American Forestsv.Barbara Sanders

Trademark Trial and Appeal Board

Sep 23, 1999

No. 91089370 (T.T.A.B. Sep. 23, 1999)

Paper No. 51
EWH/MM
THIS DISPOSITION IS NOT CITABLE AS PRECEDENT OF THE TTAB
SEPT. 23, 99
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
_____
Trademark Trial and Appeal Board
______
American Forests
v.
Barbara Sanders
_____
Opposition No. 89,370
to application Serial No. 74/225,473
filed on November 26, 1991
_____
Michael T. Murphy of Roylance, Abrams, Berdo & Goodman for
American Forests.
Barbara Sanders, pro se.
______
Before Hanak, Hairston and Bucher, Administrative Trademark
Judges.
Opinion by Hanak, Administrative Trademark Judge:
Barbara Sanders (applicant) seeks to register LEAF
RELEAF and design in the form shown below for “leaf bagging
equipment, namely, flexible plastic round sheets with
drawstrings.” Applicant disclaimed the exclusive right to
use the word LEAF apart from the mark as shown. In her
application, applicant identified herself as an individual
who is citizen of the United States of America.
Opposition No. 89,370
2
In its second amended notice of opposition, American
Forests (opposer) set forth two grounds for opposition.
First, opposer alleged that long prior to November 1991, it
had used the marks GLOBAL RELEAF and RELEAF as service marks
for association services, namely, promoting tree planting to
halt global warming. Opposer further alleged that it had
licensed the GLOBAL RELEAF and RELEAF marks to numerous
companies for use in connection with a variety of goods and
services, and that “such uses inure to the benefit of
opposer.” Continuing, opposer alleged that “applicant’s
mark LEAF RELEAF and design so closely resembles opposer’s
marks GLOBAL RELEAF and RELEAF so as to create public
confusion, mistake or deception.” (Second amended notice of
opposition paragraphs 2, 2(a) and 8).
Opposition No. 89,370
3
As a second ground for opposition, opposer alleged that
the opposed “Application Serial No. 74/225,473 LEAF RELEAF
was filed by a party who did not have a bona fide intent to
use the mark in commerce … and therefore is void ab initio
under Section 1(b) of the Trademark Act.” (Second amended
notice of opposition paragraph 13).
In response, applicant filed an answer to the second
amended notice of opposition which discussed only the
allegations of paragraph 13. However, because in her
earlier answers applicant had denied that there existed a
likelihood of confusion, we will interpret her answer to the
second amended notice of opposition as likewise implicitly
denying that a likelihood of confusion exists between the
applied for mark LEAF RELEAF and design and opposer’s marks
GLOBAL RELEAF and RELEAF.
Applicant’s response to paragraph 13 of the second
amended notice of opposition reads, in part, as follows:
“The applicant believes that this amendment [allegation] is
a frivolous one and also that it would be prejudicial to the
rights of the applicant. … The applicant and her husband
Stephen [Sanders] are, and always have been, attempting to
make their business a successful one. The intent to use the
mark LEAF RELEAF in commerce has always been a genuine
Opposition No. 89,370
4
intent. … The applicant also indicated at [her] June 14,
1993 [discovery] deposition that her associate in an
association to promote and market a revolutionary plastic
bag for the purpose of the gathering and bagging of fallen
leaves is Stephen Sanders. … The invention of one type of
Leaf Bagging Equipment Method (Patent #5,066,143) was
provided by the applicant's associate Stephen Sanders. … The
applicant repeatedly answered questions pertaining to the
applicant’s role and again answered at the June 14, 1993
deposition as follows: Barbara Sanders created and designed
the trademark LEAF RELEAF and Stephen Sanders is the
inventor of the revolutionary plastic bag used for the
purpose of the gathering and bagging of fallen leaves.
Barbara Sanders and Stephen Sanders shared responsibilities
and duties in the promotion and marketing of the
revolutionary plastic bag used for the purpose of the
gathering and bagging of fallen leaves. … From the beginning
of these proceedings, the opposer has made every attempt to
make it difficult for the applicant to represent her case.
It was because of this that the applicant attempted to
transfer the assignment of the mark to her husband Stephen
Sanders. … The transfer of the assignment was subsequently
declared null and void by the Board [in an order dated April
19, 1996] …”
Opposition No. 89,370
5
Both parties made of record evidence and filed briefs.
Neither party requested an oral hearing.
