Trademark Trial and Appeal Board
Patent And Trademark Office (P.T.O.)
*1 MIRAGE RESORTS INCORPORATED
v.
SOLO CUP COMPANY
Opposition No. 93,142
January 25, 1995
Before Sams, Cissel and Hairston
Administrative Trademark Judges
Before the Board:
J.D. Sams, R.F. Cissel and P.T. Hairston
Administrative Trademark Judges
Solo Cup Company has filed an intent-to-use application to register the mark MIRAGE for "disposable plastic and paper drink cups, disposable plastic and paper plates and bowls, disposable plastic and paper lids for drinking cups, and disposable plastic and paper plates and platters for the institutional, mass feeder, health care and wholesale markets; disposable food containers with lids for use both internally and carry-out, in delicatessens, restaurants, and by mass feeders; and pop-up and wall mounted dispensers for use in kitchens, bathrooms, and restaurants for disposable plastic and paper drink cups and lids". [FN1]
Registration has been opposed by Mirage Resorts Incorporated on the ground that applicant's mark, if it were used on applicant's goods, would so resemble opposer's previously used mark, MIRAGE, for eating and drinking utensils, as well as "other similar products bearing the MIRAGE name", as to be likely to cause confusion, mistake, or deception.
Applicant denied the salient allegations of the notice of opposition.
This case now comes up on applicant's motion for summary judgment. For purposes of the summary judgment motion only, applicant concedes that the parties' marks are identical and that opposer's use of its mark with casino related services is well known. Applicant maintains that "even though opposer was the earlier user of the MIRAGE mark in connection with its Las Vegas gambling casino services, with gambling accessories that are given away to its casino patrons, and with souvenirs sold in its casino, no likelihood of confusion exists because of the significant differences in the channels of trade involved and in the classes of customers" (applicant's brief, page 1); that opposer either gives away its products (slot cups, logo cups, and squat containers) in its casino, or opposer sells its products (sports bottles, insulated sports bottles, and tumblers) in retail stores in its casino; and that opposer is not entitled to such widespread protection of its mark (a "right in gross") that opposer can prevent all uses of the same mark.
In support of its motion applicant submitted opposer's answers to applicant's first set of interrogatories, and applicant's responses to opposer's first set of interrogatories. Applicant also submitted the declaration of Mr. Robert Cassiday, applicant's director of sales, in which he avers that applicant's mark, MIRAGE, is printed [FN2] along the inside of the bottom rim or base of the item, along with applicant's corporate name; that the mark also appears on corrugated cartons in which applicant's goods are shipped in bulk to its customers; that applicant's goods are sold in bulk quantities, at wholesale, to and through institutional purchasing managers, paper merchants, food distributors, specialty distributors, and wholesalers; that all (except the purchasing managers) re-sell the products, at wholesale and still in bulk, to institutions, mass feeders, independent restaurants, independent snack bars and independent convenience stores; that the "institutional markets consist of many sub-markets comprising, for example, health care institutions (e.g., hospitals, nursing homes, and convalescent homes), educational institutions (schools and colleges), and business and industry institutions (e.g., office and plant cafeterias)"; that the "mass feeder markets consist of contract providers, such as Canteen and Volume Services, who cater for, for example, factories, hospitals, and sports facilities"; and that the "wholesale markets comprise wholesalers, such as paper merchants and food distributors, who re-sell products at wholesale to institutions, mass feeders, restaurants, and the like"; and that applicant believes that its ultimate consumers (i.e., mass feeders, institutions, etc.) do not re-sell applicant's products in bulk.
*2 In opposition to the motion, opposer submitted the affidavit of its vice-president for hotel operations, and the affidavit of the attorney who handles intellectual property matters for opposer.
Mr. Michael Sansbury, opposer's vice-president for hotel operations, stated in his affidavit that the MIRAGE resort opened in 1989 and that, since its opening, some 20 million persons have visited the resort. The resort has 3,044 rooms, 15 restaurants and lounges and many other facilities, including retail shops, a casino, a showroom, and conference rooms. He stated also that, as part of its marketing strategy to enhance the recognition of the MIRAGE mark, opposer has stocked guest areas within the resort with disposable drinking cups, coasters, napkins, etc., bearing the MIRAGE mark. The mark is used in this way in the resort dining rooms, carry-out restaurants, lounges, and recreation areas. The retail stores in opposer's resort sell merchandise bearing the MIRAGE mark. These "logo" items include plastic cups and tumblers, mugs, sports bottles, platters, etc. The MIRAGE resort has been the site of numerous conventions and sporting events. Mr. Sansbury estimated that the resort has spent $25 million on promotional activities throughout the United States and the world.
