Trademark Trial and Appeal Board
Patent and Trademark Office (P.T.O.)
*1 JOHNSON & JOHNSON
JACK FROST LABORATORIES, INC.
Opposition No. 76,359
July 21, 1988
By the Board:
L.E. Rooney, G.D. Krugman and E.W. Hanak
On January 13, 1988 applicant, Jack Frost Laboratories, Inc., filed a motion for summary judgment with a supporting brief and affidavit. Applicant sets forth two alternative grounds for its motion. First, applicant alleges that opposer lacks standing to oppose due to opposer's "failure to effectively plead any real interest" in the proceeding. Second, applicant alleges that, even assuming arguendo that opposer has standing, as a matter of law, (1) there is no likelihood of confusion between applicant's mark and the mark of opposer's Registration No. 54,308, and (2) the mark for which applicant seeks registration is not within the prohibitions of 18 U.S.C. § 706 pertaining, in part, to the use of the emblem of the Greek red cross on a white background.
Opposer, Johnson & Johnson, has filed a brief and affidavits in opposition to applicant's motion for summary judgment.
Considering first the issue of opposer's standing, this Board finds that as a matter of law opposer has standing to oppose pursuant to Section 2(d) of the Lanham Trademark Act. Indeed, this Board in its order of February 9, 1988 in essence held that opposer did have standing. See page 5 of that order which reads, in part, as follows: "Opposer, in the notice of opposition, has claimed ownership of Reg. No. 54,308 for a red cross design for medical and surgical plasters and has alleged a likelihood of confusion based upon applicant's use of a Greek red cross in connection with heat and cold packs. By pleading its ownership of a single registration for a specific mark and goods, it is clear that the claim of likelihood of confusion is based solely upon the mark and goods set forth respectively in the parties' registration and application. The notice of opposition adequately states a claim of likelihood of confusion under Section 2(d) of the Trademark Act and no further clarification is necessary."
Because opposer has established standing to oppose pursuant to Section 2(d) of the Lanham Trademark Act, opposer then has standing to oppose on the ground that purportedly applicant's application was void ab initio because applicant's use of its mark was not lawful use in commerce in that said use violated the provisions of 18 U.S.C. § 706. See: Lipton Industries, Inc. v. Ralston Purina Co., 670 F.2d 1024, 213 USPQ 185, 190 (CCPA 1982) ("Standing having been established [pursuant to Section 2(d)], petitioner is entitled to rely on any statutory ground which negates appellant's right to the subject registration and may invoke the general public interest in support of its claim.").
Having determined that opposer has standing to oppose both pursuant to Section 2(d) as well as on the ground that applicant's use of its mark was not lawful, we turn to a consideration of applicant's second ground for summary judgment, namely, that as a matter of law, applicant's mark is not confusingly similar to the mark of opposer's Registration No. 54,308, nor is applicant's use of its mark in violation of 18 U.S.C. § 706. It need hardly be stated that in deciding applicant's motion for summary judgment, this Board must resolve all factual disputes as well as all inferences to be drawn from established facts in the light most favorable to opposer Johnson & Johnson, the party opposing the motion for summary judgment.
*2 Opposer has stated that "it is clear that genuine issues exist regarding likelihood of confusion between the parties' respective marks." (Opposer's brief page 5). Specifically, opposer contends that applicant Jack Frost is seeking to register a mark which "completely subsumes J & J's registered Red Greek Cross mark [Registration No. 54,308]"; that the "parties' goods are closely related"; that the parties' goods "can be sold side-by-side in retail outlets"; and that the parties' "products may be packaged together in a single first aid kit." (Opposer's brief page 5). Nowhere in opposer's brief in opposition to applicant's motion for summary judgment (or elsewhere) has opposer contended that it needs additional time for discovery on any issues such as, for example, possible instances of actual confusion involving the goods and marks of the two parties. For that matter, nowhere has opposer contended that it needs additional time to put in evidence pertaining to other issues, such as, for example, the possible fame of opposer's mark set forth in Registration No. 54,308, which issued in 1906.
