Trademark Trial and Appeal Board
Patent and Trademark Office (P.T.O.)
*1 PRESTO PRODUCTS, INC.
v.
NICE-PAK PRODUCTS, INC.
Opposition No. 74,797
September 14, 1988
By the Board:
J.D. Sams, J.E. Rice and R.L. Simms
Members
An application has been filed by Nice-Pak Products, Inc. to register the mark "KIDWIPES" in stylized form, as shown below (in reduced size)
TABULAR OR GRAPHIC MATERIAL SET FORTH AT THIS POINT IS NOT DISPLAYABLE
for pre-moistened disposable towelettes, [FN1] use since December 26, 1985 being asserted.
Registration has been opposed by Presta Products, Inc., which asserts, in essence, prior use of the mark "KID STUFF" for premoistened disposable towelettes; ownership of registrations of the mark "KID STUFF" for moist tissues [FN2] and for towelettes moistened with a mild cleansing solution containing lanolin; [FN3] and a likelihood of confusion.
Applicant, in answering the notice of opposition, has admitted that the goods for which applicant seeks to register its mark are identical to, are in the same general class, and are sold in the same channels of commerce as opposer's goods; but has denied opposer's remaining salient allegations, including opposer's allegation of likelihood of confusion.
This case now comes up on applicant's motion for summary judgment and opposer's cross-motion for summary judgment. Each party has supported its motion with extensive evidence submitted pursuant to Rule 56 of the Federal Rules of Civil Procedure.
The summary judgment procedure is a pretrial device to dispose of cases in which there is no genuine issue as to any material fact, and the moving party is entitled to judgment as a matter of law. See: Buffett v. Chi-Chi's, Inc., 226 USPQ 428 (TTAB 1985); Block Drug Co. v. Morton-Norwich Products, Inc., 202 USPQ 157 (TTAB 1979); and cases cited therein.
In the present case, the evidence submitted by the parties is sufficient to convince us that there is no genuine issue as to the facts described immediately hereafter. The parties use their involved marks on identical goods, namely, pre-moistened disposable towelettes, which are sold through the same types of retail outlets (such as drug stores and discount stores) to the same classes of purchasers (primarily, mothers of young children). [FN4] These goods, commonly referred to as "wipes," are relatively inexpensive in nature, retailing for a few dollars. Opposer's mark "KID STUFF" was first used and registered for moist tissues by opposer's predecessor. In 1981, opposer purchased that registration "to launch this brand" and also filed a new application to register the mark for towelettes moistened with a mild cleansing solution; that application matured into opposer's second pleaded registration in 1983. Both registrations are in full force and effect. Opposer has promoted its "KID STUFF" moist towelettes on a significant scale, utilizing such media as shelf displays, point-of-purchase materials, promotional fliers, advertisements in trade publications and in publications of general circulation, brochures, coupon and premium offers to consumers, and trade shows.
*2 Applicant first used the mark "KIDWIPES" in connection with its pre-moistened disposable towelettes on December 26, 1985. Applicant's sales and promotional activities under the mark have been very limited. No one other than opposer and applicant sells moist towelettes under a mark containing the term "KID." In the summer of 1985, when applicant tentatively selected its mark, applicant was aware of opposer's prior use and registration of the mark "KID STUFF" for moist towelettes. Moreover, applicant did not know of anyone else who was using a mark containing the term "KID" for moist towelettes. The officials of applicant who selected the mark "KIDWIPES" have indicated, in essence, that their knowledge of opposer's mark "KID STUFF" had no real bearing on their decision to adopt the mark "KIDWIPES," because they believed that there was no likelihood of confusion between the marks. When applicant filed its application to register the mark "KIDWIPES", the Examining Attorney passed the application for publication without citing opposer's registrations as references. Neither party is aware of any instances of actual confusion in the marketplace resulting from the contemporaneous use of their respective marks.
In the spring of 1984 and again in the fall of 1985, applicant entered into (unsuccessful) negotiations with The Coca-Cola Company, opposer's parent company at the time, to purchase opposer. However, during the course of those negotiations, The Coca-Cola Company never gave applicant any information about opposer's brand name operation, its sales by particular product line, the identity of its trademarks, or the sales figures for any product sold under a trademark of opposer. Specifically, The Coca-Cola Company never gave applicant any information about opposer's "KID STUFF" moist towelettes. Finally, there is no genuine issue as to the fact that applicant's purchasing agent, in initially ordering labels for applicant's "KIDWIPES" product on November 8, 1985, used opposer's mark "KID STUFF," rather than applicant's mark "KIDWIPES," on the purchase order. The evidence submitted by the parties in connection with their motions for summary judgment contains no explanation as to why the purchasing agent used the wrong mark.
