TTAB - Trademark Trial and Appeal Board - *1 SUNNEN PRODUCTS COMPANY v. SUNEX INTERNATIONAL, INC. January 21, 1987

Trademark Trial and Appeal Board

Patent and Trademark Office (P.T.O.)





January 21, 1987

Hearing: August 20, 1986



 Opposition No. 69,733 to application Serial No. 394,511 filed September 30, 1982



Haverstock, Garrett & Roberts for Sunnen Products Company



Julian W. Dority, Wellington M. Manning, Jr., James M. Bagarazzi and Richard M. Moose for Sunex International, Inc.



Before Allen, Simms and Krugman






Opinion by Allen






 Sunex International, Inc. (hereinafter, 'Sunex' or 'applicant') has applied to register the term SUNEX for automotive tools and equipment, namely-- automotive vises, engine stands, and drill press vises, in Class 6; hydraulic jacks, truckbed cranes, bench grinders, hydraulic presses, drill presses, air ratchet wrenches, impact wrenches, air chisels, air sanders, air die grinders, mobile cranes, and air drills in Class 7; socket wrench sets in Class 8; and wheel dollies, in Class 12. [FN1] In its application, Sunex has alleged first use of its mark since March 1, 1981 for goods in each of the classes in which the identified goods fall.



 Sunnen Products Company (hereinafter, 'Sunnen' or 'opposer') has opposed registration, alleging ownership and long prior use of the registered marks SUNNEN for 'precision measuring equipment and accessories therefor,' [FN2] and SUNNEN & Des. for the same goods and for 'cylinder grinders, honing, grinding and abrading machines and parts thereof, exhaust devices for cylinder grinders, valve spring lifters, valve spring compressors, valve spring clips, split lock compressors, split lock catchers, split lock replacers, and hand tools for use in repairing engines; hones, abrasive stones, abrasive grains, and abrasive sticks for use in holders;' [FN3] and long prior use of the SUNNEN and SUNNEN & Des. marks for a broad line of industrial and automotive shop equipment and other products; and that applicant's mark SUNEX so resembles its SUNNEN and SUNNEN & Des. marks as to be likely, when applied to applicant's goods, to cause confusion and deception. [FN4] In its answer, Sunex has denied all of the essential allegations of the opposition . [FN5] Both parties have filed briefs and both participated in an oral argument of the issues at a hearing held for this purpose.



 Less than two weeks prior to oral argument, and after all of the briefs had been filed, applicant moved for leave to amend its answer pursuant to FED. R. CIV. P. 15(b) (1985) in order to add, as an affirmative defense, that opposer is precluded from relying upon Registration Nos. 515,264 and 871,097, in accordance with the equitable doctrine of unclean hands because 'false statements were presented on [its] behalf . . . in affidavits submitted in applications for renewal of [the registrations].' The factual allegation on which applicant's motion is based is that Sunnen's sale of certain of the hand tools listed in the registrations, namely, valve spring compressors, valve spring clips, valve spring lifters, split lock compressors, split lock catchers, and split lock replacers, had been terminated prior to the date on which the renewal affidavits were executed. The amendment does not seek to cancel the registrations on this ground but to raise the equitable 'unclean hands' defense as a basis for estopping opposer from relying upon the registrations in this proceeding because they were maintained on the basis of a false statement. Duffy-Mott Co. v. Cumberland Packing Co., 424 F.2d 1095, 1098-1100, 165 USPQ 422, 425 (CCPA 1970); Lever Brothers Co. v. Shaklee Corp., 214 USPQ 654, 659-60 (TTAB 1982). Opposer has contested the motion to amend on a plethora of grounds pertinent to any Rule 15(b) motion including untimeliness, prejudice, immateriality and the absence of implied consent to trial of the issue. However, entirely aside from these procedural matters, we deny the motion on the substantive finding that the evidence in this record does not, in any case, persuade us that the affidavit filed in connection with the renewal of Registration No. 515,264 was false. [FN6] As for Registration No. 871,097, no renewal affidavit exists as that registration did not even issue until 1969, supra, note 3. Accordingly, since the evidence in this record clearly does not support a Duffy-Mott defense, amendment of the pleadings under FED. R. CIV. P. 15(b) would be a futile act. See, e.g., In re Westec Corp., 434 F.2d 195 (5th Cir. 1970); Young v. Johnson, 286 F.2d 365, 4 FR Serv. 2d 275 (10th Cir. 1960); cited in 3 MOORE'S FEDERAL PRACTICE ¶15.13[2], footnote 16 (2d ed. 1985). Hence, the request for leave to amend is denied.



