Lee Drannan Smithsonv.Emsa-Werke Wulf GmbH & Co.

Trademark Trial and Appeal Board

Aug 31, 1999

No. 92024163 (T.T.A.B. Aug. 31, 1999)

Paper No. 22
BAC
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB AUG. 31,99
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
_____
Trademark Trial and Appeal Board
_____
Lee Drannan Smithson, dba Drannan’s and Drannan Co.
v.
Emsa-Werke Wulf GmbH & Co.
_____
Cancellation No. 24,163
_____
Lee Drannan Smithson, dba Drannan’s and Drannan Co., pro se.
Laurence R. Brown of Laurence Brown & Assoc., P.C. for Emsa-
Werke Wulf GmbH & Co.
_____
Before Cissel, Hairston and Chapman, Administrative
Trademark Judges.
Opinion by Chapman, Administrative Trademark Judge:
Lee Drannan Smithson, dba Drannan’s and Drannan Co.,
has filed a petition to cancel Registration No. 1,816,920
for the mark TONGULA for “food tongs and spatulas.”1
As grounds for cancellation petitioner essentially
alleges that since October 1, 1975 he has continuously used

1 Reg. No. 1,816,920 issued January 18, 1994. The claimed dates
of first use and first use in commerce are May 3, 1992.
Cancellation No. 24163
2
the mark FORKULA for food handling tongs; that his trademark
application Serial No. 74/487,4672 was refused registration
based on Registration No. 1,816,920; and that respondent’s
mark TONGULA, when used on its goods, so resembles
petitioner’s previously used mark FORKULA as to be likely to
cause confusion, mistake or deception.
Respondent, in its answer, denied the salient
allegations of the petition to cancel. Respondent also
raised certain affirmative defenses, including that “[u]pon
information and belief Petitioner has abandoned the mark
‘FORKULA.’”
The record consists of the pleadings3; the file of the
involved registration4; petitioner’s notice of reliance on
five documents; and respondent’s notice of reliance on four
documents. Petitioner offered no rebuttal evidence.
Petitioner did not file a brief on the case, but respondent

2 Appl. Ser. No. 74/487,467, filed February 7, 1994, with claimed
dates of first use and first use in commerce of October 1, 1975.
3 Statements made in pleadings cannot be considered as evidence
in behalf of the party making them; such statements must be
established by competent evidence during the time for taking
testimony. See Kellogg Co. v. Pack’Em Enterprises Inc., 14
USPQ2d 1545 (TTAB 1990), aff’d, 951 F.2d 330, 21 USPQ2d 1142
(Fed. Cir. 1991); and Times Mirror Magazines, Inc. v. Sutcliff,
205 USPQ 656 (TTAB 1979). See also, TBMP §706.01.
4 Informationally, the parties are advised that the file of the
involved registration is of record to the extent provided in
Trademark Rule 2.122(b)(1). However, subpart (b)(2) of that rule
specifically provides, inter alia, that the claimed dates of use
in the registration are not evidence on behalf of the registrant,
and that said dates must be established by competent evidence at
trial.
Cancellation No. 24163
3
filed a brief, and petitioner then filed a reply brief.5 An
oral hearing was not requested by either party.
Preliminarily, we will deal with a procedural matter.
Respondent moved to strike portions of petitioner’s reply
brief6, and the Board deferred a decision on the motion
until final decision on the case. Respondent asserts that
the involved portions of petitioner’s reply brief were
directed to subject matter which should have been raised in
an opening brief. Petitioner contends that the entire reply
brief is in direct rebuttal of matters in respondent’s
brief.
Having read the two briefs before us, we find that the
objected-to portions of petitioner’s reply brief are
appropriate. We should point out that briefs on the case
are not evidence or testimony, rather, they are written
summaries of the respective positions of the parties, and
thus generally serve as tools or aids to the Board.

5 Factual statements made in briefs on the case can be given no
consideration unless they are supported by evidence properly
introduced at trial. See BL Cars Ltd. v. Puma Industria de
Veiculos S/A, 221 USPQ 1018 (TTAB 1983); and Abbott Laboratories
v. TAC Industries, Inc., 217 USPQ 819 (TTAB 1981). See also,
TBMP §706.02.
6 We note that in a section of petitioner’s reply brief not
objected to by respondent, petitioner referred to a “Bon Appetit
Research Report” (supposedly Exhibit 1 to his reply brief)
relating to circulation numbers for Bon Appetit and Gourmet
magazines. There was no exhibit attached to petitioner’s reply
brief. Even if it had been attached, it could not be considered
because it was untimely and was not properly made of record
during trial. See TBMP §705.02.
Cancellation No. 24163
4
Respondent’s motion to strike portions of petitioner’s reply
brief is denied.7
Petitioner bears the burden of proof in this case, and
must establish his claims by a preponderance of the
evidence. See Cerveceria Centroamericana, S.A. v.
Cerveceria India Inc., 892 F.2d 1021, 13 USPQ2d 1307 (Fed.
Cir. 1989).
As pointed out above, the entire record of this case
consists of nine documents submitted under two notices of
reliance, one by each party. The documents introduced into
the record by petitioner are the following:
(1) a photocopy of the Office action refusing
registration to petitioner’s application based on
the involved registration;
(2) a photocopy of an advertisement for petitioner’s
FORKULA (tm) tongs appearing in the October 1975
Gourmet magazine;
(3) an advertisement for petitioner’s FORKULA (tm)
“bar-b-que tool” appearing in the July 1981 Bon
Appetit magazine;

