C
`
`MCLAUGHLIN & STERN, LLP
`
`TTAB
`
`OLIVER R. CHERNIN
`E—Mail: ochemin@mclaughlinstem.com
`
`J
`
`260 MADISON AVENUE
`
`NEW YORK, NEW YORK, 1001 6
`(212) 443-1 100
`FAX
`
`MILLBROOK OFFICE
`Franklin Avenue
`PO. Box 1369
`
`.
`
`Millbrook, New York 12545
`(845) 677-5700
`Fax (345) 677—0097
`
`March 3, 2006
`
`Commissioner for Trademarks
`
`P.O. Box 1451
`Alexandria, Virginia 22313-1451
`
`Attn: Trademark Trial and Appeals Board
`
`Re:
`
`Trademark Opposition
`Workman Publishing Co., Inc.
`V. Lanard Toys, Inc.
`Trademark WORKMAN
`
`Opposition No. 91 1 12419
`Serial No. 75/426,465
`
`Dear Madarn/Sir:
`
`HlllllIllllllllllllllllllllllll||lll||||||||ll|||
`
`03-07-2006
`U 5 ‘H80! 5 TMCFC/TM Mall Ptpt DI. #11
`
`On behalf of Opposer, Workman Publishing Co., Inc., we enclose herewith the
`following:
`
`1)
`2)
`
`3)
`
`3 copies of Opposer’s Reply Brief on the Case
`3 copies of Opposer’s Response to App1icant’s Appendix/Statement of
`Evidentiary Objections
`Certificate of Service (on App1icant’s Counsel of Record)
`
`Please acknowledge receipt on the attached stamped return card.
`
`Respectfully submitted
`
`6%;
`
`/(Ag
`
`Oliver R. Chernin
`
`I hereby certify that this correspondence is being deposited
`with the United States Postal Service with sufficient postage
`as First Class Mail, in an envelope addressed to:
`Commissioner for Trademarks, PO. Box 1451
`Alexandria, Virginia 22313-1451, on March 3, 2006
`5§.%.
`Oliver R. Chemin
`
`

`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`________________________________________________________________ X
`
`WORKMAN PUBLISHING CO., INC.
`
`‘
`
`Opposer,
`
`V.
`
`Opposition No. 91 1 12419
`
`Mark: WORKMAN
`
`Serial No. 75/426,465
`
`LANARD TOYS, LTD.
`
`.
`Applicant
`______________________________________________________________-_ X
`
`HlllllllllllllllllfllllllllllllllfllIIHIIHHIII
`
`03-07-2006
`,l,S =3IEn[ 5‘ -[Mora/1»M Ma“ mm, at “H
`
`OPPOSER’S REPLY BRIEF ON THE CASE
`
`Edward Klagsbrun
`Oliver R. Chernin
`
`McLaughlin & Stern, LLP
`260 Madison Avenue
`
`New York, New York 10016
`
`(212) 448-1100
`Attorneys for Opposer
`Workman Publishing Co., Inc.
`
`

`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`________________________________________________________________ X
`
`WORKMAN PUBLISHING CO., INC.
`
`-
`
`Opposer,
`
`v.
`
`Opposition No. 911 12419
`
`Mark: WORKMAN
`
`Serial No. 75/426,465
`
`LANARD TOYS, LTD.
`
`.
`Applicant
`________________________________________________________________ X
`
`TABLE OF CONTENT
`
`1.
`
`II.
`
`STATEMENT OF THE CASE
`
`ARGUMENT
`
`A.
`
`B.
`
`C.
`
`THE APPLIED MARK WORKMAN IS INDISTINGUISHABLE
`FROM OPPOSER’S MARK WORKMAN
`THE PARTIES USE THEIR RESPECTIVE MARKS IN
`CONNECTION WITH IDENTICAL OR CLOSELY RELATED GOODS
`OPPOSER’S MARK IS ENTITLED TO PROTECTION AS IT
`ATTAINED SECONDARY MEANING BY VIRTUE OF ITS LENGTH
`OF USE AND SUBSTANTIAL PROMOTION PRIOR TO LANARD’S
`ADOPTION OF WORKMAN
`
`VI
`
`SUMMARY
`
`12
`
`Opposition No. 91 1 12419
`
`