  *2 The record consists of the file of the opposed application; applicant's notices of reliance on the United Kingdom pages of 'Trademarks Throughout the World' (3rd ed. 1981), a standard reference containing digests of trademark legislation and photocopies of two United Kingdom registrations of SUNNEN AND DEVICE which had been mentioned in one of applicant's exhibits; [FN7] and trial testimony on behalf of both parties, [FN8] including all of the exhibits identified therein, and rebuttal testimony on behalf of opposer. None of the exhibits identified during the trial depositions of opposer's witnesses was formally introduced. However, the parties stipulated during applicant's trial period (Hawkins deposition 1-2) that 'all documents that have been presented by both sides [would] be entered in the record for purposes of the Board's determination.' We interpret this very broad stipulation to be applicable to all of opposer's exhibits 1-59 and applicant's exhibits A1-A7. [FN9] Included among the stipulated exhibits are certified status and title copies of the pleaded registrations (opposer's exhibits 8-11; supra, notes 2 and 3), all showing current status and ownership in opposer.



 Also stipulated into the record are certified status copies of opposer's registrations of the marks SUNNEN HONALL & Des. [FN10] and SUNALOY [FN11] for various goods. Since these marks were not the subject of any likelihood of confusion pleadings, they cannot be relied upon as additional grounds for the opposition. See, e.g., Long John Silver's, Inc. v. Lou Scharf Inc., 213 USPQ 263, 266 (TTAB 1982), and cases cited therein; United States Shoe Corp. v. Kiddie Kobbler Ltd., 231 USPQ 815, 817 (TTAB 1986). Consequently, the evidence of their registration is irrelevant. In this regard, applicant's objection to opposer's reliance on these unpleaded registrations for the above purposes based on irrelevancy, Sunnen deposition, 49, was not waived by the parties' stipulation. [FN12] Another stipulated document is a photocopy of an (apparently) expired registration of SUNNEN (Reg. No. 263, 350, issued Nov. 5, 1929) which of course, has no probative value other than for what it shows on its face, i.e., that the registration issued. United States Shoe, supra, 231 USPQ at 818, note 7.



 A large part of the record and arguments in this proceeding are irrelevant and/or immaterial to the issue we have to decide. Thus, the question whether confusion is or is not likely because of the styling of the letters in which applicant's mark SUNEX is actually used, or because of the shape and color of the designs used in association with SUNEX (opposer's main brief, from 17, last paragraph, to 24, last paragraph), is irrelevant to the issue before us. Sunex seeks to register its mark without any special form of lettering or associated design. Therefore, a necessary premise in our evaluation of the registrability of applicant's mark is that the mark SUNEX may be displayed in any form or style of lettering, or in any color, including the identical form, style or color used by opposer, and that the trade dress now associated with applicant's mark has no source distinguishing effect. E.g., Kimberly-Clark Corp. v. H. Douglas Enterprises, 774 F.2d 1144, 227 USPQ 541, 543 (Fed. Cir. 1985). Accordingly, we need no evidence or argument as to these matters. [FN13]



  *3 Secondly, since the evidence unquestionably establishes that the goods set forth in opposer's registrations and in the identification of goods for which applicant seeks to register SUNEX are closely related goods, we need not consider the other goods not encompassed by those registrations or opposer's priority with respect to those other goods. It appears that the identifications in opposer's registrations have not been updated very diligently, hence opposer finds itself here trying to stretch the language used in them far beyond their plain meaning. However, it makes no difference in the case before us, as relatedness of those goods which are plainly identified in Sunnen's registrations to those in Sunex's application is clearly established and priority is not an issue as to those goods. King Candy Co. v. Eunice King's Kitchen, Inc. 496 F.2d 1400, 182 USPQ 108 (CCPA 1974).



