Ted Lapidusv.Lambertson Truex, Inc.

Trademark Trial and Appeal Board

Aug 31, 2004

No. 91118497 (T.T.A.B. Aug. 31, 2004)

Mailed:
August 31, 2004
UNITED STATES PATENT AND TRADEMARK OFFICE
_____
Trademark Trial and Appeal Board
______
Ted Lapidus
v.
Lambertson Truex, Inc.
_____
Opposition No. 91118497
to application Serial No. 75453727
filed on March 20, 1998
_____
Bruce L. Adams of Adams & Wilks for Ted Lapidus.
William S. Frommer, Marilyn Matthes Brogan, and Deena Levy
Weinhouse of Frommer Lawrence & Haug LLP for Lambertson
Truex, Inc.
______
Before Seeherman, Chapman and Rogers,
Administrative Trademark Judges.
Opinion by Rogers, Administrative Trademark Judge:
Ted Lapidus, a corporation of France, opposed the
application of Lambertson Truex, Inc. to register a stylized
LT logo. Lambertson Truex, Inc. [hereinafter LTI or
petitioner] filed a counterclaim for cancellation directed
to one of the seven pleaded registrations of Ted Lapidus
[hereinafter Lapidus or respondent].
This Opinion is Not
Citable as Precedent
of the TTAB
Opposition No. 91118497
2
In an order dated October 15, 2002, the Board
considered various pending motions and requests filed by the
parties and, inter alia, granted applicant's motion under
Trademark Rule 2.132(a), 37 C.F.R. 2.132(a), dismissing the
Lapidus opposition with prejudice. The Board also noted
that this proceeding would continue only in regard to LTI's
counterclaim. Lapidus subsequently filed an appeal from the
order dismissing the notice of opposition, to the Court of
Appeals for the Federal Circuit. The appeal, however, was
dismissed approximately four months later, "for failure to
prosecute in accordance with the rules [of the Federal
Circuit]." Accordingly, the counterclaim is all that
remains to be considered.
While the many motions and requests addressed by the
Board in the above-referenced October 15, 2002 order were
being briefed, proceedings were not suspended, and LTI's
testimony period for presenting evidence in support of its
counterclaim was from May 17, 2002 through June 15, 2002.1
During that testimony period, LTI filed notice that it would
take the deposition on written questions of the president of
1 When this testimony period was scheduled by a Board order dated
April 19, 2002, it was set forth as a period for LTI to present
evidence in defense of the opposition and in support of its
counterclaim. One of the motions decided by the October 15, 2002
order, however, was a motion by Lapidus for reconsideration and
sought to limit the testimony period to LTI's prosecution of its
counterclaim. The October order granted this motion and reset a
testimony period for LTI that was limited to prosecution of its
counterclaim.
Opposition No. 91118497
3
Lapidus, the counterclaim respondent, but the Board did not
suspend proceedings. Respondent subsequently served cross-
questions for this deposition and LTI filed objections to
those questions with the Board. The October 15, 2002 order
deferred consideration of those objections to final hearing.
The proposed deposition on written questions, however, was
never taken and, therefore, the objections have been
rendered moot.
During the reset testimony period for LTI provided by
the October 15, 2002 order, LTI filed two notices of
reliance and took one testimony deposition, all in support
of its counterclaim.
The notices of reliance introduced certified copies of
official records, specifically, copies of LTI's opposed
application and of the Lapidus opposition thereto. LTI
offered these to establish its standing to pursue its
counterclaim. The testimony deposition taken by LTI is of
one Joseph Aglione, an investigator with The Stonegate
Agency of New York, and was used to introduce two reports
prepared for LTI's counsel by the witness. Counsel for
counterclaim respondent Lapidus was served with notice of
the deposition, but did not attend; nor did counsel object
to the taking of the deposition. LTI later filed a brief in
support of the counterclaim, but Lapidus did not file a
brief in opposition to it.
Opposition No. 91118497
4
LTI's counterclaim is set forth in its entirety below:
19. On information and belief, Registration No.
1,023,9[7]1, for TED LAPIDUS, issued October 28,
1975, to Opposer, for leather goods, namely,
luggage, handbags, purses, satchels, check and
bank note cases, leather cases and leather boxes
sold empty; and fancy jewelry, namely, cufflinks,
earrings, rings and necklaces, etc.
20. On information and belief, Opposer has
abandoned all use of this mark, on at least the
leather goods recited in the registration, without
any intention to resume use of said mark.
21. If opposer is permitted to continue to
maintain its registration, the continued existence
of such registration may cast a cloud upon
Applicant's right to continue to use, register and
expand use of Applicant's LT mark. Such
registration might also cast a cloud upon the
