Trademark Trial and Appeal Board. Paul s Repair Shop, Inc. Coalfield Services, Inc.

Transcription

1 This Opinion is Not a Precedent of the TTAB Mailed: July 13, 2016 UNITED STATES PATENT AND TRADEMARK OFFICE Trademark Trial and Appeal Board Paul s Repair Shop, Inc. v. Coalfield Services, Inc. Opposition No Thomas L. Pruitt and Mason E. Heidt of Thomas L. Pruitt PC for Paul s Repair Shop, Inc. Lawrence E. Laubscher, Jr. of Laubscher & Laubscher, P.C. for Coalfield Services, Inc. Before Zervas, Wolfson, and Heasley, Administrative Trademark Judges. Opinion by Heasley, Administrative Trademark Judge: Coalfield Services, Inc. ( Applicant ) seeks registration on the Principal Register of the standard character mark JEFFREY for use on ventilation fans for mining and industrial use, air blower fans, ventilating exhaust fans and parts thereof in 1

2 International Class Paul s Repair Shop, Inc. ( Opposer ) has opposed registration, alleging under Section 2(d) of the Trademark Act that Applicant s mark, as used in connection with the identified goods, so resembles Opposer s previously used mark JEFFREY, for ventilation fans for mining and industrial use, air blower fans, fan blades, and ventilating exhaust fans and parts thereof, as to be likely to cause confusion. 2 For the reasons that follow, we find that Opposer has failed to prove prior rights in the mark. I. Opposer s Claim and Applicant s Answer Opposer claims prior rights in the JEFFREY mark, alleging in pertinent part, that: Opposer, by itself and through its predecessors in interest and/or authorized users, has made and is making continuous and extensive use of the distinctive mark, JEFFREY. 3 Opposer is the exclusive owner of all rights, title and interest in and to the JEFFREY Mark and common law rights therein in connection with the Goods, as evidenced in part by U.S. Trademark Registration No. 514,434, Registered Aug. 30, , and as applied through pending U.S. Trademark Application 1 Application Serial No , filed on October 17, 2013, based upon Applicant s allegation of a bona fide intention to use the mark in commerce under Section 1(b) of the Trademark Act. 2 Notice of Opposition, 1 TTABVUE. 3 Notice of Opposition, 2, 1 TTABVUE 4. 4 Opposer did not make Registration No part of the record. Applicant asks us to take judicial notice that this Registration, for JEFFREY for fans (mine ventilating) and parts 2

3 Serial No. 86/258, Through extensive and continuous use of the JEFFREY Mark since at least as early as October 21, 1932, the JEFFREY Mark has acquired substantial goodwill. 6 Opposer s use of the JEFFREY Mark predates Applicant s filing date for Applicant s mark. 7 In its Answer, Applicant admits that it filed its application to register JEFFREY for the identified goods on October 17, 2013, based on an intent to use the mark under Section 1(b) of the Lanham Act. 8 Although Applicant s Answer initially denied thereof, and fan blades was not owned by Opposer, and was cancelled due to lack of maintenance on April 3, Applicant s brief, p. 2, 18 TTABVUE 6. See TBMP (b)(1)(A) (cancelled registration is not evidence of any presently existing rights in the mark shown in the registration, or that the mark was ever used. ). It is well settled that the Board does not take judicial notice of USPTO records. UMG Recordings Inc. v. O'Rourke, 92 USPQ2d 1042, 1046 (TTAB 2009). Accordingly, we decline to take judicial notice of the 434 Registration or its ultimate disposition. 5 Notice of Opposition, 3, 1 TTABVUE 4. As exhibit A to the Notice of Opposition, Opposer attached its Trademark Electronic Application System (TEAS) filing receipt for Application Serial No for the standard character mark JEFFREY, filed on April 22, 2014, after Applicant s filing date. Applicant admitted the authenticity of the TEAS receipt in its Answer at paragraph 3. 4 TTABVUE 2. During its testimony period, however, Opposer did not introduce its 771 Application in evidence, so it does not form part of the record. See Trademark Rule 2.122(c); TBMP (b)(2). Applicant asks us to take judicial notice that Opposer s 771 Application was abandoned on February 22, Applicant s brief, p. 2, 18 TTABVUE 6. See Olin Corp. v. Hydrotreat, Inc., 210 USPQ 62, 65 n.5 (TTAB 1981) ( Introduction of the record of a pending application is competent to prove only the filing thereof ). As with the 434 Registration, we decline to take judicial notice of the 771 Application or its ultimate disposition. In any event, even if we had taken the 434 Registration and the 771 Application into consideration, they would not have affected the outcome of this proceeding. 6 Notice of Opposition, 4, 1 TTABVUE 4. 7 Notice of Opposition, 8, 1 TTABVUE 5. 8 Answer, 6-7, 4 TTABVUE

