No-belle.com, LLCv.Qwest Communications Int'l., Inc.

Trademark Trial and Appeal Board

Feb 4, 2003

No. 92030454 (T.T.A.B. Feb. 4, 2003)

Bottorff
Paper No. 34
Hearing: Mailed:
Oct. 30, 2002 Feb. 4, 2003
UNITED STATES PATENT AND TRADEMARK OFFICE
_____
Trademark Trial and Appeal Board
_____
Nobelle.com, LLC
v.
Qwest Communications International, Inc.1
_____
Cancellation No. 92030454
_____
James L. Phillips of Miller Nash LLP for Nobelle.com, LLC.
John C. Cain of Howrey Simon Arnold & White, LLP for Qwest
Communications International, Inc.
_____
Before Hairston, Bottorff and Rogers, Administrative
Trademark Judges.
Opinion by Bottorff, Administrative Trademark Judge:
This cancellation proceeding involves respondent’s
concurrent use registration of the following mark
1 Substituted as party defendant by survival of merger with U.S.
West, Inc. See the Board’s May 22, 2001 order, at footnote 1.
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT
OF THE TTAB
Cancellation No. 92030454
2
(the Bell logo mark), for services recited in the
registration as “telecommunications services.” A brief
discussion of the unique nature and history of this
registration is helpful.
The registration originally issued to American
Telephone & Telegraph Company on October 5, 1971 as an
unrestricted registration, Registration No. 921,734.
Pursuant to Trademark Act Sections 2(d) and 37, 15 U.S.C.
§§1052(d) and 1119, and in accordance with the July 8, 1983
and February 6, 1984 opinions and orders of the United
States District Court for the District of Columbia in the
antitrust litigation which resulted in the breakup of
AT&T,2 AT&T assigned all rights and goodwill in the Bell
logo mark to the various Regional Bell Operating Companies
(hereinafter the RBOCs), and the Patent and Trademark Office
re-issued the original 1971 AT&T registration to each of the
2 United States v. Western Electric Co., Inc., et al.. See 569
F.Supp. 1057 [220 USPQ 113] (D.D.C. 1983).
Cancellation No. 92030454
3
RBOCs as concurrent registrations.3 Each of the nine
concurrent registrations is nationwide in scope, but is
subject to a “mode of use” restriction which allows the
registrant to use the registered Bell logo mark only in
conjunction with an approved geographic trade modifier, such
as, in respondent’s case, “Mountain Bell” or “Pacific
Northwest Bell.” See generally Tamarkin Co. v. Seaway Food
Town, 34 USPQ2d 1587 (TTAB 1995); see also Holiday Inn v.
Holiday Inns, Inc., 534 F.2d 312, 189 USPQ 630 (CCPA 1976);
Alfred Dunhill of London, Inc. v. Dunhill Tailored Clothes,
Inc., 293 F.2d 685, 130 USPQ 412 (1961), cert. denied, 369
U.S. 864 (1962).4
3 These concurrent registrations are: Reg. No. 1,327,693, owned
by Ameritech Corporation of Chicago, IL; Reg. No. 1,327,694,
owned by Bell Atlantic Corporation of Philadelphia, PA; Reg. No.
1,327,695, owned by BellSouth Corporation of Atlanta, GA; Reg.
No. 1,327,696, owned by Cincinnati Bell Inc. of Cincinnati, OH;
Reg. No. 1,327,697, owned by Nynex Corporation of New York, NY;
Reg. No. 1,327,698, owned by Pacific Telesis Group of San
Francisco, CA; Reg. No. 1,327,699 owned by The Southern New
England Telephone Company of New Haven, CT; and Reg. No.
1,3207,700, owned by Southwestern Bell Corporation, of St. Louis,
MO. See Exhibit A to Respondent’s February 12, 2002 Notice of
Reliance. Each of these registrations appears to be in full
force and effect. We note that respondent’s registration is the
only one of these registrations that petitioner has petitioned to
cancel.
