Chester L. Krausev.Krause Publica-tions, Inc.

Trademark Trial and Appeal Board

Nov 18, 2005

No. 92041171 (T.T.A.B. Nov. 18, 2005)

Mailed: November 18, 2005
PTH

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

Chester L. Krause
v.
Krause Publications, Inc.
_____

Cancellation No. 92041171
_____

John A. Clifford and Andrew S. Ehard of Merchant & Gould
P.C. for Chester L. Krause.

Daniel T. Flaherty and Brian G. Gilpin of Godfrey & Kahn,
S.C. for Krause Publications, Inc.
_____

Before Seeherman, Hairston and Zervas, Administrative
Trademark Judges.

Opinion by Hairston, Administrative Trademark Judge:

A petition has been filed by Chester L. Krause to
cancel a registration issued to Krause Publications, Inc.
for the mark KRAUSE PUBLICATIONS (PUBLICATIONS is
disclaimed) for the following goods and services:
Magazines featuring information regarding all of
the following subject matters, antiques and
collectibles, collectible card games, interior
decorating, comics, antique automobiles and
military vehicles, business information for
professional crafters, arts and crafts, fantasy
sports, hunting, firearms, collectible toy cars,
trucks, farm equipment and other related vehicles,
THIS OPINION IS CITABLE AS
PRECEDENT OF THE TTAB
Cancellation No. 92041171
2
rock and roll memorabilia, stamp collecting, scrap
booking and memory crafts, business information
for the post-frame building construction industry,
rural construction, sports memorabilia,
numismatics, coins, and collectible paper money
(including stocks and bonds), toys, movies and
related memorabilia, knives, business management
for the sports card industry; trading cards on
knives, series of books and price guides relating
to antiques and other collectibles, coins and
firearms; calendars in Class 16;

Dissemination of advertising of others relating to
hobby and collectible items via a global computer
network; arranging and conducting trade shows
featuring knives, daggers, swords, and cutlery;
arranging and conducting trade shows featuring
coins; arranging and conducting trade shows
featuring sports cards, antiques and other
collectibles in Class 35;

Entertainment services in the nature of
competitions and awards in the field of cutlery in
Class 41; and

Conducting awards programs to recognize excellence
in designs and themes of newly minted coins in
Class 42.1

As grounds for cancellation, petitioner asserts that he
“has been active in publishing newspapers and magazines in
the fields of antiques and collectables, collectable cards
and card games, numismatics, coins, memorabilia, and matters
of interest to collectors of all kinds since at least 1952;”
that he “has also been active in

1 Registration No. 2,573,101, issued May 28, 2002; claiming
January 7, 1969 as the dates of first use as to the goods in
Class 16; May 12, 1981 as the dates of first use as to the
services in Class 35; June 1995 as the dates of first use as to
the services in Class 41; and the year 1983 as the dates of first
use as to the services in Class 42.
Cancellation No. 92041171
3
the field of disseminating advertising within the hobby,
collectable, and craft industry, hosting competitions,
conferences, assemblies, and the like in the field of
collectables, including collectible cutlery, and conducting
award and incentive programs concerning numismatics and
coins since at least the 1970’s;” that “at all times
Petitioner employed the surname KRAUSE in conducting his
business and hobby interests;” and that “Petitioner’s rights
in the name KRAUSE predate the first use dates claimed by
Registrant.”
Further, petitioner alleges that he “founded a
periodical called Numismatic News, first published on
October 13, 1952 and published continuously thereafter up to
the present day;” that petitioner “has been personally
active in this field for over 50 years, and is well known in
the field of magazines for collectors and hobbyists of all
kinds, and is well known in the field of dissemination of
advertising for others within this field of interest,
related entertainment services within this field, and
conducting award programs with respect to coins and
numismatics;” that petitioner “has made numerous appearances
at shows, conferences, conventions, and gatherings of
collectors and hobbyists for decades and has made 100’s of
such appearances beginning at least in the 1970s;” that
“from a time long prior to the dates of first use claimed in
Cancellation No. 92041171
4
Registration No. 2,573,101, the name KRAUSE has been well-
known and associated with Petitioner in the fields of
collecting and publishing;” and that “Petitioner’s personal
fame and reputation in these fields is substantial and
continuing.”
Also, petitioner alleges that he “was involved in
founding a company called Krause Publications which later
became Respondent Krause Publications, Inc.;” that
“Petitioner served as president, and in other capacities at
various times of Registrant;” that he “stepped down as
President of Registrant on December 31, 1990;” that he “is
no longer involved in the day-to-day operations of
Registrant, and is unable to control the quality and nature
of the goods and services Registrant produces under the
registered mark;” that “the name Krause in KRAUSE
PUBLICATIONS represents and identifies a particular living
individual, namely Petitioner, and Petitioner has not given
his written consent for the registration of that name in
Registration No. 2,573,101;” and that Registration No.
2,573,101 issued in violation of Section 2(c) of the
Trademark Act.2