4 Opposer s claims of likelihood of confusion, it now concedes in its trial brief that Applicant does not contest the allegation of likelihood of confusion between Opposer s alleged JEFFREY mark and Applicant s JEFFREY mark. Thus, the only issue is whether Opposer has established use of the JEFFREY mark prior to Applicant s October 17, 2013 filing date. 9 II. Standing Opposer s standing is not disputed. It is admitted that the parties are competitors; 10 that their marks, as used on the goods, would be likely to cause confusion; 11 and that any defects, objections or faults found with Applicant s goods sold under its mark would, in consequence, injure Opposer s reputation. 12 Opposer therefore has standing to bring this opposition. See Empresa Cubana Del Tabaco v. Gen. Cigar Co., 753 F.3d 1270, 111 USPQ2d 1058, (Fed. Cir. 2014) cert. denied, 135 S. Ct. 1401, 191 L. Ed. 2d 360 (2015) (Cuban cigar manufacturer had standing to seek cancellation of competitor s trademark registrations. Furthermore, Cubatabaco has a legitimate commercial interest in the COHIBA mark. ); Books on Tape Inc. v. The Booktape Corp., 836 F.2d 519, 5 USPQ2d 1301, 1302 (Fed. Cir. 1987); Hunter Indus., Inc. v. The Toro Co., 110 USPQ2d 1651, 1658 (TTAB 2014) (competitor has standing to oppose). 9 Applicant s brief at p. 1, 18 TTABVUE Applicant s response to Request for Admission no. 20, Opposer s Notice of Reliance, 16 TTABVUE Applicant s brief at p. 1, 18 TTABVUE Notice of Opposition, 11, 1 TTABVUE 6, admitted in Answer, 11, 4 TTABVUE 3. 4

5 III. The Record The trial record consists primarily of Opposer s notice of reliance, 13 which contains the following exhibits: A. Applicant s answers to interrogatories; B. Applicant s responses to requests for admission; C. A quit-claim assignment dated April 3, 2014, from Caterpillar Global Mining America LLC ( Caterpillar ), offered to show Opposer s ownership of the JEFFREY mark; D. A letter, also dated April 3, 2014, signed on behalf of assignor Caterpillar, offered to show Opposer s ownership of the mark; E. Purchase Orders, offered to show Opposer s predecessor in title s use of the mark. The file of Applicant s subject application is also part of the record. 37 CFR 2.122(b); TBMP (a). Neither party has filed any additional documentary or testimonial evidence. IV. Preliminary Issue Before proceeding to the merits, an evidentiary issue requires our attention. In its brief, Applicant moves to strike Opposer s exhibits C through E, listed above, on the ground that they are not printed publications or official records, and therefore cannot be introduced by notice of reliance CFR 2.122(e). In response, Opposer argues TTABVUE. 14 Applicant s brief, pp. 2-3, 18 TTABVUE

6 that Applicant failed to object to its notice of reliance in a prompt and timely manner, and therefore waived its objection. 15 In the alternative, Opposer requests that it be given a period of time in which to cure the defects raised by Applicant. 16 The categories of documents that may be introduced via notice of reliance are strictly limited. As the Board s Manual of Procedure makes clear, certain specified categories of evidence, such as official records and printed publications as described in 37 CFR 2.122(e), need not be introduced in connection with the testimony of a witness but may instead be made of record by filing the materials with the Board under cover of one or more notices of reliance during the testimony period of the offering party. Trademark Trial and Appeal Board Manual of Procedure (TBMP) (June 2016). 17 The official records contemplated by the rule are records prepared by a public officer which are self-authenticating in nature (and hence require no extrinsic evidence of authenticity as a condition precedent to admissibility). The Conde Nast Pub. Inc. v. Vogue Travel, Inc., 205 USPQ 579, 580n.5 (TTAB 1979). The printed publications to which the rule refers are available to the general public in libraries or of general circulation among members of the public or that segment of the public which is relevant, Trademark Rule 2.122(e), so the adverse party can readily verify their authenticity. See United Global Media Grp., Inc. v. Tseng, 112 USPQ2d 1039, 15 Opposer s reply brief, p. 3, 19 TTABVUE Id. 17 Internet materials may also be submitted under Safer, Inc. v. OMS Investments, Inc., 94 USPQ2d 1031 (TTAB 2010) if certain procedural safeguards are followed, TBMP (b), but none of the materials submitted fit into this category. 6

