Trademark Trial and Appeal Board
Patent and Trademark Office (P.T.O.)
*1 PHOENIX CLOSURES, INC.
v.
YEN SHAING CORPORATION LTD.
Opposition No. 76,216
September 16, 1988
By the Board:
J.D. Sams, J.E. Rice and E.W. Hanak
Members
On February 8, 1988, opposer, Phoenix Closures, Inc., filed a motion for summary judgment with a brief and affidavit in support thereof. It is opposer's position that there are no genuine issues of material fact in dispute, and that as a matter of law, there is a likelihood of confusion, mistake and deception when opposer's marks and the mark which is the subject of application No. 586,482 are both utilized for related products.
Applicant, Yen Shaing Corporation Ltd., after obtaining a number of extensions of time in which to reply to opposer's summary judgment motion, filed on June 15, 1988 a cross-motion for summary judgment with a brief and affidavits in support thereof. It is applicant's position that "as a matter of law, there is no likelihood of confusion between Applicant's mark and those of Opposer." (Applicant's brief page 5).
Both parties correctly note that the resolution of inter partes proceedings by means of summary judgment is to be encouraged. Pure Gold, Inc. v. Syntex (U.S.A.), Inc., 739 F.2d 624, 627, 222 USPQ 741, 744 (Fed.Cir.1984). This is particularly true when both parties seek resolution of dispute by means of summary judgment. In the present case, we agree that there is no genuine issue as to any material fact, and that this case is ripe for determination by summary judgment.
Application No. 586,482 (filed March 6, 1986) is for the mark shown below for "pump pots, thermal food jars, vacuum bottles, vacuum pitchers, vacuum flasks and picnic jugs."
TABULAR OR GRAPHIC MATERIAL SET FORTH AT THIS POINT IS NOT DISPLAYABLE
Opposer, Phoenix Closures, Inc., owns the following five registrations:
TRADEMARK GOODS REGISTRATION NO.
-------------- --------------------------------------------- ----------------
PHOENIX non-metallic closures for bottles and the 1,294,310
like
PHOENIX FOIL metal foil liners for bottle closures 1,366,320
PHOENIX PHOIL metal foil liners for bottle closures 1,438,935
TABULAR OR GRAPHIC MATERIAL SET FORTH AT THIS POINT IS NOT DISPLAYABLE
TRADEMARK GOODS REGISTRATION NO.
--------- ----- ------------------------------------------
closures of metal for containers 1,304,680
TABULAR OR GRAPHIC MATERIAL SET FORTH AT THIS POINT IS NOT DISPLAYABLE
TRADEMARK GOODS REGISTRATION NO.
--------- ----- ----------------------------------------------------------
non-metallic closures for bottles and containers 1,452,175
*2 For the purposes of the motion, applicant has conceded that opposer has used, in connection with the sale of closures, the PHOENIX word trademark since 1894 and the bird design trademark since 1918; that opposer has spent a great deal of money in advertising and promoting closure products bearing the PHOENIX word mark and the bird design mark; and that opposer has had in excess of $81,000,000 in sales of its closure products bearing the PHOENIX and bird design trademarks. However, it is applicant's position that its goods and opposer's goods are completely different, as articulated in the following passages from its brief:
"Applicant's goods and Opposer's goods are completely different and unrelated. Opposer's goods are essentially incomplete goods, which are sold in the packaging industry. In contrast, Applicant's goods are completed goods sold in retail outlets. The selling of vacuum containers and thermal containers or the use thereof in the packaging industry is prohibitively expensive. Further, the function of a vacuum or thermal container (i.e., keeping a liquid cold or hot for a couple of hours) is not useful in the packaging industry, which measures shelf life in terms of months or years." (Applicant's brief page 12)
"... [I]t is apparent that [opposer's goods] are sold in large quantities ... solely [to] professional or commercial purchasers." (Applicant's brief page 12)
"Opposer only sells in the packaging industry. Opposer's closures do not contain its mark thereon when it reaches the consumer. In fact, Opposer's professional buyers surely do not want Opposer's mark to be displayed on their goods.... Thus, the consumer at a retail outlet will not have an opportunity to be confused between Opposer's and Applicant's respective marks." (Applicant's brief page 14).