rights of third parties to adopt, use, and/or
register certain marks. Such registration would
thus be a source of damage and injury to
Applicant, and also to third parties.
Wherefore, Applicant petitions for cancellation of
Registration No. 1,023,9[7]1, issued October 28,
1975.
Respondent's answer to the counterclaim petition for
cancellation admits the allegations of paragraph 19 but
denies the allegations of paragraphs 20 and 21.
As a preliminary matter, we note that the prayer for
relief seeks cancellation of the Lapidus registration,
without specifying whether one or both classes in the
registration should be cancelled. LTI, however, paid one
counterclaim fee and, by paragraph 20, only put Lapidus on
notice of a claim that Lapidus had abandoned use of its
registered mark for the class in the registration covering
Opposition No. 91118497
5
leather goods. In addition, the testimony of LTI's witness
speaks almost exclusively to the question whether Lapidus
has been using its mark for leather goods sold or
distributed in the United States. Accordingly, we consider
the counterclaim as seeking to cancel only International
Class 18 of the Lapidus registration. Irrespective of the
issue whether the counterclaim seeks to cancel one or both
classes of goods in the registration, LTI has failed to
carry its burden of proof as counterclaim petitioner.
In its brief, LTI asserts that Lapidus "has abandoned
use of the mark in the '971 registration, for at least three
years, and has no intention to resume use of the mark." The
foundation for this assertion, however, is infirm. LTI
relies on reports prepared by its investigator, Mr. Aglione,
and forwarded to counsel on June 27, 2000 and December 18,
2002.2 Even if we were to accept these reports, and the
testimony of the witness, as establishing non-use by Lapidus
of its registered mark as early as June 2000 and continuing
to December 2002, we would have to infer continuing non-use
from the date of the second report until the time of
briefing to cobble together a three-year period of non-use.
The drawing of such an inference would be improper.3 There
2 December 18, 2002 was two days before the close of LTI's period
for presenting evidence in support of its counterclaim.
3 There is no support for LTI's argument that adverse inferences
should be drawn against Lapidus because of its failure to present
Opposition No. 91118497
6
is no evidence, and indeed no record, to establish anything
beyond the time of trial. Thus, we cannot find that LTI has
shown that there has been three years of nonuse, and
therefore it has not established prima facie evidence of
abandonment. See Trademark Act Section 45, 15 USC 1127.
The question then becomes whether LTI has carried its
burden as counterclaim petitioner and established non-use by
Lapidus without any intention to resume use. We find that
it has not. As the Aglione testimony reveals, the initial
investigation of use or non-use by Lapidus resulted only in
the witness contacting, and reporting on, a conversation
with "an employee of the Commercial division" of Lapidus.
Aglione exh. 2, see also, dep. pp. 10-11. We cannot accept
this report of a conversation with an unidentified employee
as probative evidence that Lapidus then had no intention to
make use of its mark in the United States. See In re
American Olean Tile Company Inc., 1 USPQ2d 1823, 1824 n. 2
(TTAB 1986) (The report of a statement made by an unknown
representative of registrant was accorded no probative
value, "especially in the absence of any evidence as to the
representative's competency to speak for Simpson regarding
its registered mark.") Thus, we accord little weight to the
evidence in defense of the counterclaim. There is no burden on a
defendant to present a case. The burden is on the plaintiff in
the first instance to establish a prima facie case and thereby
shift the burden of persuasion to defendant.
Opposition No. 91118497
7
reported statement of the employee that Lapidus, at that
time, had no plans to sell leather products in the United
States.
As to the second report introduced by the Aglione
testimony, while this details names of individuals with whom
the witness discussed the availability of Lapidus leather
products in the United States, there is no report of
statements regarding intent. Rather, there only are
statements confirming that Lapidus leather products were
not, at the time of trial, available in the United States.
Further, Mr. Aglione only testified that his conclusion,
based on each report, was that Lapidus does not sell leather
goods in the United States; he drew no conclusion on intent.
Aglione, pp. 11, 17.
LTI's counterclaim for cancellation of the Lapidus
registration must fail for lack of proof of either a prima
facie case of abandonment or of non-use coupled with absence
of any intent to resume use.
Decision: The counterclaim petition for cancellation
is dismissed.