Trademark Trial and Appeal Board
Patent and Trademark Office (P.T.O.)
*1 IPCO CORPORATION
January 12, 1988
October 21, 1987
Opposition No. 69,106, to application Serial No. 400,316, filed October 19, 1982.
Joseph J. Previto for Ipco Corporation
Marvin N. Gordon for Blessings Corporation
Before Sams, Rice and Seeherman
Ipco Corporation has opposed Blessings Corporation's application to register "CONFIDENCE" for reusable incontinence briefs. [FN1] As grounds for opposition, opposer has alleged that it has used the word "CONFIDENCE" in connection with the promotion and sale of incontinent care products since prior to applicant's use of the mark; that the goods identified in the application are of the same descriptive properties as opposer's goods and are sold through the same trade channels and to the same customers; that applicant's mark for such goods is so similar to opposer's use of "CONFIDENCE" that it is likely to cause confusion, mistake or deception; and that applicant has requested that opposer discontinue its use of "CONFIDENCE", thereby indicating that applicant believes that confusion is likely and also indicating opposer's damage.
In its answer applicant admitted that it requested opposer to discontinue its use of "CONFIDENCE" and denied the remaining salient allegations in the notice of opposition.
The record includes the pleadings; the application file; opposer's responses to certain of applicant's interrogatories relied on by applicant; exhibits produced by applicant in response to certain of opposer's interrogatories, applicant's response to opposer's request for admission and, pursuant to Rule 2.120(j)(5), opposer's answers and supplemental answers to certain of applicant's interrogatories, all relied on by opposer; and the testimony, with exhibits, of Nancy K. Robinson, Senior Product Manager at opposer's Whitestone Products Division. Both parties have also attempted to rely on certain documents produced in response to document production requests. While such documents cannot be placed into evidence by means of a notice of reliance, because both parties have treated them as of record we will consider them as having been made of record by stipulation pursuant to Rule 2.123(b).
The record shows that opposer makes a variety of disposable incontinent care products, including briefs. These products are sold to grocery chains, drug chains, and home health care stores, to medical surgical supply houses, which in turn sell them to nursing homes and hospitals, and to drug wholesalers, which sell them to independent pharmacies.
In April, 1981 opposer had a pamphlet printed which described its "AMBEZE" incontinent pants and its Whitestone Disposable Liners, and also gave some information about the problem of incontinence. The front of the pamphlet, reproduced below, is headed "Confidence to Enjoy a Normal and Active Life."
TABULAR OR GRAPHIC MATERIAL SET FORTH AT THIS POINT IS NOT DISPLAYABLE
The word "confidence" also appears at two other points in the booklet--the description of the "AMBEZE" incontinent pants says they offer "new comfort and confidence", and the description for the liners states that they "give those who suffer from stress incontinence the freedom and confidence to enjoy normal daily activities." These pamphlets were inserted into each package of opposer's "DISPOSEZE" disposable home care underpads for a period of six months beginning on approximately April 30, 1981. The pamphlets were also sent to individuals who wrote to opposer requesting information about its products (approximately 25-50 letters per month), and were given to wholesalers and distributed by salesmen to health care stores and independent pharmacies. In these stores they were used as give-away items in point of purchase stand-up displays, which were located either next to the products or at the cash register. Some stores also occasionally included the pamphlet with the bills sent to individual customers. Originally 50,000 of these pamphlets were ordered, and they were reordered periodically.
*2 In May 1982 opposer replaced the pamphlet with a booklet, although the pamphlet continued to be distributed for 4-5 months until all supplies of it were gone. The new booklet, subtitled "Some Plain Talk and Practical Facts About Incontinence" provided, in 8 or 12 pages (with the variation in size due to the space allotted for featuring each product), information about incontinence, treatment and management of the problem and a list of some of opposer's products which were designed for those who are incontinent.
The booklet, like the pamphlet, is headed "Confidence to Enjoy a Normal and Active Life", although in the booklet, unlike the pamphlet, the word "Confidence" appears in a different color ink from the rest of the phrase. The front of the booklet is reproduced below:
TABULAR OR GRAPHIC MATERIAL SET FORTH AT THIS POINT IS NOT DISPLAYABLE
Opposer received 5,000 booklets from the printer on approximately May 14, 1982 and began distributing them to sales people and major customers, so that they would have been in home health care stores and institutions within two months of this date.
The booklets have been used in various ways. The booklets are used in point of purchase displays in home health care stores, independent drug stores and PATHMARK grocery stores. In connection with the promotion of opposer's "AMBEZE" medium incontinent pants in 1983 or 1984, and the promotion of opposer's "ULTRASHIELD" briefs in 1985, each package of the particular product manufactured during the "couple of months" the promotion ran contained the booklet. In 1983 opposer started a mail order business in which opposer advertised in magazines and newspapers and furnished a clip-out coupon; upon receiving the coupon from the individual consumer, opposer would mail him the booklet. Opposer also did a large direct mail campaign from the summer of 1982 through the first half of 1983 in which the booklet was sent to a mailing list comprising individuals who were likely to have problems with incontinence. Booklets have also been distributed at trade shows, and to families of nursing home residents.
