Carvel Corp.v.Ice Cream Bakery

Trademark Trial and Appeal Board

May 19, 1999

No. 91092814 (T.T.A.B. May. 19, 1999)

Paper No. 80
HRW
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
_____
Trademark Trial and Appeal Board
______
Carvel Corporation
v.
The Ice Cream Bakery, Inc.
_____
Opposition No. 92,814
to application Serial No. 74/153,787
filed on April 2, 1991 and
to application Serial No. 74/171,408
filed on May 3, 1991
_____
Rose Auslander of Fross Zelnick Lehrman & Zissu, P.C. for
Carvel Corporation
John M. Rannells of Baker & Friedman for The Ice Cream
Bakery, Inc.
______
Before Quinn, Hairston and Wendel, Administrative Trademark
Judges.
Opinion by Wendel, Administrative Trademark Judge:
The Ice Cream Bakery, Inc. has filed applications to
register the mark THE ICE CREAM BAKERY for retail ice cream
store services1 and for ice cream, frozen yogurt, Italian

1 Serial No. 74/153,787, filed April 2, 1991, based on a bona
fide intent to use the mark in commerce. An amendment to allege
Opposition No. 92,814
2
ice, sherbet, ice cream cones, sundaes, milk shakes, banana
splits, ice cream cups, ice cream cakes, and ice cream
sandwiches for consumption on or off the premises.2
Carvel Corporation has filed an opposition to
registration of the mark THE ICE CREAM BAKERY for both the
retail store services and the various ice cream products on
the grounds of prior use of the mark THE ICE CREAM BAKERY
(or ICE CREAM BAKERY) and the likelihood of confusion under
Section 2(d) of the Trademark Act. Opposer alleges priority
of use on two bases. Opposer’s first claim is based on
prior use by opposer’s assignor Benmark Enterprises, Inc.
(Benmark) of THE ICE CREAM BAKERY as a trade name and
service mark long prior to applicant’s first use and the
assignment of these rights, together with the goodwill of
Benmark’s business, to opposer on September 8, 1993, with a
license back being granted to Benmark, subject to the
condition that all use would inure to opposer’s benefit and
be subject to opposer’s quality control. Opposer’s second
claim is prior use by opposer itself, on the basis of the
adoption by opposer of ICE CREAM BAKERY for use for its
stores in late 1990, the informing of franchisees of this

use was subsequently filed claiming first use dates of January
1991. A disclaimer was entered of the words “ice cream.”
2 Serial No. 74/171,408, filed May 30, 1991, based on a bona fide
intention to use the mark in commerce. An amendment to allege
use was similarly filed in this application claiming first use
dates of January 1991 and a disclaimer entered of the words “ice
cream.”
Opposition No. 92,814
3
decision in meetings in late 1990 and early 1991, including
a meeting in November 1990 attended by William Brockmann,
the president of applicant and a Carvel franchisee until
January 1991, and the actual use by opposer of the mark in
connection with its stores by February or March 1991.
Opposer alleges that applicant adopted its mark with
knowledge of opposer’s prior adoption of the mark and with
the intent to harass opposer following the Brockmann
partnership’s termination of its Carvel franchise under
unfriendly circumstances. Thus, according to opposer,
opposer’s prior announcements to franchisees and other use
prior to applicant’s first use constitute sufficient use or
use analogous to trademark use to confer priority on
opposer, in view of applicant’s bad faith adoption and use
of the mark. On either priority basis, opposer alleges the
likelihood of confusion with the use by the parties of the
mark THE ICE CREAM BAKERY (or ICE CREAM BAKERY) for the
identical or closely related goods and services.