4 Petitioner has contended in its briefs and at oral hearing that
the Office, acting through the Assistant Commissioner of
Trademarks in 1984, misconstrued the court’s decision and Section
37 order or otherwise committed error when it issued
geographically unrestricted “mode of use” concurrent
registrations, rather than geographically restricted concurrent
registrations, to respondent and the other RBOCs. To the extent
that petitioner, notwithstanding the Board’s explicit rejection
of this argument in its May 22, 2001 summary judgment order,
still is attempting to assert such error as a ground for
cancellation in this case, we reject the attempt, again. We are
Cancellation No. 92030454
4
Petitioner seeks to cancel respondent’s registration on
the grounds that the registered Bell logo mark has become
generic and/or has been abandoned due to its loss of
significance as a mark. Because petitioner has failed to
establish either its standing or any ground for cancellation
of respondent’s registration, we deny the petition for
cancellation.
Initially, two procedural/evidentiary matters require
attention. First, we deny petitioner’s September 25, 2001
“Motion to Strike.” By that motion, petitioner requests
that we give no consideration to any of the trial evidence
offered by respondent during respondent’s testimony period
because, according to petitioner, respondent failed to
unpersuaded by petitioner’s arguments on the merits of this
issue. In any event, petitioner cites no authority, and we are
aware of none, which grants to the Board the jurisdiction to
review the manner in which the Commissioner (now the Director)
implements a Section 37 order from a district court, much less
the power to set aside or modify that implementation. Moreover,
the Office’s action of which petitioner complains occurred nearly
twenty years ago. “PTO error” is not among the grounds
enumerated in Section 14(3) upon which a registration that is
over five years old may be cancelled. Finally, to the extent
that petitioner, in arguing that respondent and the other RBOCs
“misled” the Office into issuing geographically unrestricted
registrations in 1984, is attempting to assert fraud as a ground
for cancellation, we reject the attempt. The petition for
cancellation contains no allegation of a fraud claim, much less
the detailed allegation of such a claim required by Fed. R. Civ.
P. 9(b). In any event, it is clear from the record that no
factual basis for a fraud claim exists. In making its decision
to issue geographically unrestricted concurrent registrations,
the Office was not “misled” by respondent or the other RBOCs as
to the terms of the court’s opinion and order, as petitioner
contends. Rather, the Office had before it copies of the opinion
and order, and was well aware of the terms thereof when it issued
the concurrent registrations. See, e.g., the Office’s November
Cancellation No. 92030454
5
produce, prior to the close of the discovery period on
December 5, 2000, any documents responsive to petitioner’s
discovery requests.
Petitioner’s motion is essentially a motion for
discovery sanctions under Trademark Rule 2.120(g)(1). That
is, petitioner contends that respondent should be precluded
from submitting trial evidence as a sanction for
respondent’s alleged failure to comply with its discovery
obligations. However, discovery sanctions under Trademark
Rule 2.120(g)(1) are available only if respondent has
violated a discovery order issued by the Board, such as an
order compelling discovery. No such order has been violated
by respondent, because no such order was ever issued by the
Board or even requested by petitioner.5 Because respondent
has not violated any Board order regarding discovery, there
15, 1984 letter to Cary H. Sherman, Esq. of Arnold & Porter, made
of record as Exhibit B.5 to respondent’s Notice of Reliance.