Applicant has applied for registration of the trademark "CONFIDENCE" for reusable incontinent briefs. Because applicant has not presented any evidence of its date of first use, the earliest date on which it may rely is its application filing date of July 19, 1982. ECI Division of E-Systems v. Environmental Communications, 207 USPQ 443 (TTAB 1980). Documents produced by applicant indicate that applicant promotes its "CONFIDENCE" brand through newspaper consumer ads, radio commercials, direct mail to physicians, consumer education booklets in pharmacies, and floor displays which serve as product information centers. The documents also show that the customers for "CONFIDENCE" protective underwear and disposable pads are individuals with incontinence problems. Further, opposer's witness has testified that she regards the parties' products as competitive.
On October 10, 1983 applicant's attorneys sent a letter to opposer referring to opposer's booklet, stating that "CONFIDENCE" was a "registered trademark" of the Geri-Care Products Division of applicant, and requesting that opposer discontinue the use of the word "Confidence" in connection with the sale and marketing of opposer's products.
*3 There is no question that opposer began distributing its pamphlets and booklets bearing the phrase "Confidence to Enjoy a Normal and Active Life"-- both by inserting them in packages of certain disposable body-worn incontinence products and in displays associated with the goods--prior to the filing date of applicant's application for "CONFIDENCE". Nor is there any question that opposer's products are closely related to the goods identified in applicant's application and would be sold to the same consumer in the same or similar outlets.
The real issue before us is whether opposer's use of the word "CONFIDENCE" on its brochures, the only use of this term made by opposer--is sufficient to preclude applicant from registering the same term. Opposer argues that it uses "CONFIDENCE" as a trademark for its line of disposable incontinence products or, in the alternative, that its use is analogous to trademark use. Under either approach, our analysis must be whether opposer's use is of a nature to create an association of the word with its goods.
Section 45 of the Trademark Act of 1946 defines a trademark as including "any word, name, symbol or device or any combination thereof adopted and used by a manufacturer or merchant to identify and distinguish his goods ... from those manufactured or sold by others and to indicate the source of the goods...." It is well established that not every word is a trademark, and that, even though a word may be used on or in connection with goods, it is not registrable unless it is used as a mark, namely, in a manner clearly calculated to project to purchasers or prospective purchasers encountering the notation in question in the applicable marketplace environment a single source or origin of the goods. See, In re Gilbert Eiseman, P.C., 220 USPQ 89 (TTAB 1983); In re Morganroth, 208 USPQ 284 (TTAB 1980).
This principle, that the term in which rights are claimed must be used as a mark [or a trade name], is applicable to opposition proceedings even though to be successful in an opposition the opposer need not necessarily have a mark which would be entitled to registration. In the present case, we find that opposer's use of "CONFIDENCE" on its brochures does not constitute a mark because the use is not of such nature that purchasers would perceive the word as indicating a particular source of the goods. Instead, it is our view that "CONFIDENCE" as shown on the brochures would be perceived in its ordinary English language meaning, and as an integral and natural part of the phrase "Confidence to Enjoy a Normal and Active Life." We take this view despite opposer's argument that "CONFIDENCE" creates a separate impression because it is depicted in a larger size and, on the booklet, in a different color from the rest of the phrase, an argument which we do not find persuasive given the nature of the entire phrase. See In re C.R. Anthony Co., 3 USPQ2d 1894, 1895 (TTAB 1987).
*4 Applicant has raised an additional issue concerning opposer's standing, asserting that because opposer has no proprietary rights in the word "CONFIDENCE" it cannot demonstrate any damage. However, all that is required to demonstrate standing is that a party have a real interest in the outcome of the proceedings, so that it is more than a meddlesome party. It is not an absolute requirement that a party have proprietary rights in a mark in order to maintain an opposition. See, Jewelers Vigilance Committee, Inc. v. Ullenberg Corp., 823 F.2d 490, 2 USPQ 2d 2021 (Fed.Cir.1987). Thus, although we have found on the merits that opposer is not entitled to the relief it seeks because it has not used the word "CONFIDENCE" in the manner of a trademark, its use of the word on its brochures, its right to continue such use, and the cease and desist letter sent by applicant, [FN2] evidence a sufficient interest by opposer to demonstrate its standing.
Decision: The opposition is dismissed.
J. D. Sams
J. E. Rice
E. J. Seeherman
Members, Trademark Trial and Appeal Board
FN1. Application Serial No. 400,316, filed October 19, 1982, and asserting a date of first use and first use in commerce on July 19, 1982.
FN2. In its brief and at the oral argument applicant conceded that opposer has the right to continue its use of the word "confidence" in this manner.