Trademark Trial and Appeal Board
Patent and Trademark Office (P.T.O.)
*1 TIFFANY & CO.
CLASSIC MOTOR CARRIAGES, INC.
March 22, 1989
Hearing: February 9, 1989
Opposition No. 71,546 to application Serial No. 497,006 filed August 29, 1984.
James B. Swire and Gary M. Gertzog for Tiffany & Co.
Jesse Rothstein and Lyssa S. Goldberg for Classic Motor Carriages, Inc.
Before Rice, Seeherman and Quinn
Tiffany & Co. has opposed Classic Motor Carriages, Inc.'s application to register "CLASSIC TIFFANY", depicted below, for automobiles. [FN1]
TABULAR OR GRAPHIC MATERIAL SET FORTH AT THIS POINT IS NOT DISPLAYABLE
As grounds for opposition opposer has alleged that since long prior to applicant's claimed date of first use opposer has used the marks and trade names "TIFFANY" and "TIFFANY & CO." in connection with the manufacture and sale of jewelry, household items, glassware, lamps, ornamental metal articles and many other products; that it owns 19 federal registrations for "TIFFANY" and 28 federal registrations for "TIFFANY & CO." for such goods and certain services in connection with the sale of such goods; [FN2] and that applicant's mark "CLASSIC TIFFANY" so resembles opposer's marks and trade names as to be likely, when applied to applicant's goods, to cause confusion and mistake and to deceive.
In its answer, applicant has denied the salient allegations of the notice of opposition, and has asserted affirmatively that its trademark "CLASSIC TIFFANY" is closely linked with "CLASSIC MOTOR CARRIAGES" (applicant's trade name) and that opposer has not established exclusive rights in "TIFFANY" in the automotive field, and therefore purchasers would not associate "CLASSIC TIFFANY" automobiles with opposer.
The record includes the pleadings; the file of the opposed application; opposer's 41 registrations for "TIFFANY" and "TIFFANY & CO." pleaded in the notice of opposition and stipulated to by the parties; [FN3] a newspaper advertisement relied on by opposer as part of its rebuttal testimony, and made of record pursuant to Trademark Rule 2.122(e); excerpts from 41 printed publications and copies of three trademark decisions, relied upon by applicant; the affidavit and deposition testimony, with exhibits, of opposer's witness John Loring; and the testimony, with exhibits, [FN4] of applicant's witnesses George Levin, John J. Cole, III, Thomas M. Greene, Anthony G. Yarborough, Michael Kilkeary and Rosemarie Santoro. [FN5]
The parties have fully briefed the case, and an oral hearing was held at which both parties were represented.
Opposer was founded in 1837 by Charles Louis Tiffany, and was incorporated in 1868. From the beginning it had a reputation for fine jewelry, household silver and presentation pieces, and its products have been displayed at expositions and are represented in museum collections throughout the world. Its products include jewelry of gold and precious metal; flatware; hollowware; candelabras; vases; watches; clocks; tea and coffee services; trays, cups and trophies containing precious metal; stationery; brushes; combs; jewel caskets; manicure implements; powder boxes; perfume flasks; china; glassware; crystal; leather goods including hand bags; and other fashion accessories. Its present stock includes approximately 12,000 different china and glass items, 8,000 silver items, and 8,000 items of jewelry. All of its goods are marked "TIFFANY" or "TIFFANY & CO.", or have the abbreviation "TCO".
*2 Opposer's products are sold within its own stores in seven cities located across the United States, and in dedicated boutiques in department stores in Kansas City, Hong Kong and Japan. Opposer's goods are also available by direct order, and it distributes an annual catalog and a quarterly "Selections" catalog to the 4 million customers on its mailing list. In the four years preceding October 1986 (the date of its witness's affidavit deposition) its sales exceeded $500 million.
In addition to its catalogs opposer advertises in a wide variety of newspapers and magazines, and advertising expenditures in recent years have been in excess of $2 million annually. Opposer and its products have also been promoted through such books as The New Tiffany Table Settings, Tiffany Silver, Windows at Tiffany's (containing photographs of its display windows) and The Tiffany Touch, a history of the company. Opposer's New York store was also featured in a popular novel, later made into an Academy Award-winning film, entitled Breakfast at Tiffany's.
