Yamaha Corp. of Americav.Wrightwood Enterprises, Inc.

Trademark Trial and Appeal Board

Nov 21, 2002

No. 91108787 (T.T.A.B. Nov. 21, 2002)

Hearing: Paper No. 43
August 8, 2002
UNITED STATES PATENT AND TRADEMARK OFFICE
_____
Trademark Trial and Appeal Board
______
Yamaha Corporation of America
v.
Wrightwood Enterprises, Inc.
_____
Opposition No. 108,787
to application Serial No. 775/039,316
filed on December 26, 1995
_____
Paul Garrity, Margaret Ferguson and William R. Golden, Jr.
of Kelley Drye & Warren for Yamaha Corporation of America.
Jeffery A. Handelman and Nicholas de le Torre of Brinks
Hofer Gilson & Lione for Wrightwood Enterprises, Inc.
______
Before Seeherman, Quinn and Bucher, Administrative Trademark
Judges.
Opinion by Quinn, Administrative Trademark Judge:
An application was filed by Wrightwood Enterprises,
Inc. to register the mark EVERETT for “pianos.”1
Registration was opposed by Yamaha Corporation of
America under Section 2(d) of the Trademark Act on the
ground that applicant’s mark, when applied to applicant’s
1 Application Serial No. 75/039,316, filed December 26, 1995,
alleging dates of first use of July 14, 1995.
THIS DECISION IS NOT
CITABLE AS PRECEDENT
OF THE TTAB
Opposition No. 108,787
2
goods, so resembles opposer’s previously used mark EVERETT
for pianos as to be likely to cause confusion.
Applicant, although admitting that opposer used the
mark EVERETT for pianos in years prior to 1990, went on in
its answer to deny the salient allegations of likelihood of
confusion. Applicant also set forth affirmative defenses,
including that opposer abandoned its mark and, thus, opposer
does not have superior rights in the mark.
The record consists of the pleadings; the file of the
involved application; trial testimony, with related
exhibits, taken by each party; and official records
introduced by applicant’s notice of reliance. Both parties
filed briefs on the case, and both were represented by
counsel at an oral hearing held before the Board.
Evidentiary Objections
With respect to the record, there are a few evidentiary
objections raised by opposer that require our attention
before we turn to the merits of the opposition.
Opposer’s first objection relates to the acceptability
of a print-out from the Office’s Trademark Electronic Search
System (TESS) of opposer’s expired Registration No.
1,027,898, which applicant submitted as Exhibit 2 under its
notice of reliance. The Trademark Trial and Appeal Board
Manual of Procedure (TBMP) §707 provides for the
introduction of an official record by way of an electronic
Opposition No. 108,787
3
copy generated from the Office’s database. Accordingly, the
expired registration was properly introduced, and it has
been considered.
Opposer’s other objections relate to three areas of
inquiry covered in the testimony deposition taken by
applicant of Terry Lewis, an adverse witness. In total,
opposer requests that seventeen pages and three related
exhibits be stricken. For essentially the reasons set forth
by applicant in its brief, the objections are not well taken
and are, accordingly, denied. We hasten to add that neither
the testimony nor the exhibits sought to be stricken is
critical to the outcome of this case; even if stricken, we
would reach the same result on the merits in this case.
The Parties
Opposer is engaged in, inter alia, the manufacture,
sale and servicing of pianos. Opposer is a leader in the
piano market in this country, and annually expends millions
of dollars in promoting its pianos. Although the specific
information relating to market share was designated as
“confidential” during a testimonial deposition, the figures
appear in opposer’s brief. Thus, we view opposer as having
waived the “confidential” designation. Opposer’s pianos
account for 25% of the United States piano market in units,
and about 35% of the market in dollars.
Opposition No. 108,787
4
Little is known about applicant, other than it is a
Michigan corporation located in Lansing, Michigan.
The Issue
As indicated above, the pleaded ground in the notice of
opposition is priority and likelihood of confusion, and
applicant, in its answer, denied the allegations relating
thereto. Applicant conceded in its brief, however, that
“[t]here is no dispute as to likelihood of confusion.”
(brief, p. 2). Indeed, the parties claim rights in the
identical mark, EVERETT, for the identical goods, pianos.
Clearly, there is a likelihood of confusion between the
marks, and we so find herein. In re E. I. du Pont de
Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973).
It is applicant’s contention, however, that opposer
abandoned its mark EVERETT for pianos due to discontinued
use of the mark with an intent not to resume use. Thus,
applicant maintains, opposer has no superior rights in the
pleaded mark and because its claim of priority must fail,
opposer cannot prevail on the Section 2(d) ground.
In view of the above, the parties agree that the only
