Bell, Inc.v.Bell Packaging Corp.

Trademark Trial and Appeal Board

Sep 20, 2004

No. 92031904 (T.T.A.B. Sep. 20, 2004)

Mailed: Mailed:
Sept. 20, 2004
Paper No. 33
Bottorff
UNITED STATES PATENT AND TRADEMARK OFFICE
_____
Trademark Trial and Appeal Board
_____
Bell, Inc.
v.
Bell Packaging Corporation
_____
Cancellation No. 92031904
_____
J.W. Gipple of Gipple & Hale for Bell, Inc.
Priscilla L. Dunckel and Pamela S. Ratliff of Baker Botts
L.L.P. for Bell Packaging Corporation.
_____
Before Seeherman, Bottorff and Drost, Administrative
Trademark Judges.
Opinion by Bottorff, Administrative Trademark Judge:
Bell Packaging Corporation, respondent herein, owns
Registration No. 2089082, which is of the mark BELL
PACKAGING CORPORATION (in typed form; PACKAGING CORPORATION
disclaimed) for goods and services identified in the
registration as “packing paper, cardboard, and packaging
goods, namely, linerboards, corrugating medium paper,
corrugated boxes, adhesives for stationery, waxed paper, wax
paper bags,” in Class 16, and “consultation and design of
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT
OF THE TTAB
Cancellation No. 92031904
2
pallets, storage rack systems, linerboard, corrugating
medium, corrugated boxes, and waxed paper products,” in
Class 42. May 24, 1994 is alleged in the registration as
the date of first use of the mark and the date of first use
of the mark in commerce, as to both classes. The
registration issued on August 19, 1997 from an application
filed on July 3, 1996.1
On March 29, 2001, Bell, Inc., petitioner herein, filed
a petition to cancel respondent’s registration. As its
ground for cancellation, petitioner alleged that “since long
prior to 1994,” petitioner has used BELL as part of its
trademark and trade name in connection with paperboard
packaging goods, and that respondent’s mark, when used on or
in connection with respondent’s goods and services, is
likely to cause confusion. Trademark Act Section 2(d), 15
U.S.C. §1052(d). Respondent filed an answer by which it
denied the salient allegations of the petition to cancel and
asserted various affirmative defenses.
The evidence of record consists of the June 12, 2003
testimony deposition of petitioner’s president, CEO and sole
shareholder Mark Graham (and the exhibits thereto); the
August 13, 2003 testimony deposition of respondent’s account
manager Todd Levy (and the exhibits thereto); and
respondent’s September 2, 2003 notice of reliance and the
1 Section 8 affidavit (6-year) accepted.
Cancellation No. 92031904
3
documents submitted therewith.2 Petitioner and respondent
filed main trial briefs, but petitioner did not file a reply
brief.3 No oral hearing was requested. We deny the
petition to cancel.
Initially, the evidence of record establishes that
petitioner has used the trade name “Bell, Inc.” from January
2001 until the present. (Graham Depo. at 6.) In view
thereof, and because petitioner’s likelihood of confusion
claim is not frivolous, we find that petitioner has
established that it has the requisite commercial interest in
the outcome of this proceeding, and that it therefore has
standing to petition to cancel respondent’s registration.
See, e.g., Lipton Industries, Inc. v. Ralston Purina
Company, 670 F.2d 1024, 213 USPQ 185 (CCPA 1982).
2 In an order dated October 31, 2002, the Board denied, as
untimely, a motion for summary judgment filed by petitioner.
Then, in an order dated April 3, 2003 (as corrected by an order
dated April 18, 2003), the Board granted respondent’s motion to
quash petitioner’s December 26, 2002 deposition on written
questions of petitioner’s president Mark Graham, due to
petitioner’s failure to comply with the provisions of Trademark
Rule 2.124 pertaining to depositions on written questions. We
have given no consideration to the evidence submitted with
petitioner’s untimely summary judgment motion, or to the
procedurally improper December 26, 2002 deposition and the
exhibits thereto, except for the summary judgment affidavit of
Mark Graham, which respondent itself made of record (during
cross-examination) as an exhibit to Mr. Graham’s June 12, 2003
testimony deposition.
3 In its brief, respondent preserved and argued in support of its
earlier, timely-asserted objections to certain of the exhibits to
the testimony deposition of petitioner’s president Mark Graham,
as well as its objections to certain portions of Mr. Graham’s
testimony itself. Petitioner did not file a reply brief and has
not otherwise responded to respondent’s objections. We shall
discuss those objections, infra.