Since prior to 1979 opposer has frequently used the phrase "Tiffany Classic" or variations such as "Tiffany Classics Collection" and "Classic Watch Collection" in advertisements, principally in connection with its watches.
In 1979 opposer entered into an agreement with General Motors whereby it licensed General Motors to use the "TIFFANY" mark on clocks in certain 1972, ' 73 and '74 Oldsmobile models. For over twenty-five years opposer has sold a key holder bearing the Mercedes Benz logo as an ornament, and in about 1984 it began selling key holders with a miniature car as an ornament.
Applicant began doing business as Classic Motor Carriages, Inc. in March 1978, having purchased all the assets of a company owned by George Newman and Mr. Newman's father, which company had also used the same name since some time in 1976. [FN6] Applicant's business is the manufacture and sale of replica cars either in kit or finished form. Applicant manufactures many of the parts for these cars, but it uses engines made by other automobile companies.
In 1984 applicant began selling a finished car which it called the "CLASSIC TIFFANY". This car comes in two versions, the basic "CLASSIC TIFFANY" model, and the "CLASSIC TIFFANY ELITE". In 1984 the cost of the basic car was $34,900, which rose in 1984-85 to $44,990, while the December 1987 price for the "Elite" version was $46,990. Applicant has had $10 million in sales of the "CLASSIC TIFFANY" car, representing 250-300 units per year.
Applicant sells the "CLASSIC TIFFANY" car almost exclusively from its own plant in Florida directly to customers. Its sale procedure is to insert advertisement in magazines and newspapers and also to place its cars in about 40 to 50 airports. Potential customers are advised to call applicant's offices or to mail a "tear-off" card which requests further information. In response to either these telephone or mail inquiries applicant mails a brochure and order sheet, and then follows up with a telephone call. Applicant has advertised its "CLASSIC TIFFANY" model nationally since it was introduced in 1984. In 1987 applicant spent $200,000 on promotion, with projected advertising expenditures of $500,000 in 1988.
*3 Priority is not in issue in view of the 47 pleaded registrations for "TIFFANY" and "TIFFANY & CO." which have been made of record. King Candy Co. v. Eunice King's Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108 (CCPA 1974). Moreover, the evidence demonstrates that opposer began using its marks "TIFFANY" and "TIFFANY & CO." more than 100 years prior to applicant's adoption of "CLASSIC TIFFANY".
With respect to the marks, we state at the outset our conclusion that by virtue of its long use and advertising, and the substantial publicity it has received, "TIFFANY" is a famous mark for such items as jewelry and silver, and for retail store services for a variety of items such as jewelry, silver, crystal, china, gift items and stationery. We reached this determination notwithstanding the evidence of the adoption of "TIFFANY" in the legal or trade names of numerous third parties. As stated previously, the evidence made of record by applicant does not show the extent to which the various names have been used, whether the names are currently in use nor, in general, whether the companies have used "TIFFANY" as a trademark.
In those limited instances in which applicant has introduced material evidencing trademark or service mark use, there is nothing to show how long the mark has been used [FN7] or to what degree the public is aware of such usage.
What we can conclude from the large number of listings of companies with "Tiffany" in their names, as well as the other material submitted by applicant, is that "Tiffany" is not a unique term. This may stem from the fact that "Tiffany" is a surname, or it may be due to other factors on which we need not speculate. Be that as it may, we do not think that there is a per se requirement that a mark be unique to be accorded "famous" status. Here, opposer has presented substantial evidence of the widely known reputation that its mark has attained for such items as jewelry and silver, and for its retail store services (even applicant concedes that opposer is a famous store, applicant's brief p. 20), and we do not think that the extremely limited evidence applicant has submitted of third-party use of "Tiffany" in connection with jewelry store services adversely affects that reputation.
With the foregoing in mind, we turn to a comparison of the parties' marks. Applicant's mark "CLASSIC TIFFANY" contains opposer's mark "TIFFANY" in its entirety, and contains the dominant part of opposer's mark "TIFFANY & CO." Applicant argues, however, that the presence of the word "CLASSIC" in its mark is sufficient to distinguish the parties' marks because "CLASSIC" is the dominant part of applicant's mark by virtue of its reference to applicant's trade name "Classic Motor Carriages", and because "TIFFANY" is a common term and therefore weak.
