American Computer Associates, Inc.v.Model American Computer Corporation

Trademark Trial and Appeal BoardJul 2, 2012

No. 92023939re (T.T.A.B. Jul. 2, 2012)

Mailed: Hearing Date: July 2, 2012 November 22, 2011 UNITED STATES PATENT AND TRADEMARK OFFICE _____ Trademark Trial and Appeal Board _____ American Computer Associates, Inc. v. Model American Computer Corporation _____ Cancellation No. 92023939 On Request for Reconsideration _____ Robert Rosenthal of Howard IP Law Group, for American Computer Associates, Inc. Ronald Israel, Peter E. Nussbaum of Wolff & Samson PC, for Model American Computer Corporation. _____ Before Grendel, Bergsman, and Ritchie, Administrative Trademark Judges. Opinion by Ritchie, Administrative Trademark Judge: On May 11, 2012, the Board denied the petition by American Computer Associates, Inc. (“Petitioner”) to cancel Registration No. 1599395, owned by Model American Computer Corporation (“Respondent”) for MODEL AMERICAN, and design. Petitioner has timely filed a request for reconsideration of the Board’s decision. In its request, THIS OPINION IS NOT A PRECEDENT OF THE TTAB Cancellation No. 92023939 2 Petitioner argues that the Board’s decision is in error because (1) the Board improperly found, despite a lack of documentary evidence, that applicant’s licensee had test- marketed the mark, thereby violating established law on requirements for rebuttal evidence, (2) the Board improperly found that applicant intended to resume use based on subjective intent, also in violation of established precedent, and (3) the Board improperly found other intent to resume use in the license, including in the Plan A product, also in violation of established precedent. The Board notes that Petitioner made these arguments in its trial brief and the Board addressed them in the May 11 decision, which found that Petitioner had failed to make a prima facie showing of abandonment based on three years nonuse, and that, in any regard, even if the burden had shifted to Respondent for rebuttal evidence (which it did not), the Board did not find any intent not to resume use: Accordingly, we find that, for the reasons discussed, Petitioner has not proven its case that Respondent abandoned the MODEL AMERICAN mark between the three-year period from the date Respondent entered receivership and ceased operation in February 1992 until this cancellation was instituted in May 1995. Although Respondent ceased its own use of the mark immediately, within the year it licensed the mark to TOEPN. TOEPN test-marketed the mark on notebook computers to entrepreneurs in the 1992-1993 time period. TOEPN then sublicensed the mark to Mighty/ICBB on February 21, 1995 for use on its “Plan A Business Plan and Marketing Plan software packages.” Respondent received payments under the sublicense, beginning that same year. For these reasons, we Cancellation No. 92023939 3 find that the use of the mark was never discontinued by those whose actions inure to the benefit of Respondent during the relevant time period. Even if we were to find three years of nonuse, thereby shifting the burden to Respondent, we still would find that at all relevant times Respondent intended to resume use of the mark. (Shane depo. at 24 (Respondent considering re- establishing market for notebooks “to this day”; Morrison depo. at 28, 40). Our primary reviewing court gives us guidance in this regard. We find that in examining Respondent’s actions regarding its decision to license the mark, as well as its filing of Section 8 and 9 affidavits, “common sense” dictates that Respondent indeed intended to keep the brand alive. Crash Dummy Movie LLC¸ 601 F3d 1387, 94 USPQ2d 1315, 1317 (Fed. Cir. 2010) (“[C]ommon sense supports the conclusion that Mattel would not have recorded Tyco’s trademark assignment with the USPTO in 1998 unless it intended to use the CRASH DUMMIES mark within the foreseeable future.”). May 11, 2012 Decision, p12-13. It has been noted that requests for reconsideration should not be used for reargument of points already made in a trial brief. See TBMP § 518 (3rd ed. rev. 2012). We note that, in this case, counsel was well heard, as in this proceeding there was an oral hearing as well as trial briefs (and a reply brief by Petitioner). Accordingly, lacking any new perspective that was not previously raised that might lead us to believe there was error in the Board’s May 11 decision, the request for reconsideration is not well taken, and it is denied. The Board’s May 11, 2012 decision remains as issued.