`
`TABLE OF AUTHORITIES
`
`r)
`
`fitmgg
`
`15 U.S.C.A. §1052(d)
`
`15 U.S.C.A. §1052(t)
`
`C_£iSe_$
`
`Amoco Oil Co. v. Amerco, Inc., 192 USPQ 729 (TTAB 1976)
`
`In re Appetito Provisions Co., 3 USPQ2d 1553 (TTAB 1987)
`
`In re Concordia International Forwarding Corp., 222 USPQ 355,
`1983 WL 51828 (TTAB 1983)
`
`In re Dakin ’s Miniatures Inc., 59 USPQ2d 1593, 1596 (TTAB)
`
`Ford Motor Company v. Sherman Ford, Jr., 462 F2d 1405, 174 USPQ 456 (CCPA 1972)
`
`Hilson Research Inc. v. Societyfor Human Resources Management,
`27 USPQ2d 1423, 1435-36 TTAB 1993)
`
`INB National Bank v. Metrohost, Incorporated, 22 USPQ2d 1585, 1588 (TTAB 1992)
`
`McDonald ’s Corp. v. McClain, 37 USPQ2d 1274 (TTAB 1995)
`
`In re Opus One, Inc., 60 USPQ2d 1812, 2001 WL 1182924 (TTAB 2001)
`
`SquirtCo v. Tomy Corp., 697 F.2d 1038, 216 USPQ 937 (Fed. Cir. 1983)
`
`ggg
`
`11
`
`9
`
`4
`
`4
`
`8
`
`4
`
`11
`
`11
`
`3, 4
`
`11
`
`7
`
`3
`
`Opposition No. 91 1 12419
`
`

`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`______________________________________________________________ __ X
`
`WORKMAN PUBLISHING CO., INC.
`
`-
`
`Opposer,
`
`V.
`
`Opposition No. 91112419
`
`Mark: WORKMAN
`
`Serial No. 75/426,465
`
`LANARD TOYS, LTD.
`
`.
`Applicant
`________________________________________________________________ X
`
`OPPOSER’S REPLY BRIEF ON THE CASE
`
`1.
`
`STATEMENT OF THE CASE
`
`Opposer WORKMAN PUBLISHING CO., INC. (hereinafter “Opposer” or “Workman
`
`Publishing”) by and through its undersigned counsel, hereby submits its Reply Brief on the Case,
`
`responding to Applicant LANARD TOYS, LTD.’ s (hereinafter “Applicant” or “Lanard”) Briefdated
`
`February 2, 2006. Opposer respectfully submits that the facts and law support a decision by the
`
`Trademark Trial And Appeal Board (hereinafter “TTAB” or the “Board”) sustaining the opposition
`
`and denying registration to Applicant’s application to register the mark WORKMAN, in connection
`
`with toy tools, the products set forth in Serial No. 75/426,465.
`
`Applicant filed application Serial No. 75/426,465 on January 30, 1996 for the mark
`
`WORKMAN, in “typed” format designating toy tools in International Class 28. Applicant has
`
`asserted use of the mark WORKMAN, in commerce with the United States, in connection with toy
`
`tools since at least as early as July 30, 1993.
`
`Opposition No. 91 1 12419
`
`1
`
`

`
`Opposer has opposed registration of Serial No. Serial No. 75/426,465. Opposer alleges, and
`
`the evidence of record reflects, that Opposer has continuously used the mark WORKMAN in
`
`interstate commerce in connection with the sale of a variety of toys and games since at least as early
`
`as 1983, i. e., for approximately ten years prior to Applicant’s alleged date of first use.
`
`Because the parties’ respective marks are Mind and used, in the same channels of
`
`commerce, on closely related goods, there can be no doubt under the facts and the law that
`
`Applicant’s mark WORKMAN, in connection with the goods listed in the opposed application, is
`
`likely to be confused with Opposer’s mark WORKMAN, in connection with the goods provided by
`
`Opposer under the mark.
`
`In its Brief, Applicant attempts to cloud the straightforward issues raised in this proceeding.
`
`Specifically, Applicant argues that it is entitled to registration because (1) the marks are readily
`
`distinguishable; (2) the parties’ products differ; (3) the parties sell, market and advertise their
`
`products in different channels of commerce; (4) there allegedly has been no evidence of actual
`
`confusion; (5) alleged third party usages of WORKMAN limit the scope of protection Opposer can
`
`claim in its mark; and (6) Opposer allegedly owns no trademark rights to WORKMAN on toys.
`
`These issues have all already been addressed in Opposer’s Brief on the Case, the content of
`
`which is incorporated herewith by reference. However, as Applicant has raised additional issues,
`
`particularly in points (1), (2) and (6), Opposer supplements its response thereto.
`
`Opposition No. 91 1 12419
`
`2
`
`