Opposer does not seriously dispute the fact that its closures and liners are "incomplete" goods which are sold to professionals in the packaging industry. It is opposer's position that any differences in the channels of trade for the goods of applicant and opposer "are irrelevant, as neither Opposer's registration nor Applicant's identification of goods in its application are limited to any specific trade channel." (Opposer's reply brief page 3).
Moreover, while opposer has not demonstrated that its closures (or liners) have been used to date in connection with vacuum bottles, thermal food jars and the like, it is opposer's position that "it is entirely possible that a closure from Opposer marked with the trademark PHOENIX and/or the trademark 'PHOENIX design' could be found atop one of Applicant's thermal food jars, vacuum bottles, vacuum pitchers, and the like, or, as is more likely, one of Applicant's competitor's vacuum bottles, vacuum food jars, vacuum pitchers and the like. The purchaser of such a product might incorrectly assume that such a closure would originate with Applicant, Yen Shaing, thereby creating a likelihood of confusion with goods of Opposer." (Opposer's reply brief page 4).
*3 As for the marks themselves, opposer argues that applicant's mark is quite similar to each of opposer's marks, and applicant argues to the contrary.
In comparing opposer's two bird design marks used for closures with applicant's mark PHOENIX and bird design for vacuum bottles and the like, we do not believe that the contemporaneous use of these marks is likely to cause confusion, mistake or deception. In addition to the fact that opposer's goods and applicant's goods are different, we note that the marks themselves are clearly different. While both contain a bird design, the bird designs are different. Applicant's bird appears to be peaceful, not unlike a dove. Opposer's bird appears to be somewhat like an eagle, a symbol often associated with defense. Also, opposer's two design marks per se do not readily suggest that the bird being depicted is a phoenix. As registered and used, the abstract features appearing beneath the head of the bird in opposer's two design marks do not clearly signify flames. Moreover, even if these abstract features are interpreted as flames, it is highly debatable whether many consumers would then understand that the bird depicted is the mythical phoenix bird, and not an eagle or hawk. [FN1]
In comparing opposer's marks PHOENIX FOIL and PHOENIX PHOIL for metal foil liners for bottle closures with applicant's mark PHOENIX and bird design for vacuum bottles and the like, we are of the view that there is little likelihood of confusion, mistake or deception, given the dissimilarities in the goods. Applicant's vacuum bottles, thermal food jars and the like are obviously consumer goods which are used time and time again. Opposer's metal foil liners for bottle closures are goods which the ordinary purchaser would not buy. Instead, they are purchased in bulk by professionals in the packaging industry who in turn use these components to manufacture finished containers. Moreover, while the opposer has alleged that an ultimate consumer would view opposer's closures, opposer has not contended that an ultimate consumer would view the inner metal foil liner of the closure. Therefore, even assuming arguendo that opposer's marks appeared on its metal foil liners for bottle closures (an assumption contrary to the evidence of record), we think it most unlikely that an ultimate consumer would ever view these inner liners and hence see PHOENIX FOIL or PHOENIX PHOIL.
The closer legal issue involves the contemporaneous use of opposer's PHOENIX word mark for non-metallic closures for bottles and the like, and applicant's PHOENIX and bird design for vacuum bottles, thermal food jars and the like. At the outset, we note that while opposer's Registration No. 1,294,310 is for the word PHOENIX per se, opposer has demonstrated that it uses this word trademark in close association with its bird design trademark (Registration No. 1,452,175) for non-metallic closures for bottles and the like. Thus, in determining the issue of likelihood of confusion, we consider not only opposer's PHOENIX word mark per se (Registration No. 1,294,310), but also this word mark as used in conjunction with the bird design which is the subject of Registration No. 1,452,175.