5 Indeed, by the time petitioner filed its “Motion to Strike” on
September 25, 2001, it was too late for petitioner to file a
motion to compel discovery because petitioner’s testimony period
had already commenced some twenty-five days earlier (on September
1, 2001; see Board’s May 22, 2001 order denying respondent’s
January 31, 2001 motion for summary judgment and resetting
petitioner’s opening testimony period to close on September 30,
2001, opening thirty days prior thereto). See Trademark Rule
2.120(e)(1). We note that petitioner’s counsel, in a November
22, 2000 letter to respondent’s counsel, complained of
respondent’s lack of production and stated, “Please be advised
that we intend to seek immediate relief.” (See petitioner’s
November 2, 2001 reply brief in support of the motion to strike,
at Exhibit E.) However, petitioner did not file a motion to
compel at that time or at any other time, and indeed sought no
“relief” at all until it filed its motion to strike, along with
its untimely motion for summary judgment, on September 25, 2001,
twenty-five days into its testimony period.
Cancellation No. 92030454
6
is no procedural basis for imposing the discovery sanction
requested by petitioner. See TBMP §527.01 and cases cited
therein; see also Greenhouse Systems Inc. v. Carson, 37
USPQ2d 1748 (TTAB 1995)(Board does not entertain motions in
limine).6 Petitioner’s motion is denied, and we have
considered the evidence submitted by respondent.
The second procedural matter requiring resolution is
respondent’s August 8, 2002 motion to strike certain factual
assertions made by petitioner in its briefs regarding
Unical, respondent’s licensee. We deny respondent’s motion,
inasmuch as it generally is not the Board’s practice to
strike briefs or portions thereof. TBMP §540.7
6 In any event, petitioner’s motion is based on a faulty premise,
i.e., that respondent failed to comply with its discovery
obligations because it failed to make discovery documents
available for inspection prior to the close of the discovery
period. The Trademark Rules of Practice do not require that the
actual production of documents occur prior to the close of the
discovery period. Respondent timely served its written response
to petitioner’s document production requests, and made the
responsive documents available for inspection prior to trial. It
appears that respondent notified petitioner of the availability
of the documents and inquired as to how petitioner wished to
proceed with respect to the inspection or copying of the
documents; petitioner never responded to those inquiries. If
petitioner required more time to inspect the documents prior to
the close of the discovery period (to allow for service of
follow-up discovery) or prior to the opening of its testimony
period (to allow for trial preparation), it was incumbent on
petitioner to file a motion seeking extension of those dates.
Respondent offered to consent to such extension, but petitioner
refused that offer and never sought an extension.
7 However, we have accorded no probative or persuasive value to
petitioner’s assertions regarding Unical. As a factual matter,
the record does not necessarily support petitioner’s contention
in its briefs that respondent, through its licensee Unical,
“floods the market” with 13,000,000 telephones per year bearing
the “Genuine Bell” designation. Petitioner bases this contention
Cancellation No. 92030454
7
Thus, the evidence of record in this proceeding
consists of the testimony deposition of petitioner’s
principal Bruce Kaser and the documentary exhibits attached
thereto, the testimony deposition of respondent’s witness
Christina Searls, and the public records and printed
publications respondent has made of record by means of
notice of reliance.
Turning now to the merits, we first find that
petitioner has failed to establish its standing to bring
on statements appearing on Unical’s website. Even if we accept
those statements for their truth, they do not prove what
petitioner says they prove. Unical boasts that its manufacturing
facility in China has a “daily production capacity of 50,000
telephones” (from which petitioner extrapolates the 13,000,000
telephones per year figure, based on five work days a week – see
petitioner’s main brief at 4), and that it produces telephones
for customers “in 40 countries.” However, the fact that Unical
has the “capacity” to produce 50,000 telephones daily does not
prove that it actually produces that number. And even if Unical
does produce that many telephones, there is no basis in the
record for finding that all of those phones are sold in the
United States (and not in the other forty countries to which
Unical assertedly sells phones), much less that all of those
phones are sold in packaging which bears the “Genuine Bell”
designation of which petitioner complains.