 In arriving at the conclusion as to relatedness, we are especially influenced by the following findings of fact:

   (i) Both parties sell their products to customers in the automotive aftermarket. Applicant's efforts to establish that its sales are limited to the 'professional mechanic' segment of this market whereas opposer sells to the 'motor rebuilding' industry are totally discredited by opposer's evidence, especially the testimony of rebuttal witness Miller, a professional mechanic whose business--as that of numerous other automotive service centers known to him--, is in both repair and motor rebuilding.

   (ii) Even persons operating solely within the motor rebuilding industry are likely to be purchasers of the kind of tools and equipment sold by applicant under the SUNEX mark (e.g., air tools, engine hoists, hydraulic presses).

   (iii) Four of applicant's authorized warranty centers are customers of, and have made recent purchases from, opposer.

   (iv) Both parties are members of the Automotive Service Industries Association (ASIA) and Motor Equipment Manufacturers Association (MEMA) and both refer in their advertising to their membership in these associations.

   (v) Both parties advertise in some of the same trade publications, e.g., Jobber Topics, and participate in the same trade shows.

The above facts, together with the absence of any limitations of purchasers, channels of trade, etc. in the respective registrations and pending application, leave no doubt about the close relationship of the goods.



 Turning to the marks, we agree with applicant that opposer's evidence is woefully inadequate to establish that opposer's mark is well known. The primary deficiency of opposer's case on this issue is the almost total absence of any evidence concerning the level of its expenditures in advertising of SUNNEN products or the value of their sales. [FN14] Notwithstanding the inadequacy of opposer's record in this regard, we must presume that it has made the strongest showing possible. H. Betti Industries, Inc. v. Brunswick Corp., 211 USPQ 1188, 1197 (TTAB 1981). Accordingly, having refused to submit evidence as to the quantity of its sales or advertising, opposer cannot credibly maintain that SUNNEN is a famous mark. This is especially the case since we have before us evidence introduced by applicant demonstrating that opposer's mark coexists with at least, one other 'sun' mark significantly used in the automotive aftermarket industry. [FN15]



  *4 Although a mark or portion of a mark comprising a common word or term-- here, the word 'sun'--, may be transformed into a strong source indicator through fame acquired as a result of long and extensive advertising and sales, e.g., Jiffy, Inc. v. Jordan Industries, Inc., 481 F.2d 1323, 179 USPQ 169, 170 (CCPA 1973), the necessary basis for applying such doctrine cannot be presumed, but must be established by evidence. We do not agree with opposer, main brief, 27, that the fame of SUNNEN has been established by such general information as the fact that Sunnen sells products in fifty states and in eighty or ninety countries, [FN16] or that the company produces fifty or sixty advertising and promotional pieces annually, [FN17] or that it has been in business for a long period of time. [FN18] These facts are not persuasive of the mark's renown in the absence of any data corroborating the amount of sales, or the amounts expended in advertising in support of the brand name.



 Applying the ordinary likelihood of confusion standard, we are not persuaded that there is a sufficient resemblance between SUNNEN and SUNEX to result in confusion among the relevant purchasers. Whereas the marks share a common prefix, that prefix is a very ordinary term, and the suffixes are clearly different, visually and phonetically, especially because of the 'x' at the end of applicant's mark. Also, SUNNEN is a surname whereas SUNEX is an arbitrary term. While these differences might not be sufficient to prevent confusion among ordinary purchasers, we are dealing here with very knowledgeable purchasers. This fact is established beyond doubt by opposer's as well as applicant's witnesses. [FN19] Included is opposer's own rebuttal witness, Miller, whose testimony was particularly significant because he had been characterized by opposer as a typical purchaser of both parties' goods. [FN20]



 In fact, Miller had had a personal experience with the SUNEX mark and, albeit he gave some obviously coached testimony in which the similarity of the SUNEX and SUNNEN marks was mentioned, Miller was unquestionably not confused as a result of his encounter. The testimony follows:

   By Mr. Haverstock (direct):

 Q Are you familiar with Sunex International, Inc.?

 A I am familiar with them, yes.

 Q Can you explain the circumstances surrounding the first time you heard of Sunex?

 A I was interested in buying a mobile hoist, engine hoist. I called a tool house I deal with here in St. Louis. I called them on what they had available, and they told me that they had BLACKHAWK and they had a SUNEX brand.

 Q Is BLACKHAWK a brand name of a hoist?