2 Petitioner also pleaded a claim of likelihood of confusion.
However, petitioner presented no argument in support of such a
claim in either his main brief or reply brief and we therefore
deem plaintiff to have waived this pleaded ground.
Cancellation No. 92041171
5
Respondent, in its answer, admits that petitioner has
been active in the field of collecting coins, paper money,
and cars, but asserts that between the date respondent was
incorporated in 1964 and petitioner’s retirement as
president of respondent in 1990, petitioner’s only activity
in publishing newspapers and magazines and in disseminating
advertising in the fields of antiques and collectibles was
through respondent. Further, respondent admits that it did
not submit a written consent signed by petitioner when it
applied for registration, but denies that such consent is
necessary, including a specific denial that the mark KRAUSE
PUBLICATIONS identifies petitioner. Respondent denied the
remaining allegations of the petition to cancel.
As affirmative defenses, respondent asserts that “[i]n
1964, at the time that Krause Publications was incorporated,
Chester Krause transferred all of the going concern of the
business known as ‘Krause Publications,’ including the trade
name and trademark KRAUSE PUBLICATIONS, to the company;”
that “since the date of its incorporation, the Company has
operated as a separate entity and has continuously used the
trade name and trademark KRAUSE PUBLICATIONS in its
business;” that in 1988 the Company formed an employee stock
ownership plan (ESOP), and between 1988 and 1995 petitioner
sold all of his shares of stock in respondent to the ESOP;
that the shares of stock in respondent that petitioner had
Cancellation No. 92041171
6
previously given to family members as gifts were redeemed by
respondent between 1988 and 1998; that to finance the
purchase of shares of stock in respondent, respondent
borrowed millions of dollars, with loans secured by
respondent’s corporate assets, including all of its
trademarks; and that these corporate borrowings were done
with the full knowledge of petitioner. Further, respondent
asserts that “since the date that Krause Publications was
incorporated, and continuing for a number of years even
after the sale of all of Chester Krause’s stock in the
Company in 1995, Chester Krause did not object to the use of
the name KRAUSE PUBLICATIONS by the Company; it was only
when the Company’s stock was sold a second time--by the ESOP
to the current owner F&W Publications, Inc.--did Chester
Krause raise any objection to the continued use and
registration of the KRAUSE PUBLICATIONS name by the
Company.”
Further, respondent asserts that petitioner would be
unjustly enriched if he were permitted to convert to his own
use a valuable asset of the Company--the Company’s trade
name and trademark KRAUSE PUBLICATIONS--following the sale
of his stock in Krause Publications to the ESOP; that
petitioner breached his fiduciary duty as an officer and
director of the Company when he sold his shares in the
Company to the ESOP without disclosing his intent to sell
Cancellation No. 92041171
7
less than his entire interest in the business, and therefore
he is precluded from obtaining the relief he seeks due to
unclean hands; and that petitioner acquiesced in Krause
Publications’ use and registration of the name KRAUSE
PUBLICATIONS, has waived any objection thereto, and is
estopped from objecting to such use and registration.
The record consists of the pleadings, and the file of
the involved registration. Petitioner Chester Krause has
submitted his testimony deposition (with exhibits) and the
testimony depositions (with exhibits) of Clifford Mishler,
former chairman of the board and president of respondent;
Patricia Klug, former employee of respondent; Kenneth
Nimocks, president of the Wisconsin chapter of the American
Numismatics Association; Edward Rochette, former executive
director of the American Numismatics Association; Barry J.
Meguiar, president and CEO of Meguiar’s Incorporated; and
Andrew S. Ehard, associate attorney at petitioner’s law
firm. In addition, petitioner submitted, under notice of
reliance, respondent’s answers to petitioner’s
interrogatories and requests for admissions; and the
discovery depositions of Roger Case, former president of
respondent, and Arlyn Sieber, assistant to the president of
respondent.
Respondent submitted the testimony deposition that it
took of petitioner Chester L. Krause; and notices of
Cancellation No. 92041171
8
reliance on petitioner’s answers to respondent’s discovery
requests, the discovery deposition (with exhibits) of
petitioner, and copies of registrations owned by respondent.
Pursuant to the parties’ stipulation, respondent submitted
portions of the discovery deposition (with exhibits) of
Bruce Meagher, assistant secretary of respondent;
correspondence exchanged between the parties; purchase and
sale agreements; corporate resolutions; financing documents;
and articles from printed publications.
Briefs have been filed, but an oral hearing was not
requested.
Before turning to the merits of the case, we note that
respondent interposed numerous objections during the taking
of petitioner’s testimony depositions in this case and asks
that we deem inadmissible all testimony to which it
objected. The Board does not ordinarily strike testimony
taken in accordance with the applicable rules on the basis
of substantive objections; rather, such objections are
considered by the Board in its evaluation of the probative
value of the testimony at final hearing. TBMP Section
707.03(c). In this case, we have not stricken any testimony
offered by petitioner. But, in reading petitioner’s
evidence, we have considered the trial testimony in light of
respondent’s objections. Where we have relied on testimony
to which respondent objected, it should be apparent to the
Cancellation No. 92041171
9
parties that we have deemed the material both admissible and
probative to the extent indicated in the opinion.
Petitioner, testifying in his own behalf, stated that