Cancellation No. 92031904
4
To prevail on its Section 2(d) ground for cancellation,
petitioner, who does not own a registration, must prove that
respondent’s mark, when used on or in connection with
respondent’s goods and services, “so resembles … a mark or
trade name previously used in the United States by another
[in this case, petitioner] and not abandoned,” as to be
likely to cause confusion. Trademark Act Section 2(d).
Thus, there are two elements of petitioner’s Section 2(d)
claim, i.e., that petitioner has priority, and that a
likelihood of confusion exists. We turn first to the issue
of priority.
Two preliminary comments are in order with respect to
the priority issue. First, we reject respondent’s
contention that petitioner cannot prevail herein because
petitioner has not proven prior (or any) technical trademark
use of a BELL mark on its paperboard packaging products.
Section 2(d), on its face, does not require that a
petitioner (or opposer) establish prior technical trademark
use; prior trade name use suffices to bar registration of a
confusingly similar mark. See, e.g., Martahus v. Video
Duplication Services, Inc., 3 F.3d 417, 27 USPQ2d 1846, 1850
(Fed. Cir. 1993).
Second, we reject petitioner’s contention that
“priority is not an issue” in this case, and its related
contention that “Petitioner’s burden is to prove that at the
Cancellation No. 92031904
5
time when the application which resulted in Reg. No. 2089082
was filed, Petitioner had previously used (and not
abandoned) a mark or trade name” to which respondent’s mark
is confusingly similar. (Petitioner’s brief, at 4-5.) In
inter partes proceedings before the Board where the
plaintiff asserting a Section 2(d) claim does not own a
registration, the Section 2(d) priority test is not whether
the plaintiff’s unregistered mark or trade name was
“previously used” as of the defendant’s application filing
date, but rather whether it was “previously used” as of the
earliest date on which the defendant can rely for priority
purposes.4 In other words, the plaintiff asserting a
Section 2(d) claim in an opposition or cancellation
proceeding, if it does not own a registration, must prove
that, as between plaintiff and defendant, plaintiff has
superior rights in its unregistered mark or name, i.e., that
the earliest date of use on which plaintiff can rely is
prior in time to the earliest date of use on which defendant
4 Priority is not an issue in an opposition proceeding in which
the opposer relies on an unchallenged pleaded registration. See
King Candy Co., Inc. v. Eunice King’s Kitchen, Inc., 496 F.2d
1400, 182 USPQ 108 (CCPA 1974). Priority of use must be
established in a cancellation proceeding, however, although a
petitioner that proves ownership of a registration may rely on
the filing date of the application which matured into that
registration as its constructive date of first use, for priority
purposes. See Trademark Act Section 7(c), 15 U.S.C. §1057(c);
Hilson Research v. Society for Human Resource Management, 27
USPQ2d 1423 (TTAB 1993).
Cancellation No. 92031904
6
can rely.5 Absent proof of ownership of such superior
rights vis-à-vis the defendant, the plaintiff cannot prevail
on its Section 2(d) claim. See, e.g., American Security
Bank v. American Security and Trust Company, 571 F.2d 564,
197 USPQ 65, 66 (CCPA 1978); Corporate Document Services
Inc. v. I.C.E.D. Management Inc., 48 USPQ2d 1477 (TTAB
1998); and Intersat Corp. v. International
Telecommunications Satellite Organization, 226 USPQ 154, 156
n.5 (TTAB 1985). Petitioner’s burden is to prove such
priority by a preponderance of the evidence. See Hydro-
Dynamics Inc. v. George Putnam & Company Inc., 811 F.2d
1470, 1 USPQ2d 1772 (Fed. Cir. 1987).
The evidence of record in this case establishes that
petitioner adopted its current “Bell, Inc.” trade name in
January 2001. (Graham Depo. at 6; Respondent’s Notice of
Reliance, Exh. 6.) Prior to its adoption of the “Bell,
Inc.” trade name, petitioner had been doing business under
the trade name “Bell Paper Box, Inc.” since April 1, 1976,
when petitioner’s president Mark Graham purchased the assets
5 In opposition or cancellation proceedings where the defendant
does not or cannot present evidence of use which predates its
application filing date, the earliest use date on which the
defendant may rely for priority purposes is its application
filing date, which constitutes its constructive date of first
use. See Trademark Act Section 7(c); Levi Strauss & Co. v. R.