Having carefully considered the evidence and arguments offered by the parties with respect to their motions for summary judgment, we conclude that there is no genuine issue of material fact remaining to be resolve, and that this case is ripe for determination by summary judgment. Although there is a genuine issue of fact as to why applicant's purchasing agent used opposer's mark on the November 8, 1985 purchase order for labels for applicant's product, and this matter in turn possibly could have a bearing on applicant's intent in adopting the mark "KIDWIPES," applicant's intent is not material to our decision since we would come to the same conclusion on the issue of likelihood of confusion regardless of whether applicant's intent was good or bad. [FN5]
*3 Turning to the issues, there is no question as to opposer's priority or as to the identity, for purposes herein, of the goods, trade channels, and class of purchasers. Thus, the principal issue remaining to be determined is whether the contemporaneous use by the parties of their respective marks in connection with these goods is likely to cause confusion.
Applicant argues, inter alia, that the marks "KIDWIPES" (in stylized design form) and "KID STUFF" do not look or sound alike; that the only feature common to the two marks is the term "KID", which, as applied to pre-moistened disposable towelettes for a children's market, is highly suggestive or descriptive and not susceptible of protection in and of itself; that the mere inclusion of this term in each of these two marks is an insufficient basis upon which to predicate a finding of likelihood of confusion; that the term "WIPES" is perhaps evocative of a small cleaning towel, whereas "STUFF" may be equated with any miscellaneous product, from modeling clay to a "stuffed" toy, but certainly not a towelette or "wipe;" and that the marks as wholes thus present completely different meanings.
We cannot agree. Although there are differences in appearance between the marks, there are also similarities between them in that both start with the term "KID" (a matter of some importance since it is often the first part of a mark which is most likely to be impressed upon the mind of a purchaser and remembered) and have the same number of letters and syllables. Moreover, Section 2(d) of the Trademark Act prohibits the registration of a mark which "so resembles a mark registered in the Patent and Trademark Office or a mark or trade name previously used in the United States by another and not abandoned, as to be likely, when applied to the goods of the applicant, to cause confusion, or to cause mistake, or to deceive" (emphasis added). It is obvious therefrom that the significance of a mark must be determined not in the abstract, but rather in relation to the goods or services to which it is applied, and the context in which it is used, because that is how the mark is encountered by purchasers. See: Morton-Norwich Products, Inc. v. S.C. Johnson & Son, Inc., 531 F.2d 561, 189 USPQ 413 (CCPA 1976); In re P. Ferrero & C.S.P.A., 479 F.2d 1395, 178 USPQ 167 (CCPA 1973); and Northwestern Gulf Co. v. Acushnet Co., 226 USPQ 240 (TTAB 1985). Cf. In re Abcor Development Corp., 616 F.2d 525, 200 USPQ 215 (CCPA 1978). When so considered, opposer's mark "KID STUFF" conveys the impression that opposer's towelettes, or wipes, are things for kids. [FN6] Applicant's mark, "KIDWIPES" in stylized form, likewise signifies that applicant's wipes are intended for kids. The marks thus convey very similar meanings. [FN7] In view thereof, and considering that prior to applicant's first use of "KIDWIPES", opposer was the only party using the term "KID" as part of a mark for moist towelettes, or wipes; that applicant and opposer are the only parties which now use such a mark; and that applicant uses the term "KID" at the beginning of its mark, as does opposer, and has added thereto only the generic term "WIPES", we are of the opinion that the marks, when considered in their entireties, are so similar as to be likely to cause confusion, mistake, or deception, in that purchasers are likely to confuse one mark with the other, or to think, because of the similarities in the marks, that they identify two lines of moist towelettes emanating from a single source.