Applicant, in its answer, has denied the salient
allegations of the notice of opposition. Applicant has
separately alleged that opposer had no intention to use ICE
CREAM BAKERY until after it learned of applicant’s use and
that its later adoption was in bad faith; that opposer’s
acquisition of the alleged rights of Benmark was done solely
to usurp applicant’s rights, and that opposer has failed to
Opposition No. 92,814
4
subject Benmark to the same quality control as its
franchisees and, thus, has abandoned whatever rights it may
have acquired. On these allegations, applicant has asserted
the defenses of acquiescence, estoppel, and laches, and
abandonment by opposer of any rights obtained by assignment.
The record for opposer consists of the testimonial
depositions and accompanying exhibits of Steven Fellingham,
the CEO of opposer; Vito Carnazza, a Carvel franchisee;
Robert O’Neill, a former Carvel franchisee; Syl Sosnowski,
vice-president of marketing for opposer from 1990-1995; and
Al Reis and John Trout, marketing consultants for opposer,
and of notices of reliance introducing the trademark
application of opposer,3 the declaration of Steven Gottleib,
designated portions of the deposition of Steven Gottlieb and
the affidavit of Marilyn Agoado.4 The record for applicant
consists of the testimonial depositions and accompanying
exhibits of Robert H. Brockmann and William Brockmann, the
chief officers of applicant; Lesley and Salvatore Saglibene,
co-owners of an Ice Cream Bakery store and prior Carvel
franchisees; and Joseph Giampapa, owner of an Ice Cream
Bakery store and prior Carvel franchisee, and of seven

3 Serial No. 74/598,528, filed November 11, 1994, for CARVEL ICE
CREAM BAKERY for various ice cream products and retail ice cream
store services, claiming first use dates of at least as early as
March 1991.
4 By the accompanying stipulation the parties had agreed that
this latter testimony could be submitted in the form of
affidavits, declarations and discovery depositions.
Opposition No. 92,814
5
notices of reliance introducing certain responses by opposer
to interrogatories and requests for admission, designated
excerpts of the Gottlieb deposition, the affidavit of Mark
Agoado, a phone directory listing, opposer’s letter of
protest to the Office and portions of opposer’s Carvel
product preparation and specification manual. Both parties
filed briefs, but no oral hearing was requested.
Opposer sells its ice cream products for the most part
through franchise stores, which number around 450, and
supermarkets. The principals of applicant, the Brockmann
brothers, were former franchisees of opposer who became
unhappy with the directions opposer was taking and the
requirements imposed on franchisees. As a result, the
Brockmanns terminated their franchise agreement with opposer
on January 31, 1991 and began operating an independent ice
cream store under the name THE ICE CREAM BAKERY. Although
there is evidence of record that opposer had taken steps to
adopt the mark ICE CREAM BAKERY prior to January 31, 1991 as
part of its “repositioning” and its new emphasis on ice
cream cakes, opposer did not begin actual use of the mark
until February or March 1991.
The story, however, does not end here. The record is
replete with conflicting testimony with respect to the
actual date of adoption of the mark ICE CREAM BAKERY by
opposer and whether the Brockmanns were aware of opposer’s
Opposition No. 92,814
6
intentions to use this mark prior to adoption of their mark.
The bad feelings which existed between opposer as franchisor
and various witnesses as prior franchisees are readily
evident. Nonetheless, upon review of the entire record, we
find that opposer has sufficiently carried its burden of
proof with respect to priority of use, based on the
assignment of rights from Benmark, to sustain its opposition
to the registration of applicant’s mark.
At the outset, applicant has challenged the standing of
opposer to bring this opposition on the basis of opposer’s
prior representations with respect to the nature of the
designation ICE CREAM BAKERY. Applicant first points to the
Letter of Protest which opposer filed with the Office, on
July 27, 1992, in connection with applicant’s pending
applications. In this communication, opposer stated that:
...Carvel objects to the registration of the term THE
ICE CREAM BAKERY because it is the apt or common
descriptive name of a retail outlet that sells ice
cream cakes and other bakery products made with ice
cream.
Opposer went on to say:
...the Carvel chain...is using the designation “ice
cream bakery” to distinguish themselves from regular
bakeries with whom they compete. ... the designation
ice cream bakery aptly describes the goods and services
provided by Carvel stores.