in 1952 he started a monthly publication in the field of
coins and coin collecting known as “Numismatic News.” In
1960 petitioner purchased the publication “Coin Press” and
changed the name to “Coins Magazine.” During this time,
petitioner operated his publishing business as a sole
proprietorship under the name “Krause Publications,” with
the trade name intended to refer to petitioner as the sole
owner of both publications. In 1964 petitioner incorporated
his publishing business in Wisconsin under the name “Krause
Publications, Inc.” This company is now the respondent in
the current proceeding. In 1988 petitioner, as president of
respondent corporation, established an Employee Stock
Ownership Plan (ESOP) whereby employees are allowed to
purchase shares in the company. The record shows that
respondent corporation has grown into a major publisher of
hobby magazines, newspapers and price guides with over
650,000 subscribers and revenues in excess of $50 million a
year. For nearly fifty years, petitioner was associated
with respondent as its president and/or chairman of the
board and subsequently as an employee. In 2002 petitioner
was terminated as an employee of respondent.
Cancellation No. 92041171
10
Petitioner is an avid coin collector and estimates his
collection at approximately 50,000 pieces. Since 1972
petitioner has coauthored “The Standard Catalog of World
Coins.” This catalog is considered the worldwide authority
for coin collectors. The “Standard Catalog of United States
Paper Money” also bears petitioner’s name, and this catalog
has been published annually since the early 1980s.
Petitioner testified that he “[has] all the illustrative
material in that catalog and devised the method of
cataloging it in the right order...” (Krause 6/16/04
testimony dep., p. 187.) In the early 1980s petitioner
coauthored a publication titled “Guidebook of Franklin Mint
Issues,” which has since been discontinued.
Petitioner testified that he has lectured at “probably
a dozen meetings” of the American Numismatic Association
over the years, as well as at a number of other clubs and
associations devoted to numismatics. (Krause 6/16/04 dep.,
p. 69). For example, the record shows that petitioner
lectured at a meeting of the Red Rose Coin Club of
Lancaster, Pennsylvania on October 4, 1971; at a meeting of
the Gateway Coin Club of San Antonio, Texas on October 13,
1984; at a joint meeting of the Society of Paper Money
Collectors and the International Bank Note Society on August
8, 1986; and at the 1986 American Numismatic Association
annual convention.
Cancellation No. 92041171
11
Petitioner was the recipient of the American
Numismatics Association’s (ANA) highest honor, the Farran
Zerbe Award, in 1977; and the ANA’s Numismatist of the Year
Award in 1999. Additionally, petitioner has been enshrined
in the ANA’s Hall of Fame. Ed Rochette, former executive
director of ANA, testified that “my personal opinion is that
Chet Krause is the most recognizable living person involved
in the hobby today,” (Rochette dep., pp. 22-23), and that
“the hobby today is because of Chet Krause and no other
person.” (Rochette dep., p. 74).
In 1961, President Kennedy appointed petitioner to the
United States Assay Commission, whose purpose was to
determine whether the coins of the United States were issued
in accordance with legal requirements for weight, fineness
and count.
Petitioner also is an avid collector of vehicles and
related items. His collection was the subject of a film
made by the Society of Automotive Historians entitled “A
Walk Through Automotive History With Chet Krause.” In 2002
the Society bestowed on petitioner its “Friend of Automotive
History Award.” Petitioner received the first annual
“Collector Car Hobby’s Person of the Year Award” in 1995 by
Meguiar’s Incorporated. Barry Meguiar, CEO of Meguiar’s
Incorporated, testified that “[t]he purpose of the award is
to honor people who have made, personally made an impact on
Cancellation No. 92041171
12
the Car Hobby and helped take it to another level, helped to
expand the awareness of the hobby, to attract other people
in the hobby.” (Meguiar dep., p. 22).
Petitioner testified that he is a founder of the Iola
(Wisconsin) Car Show and Swap Meet, an event that attracts
more than 130,000 collectors and automotive historians
annually. In the summer of 1994 petitioner auctioned off a
large portion of his vehicles and related items at an event
that was attended by more than 3,000 collectors.
Petitioner’s contributions to respondent Krause
Publications have been highlighted in three books published
in connection with respondent’s forty, forty-five and fifty
year anniversaries. The books are titled, respectively,
“The History of Krause Publications – Just Plain Chet”; “A
Building Is Only As Good As Its Foundation – Krause
Publications’ Traditions and Philosophies at 45 Years;” and
“Pioneer Publisher – The Story of Krause Publications’ First
50 Years.”
At a 1995 ceremony honoring petitioner, respondent’s
then-president Cliff Mishler stated that “[petitioner will]
always constitute the real embodiment of Krause
Publications, regardless of your ownership or lack thereof,
your business role, or your physical presence in the
business… it should never and can never be any other way.”
(Petitioner’s exhibit 55; Mishler dep., pp. 17-19).
Cancellation No. 92041171
13
In 2002 respondent placed in its various publications
print advertisements celebrating its 50th anniversary. The
advertisements include a picture of petitioner standing atop
a tank he owned at the time with the headline: “When the
boss owns the tank, you tend to work harder.” The
remainder of the advertisement reads:
In 1952, Chet Krause created Numismatic News from
a desk in his family’s home in rural Iola,
Wisconsin. Today, Krause Publications is the
world’s largest hobby and collectibles publisher.
While his enterprise has grown beyond his wildest
dreams, Chet is still the same dedicated collector
he’s always been. Help Chet and everyone at
Krause Publications celebrate an anniversary that
is truly golden.