We are not persuaded by this argument. In view of the fame which opposer's mark "TIFFANY" has achieved, we think that it is this well-known word which the public would view as the dominant part of applicant's mark. Further, as used for automobiles "Classic" has at least a suggestive significance [FN8] [see In re Classic Beverage Inc., 6 USPQ2d 1383, 1386 (TTAB 1988) ], a significance that has been recognized and underscored by applicant's use of such phrases in its advertising brochures as:
*4 ... we've added panache; reminiscences of another day in time ...
The Classic Tiffany, like a phoenix, rises from the long forgotten pages of automobile history. It takes us back to a time when all fine cars were inscribed with the hallmarks of the delicate artisans who crafted them ...
Roaring out of the past ... The Classic Tiffany.
Accordingly, we think the public would perceive "CLASSIC" as modifying the dominant word "TIFFANY", and suggesting that the "TIFFANY" model is a classic.
Moreover, "classic" is also an appropriate suggestive term for many of opposer's goods, and has been used by opposer in this manner in its promotional materials, e.g., "Tiffany Classics". In addition, opposer uses the term descriptively, e.g., "a classic sterling silver pattern", "classic design". Anyone familiar with opposer's uses of "classic" or its reputation for classic designs would not regard "CLASSIC" in applicant's mark as a differentiating element; rather, it would reinforce the association of "CLASSIC TIFFANY" with opposer.
We also note that applicant has occasionally made reference in its literature to its automobile by the word "TIFFANY" alone. While we do not suggest that applicant makes a practice of using "CLASSIC TIFFANY" and "TIFFANY" interchangeably, applicant's own abbreviation of the mark as "TIFFANY" (instead of "CLASSIC") leads us to conclude that consumers might do this also, and undercuts applicant's argument that "CLASSIC" would be perceived as the dominant part of "CLASSIC TIFFANY". See Saks & Co. v. TFM Industries Inc., 5 USPQ2d 1762, 1764 (TTAB 1987).
As for the goods, there is no question that opposer's goods and services are very different from applicant's automobiles. There is also no question that automobiles, because they are expensive (and we note that applicant's goods cost well over $40,000) would be purchased only upon careful consideration. In addition, we agree with applicant that the care exercised in the purchase of an automobile might be greater than that for other expensive items because purchasers would require information about warranties, servicing and the like.
Despite all this, we find that there is a likelihood that consumers will be confused into believing that applicant's cars are somehow sponsored by or associated with opposer. "It is a well settled principle of trademark law that it is not necessary that the goods of the parties be similar or competitive, or even that they move in same channels of trade to support a holding of likelihood of confusion. It is sufficient for purposes herein that the respective goods of the parties are related in some manner, and/or that the conditions and activities surrounding the marketing of the goods are such that they would or could be encountered by the same persons under circumstances that could because of the similarity of the marks used therewith, give rise to the mistaken belief that they originate from or are in some way associated with the same producer." In re International Telephone and Telegraph Corp., 197 USPQ 910, 911 (TTAB 1978).
*5 In this case, applicant's "CLASSIC TIFFANY" literature is replete with references to luxury, elegance, style and august lifestyle, all associations which pertain to opposer's goods. The associations are emphasized by such phrases in applicant's promotional materials as:
The Classic Tiffany Classic Motor Carriages "Jewel in Crown"
The Classic Tiffany has the eye-appeal of an exquisite piece of jewelry.
The crowning glory--The Classic Tiffany's hood ornament is finished in 18K gold plate reminiscent of an exclusive piece of fine jewelry.
Evidence of the context in which a mark is used in advertising is probative of the significance which the mark is likely to project to purchasers. Northwestern Golf Co. v. Acushnet Co., 226 USPQ 240 (TTAB 1985). Given the fame of opposer's mark for jewelry, as well as opposer's reputation for luxury products, we think that applicant's use of its mark, because of the context in which it is used, with the emphasis in applicant's literature on luxury, will lead consumers to believe that applicant's goods are associated with or sponsored by opposer.
Moreover, applicant's goods are directed to many of the same people who purchase opposer's goods and services, namely those who can afford and want luxury items. Applicant's promotional materials demonstrate that its marketing efforts are directed to "those to whom the purchase of a new automobile must be an amenity to an august lifestyle", with such statements as "[this car] is an exclamation point to your personal success"; "select[ing] the Classic Tiffany as your personal automobile sets you apart"; and "we are offering a very special automobile to very special people". Both parties' advertisements also appear in some of the same newspapers and magazines. In addition, both parties' products have been featured in similar formats, e.g., applicant's "CLASSIC TIFFANY" car was used as the backdrop for Bloomingdale's line of women's fashions in a Bloomingdale's catalog, and "TIFFANY" jewelry has been credited as being worn by the models in the photographic portions of articles on fashions.