*4 In considering opposer's PHOENIX word mark and bird design mark as used together, it is noted that opposer has demonstrated actual use of this combination only in connection with closures used in the packaging industry. Thus, the only purchasers who would have occasion to purchase both opposer's closures and applicant's vacuum bottles and the like would be professionals in the packaging industry who are, of course, also purchasers of ordinary consumer goods. It is our view that such packaging professionals would exercise a high degree of care in the purchase of closures, and would know with whom they are dealing. We doubt that these professionals would assume that vacuum bottles bearing applicant's mark PHOENIX and bird design originated with or were associated with the same company that manufactures and sells bulk quantities of closures as component parts for finished containers. See Clayton Mark & Co. v. Westinghouse Electric Corp., 356 F.2d 943, 148 USPQ 672 (CCPA 1966).
Finally, considering opposer's mark PHOENIX per se as registered, it is opposer's position that the description of goods in Registration No. 1,294,310 is not limited as to channels of trade, nor is it restricted to non-metallic closures for use in the packaging industry. Therefore, according to opposer, it is at least theoretically possible for it to manufacture a non-metallic closure, bearing the mark PHOENIX per se, for use as a component part to a vacuum bottle or the like. There are two problems with opposer's argument.
First, the interpretation which opposer currently gives to its description of goods ("non-metallic closures for bottles and the like") is at odds with the interpretation which opposer gave to this description during the course of the application which matured into Registration No. 1,294,310. In a paper dated January 16, 1984, opposer's attorney made the following representations to the Examining Attorney: "In the above amendments, Applicant [opposer herein] has provided a more specific identification of the goods, which are closures or caps for bottles used in the packaging of various products, such as beverages in bottles and the like ... [T]he term 'closures or caps' is a very common designation in the packaging industry, which has a definite identification associated therewith and is considered a commercial name in the trade." Thus, the description "non-metallic closures for bottles and the like" appears to be a term of art that is used in the packaging industry and which would not include closures (lids) for pump pots, thermal food jars, vacuum bottles, vacuum pitchers, vacuum flasks and picnic jugs.
Second, even if opposer's description of goods in Registration No. 1,294,310 was broad enough to include non-metallic closures for vacuum bottles, pump pots, thermal food jars, etc., we are not persuaded that the manufacturer of such finished consumer products would order closures from opposer to which opposer's PHOENIX mark was affixed in a manner such that it would still be visible to the ultimate consumer. While it is theoretically possible for opposer's mark PHOENIX to be affixed to a non-metallic closure in a manner such that it would be visible to an ultimate purchaser of a vacuum bottle, pump pot, thermal food jar or the like, this Board will not base a finding of likelihood of confusion upon such theoretical possibilities. See Toro Mfg. Corp. v. Gleason Works, 474 F.2d 1401, 177 USPQ 330 (CCPA 1973). In that case, the court found that there was no likelihood of confusion between TOROID for gears and TORO for grass cutting machinery containing gears. In so holding, the court noted as follows:
*5 "... [I]t is pertinent to point out that the goods of the parties are distinctly different and noncompetitive. TOROID is for gears, gear cutters and blades used in consonance therewith, while TORO covers grass cutting machinery, automotive vehicles and snow plows. The respective goods, therefore, are entirely dissimilar and commercially unrelated.... [W]e are not persuaded that there is a likelihood of confusion merely because appellant's lawn mowers and other goods sold under the TORO mark contain gears." (177 USPQ at 331).
Decision: The opposition is dismissed.
J. D. Sams
J. E. Rice
E. W. Hanak
Members, Trademark Trial and Appeal Board
FN1. We have taken judicial notice of numerous dictionaries. While each of them defines the word "phoenix" to mean, in one sense, a bird which rose from ashes, none of the dictionaries consulted contains a depiction of such a bird.