Josephs Sportswear, 28 USPQ2d 1464 (TTAB 1993), recon. denied, 36
USPQ2d 1328 (TTAB 1994). In such cases, the plaintiff attempting
to establish Section 2(d) priority need only prove use prior to
the defendant’s application filing date.
Cancellation No. 92031904
7
of the company. (Graham Depo. at 6, 49-50.) Since Mr.
Graham’s purchase of the company in 1976, petitioner’s
paperboard packaging products business has been in
continuous operation, first under the “Bell Paper Box, Inc.”
name (from April 1976 to January 2001) and then under the
“Bell, Inc.” name (from January 2001 to the present).
(Graham Depo. at 6-7.) We note that petitioner also asserts
that prior to Mr. Graham’s acquisition of the company in
1976, the company’s prior owners had used the “Bell Paper
Box, Inc.” trade name in the paperboard packaging products
business since the company’s founding in 1920. However, we
find that the evidence of record does not support that
assertion.6
6 Mr. Graham, petitioner’s sole trial witness, admitted that he
has no personal knowledge as to the extent or manner of use of
the Bell Paper Box, Inc. name prior to his acquisition of the
company in 1976. (Graham Depo. at 43-45.) His testimony (id. at
pp. 42-43) recounting certain statements others had made to him
regarding the company’s history (i.e., statements made by Mr.
Zender in 1976 and by the unidentified building researcher in the
late 1980’s) is clearly based upon hearsay, and does not
establish the truth of the matters asserted in those statements.
The only documentary evidence offered by petitioner as proof of
pre-1976 use of the Bell Paper Box, Inc. trade name is Exhibit 6
to Mr. Graham’s testimony deposition, i.e., the “Catalogue of
Type Faces Emblems and Cuts of The Bell Paper Box Co.” which
bears on its cover the date “January 1932.” However, we sustain
respondent’s timely-asserted and properly-maintained objection to
this exhibit, on the ground that it should have been produced
during discovery but was not. In particular, we note that
respondent’s Request for Production of Documents No. 9 requested
production of “[d]ocuments sufficient to show continuous use of
Petitioner’s Mark from its earliest use to the present.”
Petitioner responded to this request as follows: “All such
documents have not yet been identified, but will be made
available to Registrant, when identified.” (Graham Depo., Exh.
No. 9.) Despite this representation that it would produce
responsive documents, and despite its obligation under Fed. R.
Cancellation No. 92031904
8
As for respondent, the evidence of record establishes
the following. In his August 13, 2003 testimony deposition,
respondent’s witness Mr. Levy testified that he has been
employed by respondent since 1978, and that he has held a
variety of positions within the company over the years,
including as the company’s administrative manager with
responsibility for all administrative functions of the
company, including human resources. He is familiar with the
company’s history because the company keeps extensive
archives, with which he was required to become familiar
because his duties have included “overseeing the historical
portion of our annual profit plan.” (Levy Depo. at 4-5.)
The company’s archives contain numerous documents which are
and have been kept by the company in the ordinary course of
business, including the historical documents introduced as
exhibits to his deposition. (Levy Depo. at 5, 14, 18.)
Civ. P. 26(e)(2) to timely supplement its response, petitioner
failed to produce this 1932 catalog or any other document which
would support its claim of pre-1976 use of the Bell Paper Box,
Inc. name by petitioner’s predecessors. Instead, petitioner
attempted to introduce this document for the first time at Mr.
Graham’s testimony deposition. This is the sort of surprise that
the discovery rules (of which respondent properly availed itself)
were designed to prevent. In the interest of “fundamental
fairness in the conduct of litigation,” we find that petitioner
is estopped to rely on this document at trial, and we have given
it no consideration. See Weiner King, Inc. v. The Wiener King
Corporation, 615 F.2d 512, 204 USPQ 820, 828 (CCPA 1980). Thus,
we find that there is no evidence which establishes use of the
Bell Paper Box, Inc. trade name prior to Mr. Graham’s acquisition
of the company in 1976, much less evidence which establishes that
such use commenced in 1920.
Cancellation No. 92031904
9
Mr. Levy testified that respondent company was founded
in 1913 by George Bell, and that it did business under the
trade name “Indiana Fibre Products Company” until 1940, when
the name was changed to “Bell Fibre Products Company.”
Exhibit 4 to Mr. Levy’s deposition is a copy of an
announcement, dated January 2, 1940 and signed by George
Bell, by which the company announced the name change. Mr.