Consumers are more likely to accept the credibility of an association between applicant's cars and opposer because of the past practices of car manufacturers to use designer marks. Applicant's owner testified that Bill Blass, Givenchy and Cartier have been associated with Lincoln automobiles. Opposer itself licensed General Motors to use the mark "TIFFANY" on clocks in certain models of Oldsmobile automobiles (although there is no information in the record as to whether any cars containing such clocks were produced).
Further, applicant's literature makes it clear that it is a specialty company, and that it differs from normal car manufacturers in that the drive train and other major components of the "CLASSIC TIFFANY" are manufactured by Lincoln-Mercury and are warranted by that manufacturer. Thus, a potential purchaser might well assume that, like Lincoln-Mercury, opposer was somehow involved in the design or manufacture of the car. As for applicant's argument regarding warranties, given the information in the brochure even a careful consumer would not necessarily inquire about whether there was a connection with opposer, but might simply assume one.
*6 In concluding that applicant's use of "CLASSIC TIFFANY" for automobiles is likely to cause confusion with opposer's marks for its products and services, we have carefully considered applicant's argument regarding third-party use of "TIFFANY" as or in marks and trade names. Relying on such cases as Aero Mayflower Transit Co. v. Snark Products Inc., 190 USPQ 100 (TTAB 1976) and Amica Mutual Insurance Co. v. R.H. Cosmetics Corp., 204 USPQ 155 (TTAB 1979), applicant asserts that even if opposer's rights are deemed strong in its own niche, the use of "Tiffany" by third parties in the automotive field and opposer's absence from it show that opposer has no rights that extend to that commercial area. The difficulty with applicant's position is that our determination of likelihood of confusion must be based not merely on whether opposer sells automobiles or automobile products, but on the perception of potential purchasers as to whether there is an association or connection of source because of the manner in which the purchasing public encounters applicant's goods and opposer's goods and services.
Whether or not the purchasing public would assume a connection between, for example, "Tiffany Auto Junk Yard" and opposer because, according to applicant's argument, the public is so familiar with third-party uses of "Tiffany" that it does not associate all "Tiffany" marks or businesses with a single source, is immaterial. In the circumstances shown by the present record, as detailed above, we think that the public is likely to assume an association or sponsorship between applicant's goods and opposer because of applicant's use of the mark "CLASSIC TIFFANY", despite the differences in the parties' goods and despite the use of "Tiffany" by third parties.
With regard to applicant's argument that confusion will not occur because its employees deal directly with virtually every potential purchaser, that argument must fail in light of the principle of trademark law that likelihood of confusion must be determined on the basis of the goods as they are identified in the application, and that absent a restriction on the channels of trade the goods will be presumed to travel in all appropriate channels. Canadian Imperial Bank of Commerce v. Wells Fargo Bank, 811 F.2d 1490, 1 USPQ2d 1813 (Fed.Cir.1987); Hecon Corp. v. Magnetic Video Corp., 199 USPQ 502 (TTAB 1978). In the present case, this would include aftermarket sales through used car dealers and individual purchasers of the car. Further, even if the identification were restricted to reflect applicant's direct marketing procedure, that would not preclude the likelihood of confusion since, as suggested above, potential purchasers might simply assume that opposer sponsored or was otherwise associated with the goods and would not make any inquiry.
*7 We note that the record is devoid of any instances of actual confusion [FN9] but, as we have said, customers might not make inquiry because they simply assume a connection with opposer, or consumers might feel no need to inquire about whether there is such a connection because it is clear whom they could look to if they have problems--applicant, with whom they dealt directly, or Lincoln-Mercury. Opposer may have received no reports of confusion for the same reason. Moreover, as has been noted many times, it is not necessary to prove actual confusion in order for us to make a finding of likelihood of confusion.
Finally, even if we had any doubts as to whether there was likelihood of confusion, which we reiterate we do not, it is well established that any such doubts must be resolved against the newcomer and in favor of the prior registrant. In this case, opposer is not merely a senior user and prior registrant, but one which had used its marks for more than 100 years before applicant chose its mark, and maintained registrations for them for well over half a century before, and whose marks were known to applicant when it chose "CLASSIC TIFFANY" as a mark for its automobiles. [FN10]
Decision: The opposition is sustained.