We will first consider opposer’s second ground for
opposition, namely, that the application “was filed by a
party who did not have a bona fide intent to use the mark in
commerce … and therefore is void ab initio under Section
1(b) of the Trademark Act.”
Section 1(b) reads, in pertinent part for the purposes
of this case, as follows: “A person who has a bona fide
intention, under circumstances showing the good faith of
such person, to use a trademark in commerce may apply to
register the trademark under this Act on the principal
register hereby established: (1) by filing in the Patent and
Trademark Office –- (A) a written application … including a
statement to the effect that the person making the
verification believes himself or herself, or the firm,
corporation, or association on whose behalf he or she makes
the verification, to be entitled to use the mark in
commerce, and that no other person, firm, corporation, or
association, to the best of his or her knowledge and belief,
has the right to use such mark in commerce either in the
identical form of the mark or in such near resemblance to
the mark as to be likely, when used on or in connection with
Opposition No. 89,370
6
the goods of such other person, to cause confusion or to
cause mistake or to deceive …”
Section 1(b) deals with intent-to-use applications.
Because in such an application the mark has not yet been
used, and because ownership of a mark arises through use of
the mark, Section 1(b) does not refer to “the owner of a
trademark,” as does Section 1(a) of the Trademark Act which
deals with use based applications. However, both Sections
1(a) and 1(b) contain the following identical language with
the only exception being that the underlined wording appears
only in Section 1(b): “A written application … [must include
a statement to the effect] that no other person, firm,
corporation, or association, to the best of his or her
knowledge and belief, has the right to use such mark in
commerce either in the identical form … or in such near
resemblance … as to be likely, when used on or in connection
with the goods of such other person, to cause confusion, or
to cause mistake, or to deceive.”
Our primary reviewing Court has made it clear that, at
least with regard to use based applications filed pursuant
to Section 1(a), “the [trademark] statute requires only that
the application be filed in the PTO by the owner. No
authority has been cited for excusing noncompliance with 15
U.S.C. § 1051. Neither the Board nor the courts can waive
Opposition No. 89,370
7
this statutory requirement.” Huang v. Tzu Wei Chen Food,
849 F.2d 1458, 7 USPQ2d 1335, 1336 (Fed. Cir. 1988). In
Huang, the Court affirmed “the Board’s holding that the
application for registration is void for failure to comply
with Section 1 of the Lanham Act” because the application
was filed in the name of an individual affiliated with a
corporation and not in the name of the corporation itself,
which was, at the time the application was received by the
PTO, the owner of the mark. 7 USPQ2d at 1336. The facts in
Huang vividly demonstrate how strictly Section 1 must be
complied with, and how neither this Board nor the courts may
waive the requirements of Section 1. The trademark
application was prepared in the name of the individual and
was transmitted to the PTO on April 27, 1982. Earlier, the
individual had applied for incorporation in the state of
Iowa, and this incorporation became effective on May 1,
1982. Both parties to the opposition agreed that “ownership
of the trademark … passed on May 1 [from the individual] to
the newly formed corporation.” 7 USPQ2d at 1335. The
application was then received at the PTO on May 3, 1982.
The Court stated that “ownership of the mark was acquired by
the corporation between the time of execution of the
application for registration by [the individual], and
receipt of the application by the PTO.” 7 USPQ2d at 1335.
Opposition No. 89,370
8
The Court then held that the application was void ab initio
because on May 3, 1982, the owner of the mark was the
corporation, and not the individual named as the owner in
the application.
Other cases have likewise made it clear that, as
succinctly stated by Professor McCarthy, “the applicant must
be the owner of the mark.” 2 J. McCarthy, McCarthy on
Trademarks and Unfair Competition Section 19:53 at page 19-
89 (4th ed. 1999). See Holiday Inn v. Holiday Inns, Inc.,
534 F.2d 312, 189 USPQ 630, 635 n. 6 (CCPA 1976) (“It is
fundamental that ownership of a mark is acquired by use,
not by registration. One must be the owner of a mark before
it can be registered.”).
The Huang case was decided on June 21, 1988, prior to
enactment of the Trademark Law Revision Act of 1988 on
November 16, 1988. This Act, which became effective on
November 16, 1989, allowed for the filing of intent-to-use
applications pursuant to Section 1(b) of the Trademark Act.
See McCarthy on Trademarks, Section 19:13 at page 19-24 (4th
ed. 1999).