`
`11.
`
`i ARGUMENT
`
`A.
`
`THE APPLIED MARK WORKMAN IS INDISTINGUISHABLE FROM
`
`OPPOSER’S MARK WORKMAN.
`
`In its Brief, Applicant argues that the parties’ respective marks are different because Lanard
`
`uses WORKMAN in a stylized format while Opposer uses the mark WORKMAN either in a lozenge
`
`or as part of its corporate name “Workman Publishing.” (Applicant’ s Brief, at pp. 1-2, 5, and 16-20)
`
`.App1icant then proceeds to compare the respective stylized versions of the marks. Applicant’s
`
`argument is incorrect both under the facts of this case as well as under the law.
`
`Applicant has applied to register the mark WORKMAN in “typed” format and seeks to
`
`register the mark without any limitations to a particular font or type style. If Applicant succeeds in
`
`obtaining registration for WORKMAN in a “typed” format, Applicant will be in a position to prevent
`
`other parties, including Opposer, from using or registering WORKMAN in any format. Under the
`
`teachings of the Federal Circuit, Applicant cannot argue that the Board should only consider
`
`Applicant’s actual usage of the mark WORKMAN. Rather, it is bound to the depiction of the mark
`
`as filed. SquirtC0. v. Tomy Corp, 697 F.2d 1038 216 USPQ 937 (Fed. Cir. 1983).
`
`Applicant suggests that “When an applicant seeks a typed or block letter registration of its
`
`word mark, the Board will consider all reasonable manners in which those words could be depicted,
`
`and in particular, the Board will give special consideration to the manner in which applicant has
`
`actually depicted its mark.” citing, INB National Bank v. Metrohost, Incorporated, 22 USPQ2d
`
`15 85, 15 88 (TTAB 1992). Applicant misconstrues the significance ofthe INB decision. In that case,
`
`applicant had argued that a specimen of use of the mark on record, which strongly resembled
`
`opposer’s mark, should not be the basis for judging similarity of the respective marks because
`
`Opposition No. 91 1 12419
`
`3
`
`

`
`applicant claimed that it had subsequently modified the mark. The Board rejected this argument as
`
`“totally irrelevant” because “if Applicant were to obtain a typed or block letter registration...then it
`
`would be free to use this mark in any manner, including the manner which it had previously
`
`considered and incorporated into its ‘preliminary drawing’.” INB, at 1588.
`
`The present litigation is on all fours with INB. Lanard is arguing that only the stylized
`
`depiction of its mark should be considered in determining a likelihood of confusion with Opposer’s
`
`mark. However, as the Board points out in INB, it is improper to limit consideration of Lanard’s
`
`mark to the stylized version that it allegedly currently uses. Rather, if Lanard should succeed in
`
`registering its mark, it would be free to use the mark in any manner whatsoever including, but not
`
`limited to, the depictions that Opposer is using.
`
`Turning next to Opposer’s mark, as shown by the record, it is depicted in all block lettering
`
`(inside a lozenge) or in block lettering on promotional materials such as catalogs.
`
`In addition, as
`
`noted by Applicant, whenever the term WORKMAN appears in Opposer’s corporate name
`
`“Workman Publishing” the WORKMAN portion is depicted in all capital block letters. Thus, the
`
`appearance of Opposer’s mark is substantially identical to a block letter depiction without any
`
`significant design feature that might detract from the plain letter wording WORKMAN.
`
`In any
`
`event, when a mark consists of a word portion and a design portion, the word portion is more likely
`
`to be impressed on a purchaser’s memory and to be used in calling for goods or services. Therefore,
`
`the word portion is controlling in determining likelihood of confusion. In re Dakin ’s Miniatures
`
`Inc. , 59 USPQ2d 1593, 1596 (TTAB); In re Appetito Provisions Co. , 3 USPQ2d 1553 (TTAB 1987);
`
`Amoco Oil Co. v. Amerco, Inc., 192 USPQ 729 (TTAB 1976).
`
`Opposition No. 91 1 12419
`
`4
`
`
`
`