Applicant next points to the letter written by opposer
to William Brockmann, after Brockmann had forwarded a cease
Opposition No. 92,814
7
and desist letter to opposer on October 29, 1992, in which
opposer stated:
As you are well aware, Carvel Corporation adopted the
descriptive term “ice cream bakery” in November 1990,
to emphasize the chain’s cake sales and operational
style. The Company and its licensees have every right
to use this term in its ordinary descriptive sense to
refer to their goods and services. Carvel is neither
claiming trademark rights in this designation nor using
it in a trademark-like manner.
Applicant argues that these statements of opposer are
admissions against interest evidencing opposer’s belief that
the term is descriptive or generic. As such, applicant
contends that opposer is estopped to bring this opposition
and by its representations has shown that it will not be
damaged by registration of the mark to applicant. Applicant
additionally raises claims of estoppel based on opposer’s
failure to object to applicant’s use of its mark until the
filing of this opposition.
Opposer, in response, argues that applicant clearly did
not rely to its detriment upon any statements made by
opposer in the two communications of record; that the 1992
reference by opposer’s in-house counsel to the mark as
“descriptive” is not determinative; that neither party is
now claiming that the mark is descriptive; and that
applicant has in fact admitted in the testimony of Robert
Brockmann that THE ICE CREAM BAKERY now “signifies” opposer,
which would neutralize any claim of descriptiveness.
Opposer further argues that it was under no obligation to
Opposition No. 92,814
8
pursue applicant in a lawsuit, but rather had the right to
wait and file this opposition, citing National Cable
Television Ass’n Inc. v. American Cinema Editors Inc., 937
F.2d 1572, 19 USPQ2d 1424 (Fed. Cir. 1991).
Opposer has clearly established the real interest
necessary to have standing for this proceeding. See Ritchie
v. Simpson, F.3d , 50 USPQ2d 1023 (Fed. Cir. 1999).
Opposer is a competitor in the retail ice cream store
business and is using the mark ICE CREAM BAKERY. No more is
necessary. Moreover, the fact that opposer at an early date
took a different position with respect to the nature of the
term THE ICE CREAM BAKERY, i.e., that the term was
descriptive or an apt name for an ice cream store
specializing in ice cream cakes, from its present position,
that the term is a trademark of opposer, can have no
estoppel effect. See Domino’s Pizza Inc. v. Little Caesar
Enterprises Inc., 7 USPQ2d 1359 (TTAB 1988), citing
Interstate Brands Corp. v. Celestial Seasonings, Inc., 576
F.2d 926, 198 USPQ 151 (CCPA 1978). Opposer’s indication,
at one point, of a different opinion with respect to the
designation is simply one fact to be taken into
consideration, together with the remainder of the record.
Furthermore, opposer is entirely correct in its reliance
upon National Cable Television to contradict any argument
that opposer was under an obligation to bring suit to stop
Opposition No. 92,814
9
use by applicant of THE ICE CREAM BAKERY, or else be barred
from filing this opposition to contest registration of the
mark. Objection to registration of a mark and the rights
which flow from it is not the equivalent to objection to use
of the mark. See National Cable Television, 19 USPQ2d at
1432.
Thus we look to opposer’s claim of priority based on
the assignment from Benmark to opposer of rights to the mark
THE ICE CREAM BAKERY. Opposer has introduced the affidavit
of Marilyn Agoado, vice-president of Benmark as evidence of
the use by Benmark of the trade name and service mark THE
ICE CREAM BAKERY since 1979 for its ice cream store in
Suffern, New York5 and the assignment of Benmark’s rights in
the name and mark to opposer on September 8, 1993, together
with the goodwill of the business, with a license back to
Benmark to use the name and mark in connection with its
present store. Ms. Agoado also testified that since
entering into the agreement, Benmark has maintained the
quality of the goods and services it offers and that it has
“made samples of the products available to Carvel and has
permitted Carvel personnel to inspect the premises.” From
the copy of the assignment attached to the affidavit, the
terms are seen to include a non-exclusive, royalty-free,
license to Benmark to use the name for one store in Suffern
Opposition No. 92,814
10
and potentially one other store, quality control by opposer,
with Benmark to make available to opposer samples of the
products and to allow opposer to inspect the store(s), and
assurance by Benmark that the quality of its goods and
services would be “good.”