More fundamentally, however, and putting aside any question as
to the factual validity of the assertions petitioner makes in its
briefs regarding Unical, those assertions are legally irrelevant
in this case. As discussed infra at pp. 18-19, petitioner relies
on those assertions to support its claim that respondent has
abandoned the registered mark due to naked licensing. But even
if petitioner is correct in claiming that respondent fails to
exercise quality control over Unical with respect to Unical’s
production of telephones under license from respondent, such
failure does not establish that respondent engages in naked
licensing with respect to the telecommunications services recited
in the registration petitioner seeks to cancel. There is no
evidence that Unical (or anyone else) provides telecommunications
services under license from respondent, and there accordingly is
no basis for finding that respondent engages in naked licensing
with respect to such services.
Cancellation No. 92030454
8
this cancellation proceeding. Contrary to petitioner’s
argument, respondent did not waive its right to challenge
petitioner’s standing by waiting until its brief on the case
to do so. “Lack of standing” is not an affirmative defense;
rather, standing is an essential element of petitioner’s
case which, if it is not proved at trial, defeats
petitioner’s claim. See Lipton Industries, Inc. v. Ralston
Purina Co., 670 F.2d 1024, 213 USPQ 185 (CCPA 1982); No
Nonsense Fashions, Inc. v. Consolidated Foods Corporation,
226 USPQ 502 (TTAB 1985).8
To establish its standing to assert a mere
descriptiveness or genericness ground of opposition or
cancellation, “a plaintiff need only show that it is engaged
in the manufacture or sale of the same or related goods as
those listed in the defendant’s involved application or
registration and that the product in question is one which
could be produced in the normal expansion of plaintiff’s
business; that is, that plaintiff has a real interest in the
proceeding because it is one who has a present or
prospective right to use the term descriptively [or
generically] in its business.” Binney & Smith Inc. v. Magic
8 “Lack of standing” might be the basis for a defendant’s motion
to dismiss for failure to state a claim, under Fed. R. Civ. P.
12(b)(6), but the “defense” of failure to state a claim is not
one which is waived if it is not asserted by motion. See Fed. R.
Civ. P. 12(h)(2), which is applicable to Board proceedings under
Trademark Rule 2.116(a), 37 C.F.R. 2.116(a).
Cancellation No. 92030454
9
Marker Industries, Inc., 222 USPQ 1003, 1010 (TTAB 1984).
“All that is necessary is that petitioner be in a position
to have a right to use” the mark in question. J. Thomas
McCarthy, McCarthy on Trademarks and Unfair Competition
§20:50 (4th ed. 2001). See also No Nonsense Fashions, Inc.
v. Consolidated Foods Corporation, supra, and Southwire
Company v. Kaiser Aluminum & Chemical Corporation, 196 USPQ
566 (TTAB 1977). This test logically also applies to the
question of whether petitioner has standing to assert its
claim that respondent’s mark has been abandoned (and
therefore is in the public domain) due to its loss of
significance as a mark.
Petitioner Nobelle.com LLC is a limited liability
company whose sole officer, shareholder and employee is
Bruce Kaser.9 Mr. Kaser testified that petitioner is
“incubating and developing” a power supply/adaptor product
for use with cell phones and laptop computers. (Kaser depo.
at 5-7.) He testified that “I’ve been working on it for
quite some time” (id. at 70), but “it’s still in the
development stage. We’re not close to bringing it to the
marketplace at the present.” (Id. at 77-78.) When asked
“Do you have a time frame when you expect to enter into the
9 At the time the petition to cancel was filed, Mr. Kaser was a
lawyer at Miller Nash LLP, the law firm which filed the
proceeding on behalf of petitioner and which remains counsel of
record for petitioner. Mr. Kaser now is a partner at another law
firm, David Wright Tremaine.
Cancellation No. 92030454
10
marketplace with this product?”, Mr. Kaser answered, “I
don’t have a specific time frame right now.” (Id.) Mr.
Kaser testified that petitioner is not presently engaged in
any other business except developing the product, and that
petitioner has not engaged in any other business in the past
except developing the product. (Id. at 73.)