 A. Yes.

 I got the price on both of them. They are pretty well comparable in price. I knew the BLACKHAWK name and I hadn't heard of SUNEX but maybe one other time, so I bought the BLACKHAWK hoist.

 Q You mentioned you dealt with your tool distributor in buying this engine hoist. Did you have an opportunity to see any of the Sunex material at your distributor?

  *5 A Yes. I saw the catalog. He showed me the catalog.

 Q After seeing the catalog, what thoughts, if any, came to mind?

 A Well, at first, when I heard SUNEX, of course, I thought it was--of course, I know the SUNNEN name. I thought of SUNNEN. SUNEX kind of sounded the same, and then the logo looked a little similar. [FN21]

   BY Mr. Dority (cross):

 Q When you were purchasing from Sunnen, did you ever think you were getting a product from Sunex?

 A No. The SUNNEN name--I knew of SUNNEN before I knew of SUNEX.

 Q Have you ever ordered a product from Sunnen and been shipped a product from Sunex?

 A No.

 Q You obviously weren't confused then when you bought that mobile hoist from your warehouse distributor between SUNNEN and SUNEX, were you, since you decided to buy the BLACKHAWK brand?

 A No.

(Miller deposition, 10-11; 32-33.) That Miller was not confused not only destroys the credibility of Miller's obviously prepared comments on direct; it is also strong evidence on behalf of applicant that purchaser confusion is unlikely.



 Finally, the nonlikelihood of confusion is corroborated by five years of contemporaneous use of the marks without any evidence of actual confusion. Applicant's sales under the mark SUNEX have been substantial, totalling some $36 million during the period from 1981 to 1984, supported by $40,000 in advertising. [FN22] Considering the evidence as to channels of trade, purchasers, etc. (points i to v, supra), there was ample opportunity for confusion to have occurred. However, opposer's sales representatives searched the trade for 4-5 months prior to its trial testimony in order to ascertain whether any actual confusion had occurred, and found not a single incident to report. (Althen deposition 74-75.) Since Sunnen's sales representatives have regular personal contact with their customers (Miller, 29), the fact that these persons were unable to find any actual confusion evidence is highly significant evidence corroborating applicant's position and our view that confusion is not likely.



 Decision: The opposition is dismissed.



D. B. Allen



R. L. Simms



G. D. Krugman



Members, Trademark Trial and Appeal Board



FN1. Application Serial No. 394,511, filed September 30, 1982. In the drawing, the term sought to be registered is not set forth in any special form of lettering or with any associated design.



FN2. Reg. No. 678,055, issued May 5, 1959.



FN3. Reg. No. 515,264, issued September 20, 1949; Reg. No. 580,162, issued September 22, 1953; and Reg. No. 871,097, issued June 17, 1969. In these registrations, the name SUNNEN is associated with two designs, each featuring a rising (or setting) sun. As the particulars of the designs have no effect on the only issue we have to decide, infra, they are not reproduced.



FN4. Opposer also alleged dilution as a ground for its opposition, but that issue was not developed and, in any case, the 'dilution' theory of damage has not been incorporated in the federal trademark statute and, hence, cannot be considered as a basis for denying registration. E.g., George A. Dickel Co. v. General Mills, Inc., 317 F.2d 954, 137 USPQ 891 (CCPA 1963).



FN5. The other matter set forth in the answer in the form of affirmative defenses is merely argument suppporting applicant's denial that confusion is likely.



FN6. While opposer's president stated that opposer's sales of the questioned products had terminated some time in the 1960's, that testimony was based on his personal recollection unaided by any documents (Sunnen deposition, 131-34; 137, 138-39; and 190); concerned periods of time when he was not an employee (id, 136); and was flatly contradicted by testimony of opposer's vice president who was with the company during the relevant period of time and stated unequivocally on direct and cross-examination that the products had appeared in the 1969 catalogue and, hence, were on sale during the same year (1969) in which the renewal affidavit was executed and filed. (Althen deposition, 19; 118-120.) [It should be noted in this regard that the indication of the date of the relevant catalog as 1967 on line 13, page 19, of Althen's deposition must be a stenographic error, as the catalog's date is indicated as 1969 in all other parts of the record.] Proof of falsity in matters of this kind must be established by 'clear and convincing' evidence. Lever Brothers, supra, 214 USPQ at 659-60, and cases cited therein. Here, the evidence does not even fulfill the ordinary standard of proof. Applicant's implied inference that Althen's testimony was somehow tainted because it was given the day after Sunnen's deposition and he had discussed the matter with counsel (applicant's motion to amend, 6) is not well founded. There is nothing sinister about pretrial discussions with counsel of the subject matter of one's deposition. Had applicant wished to challenge the credibility of Althen's testimony, it could have introduced direct evidence during its trial testimony to establish the contrary facts, if there were any. This it did not do. Thus, we do not have any testimony from the officer of Sunnen (retired, but still living) who signed the affidavit; nor do we have any documents from which to ascertain whether that officer signed the affidavit with knowledge of the fact that there was no use of the mark on the goods in question.