7 On page nine of his reply brief, petitioner contends that the
Board may take judicial notice of “the nature of these
publications [“The New York Times,” Gourmet magazine, Bon Appetit
magazine, and The Complete Food Catalogue] being distributed to
the consuming public and the breadth of their circulation o (sic)
millions of consumers throughout the United States.” Inasmuch as
petitioner submitted copies of the relevant pages from these
publications by way of a notice of reliance, they are properly of
record pursuant to Trademark Rule 2.122(e), and we have accorded
Cancellation No. 24163
5
(4) a photocopy of a story about a housewares show
from “The New York Times” of January 14, 1981,
which mentions petitioner’s product; and
(5) a photocopy of a page from the book, The Complete
Food Catalogue (1977), which mentions petitioner’s
FORKULA (tm) tongs.
Respondent introduced the following documents into the
record8:
(1) a certified status and title copy prepared by the
Patent and Trademark Office of respondent’s
Registration No. 1,816,920;
(2) a photocopy of a third-party registration for the
mark SPOONULA for stainless steel laboratory tools
having a spoon on one end and spatula on the
other;
(3) the Random House College Dictionary (1988)
definition of “spatula”; and
(4) a few selected pages from the 1996 National
Housewares Manufacturers Association Membership
Directory.
By submitting a copy of the Office action refusing

them the appropriate probative weight. We do not, however, take
judicial notice of their circulation, etc.
8 Respondent’s notice of reliance did not include a statement of
the relevance of these documents as required by Trademark Rule
2.122(e). However, petitioner did not object thereto, and in
fact, treated the material as being of record. Accordingly, we
have considered the documents for whatever probative value they
have.
Cancellation No. 24163
6
registration to petitioner’s application, petitioner has
proven his standing. See The Hartwell Co. v. Shane, 17
USPQ2d 1569 (TTAB 1990).
Regarding the issue of priority, the party asserting
ownership of the trademark must demonstrate that his use of
the mark has been “deliberate and continuous, not sporadic,
casual, or transitory (citation to a treatise omitted).”
See La Societe Anonyme Des Parfums Le Galion v. Jean Patou,
Inc. 495 F.2d 1265, 181 USPQ 545, 548 (2nd Cir. 1974). That
is, trademark rights are not established by sporadic sales
or shipments, with long periods of apparent inactivity. See
also, Scholastic Inc. v. Macmillan Inc., 650 F.Supp. 866, 2
USPQ2d 1191, 1196 (SDNY 1987) (wherein the District Court
stated “adoption and a single use of the mark may be
sufficient to permit registration of the mark, but more is
required if the owner seeks to use the mark to stifle the
efforts of others.”).
While petitioner has proven one use of the mark FORKULA
in 1975 and one use in 1981 (and that his product received
publicity in publications in 1977 and 1981), there is no
evidence of record showing any use by petitioner of the mark
FORKULA for food handling tongs since 1981. Thus,
petitioner has proven only sporadic use a long time ago.
(At the time of petitioner’s rebuttal testimony period in
1997, it had been 16 years since the most current
Cancellation No. 24163
7
advertisement submitted by petitioner had appeared in a 1981
Bon Appetit magazine.) This is not sufficient to establish
that petitioner has superior prior rights in this mark.9
As noted earlier, respondent raised the affirmative
defense of petitioner’s abandonment of his involved mark.
The only evidence of record which relates to this issue is
respondent’s Exhibit D, selected pages from the 1996
National Housewares Manufacturers Association Directory,
presumably offered to show that “Drannan’s” is not listed
therein. The fact that a company name does not appear in an
industry association membership directory in a particular
year certainly does not prove abandonment of any trademark
by that company. Thus, this affirmative defense must fail.
Because petitioner has not established prior continuous
use of the mark FORKULA, we need not reach the issue of
whether there would be a likelihood of confusion involving
respondent’s registered mark.10

9 We note that in petitioner’s notice of reliance, relating to
the Gourmet magazine ad, “The New York Times” story, and the
pages from The Complete Food Catalogue, petitioner made the
following statement about the relevance thereof: “[these
documents] demonstrate use of the Forkula mark in 1975, 1977 and
1981, which shows continuity of use for those periods.” The
problem is that “those periods” ended long before the testimony
periods began, and we have no evidence of use since then.
10 Petitioner’s evidence claimed to establish likelihood of
confusion consisted of the Office action refusing registration to
his application wherein the Examining Attorney stated there was a
likelihood of confusion. Petitioner offered the Examining
Attorney’s refusal to register as an “expert opinion” proving
likelihood of confusion. The fact that an Examining Attorney
refused registration (or did not refuse registration) based on a
particular registration is not controlling in a proceeding at the
Cancellation No. 24163
8
Decision: The petition to cancel is denied.
R. F. Cissel
P. T. Hairston
B. A. Chapman
Administrative Trademark Judges,
Trademark Trial and Appeal

Board. See Hilson Research Inc. v. Society for Human Resource
Management, 27 USPQ2d 1423 (TTAB 1993); and Formica Corporation
v. Saturn Plastics & Engineering Co., 185 USPQ 251 (TTAB 1975).