It appears that petitioner’s claim to standing is based
entirely on the fact that Mr. Kaser has an idea for a
product, which may or may not ever be brought to market. He
testified that the product is “in development,” but we
cannot determine from this record what that means, if it
means anything. All we know is that the product is “not
close” to being ready for market, and that petitioner has no
time frame for completing the product’s development and
introducing it into the marketplace. On this record, we
cannot conclude that petitioner is (as McCarthy says) “in a
position” to use (or have the right to use) the Bell symbol
in its business, or that petitioner is engaged in any
“business” at all which would give it a real interest in the
outcome of this proceeding.10 In short, although the
10 Indeed, it appears that petitioner, Nobelle.com LLC, is as
likely to end up in the winery or orchard business as it is to
end up in the business of manufacturing and selling telephone
products. When he was asked “Are you seeking to engage in any
other business other than the power supply products for
Nobelle.com?”, Mr. Kaser replied in the affirmative, explaining
that “There’s a very good chance that I’ll be starting up a local
orchard or perhaps a winery and I may use the name in connection
with that. I haven’t decided.” (Kaser depo. at 73.)
Cancellation No. 92030454
11
threshold for determining standing generally is quite low,
we find that petitioner has failed to clear it in this case.
However, even if we are incorrect, and it were to be
determined that petitioner has established its standing in
this case, we find that petitioner still is not entitled to
prevail because it has failed to establish either of its
pleaded grounds for cancellation of respondent’s
registration. Before we turn to a discussion of those
grounds, a preliminary comment is in order.
It is important to clarify what the grounds for
cancellation are in this case. As noted above, petitioner
has pleaded genericness and abandonment as its grounds for
cancellation. Petitioner, however, has devoted large
portions of its briefs (and its arguments at oral hearing)
to its contentions that respondent’s registration and use of
the Bell logo mark are in violation of the terms of the
district court’s 1983 and 1984 opinion and order in the AT&T
antitrust litigation.11 To the extent that petitioner is
11 Specifically, petitioner contends, first, that the Office
committed error in 1984 when, based on alleged misrepresentations
by respondent and the other RBOCs as to the terms of the court’s
order, it issued geographically unrestricted “mode of use”
concurrent registrations to respondent and the other RBOCs. We
have already rejected this contention, supra at footnote 4.
Petitioner also contends that respondent, through its licensee
Unical, markets telephones in packaging which advertises the
products to be “Genuine Bell.” However, even if petitioner is
correct in contending that this conduct violates the court’s
order (and we do not assume that it does), such violation
involves neither the Bell logo mark depicted in the registration
petitioner seeks to cancel nor the telecommunications services
recited in that registration. Finally, petitioner contends that
Cancellation No. 92030454
12
contending that respondent’s alleged violations of the
court’s order are independent grounds for cancellation in
this proceeding, we reject the contention. It is not within
the province of the Board to enforce the court’s order or to
decide whether respondent has violated that order.
Likewise, to the extent that petitioner is contending that
the conduct of respondent and/or the other RBOCs is in
violation of antitrust or unfair competition laws, we have
given such contentions no consideration because the Board
has no jurisdiction over such claims. See TBMP §102.01 and
cases cited therein.
In short, even were we to assume that respondent has
violated the court’s order (and we make no such assumption),
such violation would not constitute an independent ground
for cancellation of respondent’s registration, nor does any
such violation, in itself, suffice to establish either of
the pleaded grounds for cancellation, i.e., genericness or
abandonment.12
respondent violates the “spirit” of the court’s order by using
the Bell logo alone, without a trade modifier, on its Seattle
office building and elsewhere. Respondent, however, plausibly
contends that such use is allowed or grandfathered under the
concurrent use agreement between the RBOCs, a contention which
petitioner does not refute or even address.