Obviously, the application at issue in this case is an
intent-to-use application. Had the application been a use
based application, and had the application been filed in the
name of Barbara Sanders (an individual) when the owner of
Opposition No. 89,370
9
the mark LEAF RELEAF and design was another entity such as a
partnership, then pursuant to Huang and the other
authorities cited above, the application would have been
void ab initio as having been filed in the name of someone
other than the owner of the mark. We see no valid reason
for granting greater leeway to intent-to-use applicants.
Put quite simply, if it is a corporation or partnership
which has the bona fide intention to use a particular mark,
and yet the intent-to-use application is filed in the name
of an individual, then said application will be deemed to be
void ab initio.1
We turn now to a consideration of whether as of the
application filing date of November 26, 1991, the applicant
Barbara Sanders had a bona fide intent to use the mark LEAF
RELEAF and design in her capacity as an individual (as

1 Indeed, if anything, an argument can be made that it is more
important that an intent-to-use application be filed in the name
of the person or entity who has the actual bona fide intent-to-
use the mark than it is for a use based application to be filed
in the name of the owner of the mark. Section 10 of the
Trademark Act states that “no [intent-to-use] application to
register a mark under § 1(b) shall be assignable prior to the
filing of a verified statement of use under § 1(d), except to a
successor to the business of applicant, or a portion thereof, to
which the mark pertains, if that business is ongoing and
existing.” There is not a similar restriction with regard to the
assignment of use based applications. One explanation for this
difference in treatment between use based and intent-to-use
applications is that to permit the assignment of the latter prior
to actual use (unless to a successor of the business) “would
encourage trafficking in marks.” “The United States Trademark
Association Trademark Review Commission Report and
Recommendations,” 77 The Trademark Reporter 375, 403 (1987).
Opposition No. 89,370
10
specified in the application), or whether the intention was
that the mark be used by some other entity, and in
particular, a partnership consisting of Barbara Sanders and
her husband Stephen Sanders.
As is indicated in her answer to paragraph 13 of the
second amended notice of opposition, the only bona fide
intent was for the mark LEAF RELEAF and design to be used by
Barbara Sanders and Stephen Sanders together, and not by
Barbara Sanders alone as an individual. As previously
noted, in response to paragraph 13, Barbara Sanders stated
as follows: “The applicant and her husband Stephen are, and
always have been, attempting to make their business a
successful one. The intent to use the mark LEAF RELEAF in
commerce has always been a genuine intent.” (emphasis
added). Also, in answer to paragraph 13, Barbara Sanders
stated as follows: “The applicant also indicated at [her]
June 14, 1993 [discovery] deposition that her associate in
an association to promote and market a revolutionary plastic
bag for the purposes of the gathering and bagging fallen
leaves is Stephen Sanders.” Later still in her answer to
paragraph 13, applicant again refers to “her associate
Stephen Sanders.”
The issue before this Board is not whether Mr. and Mrs.
Sanders together had a bona fide intention to use the mark
Opposition No. 89,370
11
LEAF RELEAF and design. Rather, the narrow issue is whether
the applicant –- Barbara Sanders an individual –- had a bona
fide intent to use the mark in her capacity as an
individual. In addition to her answer to paragraph 13, a
review of the testimony depositions of Barbara Sanders and
Stephen Sanders as well as the discovery deposition of
Barbara Sanders makes it clear that the answer to this
latter question is “no.” Accordingly, we find that the
application was void ab initio as having been filed in the
name of an individual when, in actuality, it was a
partnership consisting of Stephen Sanders and Barbara
Sanders which had the bona fide intent to use the mark.
Indeed, in her brief at page 26, Barbara Sanders
essentially concedes the forgoing, as witnessed by the
following statements: “The name of the product [LEAF RELEAF]
was created by the applicant and subsequently a trademark
was applied for in November 26, 1991. The applicant not
being an attorney familiar with trademark applications,
chose to file the trademark application as an individual
rather than a partnership or corporation or other entity
simply because the applicant was the person who created the
name (Barbara Sanders testimony deposition pages 12-13).
The applicant and her husband work together in this family
Opposition No. 89,370
12
business whose product is a revolutionary yard debris bag
with the name LEAF RELEAF.” (emphasis added).