J. E. Rice
E. J. Seeherman
T. J. Quinn
Members, Trademark Trial and Appeal Board
FN1. Application Serial No. 497,006, filed August 29, 1984 and asserting first use on April 14, 1984 and first use in commerce on April 25, 1984.
Registration No. 132,262, issued June 15, 1920, for watches and clocks.
Registration No. 133,063, issued July 6, 1920, for jewelry for personal wear, not including watches; precious stones and flat and hollow ware made of or plated with precious metal.
Registration No. 134,196, issued August 17, 1920, for pocket-knives, scissors and dies for engraving, stamping or embossing stationery, cutlery, machinery and tools and parts thereof.
Registration No. 134,289, issued August 24, 1920, for flexible steel measuring tapes, thermometers and barometers.
Registration No. 134,446, issued August 31, 1920, for medals of base metals, etched or engraved metal plates from which bookplates are stricken off.
Registration No. 134,448, issued August 31, 1920, for table glassware.
Registration No. 134,450, issued August 31, 1920, for non-electric lamps, candlesticks and candelabra.
Registration No. 135,827, issued October 19, 1920, for chinaware, bric-a-brac, earthenware and porcelain.
Registration No. 136,215, issued October 26, 1920, for purses.
Registration No. 136,218, issued October 26, 1920, for belts for supporting wearing apparel, combs.
Registration No. 137,722, issued November 30, 1920, for playing cards and chips, cribbage-boards.
Registration No. 138,355, issued December 21, 1920, for candles.
Registration No. 139,646, issued February 8, 1921, for bookmarks, bottle openers, candelabra, candlesticks, card cases, cigar and cigarette boxes and napkin rings made of or plated with precious metal.
Registration No. 140,996, issued March 29, 1921, for printed books, visiting cards, announcements, invitations, menus and greeting cards.
Registration No. 1,228,409, issued February 22, 1983, for decorative art objects made in whole or in part of precious or semi-precious metals--namely, figurines, boxes, bowls, trays and flowers, jewelry, semi-precious stones, and natural and cultured pearls.
Registration No. 1,251,355, issued September 13, 1983, for retail store services specializing in the sale of: jewelry; watches and clocks; stationery; chinaware; figurines; silver flatware, coffee services, bowls, trays, picture frames and boxes; desk accessories; bar accessories; clothing accessories; baby gifts; smoker's accessories; crystal glasses, bowls, vases, jars, candlesticks, boxes, buckets and baskets; precious and semi-precious stones; dies for engraving, stamping, or embossing stationery; flexible stainless measuring tapes; thermometers; barometers; medals and medallions; metal plates from which book plates are stricken off; non-electric lamps; candelabra; playing cards; sewing kits; ironstone dinnerware; earthenware boxes and baskets; and ashtrays.
FNThe registrations for "TIFFANY & CO." are:
Registration No. 23,572, issued September 5, 1893, for bronzes, silver and plated ware, and ornamental articles in metal.
Registration No. 23,573, issued September 5, 1893, for jewelry and watches.
Registration No. 55,029, issued August 7, 1906, for metal ware for table use composed in whole or in part of gold or silver or both of such metals.
Registration No. 56,105, issued August 21, 1906, for watches and clocks.
Registration No. 134,290, issued August 24, 1920, for flexible steel measuring tapes, thermometers and barometers.
Registration No. 134,447, issued August 31, 1920, for medals of base metals, etched or engraved metal plates from which book plates are stricken off.
Registration No. 134,449, issued August 31, 1920, for table-glassware.
Registration No. 136,216, issued October 26, 1920, for purses.
Registration No. 136,219, issued October 26, 1920, for combs, and belts for supporting wearing apparel.
Registration No. 136,664, issued November 2, 1920, for pocket-knives, scissors, dies for engraving, stamping or embossing stationery.
Registration No. 137,723, issued November 30, 1920, for chinaware, bric-a-brac, earthenware and porcelain.
Registration No. 137,883, issued December 7, 1920, for playing cards.
Registration No. 137,884, issued December 7, 1920, for printed books, visiting cards, announcements, invitations, menus, greeting cards.