12 Thus, we reject as non sequiturs petitioner’s contentions (in
the section headings of its briefs) that “The Bell Mark is
Generic Because the RBOCs have Violated Judge Greene’s Order”
(main brief at 15), and that “Registrant’s Use of the Term
‘Genuine Bell’ Violates Judge Greene’s Order and Renders the Mark
Generic or Abandoned” (reply brief at 3).
Cancellation No. 92030454
13
We turn now to petitioner’s first ground for
cancellation, i.e., that respondent’s registration should be
cancelled on the ground of genericness. Our primary
reviewing court has stated:
The critical issue in genericness cases is
whether members of the relevant public primarily
use or understand the term sought to be
protected to refer to the genus of goods or
services in question. Determining whether a
mark is generic therefore involves a two-step
inquiry: First, what is the genus of goods or
services at issue? Second, is the term sought
to be registered or retained on the register
understood by the relevant public primarily to
refer to that genus of goods or services?
H. Marvin Ginn Corp. v. International Association of Fire
Chiefs, Inc., 782 F.2d 987, 228 USPQ 528, 530 (Fed. Cir.
1986)(citations omitted).
Under the first part of the Ginn two-part genericness
test, we find that the genus of goods or services at issue
in this case is “telecommunications services,” the services
recited in respondent’s involved registration. See Magic
Wand Inc. v. RDB Inc., 940 F.2d 638, 19 USPQ2d 1551, 1552
(Fed. Cir. 1991)(“Thus, a proper genericness inquiry focuses
on the description of services set forth in the certificate
of registration.”).
Under the second part of the Ginn test, we find, for
the reasons discussed below, that petitioner has failed to
establish that the Bell logo mark depicted in respondent’s
Cancellation No. 92030454
14
registration is understood by the relevant public primarily
to refer to the genus of services at issue, i.e.,
“telecommunications services.”
Evidence of the public’s understanding (under the
second part of the Ginn test) may come from direct testimony
of consumers, consumer surveys, dictionary listings, or from
generic usage in newspapers and other publications. See
Magic Wand Inc., supra, 19 USPQ2d at 1553; In re Northland
Aluminum Products, Inc., 777 F.2d 1556, 227 USPQ 961, 963
(Fed. Cir. 1985). Petitioner has not submitted any of these
types of evidence in this case. Instead, petitioner bases
its genericness claim on evidence showing use of the Bell
logo by multiple, unrelated third-party competitors of
respondent’s, i.e., the other RBOCs.13 “The cases have
recognized that competitor use is evidence of genericness.”
BellSouth Corp. v. DataNational Corp., 60 F.3d 1565, 35
USPQ2d 1554, 1558 (Fed. Cir. 1995). However, we have
carefully considered petitioner’s evidence of competitor use
in this case, and we find that it fails to establish that
the Bell logo is generic.
13 The only users of the Bell logo evidenced by the record are
the RBOCs or licensees of RBOCs. The record shows that numerous
non-RBOC companies (e.g., Motorola, Uniden, Siemens, Vtech,
Panasonic, Casio, Sharp, Toshiba, and Sony) manufacture and
market telephones and telephone accessories, but none of them use
the Bell logo, either generically or otherwise, on or in
connection with those goods. There is no evidence that the Bell
logo is used in connection with telecommunications services by
any non-RBOC company.