Opposer relies upon the declaration of Stephen
Gottlieb, a vice-president of opposer, as evidence of the
quality control which has been carried out by opposer under
this license back. Gottlieb describes his several personal
visits to the Benmark store from September 1993 to February
1995 to inspect samples of the products, and his assessment
of the products offered there, although not CARVEL products,
as being of a comparable quality to that required of
franchisees and of the layout of the store as conforming to
Carvel specifications, as a result of the store formerly
being a Carvel franchise. In his deposition, Gottlieb
specifically stated that he had visited the Benmark store
between a dozen and twenty times from September 1993 until
the taking of the deposition in August 1995.
Applicant strongly contends that the differences which
opposer allows to exist between use by its licensee of the
mark THE ICE CREAM BAKERY for its products and services in
the Benmark store and the strict conformance it requires of
its franchisees in their use of the ICE CREAM BAKERY mark in

5 In this affidavit she refers to a copy of a telephone directory
Opposition No. 92,814
11
connection with their products and services results in the
creation of two separate and distinct good wills for the
same designation and thus a forfeiture of any rights opposer
might claim in the mark. Applicant goes into a detailed
description of the many variations of the Benmark products
and services, store operating procedures and appearance, and
the like, from the standard Carvel franchise. Applicant
argues that opposer’s license back to Benmark is a misuse of
the designation THE ICE CREAM BAKERY which destroys any
distinctive significance as a mark. Applicant insists that
opposer’s “inability” to exercise any meaningful quality
control over Benmark demonstrates opposer’s abandonment of
any rights it might have claimed in the mark. Applicant
relies upon the affidavit of Mark Agoado, the CEO of Benmark
and person directly responsible for the day-to-day
activities of the only Benmark store, in which Mr. Agoado
states that prior to 1979 he was a Carvel franchisee at the
same location; that since 1979 THE ICE CREAM BAKERY store
has been operated at this location; that the mark was
assigned to opposer in September 1993 and since that time,
he has not seen a representative of opposer in the store,
although one could have been there without his knowledge;
that Benmark pays no royalties, has no copy of opposer’s
“Standard Operating Procedures Manual”, and purchases no

for 1985 showing a listing for the store.
Opposition No. 92,814
12
supplies from opposer; that Benmark is not licensed to use
the mark CARVEL; that the store need not conform to any
layout; and that he does not serve CARVEL products.
In response, opposer maintains that this is not a case
of naked licensing; that opposer has explicit control
provisions in the written license agreement; that Mr.
Gottlieb has personally inspected the store “between a dozen
and twenty times” in a two year period; that applicant has
introduced no evidence that the Benmark products are not of
comparable quality; and that the store is run by a former
Carvel franchisee who is aware of the quality expected by
opposer.
Opposer contends that it is not the law that all use by
licensees of a mark be identical, citing VISA, U.S.A., Inc.
v. Birmingham Trust Nat’l Bank, 696 F.2d 1371, 216 USPQ 649
(Fed. Cir. 1982), cert. denied, 464 US 826 (1983). Opposer
points out that the Benmark store is not a Carvel store and
thus should not be governed by a license identical to those
used for Carvel stores. Opposer maintains that the Benmark
“end products” meet opposer’s quality standards and that is
all that is important to the public.
As a preliminary matter, we note that whether or not
opposer had obtained the assignment from Benmark solely for
the purpose of “usurping” or overcoming any priority rights
of applicant, as alleged by applicant in its answer, is
Opposition No. 92,814
13
irrelevant. There is nothing improper in acquiring the mark
and goodwill of a company with earlier dates of use in order
to pre-date the priority date of a competitor. See J.