`
`Based on a proper consideration of the parties’ respective marks, there can be no doubt that
`
`the marks are substantially identical in appearance, sound, connotation, and overall commercial
`
`impression. As previously noted (Opposer’s Brief at pp. 17-19), there are, at best, minimal
`
`differences in the appearance ofthe respective marks. Moreover, as noted, above, Applicant cannot
`
`argue that its usage should be limited to its present depiction of its WORKMAN mark. Thus, the
`
`minimal differences, if any, in the appearance of the respective marks is insufficient to distinguish
`
`them.
`
`The marks are identical in sound. Applicant argues that the marks will sound different
`
`because Opposer’s mark consists of the two words “Workman Publishing”. This is clearly
`
`contradicted by the record. On each and every product that Opposer uses the mark WORKMAN,
`
`the mark appears as a separate term on the product.
`
`(See Opposer’s Brief p.6-10 and Exhibits
`
`referenced thereon.)
`
`In addition, Opposer prominently displays the mark WORKMAN on its
`
`catalogs which are distributed to the trade and mailed to its customers several times each year. (See,
`
`Opposer’s Brief at pp. 10-1 1.) While Opposer also uses its corporate name “Workman Publishing”
`
`on its products and catalogs, the dominant usage ofthe mark on its product and catalogs is the term
`
`WORKMAN, solus. Thus, Applicant’s contention that Opposer uses “Publishing” as part of its
`
`mark to designates its products, is misplaced.
`
`(Even if the Board should find that the public, on
`
`occasion, may perceive Opposer’ s mark as “Workman Publishing”, the first term ofthis mark (being
`
`spelled exactly alike to WORKMAN) will still be pronounced in an identical manner to Applicant’s
`
`mark.)
`
`Applicant further argues that the pronunciation of Opposer’ s mark WORKMAN is different
`
`than the pronunciation of Applicant’s mark WORKMAN. Even if this is true, there is no evidence
`
`Opposition No. 91 1 12419
`
`5
`
`

`
`in the record, as to how the public pronounces WORKMAN. As the spelling ofthe respective marks
`
`is , it must be presumed that the marks will also be pronounced identical by the public.
`
`The connotation of the respective marks is also identical. Once again Applicant argues that
`
`there is a difference between the marks because Opposer allegedly uses the mark “Workman
`
`Publishing” or even “Workman Publishing, New York.” As noted above, the mark that appears on
`
`Opposer’s products and catalogs is the mark WORKMAN. Applicant contends that Lanard’s usage
`
`is distinguishable because it is “descriptive” of toy tools used predominately by males. However,
`
`as already pointed out in Opposer’s Brief at p. 19, as Lanard has applied to register WORKMAN on
`
`the Principal Register, Applicant can not now argue that its usage of the mark is merely descriptive.
`
`Accordingly there is no difference between the connotation of the parties respective marks.
`
`For the foregoing reasons, the Board should reject Applicant’s attempt to obfuscate the fact
`
`that the parties’ respective marks are identical.
`
`B.
`
`THE PARTIES USE THEIR RESPECTIVE MARKS IN CONNECTION
`WITH IDENTICAL OR CLOSELY RELATED GOODS
`
`Applicant argues, at pp. 6-9, 20-21 of Applicant’s Brief, that the parties products cannot be
`
`confused because of marked differences. This assertion is unpersuasive.
`
`Opposer’s WORKMAN products consist of stand alone toy products or ofa toy product sold
`
`together with a book. The record clearly shows that Opposer’s products are meant to be, and are
`
`played with as toys,
`
`irrespective of any accompanying written material. Thus, contrary to
`
`Applicant’s contention, Opposer does not sell books packaged with a novelty toy item but rather,
`
`products that are toys and games.
`
`Opposition No. 91 1 12419
`
`5
`
`

