Republic of the Philippines

Department of Trade and Industry

INTELLECTUAL PROPERTY OFFICE
BUREAU OF LEGAI. AFFAIRS
Trade and Industry Building
361 Sen . Gil Puyat Avenue
Makati City

CHILDREN'S TELEVISION
WORKSHOP ,

INTER PARTES CASE NO. 1762

Opposition -

-versus-

Filed
Trademark

TOUCH OF CLASS, INC.,

Airpondent-Ileglstw

Duzsion No. 98-

: 30 June 1983
KKOOBIE MONSTER
& DEVICE "

DECISION
Children's Television Workshop, a foreign corporation duly organized under the laws of
New York, United States of America, with principal business address at I Lincoln Plaza, City and
State of New York, USA, is the owner of Copyright Registration No . PD 1 577 for the distinct
character `COOKIE MONSTER' which appears in the television show SESAME STREET . This
Copyright Registration was issued on November 8, 1978 .

The application for the registration of the mark `KOOKIE MONSTER & DEVICE' by
Respondent Touch of Class, Inc . for cakes, pies and cookies under International Class 30 in the
Principal Register brought this instant Opposition . Respondent's trademark application was,
published on page 1609 of No . 11, Volume 79 of the BPTTT Official Gazette which was officiall y
released for circulation on May 31, 1983 .
Before its application in the Principal Register, Respondent herein is a holder of a Certificate
of Registration No . 4391 in Supplemental Register for the same mark "KOOKIE MONSTER"
with an alleged date of first use as of May 23, 1977 . This Certificate of Registration was issued on
December 7, 1979 .
Opposer posited as its grounds for cancellation the following allegations :
ul . Respondent is not entitled to register the mark KOOKIE
MONSTER & DEVICE ;
K2 . Opposer's COOKIE MONSTER is well-known throughout
the world including the Philippines for which reason the application
for registration of the mark KOOKIE MONSTER & DEVICE in
the name of respondent-applicant should not be given due course
and be refused registration as mandated by Section 4, Republic Act
No . 166, as amended, Article 6bis of the Paris Convention for the
Protection of Industrial Property and further, in line with the policy
of the Ministry of Trade contained in the letter dated November 20, ~

7i
11

1980 addressed to the Director of Patents directing the latter to

reject and/or cancel unauthorized registration of foreign famous
marks ;
"3 . The registration of the mark KOOKIE MONSTER &
DEVICE in the name of respondent-applicant will cause great and
irreparable injury and damage to the opposer within the meaning of
Section 8 of Republic Act 166, as amended . "
In support of its opposition, Opposer relied on the following facts :
QppQ~ . :is,tb e, cop.y.right . owner,, . creator and .,p roducer., of, a
television series enti tled "SESAME STREE'T' which has been
exhibited in the United States an d th roughout the world including
the Ph il ippines .

u2. Among the distinctive characters in the aforesaid television

series in COOKIE MONSTER
"3 . Opposer's television series entitled "SESAME STREET"
has been exhibited in the Philippines long prior to the date of first
use alleged by respondent-applicant in its application for registration
i .e. May 23, 1977 .
"4. Long prior to May 23, 1977, opposer's television series
entitled "SESAME STREET' as well as the character COOKIE
MONSTER has been well known throughout the Philippines . The
character COOKIE MONSTER has always been associated with
opposer since it is one of the distinctive characters in the well
known television series entitled "SESA ME STREET". .
"5.

Opposer has copyrighted the COOKIE MONSTER

character under Copyright Registration No. PD 1 577, copy of which
is attached hereto and made an integral part hereof as Annex "A" .
"6 . Respondent-applicant's mark, KOOKIE MONSTER &
DEVICE is substantially identical to the distinctive COOKIE
MONSTER character in opposer's television series .
"7 . It is obviously dear that the use and registration of
trademark KOOKIE MONSTER & DEVICE by respondentapplicant is for the purpose of riding on and reaping benefits from
the popularity of the distinctive COOKIE MONSTER character in
opposer's television series .
"8 . The use and registration of KOOKIE MONSTER &
DEVICE by respondent-applicant amounted to a violation of
opposer's proprietary rights over the COOKIE MONSTER
character. Further, the use of the mark KOOKIE MONSTER &
DEVICE by the respondent-applicant will mislead the public
considering the notoriously popular COOKIE MONSTER
character has always been identified with the opposer and that the