McCarthy, 2 McCarthy on Trademarks and Unfair Competition, §
16:5 (1998).
The issue is whether there was a valid assignment of
the mark THE ICE CREAM BAKERY and if so, whether opposer has
abandoned the rights so acquired, by a failure to exercise
sufficient quality control over use of the mark by Benmark
as a licensee.
In order to constitute a valid assignment of a
trademark, there must be a transfer, not of any tangible
assets, but of the goodwill to which the mark pertains. The
rationale behind the required transfer of the goodwill is to
ensure that consumers will not be misled from established
associations with the mark and that the mark continues to be
associated with the same or similar products after the
assignment. See VISA, U.S.A., Inc. (Visa) v. Birmingham
Trust Nat’l Bank, supra at 652. In the Visa case, the Alpha
Beta Company assigned to Visa the mark “Check-O.K.” which it
used in connection with a check approval service for its
grocery store customers, with a license back to Alpha Beta
to continue using the mark for its services. Visa began
using the mark for a check guaranty program in which banks
affiliated with Visa issued cards guaranteeing purchases
Opposition No. 92,814
14
made by check by cardholders at participating merchants.
The Court found that, although the two check approval
services were not identical, the basic check approval
service offered by the assignor was being offered by
assignee, albeit in a expanded manner. Since the services
were sufficiently similar to prevent consumers from being
misled on the basis of their prior associations with the
mark, the Court held that there had been a valid transfer of
both mark and the goodwill to which the mark pertained.
Turning to the question of whether the assignment was
vitiated in view of the license back given by Visa to Alpha
Beta, the Court stated that the principal requirement was
that the licensing agreement provide for sufficient control
by Visa over the quality of the services rendered by Alpha
Beta under the mark to protect the public from being misled.
Inasmuch as the license back included the provision that the
services rendered by Alpha Beta conform to standards set by
Visa and set certain minimum standards that must be met, the
Court found the license valid. The use by Alpha Beta as
licensee would inure to the benefit of Visa as licensor, and
thus there was no split of the goodwill from the mark.
Whether or not Visa had exercised this control was not
determinative in this case, since no specific evidence of
lack of control had been introduced.
Opposition No. 92,814
15
Here the assignment by Benmark of the mark THE ICE
CREAM BAKERY to opposer was for use in connection with the
identical goods and services, ice cream products and ice
cream retail stores. The license back to Benmark was for
the continuation of use of the mark in connection with its
existing store. There is even less disparity in the goods
and services in connection with which the mark is being used
by opposer and Benmark than in the Visa situation.
Moreover, the license back provisions specifically call for
control by opposer of the quality of the goods or services
in connection with which Benmark uses the mark. Under the
reasoning of the Visa case, the license back is valid, in
that adequate provision has been made to ensure that the
public will not be misled. Moreover, there has been no
split in the goodwill, even though Benmark as licensee may
be using the mark in connection with ice cream products
which are not identical in composition with those of
opposer.
The only real question is whether or not opposer
abandoned the rights it had obtained in the mark by
assignment by its failure to exercise the quality control
provided for in the license back to Benmark.
The Board made a thorough review of the amount of
quality control necessary to preclude a holding of
abandonment by a licensor in Woodstock’s Enterprises Inc.
Opposition No. 92,814
16
(California) v. Woodstock’s Enterprises Inc.(Oregon), 43
USPQ2d 1440 (TTAB 1997), aff’d, No. 97-1580 (Fed. Cir. Mar.
5, 1998). In order to avoid abandonment, a licensor need
not show that its quality control efforts are comprehensive
or extensive. Id. at 1446; Kentucky Fried Chicken Corp., v.
Diversified Packaging Corp., 549 F.2d 368, 193 USPQ 649
(5th Cir. 1978). Sufficient control may exist even without
any formal arrangement for policing the quality of the goods
sold or services rendered by the licensee under the mark.