`
`The fact that these products are sold in toy stores, exhibited in toy fairs, been subject to toy
`
`reviews, and have garnered toy awards from independent parties clearly indicates that Opposer’s
`
`WORKMAN products are, in fact, toys and games.
`
`Applicant has applied to register the mark WORKMAN for toy tools. There is no dispute
`
`that these products are toys.
`
`Thus, the parties’ respective products are identical or, at the very least, highly related.
`
`Applicant further argues that the parties’ respective goods are distinguishable because of
`
`differences in marketing and channels of commerce. As previously discussed in detail (see
`
`Opposer’s Brief at p. 22), not only do the parties market their respective products through the same
`
`channels of commerce, they even sell their products through identical toy retail stores.
`
`Applicant suggests that the parties’ products are distinguishable because Opposer “does not
`
`sell any toy power tools and accessories.” This argument clearly shows the absurdity of Applicant’s
`
`position and illustrates why the Board must sustain this Opposition. If Applicant is permitted to
`
`register WORKMAN for toy tools, Opposer would clearly be foreclosed from offering for sale a toy
`
`tool coupled with an instructional or educational book, bearing the mark WORKMAN, despite the
`
`fact that Opposer has used WORKMAN for toy products for ten years prior to Applicant’s first use
`
`of the mark. Thus, the alleged distinction between Lanard’s toy tools and Opposer’s toy and game
`
`products cannot avoid any likelihood of confusion.
`
`Moreover, it must be borne in mind that the greater the similarity in the marks, the lesser the
`
`similarity required in the goods of the parties to support a finding of likely confusion. In re Opus
`
`One, Inc., 60 USPQ2d 1812, 2001 WL 1182924 (TTAB 2001) If the marks are very similar, it is
`
`“only necessary that there be a viable relationship between the goods or services in order to support
`
`Opposition No. 91112419
`
`7
`
`

`
`a holding of likelihood of confusion.” In re Concordia International Forwarding Corp. , 222 USPQ
`
`355, 1983 WL 51828 (TTAB 1983) Here the marks are identical, accordingly, this presumption
`
`clearly is applicable to the instant case.
`
`C.
`
`OPPOSER’S MARK IS ENTITLED TO PROTECTION AS IT ATTAINED
`SECONDARY MEANING BY VIRTUE OF ITS LENGTH OF USE AND
`SUBSTANTIAL PROMOTION PRIOR TO LANARD’S ADOPTION OF
`WORKMAN
`
`Applicant argues that Opposer’s mark is descriptive because it is merely a surname and,
`
`therefore, in order to establish rights in its common law mark, Opposer must have developed
`
`secondary meaning in the mark, in connection with toys and games, prior to Applicant’s adoption
`
`of WORKMAN in 1993. While Opposer does not concede that the mark WORKMAN is primarily
`
`a surname (interestingly, the PTO did not object to registration of Applicant’s mark or to the
`
`registration of third party WORKMAN marks on the Principal Register under Section 2(e) of the
`
`Trademark Law because the mark is a surname. See, Applicant’s application and Applicant’ s Brief,
`
`App. 24-26), Opposer submits that even ifthe Board were to agree with App1icant’s contention, the
`
`record clearly establishes that Opposer’s mark WORKMAN is entitled to protection.
`
`Opposer has used the WORKMAN mark in connection with games and toys since at least
`
`as early as 1983 when it introduced into the marketplace a product, entitled How to Kazoo. Over the
`
`next 10 years Opposer introduced 10 additional toy and game products including a board book of
`
`games, an illustrated field guide, a book packaged with a gold locket charm necklace, a book sold
`
`together as a set with a working toy camera, a chess set and board sold together with an instruction
`
`booklet, a 25 piece skeleton that can be assembled and displayed together with a instructional
`
`Opposition No. 91 1 12419
`
`8
`
`

`
`booklet, a series ofquestion and answer curriculum based on a deck ofcards, a playing card set sold
`
`with an instructional booklet, three-dimensional board books for young children, and a wild flower
`
`press and instructional guide sold as a set.
`
`(See Opposer’s brief at pp. 6-8 and Exhibits named
`
`therein.)
`
`Thus, at the time that Applicant first introduced its WORKMAN toy tools into the
`
`marketplace, Opposer was already selling numerous toy and game products, each designated with
`
`its mark WORKMAN. Opposer’s use of the mark WORKMAN, during this time period, was
`
`substantially exclusive and continuous.‘
`
`Under the Trademark Act, 15 USC §l052(l); Trademark Rule 2.4l(b), five years of
`
`substantially exclusive and continuous use of a mark, without any further evidence, is sufficient to
`
`establish secondary meaning. Thus, Opposer’s usage 0 WORKMAN, for a period often years, more
`
`than overcomes the alleged descriptive nature of Opposer’s mark.
`
`In addition, the record in this proceeding reflects that, during the relevant 1 0 year time period,
`
`Opposer has had substantial sales of products, bearing the mark WORKMAN, and significant
`
`advertising and promotional expenses in connection with the sale and marketing of such products.
`
`Specifically, the record shows that Opposer had sold millions oftoy products during the time period
`
`1983 - 1993. (See Opposer’s Brief at pp. 6-8 and referenced exhibits). Moreover, the record shows
`
`
`
`1Applicant has made ofrecord, several third party registrations and common law usages for marks that allegedly
`include the term WORKMAN. (See Applicant’s Briefat p. 14.) As already pointed out in Opposer’s Brief, at pp. 24-26,
`none of the “Workman” products are relevant to the present proceeding. Moreover, with the exception of “Workman
`Electronic products” for electronic parts and accessories (never sold to the toy or games industry), none of these third
`party “Workman” products were used in commerce during the time period 1983 through 1993. Thus, they could not have
`had any bearing on Opposer’s development ofsecondary meaning in its WORKMAN mark in connection with toys and
`games.
`
`Opposition No. 91 112419
`
`9
`
`