public is likely to believe that respondent-applicant's products have

been sponsored by the opposer.
"9 . Registration of the mark KOOKIE MONSTER &
DEVICE in the name of the respondent-applicant has not only
caused to the opposer irreparable damage but will also prejudice the
buying public ."
In its Answer, Respondent raised the following affirmative defenses :
"6 . Respondent-Registrant is and always has been the lawful
~r , ow~~r ,of; . ~he_ dem~rk,. ..`.Kookie . MoPst.er and . >ionster Design" : .
prior to or at the time it filed its application for registration on
September 26, 1979. In fact, it was issued Certificate of Registration
No . SR-4391 on December 7, 1977 for the mark "Kookie Monster
and Monster Design", Annex 1 .
"7. Respo . :dent-Registrant's label marked "KOOKIE
MONSTER & MONSTER DESIGN" does not resemble nor is it
identical to the alleged character Cookie Monster of the television
series entitled "SESAME STREET' being claimed by Opposer .
Therefore, the allegation that the registration of the trademark in
favor of the respondent-registrant will very likely cause confusion,
mistake or will deceive purchasers, and that the public may be led to
believe that the mark of respondent and goods (cakes, pies .and
cookies) on which respondent-registrant's mark is used are those of
opposer's herein is preposterous and without factual and legal basis .
"8 . Respondent-Registrant's trademark "Kookie Monster and
Device" is not confusingly similar in appearance or substantially
identical to the alleged mark or character in the television series
entitled "Sesame Street", and any likelihood of confusion, mistake or
deception to be caused by respondent-registrant's use of its
trademark "Kookie Monster and Device" (label) would be
farfetched.
"9. Opposer has no cause of action against the respondentregistrant.
"10. Opposer has no legal standing or capacity to oppose the
registration of the mark an d device since it has no interferring
registered trademark of its own .
"11 . At any rate, there is no showing that the a ll eged character
`Cookie Monstei' has an ything to do with the goods on which
respondent uses its trademark ;
"12. The Copyright Registration No . PD 1577 of Cookie Monster
character, Annex "A", of the Opposition is of no value or material
to this proceedings as the determina tion of registrability an d/or
ownership of the mark in questi on is exclusively within thr
jurisdiction of the Honorable Director of Patent."

During the pendency of the trial or on August 20, 1984, Respondent-Applicant moved for
the dismissal of the above-entitled case on the ground that the Director of Patents has rendered a
decision in a case en titled "Children's Teler,rsion Workshop us : Touch of Class, Inc. "which is a Petition to
Cancel Certificate of Registra tion SR-4391 issued on December 7, 1977 for the mark `xookie Monster
e'r Monster Design" docketed as Inter Partes Case No . 1742 dismissing the Pe titi on for Can cellation
filed by Children's Television Workshop against herein Respondent Touch of Class, Inc . . In the
said Inter Partes Case, the Director of Patents made a p ronouncement that the two marks can coexist considering that one is a copyright registration while the other is a trademark registra tion . The
c ancellation proceeding initiated by Children's Television Workshop involved ma tters an d issues
which a re similar as in the above-en titled case an d involve the same parties an d ques tions of law and
facts.
The Motion filed by Respondent was denied but an order for the suspension of the hearing
in the above-entitled case until after the appeal in Inter Partes Case No . 1742 has been resolved by
the Higher Courts was issued by the Director of Patents .
The dispositive portion of Order No . 85-044 dated January 30, 1985 issued by then Director
Cesar C . Sandiego reads :
"WHEREFORE, the Motion to Dismiss filed by
Respondent-Registrant is, as it is hereby, DENIED but instead,
hearing on this case is suspended until after the appeal in the
above-entitled case has been dismissed and/or terminated and the
decision affirming and/or reversing the decision of the Director of
Patents in Inter Partes Case No. 1492 has been declared final- and
executory . "
The Court of Appeals, on March 15, 1985, reversed the decision of the Director of Patents
and ordered the cancellation of Certificate of Registration No . SR-4391 for "Kookie Monster and
Monster Design" in the name of Respondent Touch of Class, Inc . Respondent then sought a
reversal of the Court of Appeal's Decision before the Supreme Court but failed to get a favorable
ruling. Their Petition was denied for lack of inerit .
In view of the foregoing development, herein Opposer filed a Motion to Render judgment
in the above-entitled case . This was opposed by Respondent alleging among others that
"While it may be true that the matters and issues raised are
similar and involve the same parties, questions of law and facts
under IPC No . 1492 as in the above-entitled case, however, it is
respectfully submitted that this Honorable Office can not render
judgment in favor of the Opposer in the above-entitled case, for the
reason that there are questions of fact in this case which needs to be
resolved, thus necessitating presentation by the parties of witnesses
and other documentary evidence, in order for this Honorable Office
to render judgment on the basis of the evidence submitted, pursuant
to Rule 184-F of Patent Office Administrative Order No . 82-1 "
This change of heart by Respondent did not escape the attention of the Opposer who
insisted that the case herein before us be resolved on the merits considering the Decision of the
Court of Appeals in ordering the cancellation of Respondent's KOOKIE MONSTER & DEVIC
and the subsequent denial of the petition for review by the Supreme Court

. f

True enough, this Office cannot do anything but render judgment in the instant case since
there is no other reason or basis on which it can rely for the continuance of the hearing since the
Decision rendered by the Court of Appeals has already forestalled the same .

In view of the pronouncements made by this Office in Order No . 85-044, the Motion filed
by Opposer through Counsel asking that a judgment be rendered in the above-entitled case is, as it
is hereby GRANTED .

WHEREFORE, considering the Higher Tribunals' finding that the Respondent's mark
"KOOKIE MONSTER & DEVICE" for pies, cakes and cookies is confusingly similar t o

~[C~NSTF.I'. : er..vt9..,cQrPe,V.7d, I :the, view ._o

. 166, the present Opposition is,
fenumratdScio4fRepublAtN as it is, hereb y
SUSTAINED . Consequently, Application Serial No . 39504 filed by Respondent Touch of Class,
Inc. on June 30, 1983 for the said mark is, as it is, hereby DENIED Registration in the Principal
Register.
Let the filewrapper of subject trademark application as well as a copy of this Decision be
furnished the Administrative, Financial and Human Resource Development Burc :u for their
appropriate action in accordance with the mandate of this Decision with a copy to be furnished the
&ireau of Trademarks for information and update of its record .

SO ORDERED.
30 December 1998. Makati City.

LLITA BELTRAN~ABELARDO
Camtaker/ Officer-in-Chmge