Registration No. 139,220, issued January 25, 1921, for stands, hand-mirrors, and shaving-mirrors, tea-tables and tea wagons, bookends, cases and chests for holding and protecting jewelry and precious-metal ware, serving-trays of wood and glass.
Registration No. 1,220,260, issued December 14, 1982, for cigarette cases, cigarette lighters, pipe cleaning tools and cigar cutters.
Registration No. 1,228,189, issued February 22, 1983, for bottle openers made in whole or in part of precious or semi-precious metals, decorative art objects made in whole or in part of precious or semi-precious metals--namely, figurines, boxes, bowls, trays, and flowers, jewelry, metal wares made in whole or in part of precious or semi-precious metals--namely, business card cases, candelabras, candlesticks, cigar and cigarette boxes, napkin rings, and bookmarks, semi-precious stones, natural and cultured pearls.
Registration No. 1,251,356, issued September 13, 1983, for retail store services specializing in the sale of: jewelry, watches and clocks; stationery; chinaware; figurines; silver flatware, coffee services, bowls, trays, picture frames, and boxes; desk accessories, bar accessories; clothing accessories; baby gifts; smoker's accessories; crystal glasses, bowls, vases, jars, candelsticks, boxes, buckets, and baskets; precious and semi-precious stones; dies for engraving, stamping or embossing stationery; flexible stainless measuring tapes, thermometers; barometers; medals and medallions; metal plates from which book plates are stricken off; non-electric lamps; candelabra; playing cards; sewing kits; ironstone dinnerware; earthenware boxes and baskets; and ashtrays.
Registration No. 1,282,488, issued June 19, 1984, for leather wallets.
Registration No. 1,283,306, issued June 26, 1984, for desk accessories-- namely, calendar and photograph frames; bar accessories--namely, coasters, tumblers, pitchers, and corkscrews; clothing accessories--namely, money clips, cufflinks, key holders, collar clips, collar pins, collar stays, tie bars; tie tacks; tie slides; belt buckles, and studs; baby gifts--namely, milk cups, porringers and rattles; sewing needles; sewing spools; sewing thimbles; perfume flasks; toothpicks; barrettes; decorative magnets; pill boxes; pin boxes; and stymie markers; all made of or plated with precious or semi-precious metals.
Registration No. 1,289,853, issued August 14, 1984, for bar knives and baby spoons, made of or plated with precious or semi-precious metals, and electric shavers.
Registration No. 1,292,942, issued September 4, 1984, for glasses, bowls, vases, jars, boxes, buckets and baskets, cups, decanters, carafes, candle holders, pitchers and sugar bowl and creamer sets all made of crystal.
Registration No. 1,302,508, issued October 30, 1984, for silver ashtrays, porcelain and crystal ashtrays.
Registration No. 1,309,327, issued December 11, 1984, for credit card services.
FN3. The registration copies submitted were certified as to title and status on September 28, 1983. Normally, such copies would be too out of date for us to consider them as reflecting current status and title. However, since the parties have stipulated as to their acceptability, we will deem those of the registration which are currently subsisting to be of record. In this regard, we have ascertained that 6 of the 47 registrations pleaded by opposer have been cancelled or have expired, and they have therefore not been included in our listing in footnote 2.
FN4. Opposer has objected to the exhibits identified during the depositions of Messrs. Levin, Cole, and Greene on the basis that applicant's counsel did not specifically offer them in evidence. Applicant argues that the lack of a mere formality should not prevent these exhibits from being considered, since a reasonable interpretation of the transcripts is that the exhibits relied on were intended to be introduced into the record.
While applicant's counsel did not technically utter the "magic words", we have decided to exercise our discretion and not exclude these exhibits from the record solely on this basis. This conclusion is founded on many factors, including the policy reason that cases should not be determined on mere technicalities. We also note that under recently proposed rules the requirement of formally introducing exhibits will be eliminated. Moreover, opposer has not been prejudiced by our decision, in that it has voiced its objections on other grounds (discussed infra) to certain of these exhibits.
FN5. Opposer has objected to the testimony of Messrs. Cole, Greene, Yarborough and Kilkeary and to that of Ms. Santoro, and to the exhibits thereto, to the extent that such testimony and exhibits refer to third-party use of the name "TIFFANY". As far as opposer's relevancy objection is concerned, we find it is not well taken. One of the factors listed in In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973), which may be considered in determining likelihood of confusion is the number and nature of similar marks in use on similar goods.