Mr. Bradley Brooke, opposer's attorney for intellectual property matters, stated that opposer was pursuing ten trademark enforcement actions for infringement--some outside the United States. He estimated that opposer identifies, annually, about six infringements of its MIRAGE mark.
Summary judgment is an appropriate method of disposing of cases in which there are no genuine issues of material fact in dispute, thus leaving the case to be resolved as a matter of law. See Fed.R.Civ.P. 56(c). Its purpose is to avoid an unnecessary trial where additional evidence would not reasonably be expected to change the outcome. See Pure Gold, Inc. v. Syntex (U.S.A.), Inc., 739 F.2d 624, 222 USPQ 741 (Fed.Cir.1984). A party moving for summary judgment has the burden of demonstrating the absence of any genuine issue of material fact and that it is entitled to judgment as a matter of law. In other words, "the burden on the moving party is discharged by 'showing'--that is, pointing out to the District Court [or to the Board in this case]--that there is an absence of evidence to support the nonmoving party's case." See Celotex Corp. v. Catrett, 477 US 317, at 325 (1986). See also, Kellogg Co. v. Pack' em Enterprises Inc., 951 F.2d 330, 21 USPQ2d 1142 (Fed.Cir.1991); and Sweats Fashions Inc. v. Pannill Knitting Co. Inc., 833 F.2d 1560, 4 USPQ2d 1793 (Fed.Cir.1987). The nonmoving party must be given the benefit of all reasonable doubt as to whether genuine issues of material fact exist; and the evidentiary record on summary judgment, and all inferences to be drawn from the undisputed facts, must be viewed in the light most favorable to the nonmoving party. See United States v. Diebold, 369 U.S. 654 (1962); Opryland USA, Inc. v. Great America Music Show, Inc., 970 F.2d 847, 23 USPQ2d 1471 (Fed.Cir.1993); and Old Tyme Foods Inc. v. Roundy's Inc., 961 F.2d 200, 22 USPQ2d 1542 (Fed.Cir.1992).
*3 In its brief in opposition to the motion for summary judgment, opposer makes reference to the factors that, under the DuPont [FN3] case, must be considered, when present, in determining likelihood of confusion and concludes that "... there clearly exists substantial evidence raising genuine issues as to several of the relevant factors regarding confusion which may arise when the consuming public sees MIRAGE used in connection with applicant's drinking cups".
Having reviewed the parties' submissions, having given opposer the benefit of all reasonable doubt as to whether genuine issues of material fact exist, and having viewed, in the light most favorable to the nonmoving party, the inferences to be drawn from the undisputed facts, we find there is no genuine issue of fact requiring trial in this case. In particular, opposer's evidentiary submissions are directed to the proof of points conceded by applicant for purposes of its motion--namely, the fame of opposer's MIRAGE resort and the extensive promotion of the MIRAGE mark in connection with collateral products such as drinking cups, etc. While opposer could, conceivably, introduce additional evidence concerning the fame of its MIRAGE mark and the extent of its promotion of its MIRAGE mark on collateral products, such evidence would be merely cumulative proof of facts not disputed by applicant (for purposes of its motion for summary judgment).
The essence of applicant's argument is that the trade channels for the parties' goods and the circumstances under which the respective goods are marketed and distributed are such that confusion as to source is unlikely. While opposer vehemently challenges the legal conclusion, opposer has offered no showing that raises a genuine issue of fact for trial. It is clear, from the evidentiary materials submitted by the parties, what their respective goods are and how those goods are marketed. A trial could not reasonably be expected to produce additional evidence concerning the nature of the goods, the parties' trade channels, or their methods of distribution. And, as noted above, the fame of opposer's MIRAGE resort is conceded by applicant, without the need for additional evidence in support of that proposition.
We turn our attention, therefore, to an application of the law (i.e., the DuPont factors) to the undisputed facts.
The relevant DuPont factors in this case are:
(1) the similarity or dissimilarity of the marks,
(2) the similarity or dissimilarity and the nature of the goods,
(3) the similarity or dissimilarity of established, likely to continue trade channels,
(4) the conditions under which and buyers to whom sales are made, and
(5) the fame of the prior mark.
The first two of the relevant DuPont factors are wholly in opposer's favor. The parties' marks are identical. Moreover, the goods for which applicant seeks registration of its MIRAGE mark (disposable plastic and paper cups, etc.) are the same type of goods to which opposer has applied its MIRAGE mark.