7 1046 (TTAB 2014); Safer Inc. v. OMS Investments, Inc., 94 USPQ2d 1031, 1037 (TTAB 2010); Weyerhauser Co. v. Katz, 24 USPQ2d 1230, 1232 (TTAB 1992). Other documents must be introduced by having them identified and authenticated through the testimony of a competent witness. Syngenta Crop Prot. Inc. v. Bio-Chek LLC, 90 USPQ2d 1112, 1117 (TTAB 2009). This presumption in favor of testimony affords the opposing party the opportunity to cross-examine the witness authenticating the documents. See Life Zone, Inc. v Middleman Group, Inc., 87 USPQ2d 1953, 1956 (TTAB 2008). Opposer s quit-claim assignment and the contemporaneous correspondence purporting to explain the assignment s import, exhibits C and D, are neither official reports nor printed publications within the contemplation of the rule. The term official records as used in Trademark Rule 2.122(e) refers not to a party s company business records, but rather to the records of public offices or agencies, or records kept in the performance of duty by a public officer. TBMP (2d ed. rev. 2004). Research in Motion Ltd. v. NBOR Corp., 92 USPQ2d 1926, 1929 (TTAB 2009). These exhibits concern a private transaction effected between two business entities; they were not prepared by a public officer and were not promulgated to the public. Id. Neither were the purchase orders in exhibit E, which were private in all respects. See Hiraga v. Arena, 90 USPQ2d 1102, 1105 (TTAB 2009) ( invoices of respondent s vendors are clearly not printed publications or official records and are therefore inappropriate for submission under a notice of reliance. ). With respect to the timeliness of Applicant s objections, our rules provide that: 7

8 Ordinarily, a procedural objection to a notice of reliance should be raised promptly, preferably by motion to strike if the defect is one that can be cured. However, if the ground for the objection is one that could not be cured even if raised promptly, the adverse party may wait and raise the procedural objection in or with its brief on the case. If the objection which is one that could have been cured promptly, and was not timely raised, the objection is deemed to be waived. TBMP (b). See also TBMP Accord Syngenta, 90 USPQ2d at Applicant s objections to the notice of reliance were procedural in nature, see Boyds Collection Ltd. v. Herrington & Co., 65 USPQ2d 2017, (TTAB 2003), but not untimely. Opposer filed its notice of reliance on the last day of its testimony period (as extended by the weekend). 18 See Syngenta, 90 USPQ2d at 1115 ( A notice of reliance must be submitted during the testimony period of the offering party. ) Applicant objected to the three subject exhibits in its trial brief. 19 Similar timing was found acceptable in Hiraga v. Arena, where the respondent filed his notices of reliance on the closing date of his testimony period and the petitioner objected in her trial brief. The Board found that She objected in a timely manner and never treated these answers as of record. 90 USPQ2d at See also Colt Industries, 221 USPQ at 74 n.2 ( Included in applicant s notice of reliance under Rule 2.122(e) were four items objected to by opposer in its brief as not qualifying for inclusion into evidence by notice of reliance. These documents should have been introduced in connection with competent testimony of a witness and not by notice of reliance. Accordingly, these documents have been given no consideration. ) (emphasis added). Indeed, the Board has stricken such material from a notice of reliance sua sponte, even though TTABVUE TTABVUE

9 the adverse party had not objected. Hunt-Wesson Foods, 201 USPQ at 883. Even if Applicant had objected earlier, immediately after Opposer filed its notice of reliance, this is not the sort of defect that can be cured by the offering party as soon as it is raised by any adverse party, without reopening the testimony period of the offering party. FUJIFILM SonoSite, Inc. v. Sonoscape Co., Ltd., 111 USPQ2d 1234, 1237 (TTAB 2014). Opposer took no oral testimony during its trial testimony period, and waited until the last day of that period to file its notice of reliance. As in Carefirst of Maryland, Inc. v. FirstHealth of the Carolinas, Inc., 77 USPQ2d 1492 (TTAB 2005), We find that applicant, by waiting until the waning days of its testimony period, has failed to justify taking testimony outside of its assigned testimony period. Id. at Nor could Opposer have introduced its proffered exhibits during its rebuttal period, as that would constitute an improper attempt to submit in rebuttal evidence that belonged in its case in chief. Id. at In view of the foregoing, Applicant s motion to strike is granted. We hasten to add, however, that even if the subject three exhibits were considered admissible, they would not change the outcome of this proceeding. As discussed more fully below, Opposer would still fail to establish prior rights in the JEFFREY mark. V. Priority As Applicant readily admits, there is no issue as to the likelihood of confusion between the parties respective claimed JEFFREY marks. 20 With regard to the Section 2(d) claim, when the parties are claiming rights in the same mark for the 20 Applicant s brief, p. 1, 18 TTABVUE 5. 9