Cancellation No. 92030454
15
First, although the genus of services involved in this
case is “telecommunications services,” essentially all of
petitioner’s evidence pertains to respondent’s competitors’
use of the Bell logo on goods, i.e., telephones, telephone
accessories, and other related equipment. Such evidence
simply is not relevant to, or probative on, the issue to be
decided in this cancellation proceeding, i.e., whether the
registered Bell logo mark is generic for the
“telecommunications services” recited in the registration
petitioner seeks to cancel. See Magic Wand Inc., supra, 19
USPQ2d at 1552 (“Thus, a proper genericness inquiry focuses
on the description of services set forth in the certificate
of registration.”). To the extent that the evidence of
record pertains to “telecommunications services” at all, we
find that it is de minimis and is clearly insufficient to
establish that the Bell logo is regarded by the relevant
public as a generic identifier for such services.14
Second, in the cases which have found that competitor
use is evidence of genericness, it is competitors’ generic
14 Even if petitioner’s evidence had established (it has not)
that the Bell logo is generic for telephone equipment, this is
not a case in which we would apply the principle that a mark
which is generic for goods is also generic for the services
related to the selling of those goods. See, e.g., In re A La
Vieille Russie Inc., 60 USPQ2d 1812 (TTAB 2001); cf. In re The
Phone Company, Inc., 218 USPQ 1027 (TTAB 1983). The
“telecommunications services” recited in the registration are
neither goods nor the sale of goods, nor have they been shown to
be related to goods or to the sale of goods in any manner which
would warrant application of the principle.
Cancellation No. 92030454
16
use of the designation in question that has been deemed to
be evidence of genericness; purchasers exposed to generic
use by competitors may themselves come to regard the
designation as generic. See, e.g., BellSouth Corp. v.
DataNational Corp., supra (Walking Fingers logo); Remington
Products, Inc. v. North American Philips Corp., 892 F.2d
1576, 1578, 13 USPQ2d 1444, 1446 (Fed. Cir. 1990)(TRAVEL
CARE); DeWalt, Inc. v. Magna Power Tool Corp. 289 F.2d 656,
129 USPQ 275 (CCPA 1961)(POWER SHOP); Continental Airlines
Inc. v. United Air Lines Inc., 53 USPQ2d 1385 (TTAB 1999)(E-
TICKET); and In re Consolidated Cigar Corp., 13 USPQ2d 1481
(TTAB 1989)(WHIFFS); see also J. Thomas McCarthy, McCarthy
on Trademarks and Unfair Competition §12:13 (4th ed.
12/01)(“Evidence to prove genericness can include … generic
use by competitors…” (emphasis added)).
In the present case, however, there is no evidence that
any of respondent’s competitors uses the Bell logo
generically. Instead, petitioner’s evidence shows that
whenever the Bell logo is used by any of respondent’s
competitors, it is used in a source-indicating manner, i.e.,
as part of their trademarks and service marks. For this
reason, the cases discussed above are distinguishable from
the present case, and the proposition for which they stand
(i.e., that generic use by competitors is evidence that the
public views the designation in question as generic), is
Cancellation No. 92030454
17
inapposite here. We see no legal or logical basis for
finding that trademark or service mark use of a designation
by competitors is probative evidence, under the second part
of the Ginn test, that the relevant public regards the
designation as being generic.
In short, petitioner’s “competitor use” genericness
evidence (which is petitioner’s only proffered genericness
evidence) is irrelevant to the extent that it pertains to
goods rather than to the services recited in respondent’s
registration, and it is insufficient in any event because it
fails to show that respondent’s competitors use the Bell
logo in a generic manner or otherwise than as a trademark or
service mark. We find that petitioner has not proven that
the public understands the Bell logo to be a generic
designation as applied to telecommunications services, and
that petitioner’s genericness claim therefore fails.
We turn next to petitioner’s second ground for
cancellation, i.e., abandonment. Trademark Act Section 45
provides, in relevant part, that:
A mark shall be deemed to be “abandoned” when
either of the following occurs:
(1) When its use has been discontinued with
intent not to resume such use…
(2) When any course of conduct of the owner,
including acts of omission as well as
commission, causes the mark to become the
generic name for the goods or services on or
Cancellation No. 92030454
18
in connection with which it is used or
otherwise to lose its significance as a mark…
Petitioner is asserting the second of these types of
abandonment, i.e., that respondent’s “course of conduct” has
caused the Bell logo “to lose its significance as a mark.”