Id. at 1446; Winnebago Industries Inc. v. Oliver & Winston
Inc., 207 USPQ 335 (TTAB 1980). The entire purpose behind
quality control is to prevent public deception that would
ensue from varying quality standards under the same mark.
See Taco Cabana International Inc., v. Two Pesos Inc., 19
USPQ2d 1253 (5th Cir. 1991), aff’d 505 U.S. 763, 23 USPQ2d
1081 (1993).
In Woodstock, although no formal written agreements or
system of quality control existed, the Board found that
there was the requisite quality consistency between the two
operations using the same mark for restaurants in Oregon and
California, respectively. As a result, there was no
deception of customers, whether going to the WOODSTOCK’S
restaurant in Oregon or one of the WOODSTOCK’S restaurants
in California.
Opposition No. 92,814
17
Here there is a formal arrangement for quality control
with provisions for sampling and inspection of the
licensee’s premises by the licensor. The licensee Benmark
has agreed that the quality of the goods sold and services
rendered under the mark THE ICE CREAM BAKERY will be “good.”
Furthermore, Mr. Gottlieb testified that he had actually
carried out several inspections. While Mark Agoado may not
have been aware of any such inspections, the affidavit of
Marilyn Agoado implies that such inspections took place.
We find these provisions adequate to ensure that the
quality of the ice cream products and retail store services
proffered by Benmark under the mark THE ICE CREAM BAKERY as
a licensee of opposer remained at a consistent level with
Benmark’s prior goods and services under the mark. Here, as
in the Visa case, the licensor may be using the same mark
for an expanded operation and in conjunction with its
primary CARVEL mark. The licensee Benmark, however, is not
using the CARVEL mark and is not operating a CARVEL store.
The only obligation of Benmark is to maintain the
consistency of quality with respect to goods and services
associated with THE ICE CREAM BAKERY mark. We find the
quality control provisions of the assignment agreement, and
the actual inspections by opposer, adequate to avoid any
claim of abandonment on the part of opposer of its rights to
the mark.
Opposition No. 92,814
18
Accordingly, we find that opposer is entitled to rely
upon the prior use by Benmark of the mark THE ICE CREAM
BAKERY, under the assignment of the mark to opposer, to
establish priority over applicant.
In view of this holding, we see no need to consider the
second basis for priority alleged by opposer, i.e., its own
prior adoption of the mark ICE CREAM BAKERY. We consider
the evidence of record sufficiently clear to establish that
opposer had made plans to “reposition” itself as the ICE
CREAM BAKERY by mid- or late November 1990 and had turned to
the marketing strategists of Trout & Ries for assistance in
this endeavor. From this point on, the record is filled
with conflicting testimony as to whether or not the
Brockmanns, while owners of a Carvel franchise, learned of
these plans either at the organizational meeting held at
Brockmann’s bar or the later hotel meeting of disgruntled
Carvel franchisees run by Robert Brockmann on November 28,
1990. It is clear only that the Brockmanns terminated their
franchise with opposer on January 31, 1991 and immediately
began operating under the name THE ICE CREAM BAKERY.
Opposer, on the other hand, did not begin actual use of its
mark until February or March of 1991. We decline to make
any findings, however, as to applicant’s knowledge of
opposer’s intentions or as to applicant’s motivation in
adopting the mark THE ICE CREAM BAKERY. There is no need
Opposition No. 92,814
19
for us to attempt to divine the actual facts from the
testimony before us.
Instead, on the basis of opposer’s priority based on
the assignment of rights from Benmark, and since the
likelihood of confusion is inevitable with the
contemporaneous use of virtually the same marks for the same
goods and services, applicant’s mark must be refused
registration under Section 2(d).
Decision: The opposition is sustained.
T. J. Quinn
P. T. Hairston
H. R. Wendel
Administrative Trademark Judges,
Trademark Trial and Appeal Board