10 same goods or services, likelihood of confusion is inevitable. Wonderbread 5 v. Gilles, 115 USPQ2d 1296, (TTAB 2015). The sole issue is priority. Applicant relies on the filing date of its Section 1(b) intent-to-use application: October 17, See, e.g., Embarcadero Technologies Inc. v. RStudio Inc., 105 USPQ2d 1825, 1834 (TTAB 2013); Joel Gott Wines LLC v. Rehoboth Von Gott Inc., 107 USPQ2d 1424, 1429 (TTAB 2013). Opposer bears the burden of proving prior rights in the JEFFREY mark by a preponderance of the evidence. Hydro-Dynamics, Inc. v. George Putnam & Co., 811 F.2d 1470, 1 USPQ2d 1772, 1773 (Fed. Cir. 1987). See Metro Traffic Control, Inc. v. Shadow Network Inc., 104 F.3d 336, 41 USPQ2d 1369, 1372 (Fed. Cir. 1997). To establish priority, [opposer] must show proprietary rights in the mark. These proprietary rights may arise from a prior registration, prior trademark or service mark use, prior use as a trade name, prior use analogous to trademark or service mark use, or any other use sufficient to establish proprietary rights. Herbko Int'l., Inc. v. Kappa Books, Inc., 308 F.3d 1156, 64 USPQ2d 1375, 1378 (Fed. Cir. 2002) quoted in Hunter Indus., Inc. v. The Toro Co., 110 USPQ2d 1651, 1658 (TTAB 2014). In this case, Opposer pleaded a prior registration, its own application, common law use of the mark, and use analogous to trademark use. 22 The registration and the application are not part of the evidentiary record and hence Opposer may not rely on them. 21 Id. 22 Notice of Opposition, 1 TTABVUE; Opposer s brief, pp. 4-5, 17 TTABVUE

11 However, the Trademark Act permits opposition on the basis of prior common law use of a mark. 15 U.S.C. 1052(d). National Chemsearch Corporation v. Chemtek Corporation, 170 USPQ 110, 111 (TTAB 1971) ( It is however, well settled that as between conflicting claimants, the right to use the same mark is based on priority of appropriation. ). Opposer attempts to portray itself as the successor-in-interest to the JEFFREY mark, the latest link in a chain of title stretching back to October 21, 1932, the mark s claimed date of first use. 23 But because unregistered marks are not entitled to the presumptions established by statute, see Trademark Act 7(b)-(c), it is opposer s burden to demonstrate that it owns a trademark, which was used prior to applicant s mark, and not abandoned. Life Zone, 87 USPQ2d at This Opposer fails to do. It has adduced no evidence of its own use of the mark. Instead, it argues, based on the stricken Exhibits C through E, that Caterpillar owned the JEFFREY mark, that Caterpillar used the mark on or about November 16, 2012 (as evidenced by a purchase order for a JEFFREY fan), and that Caterpillar subsequently assigned the mark to Opposer, as evidenced by the quit-claim assignment and the contemporaneous confirmatory letter. 24 As noted above, the exhibits on which Opposer relies to support this theory are inadmissible, and will not be considered. Even if they were considered, though, they would still fall far short of proving its theory. A purchase order could be issued to any 23 Through extensive and continuous use of the JEFFREY Mark since at least as early as October 21, 1932, the JEFFREY mark has acquired substantial goodwill in connection with the Goods. Notice of Opposition 4, 1 TTABVUE Opposer s brief, pp. 3-4, 17 TTABVUE

12 vendor in the chain of supply, not necessarily the owner of the mark. See Heaton Enterprises of Nevada Inc. v. Lang, 7 USPQ2d 1842, 1847 (TTAB 1988) ( In a licensing situation, both the licensor and the licensee may be using the mark during the term of the license. ). Moreover, the single purchase order to Caterpillar fails to support a finding of prior and continuous use of the mark. See Westrex Corp. v. New Sensor Corp., 83 USPQ2d 1215, 1220 (TTAB 2007) (Quitclaim assignor of mark sold only five vacuum electron tubes bearing mark over three months prior to would-be assignment to opposer. By logical extension, opposer cannot rely on [the quitclaim assignor] as a predecessor in interest for asserting priority over applicant. ) The cryptic quit-claim assignment, true to its name, does not prove that Caterpillar owned the mark, much less that it transferred ownership of the mark to Opposer. In Renaissance Rialto Inc. v. Boyd, 107 USPQ2d 1083 (TTAB 2013), for example, the would-be assignment agreement provided in pertinent part that Without admitting that the words RIALTO CINEMAS qualify for protection as a federally registrable trademark, Transferor hereby assigns, transfers and quitclaims to Transferee any right, title or interest it may have to use the name RIALTO CINEMAS as the name of a movie theater anywhere within the United States of America. Id. at The Board found, however, that [I]t is not at all clear from the Transfer Agreement that [assignor] ever used the mark or had any goodwill therein to transfer to opposer. Without evidence of any actual use of the mark, [assignor] had no goodwill to give, regardless of what the Transfer Agreement may say or suggest was intended to be 12