Opposer has also objected to certain of this evidence as being hearsay. Ms. Santoro and Mr. Yarborough, for example, testified that they contacted by telephone certain companies that had the word "TIFFANY" in their names, and obtained information from them as to the type of business they were engaged in. To the extent that applicant is offering this testimony as evidence that these companies were engaged in such business, we consider this information of which they had no personal knowledge to be hearsay. (Even if this testimony had been considered, it would not affect our ultimate decision in this proceeding.) However, materials received by the witnesses from these businesses and submitted as exhibits have been considered to the extent that they prove that the businesses send out such materials upon request.
Applicant has also sought to rely on the information shown in Dun & Bradstreet Credit Reports and a list of business and trade names prepared by Dun's Marketing Services, arguing that these reports fall under the criteria for an exception to the hearsay rule articulated in Stagecoach Properties Inc. v. Wells Fargo & Co., 199 USPQ 341, 354-357 (TTAB 1978).
Although the ten Dun & Bradstreet credit reports subpoenaed by applicant in this case fall very short of the 86 reports which were involved in the Stagecoach case, we think that the guarantees of accuracy articulated in Stagecoach apply here as well, and that opposer would not be prejudiced by this material's being admitted. That being said, we point out that the probative value of such reports is limited, since the reports do not indicate the extent to which a company's name is used or what opportunity the public has had to become aware of any use. In this particular case, we note that of the ten reports submitted, one is for a company in which "Tiffany" does not appear in its name at all, three are so incomplete that no real information about the company can be ascertained, one company filed a petition in bankruptcy in 1987, and the information on a sixth was too old (1983) for Dun & Bradstreet to send out to customers absent an updating investigation. Of the remaining four entities, testimony from the companies themselves would have been far more useful than these reports to prove any use of the name "Tiffany".
This brings us to a list of 926 companies containing "Tiffany" in their company or trade names (exhibit KK). The Director of Data Base Management for Dun's Marketing Services (which is a division of Dun & Bradstreet, Inc.), testified that the data from which the list was created comes from Dun & Bradstreet credit reports, and such other sources as trade tapes and UCC file which Dun & Bradstreet verifies either by telephone or mail inquiries. While the investigation made of these latter sources is not as extensive as that made for a credit report, we think that Dun & Bradstreet's need to maintain accurate data for its customers is sufficient to provide the guarantees we discussed above, and accordingly we find that this list is admissible. However, because of the testimony that the information in the data base may be as much as 16 months old, and that companies can go out of business or change their names within such a period of time, all we can say the list is probative of is that the companies shown on it were in existence at some point within the 16 months preceding March 14, 1988. As we pointed out previously, the list does not show to what extent the companies' names or trade names were used, or whether the public is or ever was aware of the third-party use of "Tiffany" as a part of such names.
FN6. Mr. George Levin, one of applicant's principal owners, testified that on December 31, 1986, Classic Motor Carriages, Inc. became a division of GGL Industries. If applicant should ultimately prevail in this proceeding, the merger and change of name should be recorded with the Assignment Branch of the Patent and Trademark Office so that a registration will issue in the proper name.
FN8. One of the definitions for "classic" listed in Webster's Third New International Dictionary, unabridged, copyright 1976 is: "of the highest quality or rank: having recognized and permanent value: of endurance interest and appeal--used esp. of literature, art, and music".
FN9. We cannot agree with opposer's contention that, because advertisements for both parties' products appeared on the same page of a newspaper, this proves the newspaper thought the parties were connected.
FN10. In this connection, we find applicant's explanation of how it adopted the mark "CLASSIC TIFFANY" to be less than credible. Mr. Levin, one of applicant's owners, stated that he chose the mark as a remembrance of a friend, George Newman, who was killed in an airplane accident. It was from Mr. Newman that applicant acquired the assets of Classic Motor Carriages in 1978. Mr. Levin testified that, although Mr. Newman operated his business under the name "Classic Motor Carriages" from 1976 until applicant purchased it, he had operated under the name "Tiffany Motor Cars" from 1973 or '74 until 1976.
Even, if Mr. Levin's selection of "CLASSIC TIFFANY" as a remembrance of Mr. Newman were a good faith adoption of the mark, it would not change our decision herein.