`
`that Opposer has expended approximately $1,000,000 per year to promote its toy products during
`
`the time period 1989 - 1993.
`
`As a result of these substantial sales and promotional expenses, the public had come to
`
`recognize WORKMAN as a protectable mark for toy and game products. For example, Opposer’s
`
`products have garnered significant third party publicity and have won numerous awards for
`
`excellence in children’s educational products as well as toy products.
`
`(The Oppenheimer Toy
`
`Portfolio awarded its “Gold Seal Selection” to Opposer’s Leaf and Tree Guide, on September 3,
`
`1991.) This confirms that Opposer’s WORKMAN toy and game products had already been
`
`recognized by the public as a protectable mark, at least two years prior to the Lanard’s adoption of
`
`WORKMAN.
`
`Applicant suggests that the recognition of Opposer’s WORKMAN products is limited to
`
`book publishing under the name “Workman Publishing.” (See Applicant’s Brief at p. 30.) This
`
`argument has little merit? All of Opposer’s products of record prominently feature the term
`
`WORKMAN by itself. It is this mark that the public sees on each product, not the term “Workman
`
`Publishing” which usually appears on the back ofthe product.
`
`If there is any doubt remaining that
`
`the public perceives Opposer’s products as toys or games, it is belied by the fact that third parties
`
`regularly refer to Opposer’s products as toys. (See Opposer’s Brief at p. 13 and Opposer’s Exhibit
`
`49.)
`
` 2
`
`Applicant argues that a third party, Workman’s Specialty Merchandise, uses the mark WORKMAN
`in connection with a “Dinosaur Adventure Book Set” listed in its World of Products catalog. (App1icant’s Brief, App.
`20, at 216). First of all, this use took place after 1993. Moreover, as already pointed out, at p. 25 of Opposer’s Brief,
`the proprietor of this entity acknowledged that he does pg use the mark WORKMAN in connection with any of hlS
`products listed in his catalog.
`
`Opposition No. 91112419
`
`1 0
`
`

`
`Additionally, even if the Board agrees with Applicant that Opposer has only established
`
`secondary meaning in its trade name “Workman Publishing” this suffices to sustain the opposition.
`
`In this proceeding Opposer relies on §2(d) of the Trademark Act which provides, inter alia, that a
`
`mark must be refused registration if it consists of or comprises a trade name previously used in the
`
`United States by another and not abandoned as to be likely, when applied to the goods of the
`
`Applicant, to cause confusion, or to cause mistake, or to deceive. The record shows that Opposer’s
`
`trade name “Workman Publishing” is so intimately related to the WORKMAN trademark that the
`
`average purchaser would react to the trade name as though it was simply WORKMAN. Ford Motor
`
`Company v. Sherman Ford, Jr., 462 F2d 1405, 174 USPQ 456 (CCPA 1972). 3
`
`Applicant suggests that Opposer’s evidence of record is merely indirect evidence of
`
`secondary meaning and faults Opposer for having failed to conduct a survey to establish direct
`
`evidence of establishment of secondary meaning in its WORKMAN mark for toys and games. This
`
`suggestion is misplaced. The TTAB has stressed that while it is receptive to survey evidence, such
`evidence is not mandatory where other evidence exists. The Board will not draw a negative
`
`inference from a party’ s failure to offer survey evidence. Hilson Research Inc. v. Societyfor Human
`
`Resources Management, 27 USPQ2d 1423, 1435-36 TTAB 1993); McDonald ’s Corp. v. McClain,
`
`37 USPQ2d 1274 (TTAB 1995) (Neither party is obligated, in a proceeding before the Board, to
`
`spend the effort and expense to obtain such evidence.)
`
` ——M—
`
`Usage as a trade name is relevant because Opposer is not trying to register WORKMAN for toys and
`3
`games in this proceeding. Thus, Opposer is not obliged to establish trademark use sufficient for registration. FordMotor
`Company v. Sherman Ford, Jr., 462 F2d 1405, 1406, 174 USPQ 456, 457 (CCPA 1972).
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`Opposition No. 91112419
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`1 1
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`