(Petitioner’s exhibit 35).

Petitioner also is a philanthropist, having made
substantial gifts to the Marshfield Clinic Laird Center and
the Rawhide Boys Ranch, both of which are located in
Wisconsin. Also, petitioner purchased snow-grooming
equipment for the cross-country ski trails in his hometown
of Iola, Wisconsin. The town of Iola has bestowed on
petitioner the 2002 Outstanding Citizen Award, has held a
“Chet Krause Day”, and renamed a street in his honor. In
1990 the U.S. Small Business Administration named petitioner
Wisconsin Small Business Person of the Year.
Petitioner’s attorney testified that he conducted an
Internet search using the Google search engine for the name
“Chester L. Krause” that returned approximately 17,000
Cancellation No. 92041171
14
references. A representative sample of the results of the
search was made of record and it shows that the majority of
the references are to books that petitioner has authored.
Also, petitioner’s attorney conducted a search of the “Lexis
ALLNEWS” database for the name Chester L. Krause that
returned 64 articles about petitioner. Petitioner made of
record each of the articles, in its entirety. The articles
are taken from a variety of newspapers, ranging from “The
Post-Crescent” (Appleton, Wisconsin) to the “Chicago
Tribune” and “New York Times.” The vast majority of the
articles relate to coin and paper money collecting and
mention petitioner; others relate to petitioner’s
philanthropic activities and his association with respondent
Krause Publications.
It is petitioner’s position that he has achieved renown
in the multiple fields of numismatics, car collecting,
business, publishing and philanthropy; and that he is so
well known by the public in general that they would assume a
connection between petitioner and the mark KRAUSE
PUBLICATIONS. Alternatively, petitioner contends that he is
publicly connected with the business in which the mark
KRAUSE PUBLICATIONS is used such that an association would
be presumed between petitioner and the mark KRAUSE
PUBLICATIONS.
Cancellation No. 92041171
15
Respondent argues that petitioner has not demonstrated
that he is well known to the public in general or that he is
publicly connected with the fields in which the mark KRAUSE
PUBLICATIONS is used. According to respondent, petitioner
is at most known by a limited number of persons as a
collector of coins and cars. Respondent argues that KRAUSE
PUBLICATIONS refers to respondent; that through written
agreements and actions, petitioner has given his implied
consent to register the mark; and that petitioner has waived
any rights he may have had in the mark KRAUSE PUBLICATIONS
in that petitioner has acquiesced in respondent’s use and
registration of the mark.
Section 2(c) of the Trademark Act, 15 U.S.C. §1052(c),
prohibits registration of a mark that consists of or
comprises a name, portrait, or signature identifying a
particular living individual except by his written consent.
The provisions of Section 2(c) are applicable to a “name …
identifying a particular living individual,” be it a full
name, a nickname or a surname, so long as the name points to
a particular living person. See In re Sauer, 27 USPQ2d 1073
(TTAB 1993), aff’d, 26 F.3d 140, 32 USPQ2d 1479 (Fed. Cir.
1994), and the cases cited therein. Thus, the mark KRAUSE
PUBLICATIONS, although it includes only the surname of
petitioner, would fall within the provisions of Section 2(c)
if petitioner establishes that KRAUSE, as used on or in
Cancellation No. 92041171
16
connection with the goods and services set forth in the
involved registration, points uniquely to him “as a
particular living individual.”
A name is considered to “identify” a particular living
individual for purposes of Section 2(c) only if the
“individual bearing the name in question will be associated
with the mark as used on the goods [or services], either
because the person is so well known that the public would
reasonably assume the connection, or because the individual
is publicly connected with the business in which the mark is
used.” Martin v. Carter Hawley Hale Stores, Inc., 206 USPQ
931, 933 (TTAB 1979). See also, In re Sauer, supra; and
Ross v. Analytical Technology Inc., 51 USPQ2d 1269 (TTAB
1999).
In the Martin case, registration of the mark NEIL
MARTIN was sought for men’s shirts. Opposer Neil Martin,
although well known in his own professional and social
circles, failed to establish that he was so famous as to be
recognized by the public in general or that “he is or ever
was publicly connected or associated with the clothing
field.” Id. at 933. Thus, the Board found that opposer’s
name did not fall within the provisions of Section 2(c).
The opposite conclusion was reached in the Sauer case,
where the mark sought to be registered was BO BALL for a
sports ball. The Board found the name BO to be the
Cancellation No. 92041171
17
recognized nickname of Bo Jackson, a professional football
and baseball star, and further found that he was so well
known by the public in general that use of the name BO in
connection with a sports ball would lead to the assumption
that he was in some way associated with the goods.
In the Ross case, where the applicant sought to
register the mark ROSS for electrochemical analysis
equipment, the evidence was found sufficient to establish a
Section 2(c) claim. The Board found that opposer, Dr. James
W. Ross, Jr., was publicly connected with the
electrochemical analysis equipment field and that use of the