In deciding applicant's motion for summary judgment on the issue of likelihood of confusion, this Board, for the purposes of the motion, will assume that applicant's mark totally subsumes opposer's mark; that applicant is free to use and has used its mark in red on a white background; that the goods of the parties are closely related; and that these goods are sold side-by-side in retail outlets and sometimes are packaged together in a single first aid kit.
Having said the foregoing, this Board finds that the mark of application Serial No. 576,681 (below at left) and the mark of opposer's registration No. 54,308 (below at right) are so dramatically different that, as a matter of law, there is no likelihood of confusion, mistake or deception.
TABULAR OR GRAPHIC MATERIAL SET FORTH AT THIS POINT IS NOT DISPLAYABLE
The "cross" in applicant's mark is totally buried within the overall mark and is but a small part of the overall mark. Indeed, the "cross" in applicant's mark does not even appear as a cross in that it forms the center of a snowflake.
While summary judgment is granted cautiously in order to preserve substantive rights, by the same token, it is clear that in appropriate cases, the issue of likelihood of confusion can be resolved by summary judgment. Pure Gold, Inc. v. Syntex (U.S.A.), Inc., 739 F.2d 624, 222 USPQ 741 (Fed.Cir.1984); Exxon Corp. v. National Foodline Corp., 198 USPQ 407 (CCPA 1978). Even resolving all disputes of fact as well as all inferences to be drawn from established facts in the light most favorable to opposer Johnson & Johnson, nevertheless, given the vast dissimilarities in opposer's mark and applicant's mark, this Board finds that as a matter of law, there is no likelihood of confusion, mistake or deception. Hence, applicant's motion for summary judgment on opposer's Section 2(d) claim is hereby granted.
*3 Turning to applicant's claim that it's mark does not fall within the prohibitions of 18 U.S.C. § 706, this Board finds that applicant's position on this issue is likewise well taken. To begin with, this Board finds that as a matter of law it cannot be said that applicant's mark consists of a Greek red cross on a white background even assuming arguendo that applicant's mark was lined for the color red, which it is not. Opposer would apparently have this Board find that all marks which in any way contain a cross violate the provisions of 18 U.S.C. § 706. This Board has not done this in the past-- see In re Health Maintenance Organizations, Inc., 188 USPQ 473 (TTAB 1975)-- and it will not do so now.
Moreover, it is to be noted that the specimens filed by the applicant which demonstrate the use upon which applicant bases its application show that the purported "cross" is in fact depicted in white on a red background and in blue on a white background, and not in red on a white background as described in 18 U.S.C. § 706. Even assuming arguendo that applicant also makes use of a red "cross" on a white background, and further assuming arguendo that such use would be unlawful pursuant to 18 U.S.C. § 706, it is also clear that applicant uses the "cross" in ways that clearly would not violate 18 U.S.C. § 706, and applicant has relied upon these clearly lawful uses (i.e. a white "cross" on a red background and a blue "cross" on a white background) to support its application for registration.
Decision: Applicant's motion for summary judgment on the ground that there is no likelihood of confusion, mistake and deception pursuant to Section 2(d) of the Lanham Trademark Act and on the ground that applicant's use of its mark does not violate 18 U.S.C. § 706 is well taken, and accordingly, applicant's motion is granted and the opposition is dismissed. [FN1]
Members, Trademark Trial and Appeal Board
FN1. As noted in footnote 4 on page 3 of this Board's opinion of February 9, 1988, opposer's third ground for opposition--namely, that applicant falsely described its goods as "heat packs and cold packs" when in fact it sells only a single product which may be used as a heat pack or a cold pack--was abandoned by opposer. Also, applicant's motion to consolidate this proceeding with Opposition No. 76,360 is now moot.