FN7. The latter material is probably inappropriate for introduction by notice of reliance. See, Trademark Rule 37 CFR § 2.122(e) (1985). However, the issue is moot as the same documents were also introduced by stipulation of counsel. (Hawkins deposition, 1-2; applicant's exhibit A4.)



FN8. Opposer's interrogation of its witnesses on questions pertaining to ultimate issues of trademark law in this proceeding (e.g., likelihood of confusion, absence of evidence of actual confusion) were impermissibly leading and were also objectionable on the ground that the witnesses were wholly unqualified to give opinion testimony on these issues of trademark law. Applicant's objections to the questions were noted and have been taken into account in connection with the responses given. (See, Sunnen deposition, 56-57; 60-62; 97; 103-108, 192-93; and 194; Althen deposition, 29-31; 76-77; and 82.) In most instances counsel made little or no effort to cure the flagrant defects in the form of his questions; hence, the greater part of the witnesses' responses on the indicated pages have been given no weight in our evaluation of the issues. Objections on the ground of irrelevancy are treated in the body of this opinion, infra.



FN9. Applicant's objections to the admissibility of opposer's exhibits 28, 37 and 51 (brief 12 and 17) on the ground of hearsay were waived by the unlimited stipulation. However, applicant's comments have been taken into account in our evaluation of the weight accorded these exhibits. See, e.g., AMF, Inc. v. American Leisure Products, Inc., 474 F.2d 1403, 177 USPQ 268, 269-70 (CCPA 1973) [Depiction of marks in catalogs and advertisements, without more, does not prove the fact or extent of the marks' use.] Thus, the catalogs identified by exhibits 28 and 37 and the 'Jobber Topics' ad identified by exhibit 51, are in the record by stipulation but that evidence by itself is probative only of what appears on the face of these documents. In this regard, the only other evidence we have found bearing on the sale of the particular items depicted in these exhibits under the SUNNEN mark is Sunnen's testimony 86-88, that the items on page 28 of Exhibit 28 (quick-check rod aligners and automatic torque wrenches) are and have long been sold under that trademark. However, the exhibits have no probative value as evidence of the marks' use on the other items depicted therein, opposer's reply brief, 13, in the absence of testimony or other evidence of the items' sale.



FN10. Registration No. 788,447, issued April 20, 1965.



FN11. Registration No. 552,777, issued April 24, 1950.



FN12. The single reference to these exhibits, opposer's brief, 5, arguing that the registrations 'are included within opposer's family of marks,' is improper. Neither a family of marks, nor the existence of these marks as part of a family, has been pleaded. Long John Silver's, supra, 213 USPQ at 265-66; United States Shoe, supra, 231 USPQ at 817. Accordingly, this reference to them is treated as if stricken from the brief.



FN13. Sometimes an applicant's actual trade dress may be relevant to demonstrate that the mark projects a confusingly similar commercial impression, e.g. Specialty Brands, Inc. v. Coffee Bean Distributors, Inc., 748 F.2d 669, 223 USPQ 1281, 1284 (Fed. Cir., 1984), or to corroborate evidence tending to show that the mark was adopted in bad faith, e.g., American Rice, Inc. v. H.I.T. Corp., 231 USPQ 793, 797 (TTAB 1986). However, neither issue is involved here. Although applicant does not use a sun design, it is plain on its face that the 'sun' prefixes evoke identical impressions; and opposer has neither argued nor proved any mala fides on the part of applicant in its adoption of the mark SUNEX.



