Squirtco v. Tomy Corp.

• Decision Date: 10 January 1983
• Docket Number: No. 82-571,82-571
• Citation: 216 USPQ 937,697 F.2d 1038
• Parties: SQUIRTCO, Appellant, v. TOMY CORPORATION, Appellee.
• Court: U.S. Court of Appeals — Federal Circuit

Page 1038

697 F.2d 1038

216 U.S.P.Q. 937

SQUIRTCO, Appellant, v. TOMY CORPORATION, Appellee.

No. 82-571.

United States Court of Appeals, Federal Circuit.

Jan. 10, 1983.

Daniel Van Dyke, Grand Rapids, Mich., argued the case for appellant. With him on the briefs were Thomas M. McKinley and Price, Heneveld, Huizenga & Cooper, Grand Rapids, Mich.

Edward D. O'Brian, Anaheim, Cal., argued the case for appellee.

Before MILLER, SMITH and NIES, Circuit Judges.

NIES, Circuit Judge.

This is an appeal from the decision of the Trademark Trial and Appeal Board (board) of the Patent and Trademark Office dismissing appellant's opposition ¹ to application serial No. 179,259 for registration of the mark SQUIRT SQUAD for "floating water toys." We reverse.

Background

The opposer in this case, SquirtCo, through its predecessors, has been engaged since approximately 1936 in the manufacture, advertising, and sale of soft drink products and has used the trademark SQUIRT on or in connection with its soft drinks continuously over the past 40 years. SquirtCo is the owner of a number of registrations for the mark SQUIRT in various displays for a variety of soft drinks. ² In addition, SquirtCo obtained Registration No. 710,198, ³ issued January 24, 1961, for the mark SQUIRT for toy balloons in the following form:

NOTE: OPINION CONTAINS TABLE OR OTHER DATA THAT IS NOT VIEWABLE

SquirtCo also owns other current registrations for SQUIRT for glass salt and pepper shakers and periodical publications. However, in view of our holding herein the details of these registrations need not be set out.

Tomy Corporation, appellee, is a manufacturer of a line of toys, including wind-up toys and games of various types. In February 1978, Tomy added two wind-up water toys to its line. One of these resembles a whale, the other an elephant, and both can be made to move and squirt in water. After obtaining a search which disclosed the above registrations of SquirtCo, Tomy proceeded to use the mark SQUIRT SQUAD for these toys and, on July 24, 1978, filed for registration of this mark, denominating the goods broadly as "floating water toys." The application was approved and published for opposition in the Official Gazette on February 20, 1979. SquirtCo filed a timely opposition alleging likelihood of confusion of the public because of the similarity between Tomy's subject mark applied to its goods and SquirtCo's mark SQUIRT, alone and with design features, as applied to the goods set forth in its registrations. In addition, SquirtCo alleged that for many years it had been engaged in the distribution and sale of toys, sporting goods, articles of clothing, and other personal items for children and adults. The record shows that SquirtCo has, at various times, sold or given away items bearing the mark SQUIRT, such as T-shirts, pens, dart boards, tennis balls, clocks and beach balls, as well as balloons, in connection with promotion of its soft drinks.

Discussion

The issue presented in this case is a simple one: Is appellee's use of the mark SQUIRT SQUAD for floating water toys likely to cause confusion with the mark SQUIRT as used or registered by SquirtCo? It is not necessary that appellant prove likelihood of confusion with respect to usage of its mark on all of the goods set forth in the pleadings. Rather, the opposition must be sustained if Tomy's use of SQUIRT SQUAD is so similar to use of SQUIRT for a single product with respect to which SquirtCo has established prior rights that there is likely to be confusion as to their source.

On appeal, SquirtCo focuses on its prior rights in SQUIRT for toy balloons, as evidenced by its incontestable registration covering this use of the mark. SquirtCo argues that the board improperly limited the effect of the registration in finding that Tomy's use of SQUIRT SQUAD was not likely to cause confusion with use of SQUIRT on balloons which promote the SQUIRT soft drink. We agree that this restricted view of the issue was error and that the opposition must be sustained, as more fully explained below.

Considering first the goods of the parties as set forth in the subject application and registration, namely, floating water toys and balloons, both are simple inexpensive toys, likely to be enjoyed by the same age group and normally available through the same channels of trade. Nothing in the specific nature of balloons and floating water toys negates the likelihood that such goods could be thought to come from the same source. Indeed, a likelihood of confusion could only be avoided if the goods were sold under distinguishing marks. The marks SQUIRT and SQUIRT SQUAD are, however, of such similarity that they are more likely to create confusion than prevent it. Not only does appellee's mark SQUIRT SQUAD incorporate the whole of appellant's mark SQUIRT, but also, in SQUIRT SQUAD, SQUIRT retains its identity. Because of the alliteration with SQUIRT, SQUAD is an apt choice to combine with SQUIRT to suggest a line or group of toys from the same source as SQUIRT balloons. Thus, the marks do not create different commercial impressions. If there were any doubt about this conclusion, it would, of course, have to be resolved in favor of the prior user, in this case, SquirtCo. San Fernando Electric Manufacturing Co. v. JFD Electronics Components Corp., 565 F.2d 683, 196 U.S.P.Q. 1 (Cust. & Pat.App.1977); Wella Corp. v. California Concept Corp., 558 F.2d 1019, 194 U.S.P.Q. 419 (Cust. & Pat.App.1977); Stanadyne, Inc. v. Lins., 490 F.2d 1396, 180 U.S.P.Q. 649 (Cust. & Pat.App.1974).

Tomy urges that we must look at more than these words in resolving the issue of likelihood of confusion, pointing out that SquirtCo's mark, as registered for balloons, shows distinctive lettering on a dark medallion. In Tomy's view, SquirtCo's rights must be restricted to the particular display in its registration. Two flaws are apparent in this position.

First, the argument concerning a difference in type style is not viable where one party asserts rights in no particular display. By presenting its mark merely in a typed drawing, a difference cannot legally be asserted by that party. Tomy asserts rights in SQUIRT SQUAD regardless of type styles, proportions, or other possible variations. Thus, apart from the background, the displays must be considered the same.

Second, SquirtCo has put into evidence specimens of use on balloons showing SQUIRT in block letters with no medallion background. SquirtCo may, of course, rely on these displays as well as the display in its registration. Registration in a particular form places no restriction on one's common law rights.

Thus, particular displays do not provide a basis for negating the conclusion that there is a likelihood of confusion between SQUIRT and SQUIRT SQUAD when used on toy balloons and water toys, respectively.

This straightforward analysis of the issues in this opposition became lost in a welter of befogging arguments and evidence, leading the board into irrelevant considerations. SquirtCo overreached, seeking a holding that would bring within the ambit of protection of its mark SQUIRT for soft drinks virtually any goods which might be used as promotional items for that product. Tomy, on the other hand, directed its efforts principally to an...