name ROSS in connection with equipment in the field would
lead to the assumption that Dr. Ross was in some way
associated with the goods. The evidence showed that the
name ROSS was intentionally selected by the applicant to be
used as a mark for electrodes because of opposer’s
development of the product, and the association of opposer
with the product was acknowledged by applicant.
In the present case, the record fails to establish that
petitioner is so well known by the public in general that a
connection between petitioner and the mark KRAUSE
PUBLICATIONS would be presumed. Petitioner has not
demonstrated that his renown in the fields of business,
numismatics, car collecting, and publishing is at a level
anywhere near that of Bo Jackson in the Sauer case. The
Cancellation No. 92041171
18
evidence establishing the fame of Bo Jackson consisted of Bo
Jackson baseball and football cards; advertisements for Bo
Jackson figurines and toys; a copy of a tag from a Bo
Jackson model baseball glove; a copy of a Cheerios cereal
box referring to Bo Jackson; and copies of magazines with
articles about and cover references to Bo Jackson. These
are the kinds of items that are purchased by a substantial
portion of the public. Also, it is common knowledge that
the general public is exposed to professional athletes
through television and radio broadcasts of games and other
sports programming. In the present case, the fields of
numismatics, car collecting, and publishing of hobby
magazines are niche markets and there is insufficient
evidence to establish that petitioner’s activities in these
fields are well known to the general public. Further,
petitioner’s philanthropic activities clearly are more local
than national in scope, and it is unlikely that the public
in general knows of petitioner as a result of these
activities.
Thus, on the record before us, we find that petitioner
has not demonstrated that he is so well known by the public
in general that persons would assume a connection between
petitioner and the mark KRAUSE PUBLICATIONS.
However, we find that there is sufficient evidence to
establish that petitioner is publicly connected, at the very
Cancellation No. 92041171
19
least, with the fields of numismatics, car collecting, and
publishing activities related thereto, such that a
connection between petitioner and the mark KRAUSE
PUBLICATIONS would be presumed by people who have an
interest in these fields. Moreover, since respondent’s
registration covers, inter alia, magazines featuring antique
automobiles and numismatics, conducting trade shows
featuring coins, and conducting award programs regarding
coins, this connection would be assumed by the consumers of
respondent’s goods and services as identified in Classes 16,
35 and 42.
The record shows that petitioner started his publishing
business as a sole proprietorship under the name “Krause
Publications,” with the trade name intended to refer to
petitioner. Petitioner was associated with respondent as
its president and/or chairman of the board for nearly fifty
years. Additionally, respondent itself has acknowledged
petitioner’s contributions in three books highlighting such
contributions as well as advertisements acknowledging such
contributions in respondent’s various publications.
Also, petitioner has coauthored at least three
publications in the field of numismatics, including “The
Standard Catalog of World Coins,” which is considered the
worldwide reference authority for coin collectors. Further,
petitioner has lectured across the country on the subject of
Cancellation No. 92041171
20
numismatics and is the recipient of awards from national and
local organizations in recognition of his contributions to
the field.
Insofar as the field of car collecting is concerned,
petitioner is the recipient of the 1995 “Collector Car
Hobby’s Person of the Year Award” in recognition of his
contributions to this field. His extensive car collection
was the subject of a film by the Society of Automotive
Historians and he is a founder of the Iola Car Show and Swap
Meet.
Additionally, it is significant that respondent
produced no witnesses or other evidence to show that the
name “Krause” appearing in KRAUSE PUBLICATIONS INC. refers
to someone other than petitioner in the field of
numismatics, car collecting and publishing activities
related thereto. In Reed v. Bakers Engineering & Equipment
Co., 100 USPQ 196, 199-200 (Exam’r in Chief 1954), Paul Reed
filed a petition to cancel the registration of the mark REED
REEL OVENS for baker’s ovens. The evidence showed that the
name “Reed” in the mark REED REEL OVENS was selected because
of its reference to petitioner Paul Reed, the engineer who
designed and built the ovens, and that Mr. Reed was
initially active in the partnership that sold the ovens.
The Examiner in Chief stated that:
It seems to me that “Reed” on the ovens also
identified petitioner to the customers at least
Cancellation No. 92041171
21
during the first several years of the business in
view of the personal contact of the petitioner
with the customers in installing and servicing the
ovens. Under these circumstances, it seems to me
that the burden of proof is upon the respondent to
show that Reed does not refer to and identify
petitioner . . . and respondent produced no
witnesses to show that the name Reed appearing in
‘Reed Reel Ovens’ does not refer to and identify
petitioner in the particular trade.
Id at 199-200.