FN14. Opposer introduced only four invoices--those for the sole purpose of demonstrating that sales had been made to applicant's warranty centers (point iii above), amounting to a total less than $330. On the ground of confidentiality, opposer's witnesses refused to disclose any further information, including even whether its sales had been 'more' or 'less' than $5.00. Opposer's witnesses also refused to disclose the number of its sales representatives. This position is unreasonable in view of opposer's contention that its mark is famous. Litigants before this Board regularly avoid any breach of confidentiality by approximating amounts, preceded by 'in excess of--' or 'more than--'.



FN15. This is Sun Electric Company's SUN, a substantial factor in the automotive aftermarket industry, particularly in the field of automobile testing equipment. Notwithstanding that some actual confusion had occurred as a result of Sun Electric's use of SUN and opposer's use of SUNNEN, in 1981, Robert M. Sunnen, opposer's president and principal witness here, signed a 'live and let live' trademark agreement with Sun Electric, stating that the marks SUN AND SUNNEN were 'sufficiently different so as to preclude likelihood of confusion as evidenced by the fact that the marks have coexisted in the marketplace for many years without confusion.' In that there has been, and continues to be, confusion between SUN and SUNNEN (Althen deposition, 108), that part of the goods, i.e. precision measuring equipment, covered by the registrations pleaded here against Sunex are remarkably similar in kind to Sun Electric's automobile testing equipment, and that the sun design mark prominently used in association with SUNNEN is the legal equivalent of the word 'sun', the position taken by Sunnen vis-a-vis Sun Electric's Sun trademark materially detracts from the credibility of opposer's testimony in the instant proceeding, that registration and use of SUNEX is damaging to it. The statements by opposer's vice president, Althen, criticizing the management of Sunnen for having entered into the agreement with Sun Electric do not, obviously, have any redeeming effect in view of the president's signature on the document. It should be made clear that the only impact of the Sun Electric agreement is that the patent inconsistency of that position with opposer's testimony here that the registration and use of the SUNEX is harmful, detracts from the credibility of that testimony. Thus, it is well established that jus tertii may not be relied upon as an affirmative defense in an opposition proceeding. E.g., Maytag Co. v. Luskin's Inc., 228 USPQ 747, 750 (TTAB 1986) and authorities cited therein.

 Applicant's other third-party use evidence relates to Sunnen's positions in countries other than the United States. Since foreign use has no impact on United States purchasers, the evidence of that use and of Sunnen's position concerning it obviously can have no influence on our determinations here. See cases collected in Lever Brothers, supra, 214 USPQ at 657, note 4.



FN16. Althen deposition, 12. Note that this testimony is also deficient in that it does not indicate under what mark the foreign or domestic sales were made. (The question was not asked.)



FN17. Althen deposition, 15-16.



FN18. Sunnen deposition, 27.



FN19. In this regard, we discount the only testimony to the contrary because it was in response to flagrantly leading questions. Supra, note 8; Althen deposition, 29-31.



FN20. Miller testified on cross-examination as follows:

   BY Mr. Dority:

 Q. Would you consider yourself to be a discriminating purchaser for that type [Sunnen's products] of equipment? When I say discriminating, I mean very selective.

 A. Yes.

(Miller deposition, 32.)



FN21. This was obviously a coached response. It is incredulous that a witness would plunge spontaneously and directly into a comparison of marks in response to a very general question put by counsel concerning the Sunex catalog. We agree with applicant, brief, 37, that the 'speech' was probably premature, delivered in response to the wrong cue. See, e.g., Varian Associates v. Leybold-Heraeus Gesellschaft, 219 USPQ 829, 832 (TTAB 1983).



FN22. Having refused to disclose any of its own sales or advertising data, it was disingenuous of opposer to denigrate the level of applicant's advertising. (Althen deposition, 105.) Obviously, since Sunex is a distributor of goods manufactured by others, the amount of advertising per dollar of sales is bound to be much smaller than that of entities which manufacture and sell their own products. More importantly, opposer has presented no evidence demonstrating that the levels of applicant's present sales and advertising do not reflect levels that may be expected in the future. See, e.g., Swingline, Inc. v. Ardco, Inc., 215 USPQ 436, (TTAB 1982), aff'd unpubl'd, No. 83-924 (Fed. Cir., Oct. 19, 1983).


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