Levy testified that the original of this document is framed
and displayed in the lobby of the company’s plant in Marion,
Indiana. (Levy Depo. at 14.)
Continuously from 1940 to 1988, respondent conducted
business under the trade name “Bell Fibre Products
Corporation,” and also used that designation as a trademark
on the corrugated containers it produced and as a service
mark in connection with its packaging design services.
(Levy Depo., 9, 13.)7 Exhibit 5 to Mr. Levy’s deposition is
a company newsletter dated May 1968, in the masthead of
which appears the “Bell Fibre Products Corporation” trade
7 Exhibit 3 to Mr. Levy’s deposition is a USPTO printout of
respondent’s expired Reg. No. 1045401, which is of the mark BELL
FIBRE PRODUCTS CORPORATION and bell logo design for “corrugated
fibreboard boxes,” and which alleges December 31, 1939 as the
date of first use. The registration issued on August 3, 1976,
but was not renewed, and was deemed expired on May 12, 1997. It
is settled that an expired or cancelled registration is not
evidence of use of the mark, either as of the application filing
date or as of the date of use alleged therein. Nor is it
evidence of any presently existing rights. See Elder Mfg. Co. v.
International Shoe Co., 194 F.2d 114, 92 USPQ 330 (CCPA 1952);
Bonomo Culture Institute, Inc. V. Mini-Gym, Inc., 188 USPQ 415
(TTAB 1975). We accordingly have given this expired registration
no evidentiary value.
Cancellation No. 92031904
10
name and bell logo. (Levy Depo. at 14-15.) Exhibit 6 to
Mr. Levy’s deposition is a 1985 marketing brochure which was
used extensively by respondent; the name “Bell Fibre
Products Corporation” appears prominently on the brochure’s
cover. (Levy Depo. at 15-19.) Exhibit 10 to Mr. Levy’s
deposition is a certification stamp bearing the designation
“Bell Fibre Products Corporation” and bell logo, which was
stamped onto every corrugated carton produced by respondent
in the years prior to 1988. (Levy Depo. at 24-25, 27.)
In 1988, to celebrate the company’s 75th anniversary,
respondent changed its trade name from “Bell Fibre Products
Corporation” to “Bell Packaging Corporation.” (Levy Depo.
at 8.) Exhibit 4 to Mr. Levy’s deposition is an official
record from the Indiana Secretary of State’s office
consisting of a notice of filing of articles of amendment to
respondent’s Articles of Incorporation, along with a copy of
the December 31, 1987 articles of amendment by which the
corporate name change was effected. Respondent has used the
BELL PACKAGING CORPORATION trademark and trade name
continuously since 1988. (Levy Depo. at 22-24.)8
8 In respondent’s involved registration, respondent alleged May
24, 1994 as the date of first use of the trademark and service
mark BELL PACKAGING CORPORATION. Mr. Levy testified that that
date is erroneous, because respondent has used the trademark and
service mark in commerce since 1988, when the company’s name was
changed from Bell Fibre Products Corporation to Bell Packaging
Corporation. (Levy Depo. at 7-8.) Mr. Levy’s testimony is
clear, credible and incontroverted, and is supported by the
deposition exhibits. In view thereof, we find that respondent
has proven, with the requisite clear and convincing evidence,
Cancellation No. 92031904
11
Petitioner has not objected to, challenged or rebutted
any of respondent’s evidence pertaining to the history of
respondent’s use of its BELL PACKAGING CORPORATION and BELL
FIBRE PRODUCTS CORPORATION trade names and trademarks. We
find that this evidence suffices to establish that
respondent has used the trade name, trademark and service
mark BELL PACKAGING CORPORATION since 1988, and that it used
the trade name BELL FIBRE PRODUCTS CORPORATION continuously
from 1940 to 1988.
Both petitioner and (to a lesser extent) respondent
have based their priority arguments on their uses of their
previous trade names and/or marks. That is, petitioner is
attempting to go behind its January 2001 first use of its
current BELL, INC. name and “tack on” its pre-2001 use of
its previous name BELL PAPER BOX, INC. Respondent, although
arguing that its 1988 first use of its registered BELL
PACKAGING CORPORATION mark predates petitioner’s 2001 first
use of its current BELL, INC. trade name, also argues that
it is entitled to go behind its 1988 first use of the BELL
PACKAGING MARK and tack on its pre-1988 use of its previous
that its date of first use of the registered mark in commerce is
January 1988, rather than May 24, 1994 as alleged in the
registration. See Hydro-Dynamics Inc. v. George Putnam & Company
Inc. supra. We note, however, that this finding is not necessary
to our decision in this case because, as discussed infra, the
evidence of record establishes respondent’s priority vis-à-vis
petitioner regardless of whether respondent’s first use in
commerce of the registered trademark and service mark was in 1994
or in 1988.