13 transferred. Id. at Here, the quit-claim assignment is even vaguer, reciting that: 25 We are left to guess at the import of these terms at what, if anything, has been transferred and what has not. Exhibit D, the contemporaneous correspondence accompanying the quit-claim assignment, defines The Business as the manufacturing, sales, installation and service of various fan models formerly designed or manufactured under the trade names Jeffrey, Aerodyne, or Aerodyne Jr. and for which Seller is currently in possession of some or all of the above defined assets. 26 But there is no definition of the various documents currently in the possession of Ed Matthews, a former employee of Caterpillar, no showing that Caterpillar owned the JEFFREY mark, and no indication that it assigned that mark to Opposer. Even if Exhibits C through E had been admitted into evidence, the evidence would fail to carry Opposer s burden of proving prior common law rights in the JEFFREY mark. The admissible exhibits in Opposer s notice of reliance, Exhibits 25 Notice of Reliance, 16 TTABVUE Notice of Reliance, 16 TTABVUE

14 A and B, consist of Applicant s answers to interrogatories and responses to requests for admission, none of which admit that Opposer owned prior rights to the JEFFREY mark. 27 Finally, Opposer, citing Westrex Corp. v. New Sensor Corp., supra., argues that it is the senior user because Caterpillar, its predecessor in title, made use analogous to trademark use of the JEFFREY MARK. 28 As the Board observed in Westrex: Under the theory of analogous use, a party may rely upon pre-sale activities in order to tack on non-trademark usage for purposes of establishing priority under Section 2(d). See 3 J. Thomas McCarthy on Trademarks and Unfair Competition, 20:16 (4th Ed. 1996). Although use analogous to trademark use is sufficient to create a proprietary right in the user for purposes of a likelihood of confusion claim, analogous use must be more than mere advertising. In T.A.B. Systems v. PacTel Teletrac, 37 USPQ2d [1879] at 1882, the Court of Appeals for the Federal Circuit summarized the test for the sufficiency of analogous use efforts: [W]hether it was sufficiently clear, widespread and repetitive to create the required association in the minds of the potential purchasers between the mark as an indicator of a particular source and the [product or] service to become available later. The analogous trademark use also must be shown to have a substantial impact on the purchasing public. 83 USPQ2d at Westrex, the opposer in that proceeding, spent approximately $50,000-$60,000 in advertising expenditures promoting its intended brand of electron tubes, received inquiries from potential customers, and took one order for the tubes, although the order was cancelled. Id. The Board found that this failed to constitute clear, widespread, and repetitive activities sufficient to have established prior analogous trademark use on the part of opposer. For purposes of establishing priority via 27 Notice of reliance, 16 TTABVUE Opposer s brief, p. 5, 17 TTABVUE 8. 14

15 analogous trademark use, the critical factor is the actual number of prospective customers reached. Id. at In the present case, Opposer shows no promotional presale activities. It relies on a single inadmissible Caterpillar purchase order, with no evidence that it was filled, no evidence that Caterpillar owned the mark, no evidence of assignment to Opposer, and no evidence of subsequent use by Opposer. Here, as in Westrex, Opposer, acting at its peril, failed to take advantage of the intent-to-use provisions provided by the Trademark Law Revision Act. Thus, in order to assert priority vis-à-vis applicant, opposer had to rely on the doctrine of analogous use. Based on the facts established by the evidence of record, opposer has failed to meet the threshold requirements to benefit from that doctrine. Id. at In sum, Opposer s evidence and arguments fail to carry its burden of proving prior rights in the JEFFREY mark by a preponderance of evidence. Life Zone, 87 USPQ2d at VI. Conclusion After careful consideration of the evidence of record and the parties briefs, we conclude that Opposer has failed to establish its priority, which is a necessary element of any claim under Section 2(d) of the Trademark Act. Decision: The opposition is dismissed. 15