Specifically, petitioner argues, first, that respondent has
abandoned the mark due to naked licensing because it has
licensed use of the mark to a third party, i.e., Unical, but
has failed to exercise the requisite control over the nature
and quality of the goods Unical sells under the licensed
mark. Second, citing the same evidence that it has relied
upon in support of its genericness claim, petitioner argues
that because multiple, unrelated sources (i.e., the RBOCs)
use the Bell logo side-by-side in the marketplace, the logo
no longer identifies a single source of goods or services
and therefore does not function as a mark, and that it
therefore has been abandoned. We are not persuaded by
either of these arguments.
Petitioner’s “naked licensing” abandonment argument
fails because there is no evidence that respondent licenses
the Bell logo mark to Unical, or to anyone else, for use in
connection with telecommunications services. Because
respondent does not license the mark for use in connection
with telecommunications services, there is no basis for
finding that respondent engages in naked licensing with
Cancellation No. 92030454
19
respect to such services; the question of whether respondent
exercises adequate quality control over use of the mark in
connection with such services does not even arise.
Moreover, even if petitioner is correct in contending that
respondent has failed to exercise quality control over
Unical’s marketing of telephones and telephone products (a
question we need not and do not decide), such failure by
respondent is irrelevant to the issue to be decided in this
case, i.e., whether respondent has abandoned the mark with
respect to the telecommunications services recited in the
registration petitioner seeks to cancel.
Nor are we persuaded by petitioner’s argument that the
Bell logo mark has lost its significance as a mark and
should be deemed abandoned because, since it is used by
multiple, unrelated sources (i.e., the other RBOCs), it does
not identify a single source. This argument ignores the
fact that respondent’s registration is a concurrent use
registration. A concurrent use registration, by its very
nature, contemplates that the registered mark can and does
function to identify more than one source. The registered
mark can identify more than one source because each source’s
use of the mark is subject to conditions and limitations
which eliminate likelihood of confusion (such as, in the
present case, the trade modifiers the RBOCs use in
conjunction with the Bell logo mark). Petitioner’s “single
Cancellation No. 92030454
20
source identifier” requirement would render every concurrent
use registration invalid due to abandonment.15 This is not
to say that a concurrent use registration can never be
cancelled on the ground of abandonment, but a petitioner
asserting such ground must do more than merely show that the
registered mark is being used concurrently by the concurrent
use registrants in accordance with the conditions and
limitations set forth in their concurrent use registrations.
In short, a mark is deemed to be abandoned only when it
has lost all capacity as an indication of source. Wallpaper
Manufacturers, Ltd. v. Crown Wallcovering Corporation,
supra, 214 USPQ at 335-36. The goodwill of the Bell logo
mark was assigned to the RBOCs concurrently, and there is
nothing in the record which suggests that such goodwill no
longer exists. The logo is not used by anyone other than
the RBOCs, and there accordingly is no basis for concluding
that the public regards the logo as anything other than a
mark indicating source in one of the RBOCs. As contemplated
by the concurrent use registrations, purchasers are able to
distinguish source among the RBOCs by means of the trade
15 Indeed, petitioner’s “single source identifier” abandonment
requirement is untenable even outside the context of a concurrent
use registration. See Wallpaper Manufacturers, Ltd. v. Crown
Wallcovering Corporation, 680 F.2d 755, 214 USPQ 327, 332-33
(CCPA 1982)(specifically rejecting as “bad law” the view that
abandonment occurs “when a mark loses its capacity to point out
uniquely the single source or origin of goods, that is, unless
one maintains exclusivity of rights” (emphasis in original)).
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21
modifiers which the RBOCs use in conjunction with the Bell
logo mark. Petitioner concedes as much. (Reply brief at
11-12.)
In summary, we find that petitioner has failed to
establish its standing, or that respondent’s Bell logo mark
is generic or has been abandoned, and that petitioner
therefore is not entitled to prevail in this proceeding.
Decision: The petition to cancel is denied.