Cancellation No. 92031904
12
BELL FIBRE PRODUCTS CORPORATION mark and name. We find,
however, that neither party is entitled to tack in this
case.
“Tacking” (for priority purposes) of a party’s use of
an earlier mark or name onto its use of a later mark or name
is permitted only in rare instances, and only where the
earlier and later designations are “legal equivalents,”
i.e., where they would be considered by purchasers to be the
same designation. To meet the legal equivalents test, the
marks must create the same commercial impression, and cannot
differ materially from one another. The fact that two
designations may be confusingly similar does not necessarily
mean that they are legal equivalents. See Van Dyne-Crotty
Inc. v. Wear-Guard Corp., 926 F.2d 1156, 17 USPQ2d 1866
(Fed. Cir. 1991); Ilco Corp. v. Ideal Security Hardware
Corp., 527 F.2d 1221, 188 USPQ 485 (CCPA 1976); Pro-Cuts v.
Schilz-Price Enterprises Inc., 27 USPQ2d 1224 (TTAB 1993);
Baroid Drilling Fluids Inc. v. Sun Drilling Products, 24
USPQ2d 1048 (TTAB 1992: and American Paging Inc. v. American
Mobilphone Inc., 13 USPQ2d 2036 (TTAB 1989), aff’d (unpub.)
17 USPQ2d 1726 (Fed. Cir. 1990).
In this case, we find that petitioner’s previous trade
name BELL PAPER BOX, INC. is not the legal equivalent of its
current trade name BELL, INC. The two names do not create
the same commercial impression, because the current name
Cancellation No. 92031904
13
(which omits PAPER BOX) is more general and expansive, and
less informative, than the former name. See American Paging
Inc. v. American Mobilphone Inc., supra. The same is true
with respect to respondent’s former BELL FIBRE PRODUCTS
CORPORATION name and mark and its current BELL PACKAGING
CORPORATION name and mark. FIBRE PRODUCTS and PACKAGING are
not legally equivalent terms, and the commercial impressions
created by the respective marks therefore are not the same.
See Ilco Corp. v. Ideal Security Hardware Corp., supra;
American Paging Inc. v. American Mobilphone Inc., supra.
Because petitioner is not entitled to tack on its use
of its previous BELL PAPER BOX, INC. trade name, the
earliest date on which petitioner may rely for priority
purposes is the date of its first use of its current BELL,
INC. trade name, i.e., January 2001. Respondent likewise is
not permitted to tack on its use of its previous name and
mark BELL FIBRE PRODUCTS CORPORATION, but respondent has
proven actual use of its registered BELL PACKAGING
CORPORATION mark since 1988, a date prior to petitioner’s
January 2001 priority date. (Respondent’s 1996 constructive
first use date (i.e., the filing date of the application
which matured into the involved registration), likewise
predates petitioner’s January 2001 first use of BELL, INC.)
In sum, because neither party is entitled to tack on
its use of its former mark or name, the priority dispute in
Cancellation No. 92031904
14
this case comes down to the issue of which party first
commenced use of its present mark or name. We find that, as
between respondent’s registered BELL PACKAGING CORPORATION
MARK (first used in 1988) and petitioner’s BELL, INC. trade
name (first used in 2001), priority rests with respondent,
not petitioner.9
Because petitioner has failed to prove priority,
petitioner cannot prevail on its Section 2(d) ground for
cancellation. We need not and do not reach the issue of
likelihood of confusion. See Corporate Document Services
Inc. v. I.C.E.D. Management Inc., supra, 48 USPQ2d at 1479
n.4.
Decision: The petition to cancel is denied.
9 We hasten to add that even if the priority issue in this case
involved a determination of which party is the prior user of the
designation BELL per se, i.e., even if both parties were
permitted to tack on their use of their respective previous BELL
marks or names, priority still would rest with respondent. For
the reasons discussed supra, the earliest date of use of
petitioner’s previous BELL PAPER BOX, INC. trade name that has
been established by competent evidence is April 1976, when Mr.
Graham acquired the company. That date is subsequent to
respondent’s proven date of first use, in 1940, of its previous
BELL FIBRE PRODUCTS CORPORATION mark and name.