In the present case, the record shows that petitioner
started his publishing business as a sole proprietorship
under the name “Krause Publications,” with the trade name
intended to refer to petitioner. Further, the record shows
that petitioner was associated with respondent as its
president and/or chairman of the board for nearly fifty
years. As in Reed, the respondent here has not rebutted the
showing that, because of petitioner’s activities, purchasers
would make an association between petitioner and the mark
KRAUSE PUBLICATIONS.
In view of the foregoing, we find that petitioner has
demonstrated that he is publicly connected with at least
some of the goods and services identified in respondent’s
registration in Classes 16 (e.g., magazines featuring
information regarding antique automobiles, numismatics and
coins), 35 (e.g., arranging and conducting trade shows
featuring coins) and 42 (conducting awards programs to
recognize excellence in designs and themes of newly minted
coins). To prevail under Section 2(c) against a class in
Cancellation No. 92041171
22
respondent’s registration, petitioner is not required to
demonstrate that he is publicly connected with all of the
goods and services listed in the class. Rather, it is
sufficient that petitioner has shown that he is publicly
connected with at least some of the goods and services in
that class. Cf., In re Analog Devices Inc., 6 USPQ2d 1808,
1810 (TTAB 1988), aff’d without pub. op., 871 F.2d 1097, 10
USPQ2d 1879 (Fed. Cir. 1989) [“… it is a well settled legal
principle that where a mark may be merely descriptive of one
or more items of goods in an application but may be
suggestive or even arbitrary as applied to other items,
registration is properly refused if the subject matter for
registration is descriptive of any of the goods for which
registration is sought.”]; and Tuxedo Monopoly, Inc. v.
General Mills Fun Group, 648 F.2d 1335, 209 USPQ 986, 988
(CCPA 1981) [“[A] likelihood of confusion must be found if
the public, being familiar with appellee’s use of MONOPOLY
for board games and seeing the mark on any item that comes
within the description of goods set forth by appellant in
its application, is likely to believe that appellee has
expanded its use of the mark, directly, or under a license,
for such item.”][emphasis in original].
Petitioner has not demonstrated, however, that he is
publicly connected with the services in Class 41, namely,
“entertainment services in the nature of competitions and
Cancellation No. 92041171
23
awards in the field of cutlery.” There is no evidence that
petitioner has authored or lectured in the field or that he
has made significant contributions to the field. In this
regard, we note that petitioner has not argued in his main
brief or reply brief that he is well known in the field of
cutlery. Also, we note the following testimony of
petitioner during his discovery deposition:
Q. Have you ever had personal involvement in the area of
competitions or awards involving knives or cutlery?
A. No, I haven’t.