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`The foregoing clearly confirms that even if the Board agrees with Applicant that Opposer
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`must establish secondary meaning in its mark WORKMAN, in connection with toys and games,
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`prior to Applicant’s adoption of the same mark for toy tools, Opposer has met that burden.
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`III.
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`SUMMARY
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`Judgment must be granted to Opposer in this proceeding because Opposer has priority ofuse,
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`the respective WORKMAN marks are identical and the goods, in connection with which the marks
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`are used, are identical or highly related and sold in the same toy stores.. Additionally, even if the
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`Board agrees with Applicant’s contention that Opposer’s WORKMAN mark is merely a surname,
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`requiring a showing of secondary meaning prior to Applicant’s use ofthe mark, Opposer clearly has
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`met that burden. Accordingly, Applicant’s mark WORKMAN, in connection with the goods listed
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`in the opposed application, is likely to be confused with Opposer’s mark
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`If Applicant is granted
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`a registration to WORKMAN, this will damage Opposer as it will grantprimafacie exclusive right
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`to the mark to Applicant and potentially foreclose Opposer to continue using the mark for its toy and
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`game products.
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`Opposition No. 91 1 12419
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`

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`0
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`Accordingly, the evidence proves, at least by a preponderance, that Applicant is not entitled
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`to a registration for the applied for mark and, therefore, Opposer prays that Application Serial No.
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`75/426,465 be rejected, that no registration issue thereon to Applicant, and that Judgment be entered
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`in favor of Opposer.
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`Respectfully submitted,
`
`
`
`Edward Klagsbrun
`Oliver R. Chernin
`
`McLaughlin & Stern, LLP
`260 Madison Avenue
`
`New York, New York 10016
`
`(212) 448-1100
`Attorneys for Opposer
`
`Dated: March3, 2006
`
`I hereby certify that this correspondence is being deposited
`with the United States Postal Service with sufficient postage
`as First Class Mail,
`in an envelope addressed to:
`Commissioner for Trademarks, P.0. Box 1451
`Alexandria, Virginia 22313-1451, on March 3, 2006
`flaw‘
`'%.-/
`
`Oliver R. Chemin
`
`Opposition No. 91112419
`
`13
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`

`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`______________________________________________________________ __ X
`
`WORKMAN PUBLISHING CO., INC.
`
`~
`
`Opposer,
`
`v.
`
`Opposition No. 91112419
`
`Mark: WORKMAN
`
`Serial No. 75/426,465
`
`LANARD TOYS, LTD.
`
`.
`Applicant
`______________________________________________________________ __ X
`
`OPPOSER’S RESPONSE TO APPLICANT’S APPENDIX/STATEMENT
`
`OF EVIDENTIARY OBJECTIONS
`
`Opposer, Workman Publishing Co., Inc. (“Opposer”) responds to Applicant’s, Lanard
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`Toys, Ltd. (“Applicant”) objections to certain trial testimony exhibits as follows:
`
`Objection 2. Applicant has objected to Opposer’s claim that the Noodle Kidoodle
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`catalogs (Opposer’s Trial Exhibits 52 and 54) represent actual confusion pursuant to Fed. R.
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`Evid. 105, 401 and 402. Applicant claims that a third party’s listing of Opposer’s products in
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`one catalog and Applicant’s products, in a separate catalog, is irrelevant and not probative of the
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`issue of actual confusion. This is clearly not the case. The fact that a third party carries both
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`Opposer’s and Applicant’s WORKMAN toy products and lists them in its catalogs strongly
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`suggests that there is at least a likelihood of confusion since potential purchasers will be
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`confronted with the respective party’s products with identical marks. Therefore, the proffered
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`exhibits may be relied upon by Opposer as evidence of actual confusion or, at the very least, as
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`strong evidence of a likelihood of confusion.
`
`Opposition No. 91112419
`
`