*4 Applicant argues, in response to opposer's cross-motion for summary judgment, that there is a genuine issue of material fact as to the strength of opposer's mark. There is no genuine issue, however as to the facts that opposer owns two Principal Register registrations of its mark for the goods in question; that opposer itself has used the mark since 1981 and is entitled to rely upon use by its predecessor since February 23, 1979, the date of the predecessor's filing of the application which matured into the first registration; that opposer has had exclusivity in its use of a mark containing the term "KID" for moist towelettes, except for applicant's subsequently adopted mark; or that opposer's use of its mark had been of such nature and extent that applicant was familiar with the mark in the summer of 1985, before applicant had a trademark search done. Moreover, although opposer is unable to break down its promotional expenditures on a product-by-product basis, the affidavit and exhibit evidence offered by opposer is sufficient, in our opinion, to show prima facie that there is no genuine issue as to the fact that opposer's promotional efforts for its "KID STUFF" moist towelettes have been on a significant scale; applicant has offered no evidence to rebut this showing. These factors, when combined with the similarities between the marks, considered in their entireties; the identity of the goods, trade channels, and classes of purchasers; and the relatively inexpensive, off-the-shelf, nature of the goods is more than sufficient to support a finding of likelihood of confusion. Further evidence of the strength of opposer's mark is simply unnecessary.
We have not overlooked applicant's argument that the lack of evidence of actual confusion indicates that there is no likelihood of confusion. However, we do not believe that the lack of evidence of actual confusion is a very significant factor in this case in view of applicant's very limited sales and promotion of its "KIDWIPES" wipes.
For the foregoing reasons, opposer's motion to strike is granted to the extent indicated above; applicant's motion for summary judgment is denied; opposer's cross-motion for summary judgment is granted; the opposition is sustained; and registration to applicant is refused.
J. D. Sams
J. E. Rice
R. L. Simms
Members, Trademark Trial and Appeal Board
FN1. Serial No. 594,024, filed April 17, 1986.
FN2. Registration No. 1,136,795, issued June 10, 1980, based on an application filed February 23, 1979; affidavit Sec. 8 accepted; affidavit Sec. 15 received.
FN3. Registration No. 1,224,797, issued January 25, 1983, based on an application filed November 30, 1981.
FN4. Applicant makes the argument that the products sold under the respective marks of the parties here involved are directed to different markets, with opposer's being intended for the infant's towelette market, and applicant's being aimed at the "post-baby wipe market, for the child over 2 1/2 years old and up to about the early teen-age years." As applicant elsewhere concedes, however, no such distinction can be drawn for purposes herein since neither applicant's nor opposer's identification of goods contains any such restriction. The argument is also unpersuasive for some of the additional reasons which are discussed at length by opposer, but which we need not detail here.
FN5. In support of its motion for summary judgment, as evidence of good faith adoption, applicant submitted the affidavit testimony of its officials as to the advice given to them by applicant's trademark counsel (based on a trademark search) after they thought of the mark "KIDWIPES" but before they actually used the mark. Opposer moved to strike the testimony on the ground that applicant, claiming attorney-client privilege, refused to produce the underlying opinion of its attorney when opposer requested it during discovery. Opposer contends that the testimony of applicant's officials on the matter is hearsay, and that applicant cannot now rely on evidence which it refused to provide in response to opposer's discovery request therefor. Applicant responded to the motion by, inter alia, producing a copy of the opinion in question. While the Board has held that the opinion of an attorney relating to a trademark search is protected by the attorney-client privilege and therefore need not be produced in response to a discovery request therefor, it is also true that a party who has refused (even rightfully) to produce information sought in a discovery request may not thereafter rely on the information as evidence in its behalf. See: Refreshment Machinery Inc. v. Reed Industries, Inc., 196 USPQ 840 (TTAB 1977), and Autac Inc. v. Walco Systems, Inc., 195 USPQ 11 (TTAB 1977). Accordingly, opposer's motion to strike this evidence is granted. The striking of the testimony is of no particular moment, however, since, as indicated above, our determination of the issue of likelihood of confusion would be the same regardless of whether applicant adopted its mark in good faith. Indeed, we have not, in determining this case, drawn any inference of bad faith on applicant's part. Opposer's motion to strike certain other portions of applicant's affidavit testimony is denied.
FN6. In Webster's New World Dictionary (Second College Edition, 1986), the noun "stuff" is defined as, inter alia, "1. the material or substance out of which anything is or can be made; raw material 2. constituent elements or basic nature; essence; character [a man made of stern stuff] 3. matter or substance of an unspecified or generalized kind 4. cloth, esp. woolen cloth 5. a) household goods b) personal belongings c) things in general; objects d) things grouped together or viewed in a certain way...."
FN7. While we agree that the term "KID" is highly suggestive, if not descriptive, as applied to the goods here involved, the similarities between the marks of the parties, as detailed above, extend beyond the mere inclusion in each of that term.