(Krause discovery dep., pp. 159-160).

We turn next to respondent’s arguments that petitioner
implicitly consented to the registration of KRAUSE
PUBLICATIONS. In this regard, respondent argues that
petitioner gave his implicit consent to register when
petitioner incorporated his business; when petitioner
subsequently sold his stock in respondent to set up an
Employee Stock Option Plan (ESOP); and when petitioner, as
president and chairman of the board of respondent, pledged
respondent’s assets, including trademarks and trade names,
to finance expansion and acquisitions.
In support of its position that petitioner gave his
implicit consent when petitioner incorporated the business
and subsequently sold stock to set up the ESOP, respondent
relies on Dovenmuehle v. Gilldorn Mortgage Midwest Corp.,
871 F.2d 697, 10 USPQ2d 1550 (7th Cir. 1989) and In re D.B.
Cancellation No. 92041171
24
Kaplan, 225 USPQ 342 (TTAB 1985). Citing Dovenmuehle v.
Gilldorn, respondent argues that “implied consent is
considered sufficient in the context of a sale of a business
without a reservation of rights because the intent to
transfer goodwill and trademarks to the buyer is presumed
when a business is sold as a going concern, even if goodwill
and trademarks are not
specifically mentioned in the contract of sale.” (Brief, p.
9). In the Dovenmuehle case, plaintiffs claimed defendants’
use of a trade name violated §43 of the Lanham Act. The
issues on appeal were “first, whether the district court
correctly held that plaintiffs lacked standing under §43(a)
of the Lanham Act to challenge defendants’ use of the trade
name ‘Dovenmuehle,’ and second, whether the district court
could properly award defendants the cost of court reporter
charges for deposition transcript charges under 28 U.S.C.
§1924.” Id. at 1551. The case did not involve a Section
2(c) claim and clearly is not authority for respondent’s
contention that petitioner gave his implied consent to
register on the facts of the present case.
In Kaplan, the Board found consent to the use and
registration of the mark D.B. KAPLAN’S DELICATESSEN implicit
in the terms of a “buy out” agreement. Donald Kaplan, one
of the original shareholders, officers and directors of the
applicant corporation, entered into a “buy out” agreement
Cancellation No. 92041171
25
that specifically provided that the mark D.B. KAPLAN’S
DELICATESSEN and any mark confusingly similar thereto was
the property of D.B. Kaplan’s Delicatessen, Inc. and further
specifically provided that Donald Kaplan could not use D. B.
KAPLAN’S DELICATESSEN in any subsequent business venture.
The Board held that the record supported a finding that
Donald Kaplan consented to applicant’s use and registration
of the mark D.B. KAPLAN’S DELICATESSEN in that “Kaplan has
clearly relinquished to applicant corporation all rights in
the mark ‘D.B. Kaplan Delicatessen’ which comprises his name
and has agreed that he cannot use it in any subsequent
business. We think that these provisions are beyond a mere
‘consent to use’ situation and that a reasonable reading of
this provision clearly implies that consent to applicant’s
registration of the mark was contemplated.” Id. at 344.
In the present case, the incorporation of petitioner’s
business is not akin to the “buy out” agreement in Kaplan.
There is no evidence that petitioner expressly stated that
the mark KRAUSE PUBLICATIONS is the property of respondent.
Neither did petitioner agree to refrain from use of the name
Krause in any subsequent business. Petitioner’s mere
incorporation of his business does not constitute his
written consent to that business’s (i.e., respondent’s)
registration of the mark KRAUSE PUBLICATIONS.
Cancellation No. 92041171
26
In In re New John Nissen Mannequins, 227 USPQ 669 (TTAB
1985), the Board considered whether the appearance of one’s
name in a deed of incorporation constituted the required
consent under Section 2(c). The applicant therein, John
Nissen Mannequins, appealed from a final refusal to register
the mark JOHN NISSEN MANNEQUINS under Section 2(c) of the
Trademark Act because the mark consisted of a name
identifying a particular living individual, namely John
Nissen, whose written consent had not been made of record.
John Nissen was a founder of the applicant’s predecessor,
John Nissen Mannequins. Applicant argued that John Nissen
provided his written consent to register the subject mark
because John Nissen’s name appeared in the deed of
incorporation of applicant’s predecessor corporation and
because applicant’s use and registration of the mark in
other countries showed implied consent. The Board held that
neither the appearance of Mr. Nissen’s name in the deed of
incorporation of applicant’s predecessor nor any consent
implied from the issuance to applicant and applicant’s
predecessor of foreign registrations incorporating the name
John Nissen constituted the written consent required by
Section 2(c). In the present case, too, the appearance of
petitioner’s name in documents incorporating his business
does not constitute the written consent required by Section
2(c).
Cancellation No. 92041171
27
There is a distinction between the right to use a name
and the right to register one. A person may give express or
implied consent to the use of his name, but that does not
necessarily mean that he consents to the registration of it.
Thus, even if we were to find that petitioner had impliedly
consented to respondent’s use of his name in connection with
the business as it was conducted at the time petitioner was
involved with respondent, such consent would not constitute
a consent to register petitioner’s name as a trademark.3
Respondent has offered no legal support for its
contention that petitioner gave his implied consent to
register KRAUSE PUBLICATIONS when, as president and chairman
of the board of respondent, he pledged assets of respondent,
including trademarks and trade names, to finance expansion
and acquisitions. Respondent has pointed to no provisions
(and we have found none) in the financing
documents made of record where petitioner stated that the
mark KRAUSE PUBLICATIONS is the property of respondent. In
short, the circumstances in this case are readily
distinguishable from those in Kaplan.
Lastly, respondent argues that given its decades long
use of the mark KRAUSE PUBLICATIONS and petitioner’s silent