A review of the testimony deposition reveals that at
all times, it was the intention of Barbara Sanders for the
mark LEAF RELEAF and design to be used in the future by a
partnership composed of herself and her husband. The
following series of questions and answers by counsel for
opposer and Barbara Sanders respectively makes this point
quite clear (Barbara Sanders testimony deposition pages 49-
50):
Q. Mrs. Sanders, you had mentioned earlier
relating to your intent or state of mind prior to
filing your trademark application. The intent that you
had to use the mark was not to do it alone; correct?
A. The intent that I had --. I filed it
individually. Is that what you’re referring to?
Q. Yes. The application was filed in your name
and alone. My question is, was your intent to market,
produce, sell and bring the product to the customer
yourself or was it with the expectation of doing so as
a partner with your husband?
A. It was as a partnership with my husband.
Q. So you didn’t intend to do this on your own?
A. No. I never did.
Q. It was not your exclusive or sole intent?
A. To market it on my own?
Q. Correct.
A. Correct.
Opposition No. 89,370
13
At page 8 of the testimony deposition of Stephen
Sanders, Barbara Sanders asked her husband the following
question: “Who makes up the Leaf Releaf business?” Mr.
Sanders responded as follows: “My wife and myself.”
At pages 38-40 of her earlier discovery deposition,
Barbara Sanders conceded that “Mr. Sanders is the developer
of the actual product and he was the marketer of the item”
(page 38); Barbara Sanders acknowledged that “we never
denied that Mr. Sanders had the primary role [and that her]
role was the development of the trademark LEAF RELEAF” (page
39); and Barbara Sanders stated that she never sent out
letters to any prospective manufacturers of the product
developed by Mr. Sanders, that she never sent out any
letters to news agencies and that she never sent out any
letters seeking capital contribution for marketing the
product (page 40). Indeed, Barbara Sanders acknowledged
that her sole role with regard to the LEAF RELEAF and design
product was to create the trademark itself and to act “as an
advisor” to her husband (page 40). Counsel for opposer then
posed the following question to Barbara Sanders at page 41
of her discovery deposition: “What types of areas did you
advise on?” The answer was as follows: “On whether I
thought something was good, bad, or needed improvement or
things of that nature.”
Opposition No. 89,370
14
The foregoing clearly demonstrates that the true entity
which had a bona fide intent to use the mark LEAF RELEAF and
design was not Barbara Sanders an individual, but rather was
a partnership consisting of Stephen Sanders and Barbara
Sanders. Indeed, the evidence also shows, to use Barbara
Sanders own words, that Mr. Sanders “had the primary role”
in the partnership. (Barbara Sanders discovery deposition
page 39).
Having found for the opposer on the issue that the
application was void ab initio because the applicant Barbara
Sanders had no bona fide intent to use the mark in her
capacity as an individual, we elect not to consider the
issue of likelihood of confusion. See American Paging Inc.
v. American Mobilphone Inc., 13 USPQ2d 2036, 2039 (TTAB
1989), aff’d 17 USPQ2d 1726 (Fed. Cir. 1990) and cases cited
therein. This is a particularly appropriate case for not
deciding the issue of likelihood of confusion because while
opposer and its licensees made rather extensive use of
opposer’s marks GLOBAL RELEAF and RELEAF during the three
years preceding November 26, 1991 (applicant’s application
filing date), the use of the marks GLOBAL RELEAF and RELEAF
by opposer and its licensees has increased very dramatically
since November 1991. Indeed, opposer has now licensed the
use of its marks on plastic lawn bags, a product which is
extremely similar to applicant’s plastic leaf bagging sheets
Opposition No. 89,370
15
with drawstrings in terms of material (both are made of
plastic) and in terms of function (both are used to hold
leaves). However, the use of opposer’s marks on plastic
lawn (leaf) bags did not occur until 1997. Should applicant
elect to file a new application seeking to register LEAF
RELEAF and design (or a similar mark) in the proper manner,
then applicant’s constructive date of first use will be
subsequent to 1997. This could have a significant impact on
any likelihood of confusion analysis inasmuch as opposer
would now be the prior user for a much wider array of goods
and services.
Decision: The opposition is sustained solely on the
basis that it was improperly filed in the name of an
individual (Barbara Sanders) who, as an individual, did not
have a bona fide intent to use the mark. The bona fide
intent to use the mark LEAF RELEAF and design was with
another entity, namely, a partnership consisting of Stephen
Sanders and Barbara Sanders. Thus, the application was void
ab initio.
E. W. Hanak
P. T. Hairston
D. E. Bucher
Administrative Trademark
Judges, Trademark Trial
and Appeal Board