there is nothing in the record to show that the plumbing services rendered by the plumbers who employ opposer's advertising services inure to the benefit of opposer, such that opposer can be said to render plumbing services through its clients. In order to gain the benefit of another company's use of a mark, that other company's use must be controlled by the owner of the mark with respect to the nature and quality of the goods or services on or in connection with which the mark is used. Section 5 and 45 of the Trademark Act, 15 U.S.C. 1055, 1127. In the present case the contract between opposer and its clients makes no mention of plumbing services, let alone quality control of such services. The contract is simply for opposer to supply certain mats, proofs and reading material for the client to use in advertisements within a certain geographic area.
Accordingly, we must agree with applicant that as far as the general public is concerned confusion would not be likely because the goods and services are sold through different channels of trade to different classes of consumers. That is, the general public does not purchase advertising services which are marketed to plumbing contractors.
*3 Opposer also argues that members of the plumbing trade are likely to believe that advertising services offered to plumbers by opposer under the LITTLE PLUMBER mark and a plumbing product bearing the same mark were provided by the same source.
We disagree. We see no reason why plumbing contractors would believe that an advertising agency sells or sponsors a liquid drain opener, or that a liquid drain opener manufacturer would provide advertising services. Thus, even though opposer's services and applicant's product are or can be marketed to the same class of customers, namely plumbing contractors, these services and goods are so different that confusion is not likely even if they are marketed under the same mark. We would also point out that the mark in question, LITTLE PLUMBER, cannot be considered a strong mark for either advertising services in the plumbing field or for a plumbing product.
Decision: The opposition is dismissed.
J. D. Sams
E. J. Seeherman
Members, Trademark Trial and Appeal Board
FN1. Application Serial No. 660,664, filed May 13, 1987 and asserting first use and first use in commerce on March 19, 1987.
FN2. Registration No. 626,017, issued April 24, 1956; Section 8 affidavit accepted; Section 15 affidavit received; renewed.
FN3. Opposer has also pleaded dilution, but since dilution is not a ground for opposition we have not considered this claim.
FN4. The parties stipulated that each party could rely on its own answers, with any documentary exhibits attached, to the other's interrogatories. It is clear from the parties' papers that responses to document production requests were contemplated as being included in the stipulation, and we have therefore treated them as of record.
FN5. Opposer did not properly make its registration of record by either submitting two status and title copies with the registration (Trademark Rule 2.122(d)(1)); or by submitting a status and title copy with a notice of reliance or identifying and introducing it during the taking of testimony (Trademark Rule 2.122(d)(2)). However, applicant has conceded in its brief that opposer is the owner of the mark LITTLE PLUMBER and design as applied to advertising services and that the mark was registered on the Principal Register on April 24, 1956 for the services of advertising--namely, the formation and preparation of advertising copy and literature. In view of applicant's concession, we have treated the registration as being of record.