3 On the other hand, a consent to register a name as a trademark,
even without a specific reference to a consent to use, would
impliedly constitute a consent to use the name, since a federal
registration may not be obtained (with an exception not relevant
here) or maintained without use.
Cancellation No. 92041171
28
acquiescence in that use, petitioner is estopped from
challenging respondent’s registration.
As the Board noted in Ross, supra at 1276, “in view of
the personal nature of [a Section 2(c) claim], we see no
overriding public policy or interest which would preclude
the assertion of equitable defenses against [such a] claim.”
We find, however, that respondent herein has no right to
raise the equitable defense of acquiescence on the facts of
this case, which involves respondent’s right to register the
mark KRAUSE PUBLICATIONS, rather than its right to use such
mark.
A predecessor to our primary reviewing Court, the Court
of Customs and Patent Appeals, addressed the distinction
between the right to register and the right to use in terms
of acquiescence in James Burrough, Ltd. v. La Joie, 462 F.2d
570, 174 USPQ 329 (CCPA 1972). There, the applicants began
use of the mark SIGN OF THE BEEFEATER for a restaurant in
1957. In 1959 and 1960 the opposer sent letters to
applicants requesting that they desist from using
the term BEEFEATER for their restaurant. The applicants
ignored the letters and indeed expanded their business to at
least six restaurants. Opposer took no further action
against applicants until 1967. The Board found that opposer
had acquiesced in the applicants’ use of their mark. On
Cancellation No. 92041171
29
appeal, the court rejected applicant’s acquiescence defense,
stating:
We have no difficulty in concluding that the board
erred in sustaining the applicant’s equitable
defense in this case. In Salem Commodities, Inc.
v. Miami Margarine Co., 44 CCPA 932, 244 F.2d 729,
114 USPQ 124 (1957), the appellee, applicant for
trademark registration, urged that appellant, the
opposer, was estopped because the applicant’s use
of the mark was known to opposer for a long period
of time before any action was taken to stop that
use. The board agreed that the appellant had a
good §19 defense to the opposition. While this
court proceeded on the basis that appellant’s
factual assertions were true, it nevertheless
reversed the board’s decision and held that:

Appellant was clearly under no duty to attack
appellee’s right to use the mark if it did not
choose to do so, on penalty of being deprived of
the right to oppose an application to register.
It could not take the latter action, of course,
until after appellee applied for registration and
the application was published for the purpose of
opposition.

Appellant cannot properly be charged with
acquiescence in appellee’s right to registration
until appellant became aware that such a right had
been asserted by appellee. [Emphasis in
original.]

The court in Salem recognized a distinction
between the right to use a mark and the statutory
right to register which is of significance when
§ 19 is sought to be relied upon in defense to an
opposition. Thus, under § 7(b) of the Lanham
Act, 15 U.S.C. 1057(b), registration is more than
evidence of the right to use. It is prima facie
evidence “of the validity of the registration,
registrant’s ownership of the mark, and of
registrant’s exclusive right to use the mark in
commerce in connection with the goods or services
specified in the certificate, subject to any
conditions and limitations stated therein.”
[Emphasis in original.] Moreover, in the present
case, appellant may have acquiesced only in the
use of the words SIGN OF THE BEEFEATER in
Cancellation No. 92041171
30
conjunction with a picture to identify a
restaurant in which no liquor is served and which
closes relatively early in the evening whereas
registration is sought on the words alone for
“restaurant services” broadly. Applicants’
equitable standing in an action by this opposer
to enjoin their actual use of SIGN OF THE
BEEFEATER, if ever brought, would be one matter.
However, in this opposition, which is aimed only
at preventing registration of the specified mark,
a broader and somewhat different goal than
enjoining the actual use of the mark, and which
is timely brought only after the applicants seek
registration, the applicants have not established
this opposer’s acquiescence in this registration.

It is clear, therefore, that the equitable defense of
acquiescence in an opposition or cancellation proceeding
does not begin to run until the mark is published for
opposition. See also National Cable Television Association,
Inc. v. American Cinema Editors Inc., 937 F.2d 1572, 19
USPQ2d 1424 (Fed. Cir. 1991) [laches runs from the time from
which action could be taken against the trademark rights
inhering from registration].
Petitioner brought this cancellation proceeding on
November 22, 2002, approximately eight months after the
publication date of the underlying application and six
months after issuance of the registration. This relatively
short period cannot be viewed as an unreasonable delay.
Thus, we find that respondent has not demonstrated that
petitioner’s Section 2 (c) claim is barred by acquiescence.
In sum, we find that petitioner has established that,
with respect to Classes 16, 35 and 42 of the subject
Cancellation No. 92041171
31
registration, the registered mark consists of the name of a
particular living individual, namely Chester Krause, and
that this name has been registered without his written
consent.
Decision: The petition to cancel Registration No.
2,573,101 in Classes 16, 35 and 42 is accordingly granted,
and the petition to cancel the registration in Class 41 is
dismissed. Classes 16, 35 and 42 will be cancelled from the
registration in due course.