`
`VI
`
`Objection 3. Applicant has objected to Opposer’s trial Exhibits 40-43 pursuant to Fed. R.
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`Evid. 1006 on the grounds that said Exhibits are summaries of sales and advertising expenditures
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`as the original underlying data, i.e., invoices, or duplicates of same, were never made available
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`for examination and/or copying. Testimony provided by Opposer’s trial witness clearly specifies
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`that the documents in question are not mere summaries but rather are reports that are used on a
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`day to day basis by Opposer to track sales and advertising expenditures of its various toy
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`products. Accordingly, they are admissible into evidence, pursuant to Fed. R. Evid. 803(6) as
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`records kept in the regular practice of Opposer’s business activities.
`
`Objection 4. Applicant objects to the August 15, 2001 trial testimony of Janet Harris at
`
`pp. 17-123 pursuant to TBMP 703(d). Applicant’s objection is unfounded. During cross-
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`examination, Applicant’s attorney asked the trial witness as follows:
`
`Q. As part of the acquisition of Storey Books, did you receive any additional
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`compensation indirectly or directly?
`
`Mr. Chemin: I object on the issue of relevance. See p. 119 of Opposer’s Trial Transcript.
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`On p. 120 the following question was propounded to the witness by Applicant’s attorney:
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`Q. Was there anything put on the table at the time that you might be receiving additional
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`compensation either directly or indirectly from Workman Publishing on the acquisition?
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`Mr. Chernin: I’m going to object to this line of questioning unless the witness feels that
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`she wishes to answer these questions.
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`I will leave it up to her.
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`A. The terms of the sale of the company to Workman Publishing are confidential and
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`have never been discussed with any outside parties so unless I am forced to disclose that, I would
`
`not like to discuss it. It is confidential. See Opposer’s Trial Transcript pp. 120-121.
`
`Opposition No. 91112419
`
`2
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`

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`Clearly the line of questioning does not ask whether Opposer’s acquisition of Ms. Harris’
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`employer influenced her testimony but simply seeks to obtain confidential information from the
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`trial witness as to what Ms. Harris’ compensation at Storey Books is. This clearly is irrelevant to
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`the trial witnesses’ testimony concerning her long tenure with Opposer and she was properly
`
`justified in refusing to disclose such information.
`
`In any event, the amount of compensation received by Ms. Harris cannot be deemed to
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`bias her testimony. If, for example, Ms. Harris had still been employed by Workman at the time
`
`of her deposition testimony, the fact that she would have been on the payroll of Opposer would
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`not constitute any evidence that she is biased in favor of Opposer. Thus, under the present
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`circumstances, the fact that she had recently left the employ of Opposer and is working for an
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`affiliated company does not place her in a different position than she would have been in if she
`
`had still been employed by Opposer. Clearly, it cannot be argued that the testimony of a non-
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`employee of Opposer would be any more favorable to Opposer than the testimony of Opposer’s
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`own employee. Therefore, particularly as Applicant sought to obtain information that is clearly
`
`confidential, App1icant’s objection to Ms. Harris’ testimony as “unduly biased” has absolutely no
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`merit.
`
`Objection 5. Applicant objects to the August 15, 2001 trial testimony of Janet Harris at p.
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`16, lines 9-23, concerning her opinion testimony regarding Workman’s reputation in the
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`publishing field on the grounds that (1) Ms. Harris lacks first hand knowledge concerning what
`
`non-parties think of Workman and (2) such testimony is not necessary or helpful for the Board to
`
`have a clear understanding of her testimony or a determination of a fact in issue. Applicant’s
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`objection is incorrect.
`
`Opposition No. 91112419
`
`3
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`

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`The trial witness testified that she had been employed by Opposer since 1985 to April of
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`2000 in increasingly more senior positions culminating to her being promoted to Director of all
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`Sales. As Director of all of Opposer’s sales, it clearly was critical to Ms. Harris’ work
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`performance that she have first hand knowledge of the reputation that Workman had in the
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`publishing field. Thus, Ms. Harris’ opinion testimony as to what non-parties think of Workman
`
`is clearly the opinion of an expert most familiar with the subject matter. Moreover, Ms. Harris’
`
`testimony helps to assist the Board in reaching a determination as to the reputation of Workman
`
`in the Publishing field and the secondary meaning attained by its mark. Accordingly, the
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`testimony of the trial witness’ testimony is both probative and relevant to the acts at issue in this
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`proceed