*4 On the other hand, we find that the next two relevant DuPont factors-- namely, the similarity or dissimilarity of established trade channels and the conditions under which and the buyers to whom sales are made--favor applicant. Applicant's identification of goods contains a limitation on trade channels for most of the items of goods listed. The trade channels are limited to "the institutional, mass feeder, health care and wholesale markets" or "delicatessens, restaurants, and mass feeders". [FN4] Applicant's evidence in support of its motion shows that applicant sells its goods in bulk at wholesale to institutional purchasing managers, paper merchants, food distributors, specialty distributors, and wholesalers, most of whom re-sell the products (still in bulk and at wholesale) to institutions, mass feeders, and independent restaurants, snack bars, and convenience stores.
By contrast, opposer's answers to applicant's interrogatories revealed that the "eating and drinking utensils" and "similar products" to which opposer applies its MIRAGE mark are "slot cups, logo cups, squat containers, sports bottles, insulated sports bottles, and tumblers". The answers further revealed that the first three items are promotional items that bear the MIRAGE hotel/casino mark and are given away at the hotel and casino, and that the latter three items, likewise, bear the MIRAGE hotel/casino mark and are displayed and sold at retail shops within the casino.
The U.S. Court of Appeals for the Federal Circuit has made clear that, in a case like this one, we must look to whether the actual or potential "purchasers" will be confused in the contemporaneous use of the marks. See Electronic Design & Sales, Inc. v. Electronic Data Systems Corp., 954 F.2d 713, 21 USPQ2d 1388 (Fed .Cir.1988). Opposer argues that confusion is likely in the case now before us because both parties' goods ultimately end up in the hands of ordinary consumers. It is true that applicant's cups, plates, etc. bearing the trademark MIRAGE will ultimately end up in the hands of ordinary consumers--when those consumers purchase food or drink from a restaurant or other establishment that has purchased applicant's MIRAGE cups, plates, etc. and has served its food and/or drinks in them. But, in such a commercial setting, the consumer is not so much a purchaser of MIRAGE plates and cups as he or she is a purchaser of the food and drink sold in them. Putting the matter another way, we find that the "purchasers" for applicant's eating and drinking utensils are the wholesalers who buy the goods in bulk and the mass feeders who use the goods in doing business, while the "purchasers" for opposer's goods are patrons of the MIRAGE casino and resort. This difference in "purchasers" is a factor that weighs in applicant's favor.
Moreover, considering the manner in which the two MIRAGE marks are likely to come to the attention of the ordinary consumers, we find it unlikely that patrons of the MIRAGE casino who are provided with (or purchase) cups or other items bearing opposer's MIRAGE logo would assume that applicant's MIRAGE cups and plates are connected with opposer.
*5 The dissimilarity in trade channels and the conditions under which and buyers to whom sales are made are the most important factors in the balance of the DuPont factors in this case. In so concluding, we have not ignored the fame of opposer's MIRAGE mark in connection with casino and resort services. The fame of opposer's mark is, of course, a factor weighing in its favor and cannot be ignored. See Kenner Parker Toys Inc. v. Rose Art Industries Inc., 963 F.2d 350, 22 USPQ2d 1453 (Fed.Cir.1992). But, while opposer introduced evidence of extensive use of the MIRAGE logo in connection with promotional products, such as cups and the like, the fame of the MIRAGE mark has, undisputably, developed in connection with the hotel/resort/casino that opposer operates under the mark. And, even when MIRAGE appears on opposer's collateral products, the use is clearly in promotion of the MIRAGE casino and resort. Thus, the fame of the MIRAGE mark weighs less in the balance than the dissimilarity in marketing of the parties' respective goods.
DECISION: Applicant's motion for summary judgment is granted, and the opposition is dismissed.
J.D. Sams
R.F. Cissel
P.T. Hairston
Administrative Trademark Judges, Trademark Trial and Appeal Board
FN1. Application Serial No. 74/346,165, filed January 6, 1993.
FN2. It appears that applicant has commenced use of its mark on at least some of its involved goods.
FN3. In re E.I. DuPont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973).
FN4. The only goods in applicant's identification of goods that are not limited as to trade channels are "pop-up and wall mounted dispensers for use in kitchens, bathrooms, and restaurants for disposable plastic and paper drink cups and lids". Opposer did not argue that confusion is likely in the contemporaneous use of its MIRAGE mark and the use by applicant of MIRAGE on pop-up and wall mounted dispensers. And these goods are far enough removed from the collateral products to which opposer applies its MIRAGE mark that confusion as to source is unlikely.