issue before us is whether opposer has abandoned its mark
and, therefore, whether opposer lacks superior rights in the
mark. In this connection, the effect of abandonment has
been described as follows:
Once abandoned, the mark reverts back to
the public domain whereupon it may be
Opposition No. 108,787
5
appropriated by anyone who adopts the
mark for his or her own use. Hence a
party that is found to have abandoned
its mark is deprived of any claim of
priority in the mark before the date of
abandonment and may regain rights in the
mark only through subsequent use after
the time of abandonment.
General Cigar Co., Inc. v. G.D.M., Inc., 988 F.Supp 647, 45
USPQ2d 1481, 1489 (SDNY 1997), quoting Dial-A-Matress
Operating Corp. v. Mattress Madness, Inc., 841 F.Supp 1339,
33 USPQ2d 1961, 1972-73 (EDNY 1994).
The material facts in the present case are largely
undisputed. Rather, the controversy in this case centers on
the legal implications that arise from those facts.
Applicant contends that opposer has not sold EVERETT pianos
since the early 1990’s, and that any activities since then
do not evidence an intent to resume use of the mark.
Opposer acknowledges that production of EVERETT pianos
ceased in 1989, and that its inventory of new pianos was
sold off by 1996. Opposer maintains, however, that it has
continued to use its mark and that, even in the event that
nonuse for three years is found, opposer has an intent to
resume use as shown by various business activities and, in
large part, by residual goodwill in the mark EVERETT.
The Record
Opposer’s predecessors in interest began manufacturing
pianos under the mark EVERETT in 1882. According to the
Opposition No. 108,787
6
testimony of Terry Lewis, opposer’s senior vice president,
opposer acquired the assets of Everett Piano Company located
in South Haven, Michigan in 1973.2 These assets included a
federal trademark registration, Registration No. 1,027,898
for the mark EVERETT for “pianos,”3 that expired in 1996 for
failure to renew. Over the years, pianos bearing the mark
EVERETT were sold to a variety of classes of purchasers, but
the pianos were particularly attractive to music departments
of educational entities. The record shows that EVERETT
pianos were purchased by more than 12,000 colleges,
universities, music conservatories and similar institutions.
After acquiring Everett Piano Company, opposer
continued to manufacture pianos under the mark EVERETT at
the Michigan plant; at the same plant opposer also
manufactured pianos under the YAMAHA mark. Paul Heid,
president of Heid Music Company, a chain of four retail
stores in Wisconsin, testified on behalf of opposer. Mr.
Heid stated that when opposer acquired the Everett Piano
Company, pianos sold under the mark EVERETT had an excellent
reputation in the industry, and that the quality of the
pianos improved further after opposer’s acquisition.
2 The record includes two testimonial depositions of Terry Lewis.
The first was taken by opposer on September 12, 2000, and is
identified herein as “dep. 1.” The second was taken by applicant
on August 9, 2001, with Mr. Lewis as an adverse witness, and is
identified as “dep. 2.”
3 The registration issued December 23, 1975, asserting dates of
first use of March 1882.
Opposition No. 108,787
7
Opposer’s EVERETT pianos were promoted through product
literature, sell sheets, advertisements in trade
publications, local newspapers, and on the radio. The
pianos were also promoted at trade shows for the piano
industry.
Subsequent to opposer’s acquisition, in the years 1978-
1985, Mr. Lewis testified that there was “a steep decline in
sales of pianos” industry wide, pointing to reasons such as
excess capacity in factories, severe competitive conditions
and generally poor economic conditions. Due to this
economic downturn, and the fact that the South Haven,
Michigan plant, in opposer’s view, was a very old and
inefficient facility, opposer decided to close this plant,
and operations ceased there in April 1986. At the time of
this factory’s closure, opposer decided to transfer the
Michigan plant’s production of YAMAHA pianos to opposer’s
plant in Georgia, where there was excess capacity due to a
downturn in opposer’s organ business. According to Mr.
Lewis, however, “there was not enough excess capacity there
to begin making EVERETT pianos again.” (dep 2., p. 25).
Opposer then made a decision to outsource the
production of EVERETT pianos, and consequently entered into
an original equipment manufacturer agreement with Baldwin
Piano and Organ Company (“Baldwin”) whereby Baldwin began
production in early 1987 of EVERETT pianos on behalf of
Opposition No. 108,787
8
opposer. Reaction to these Baldwin-made pianos was “mixed,”
Mr. Lewis testifying that “the quality of the piano did not
meet the traditional performance standards of the previous
EVERETT piano.” (dep. 1, p. 10). Although improvements in
the product line were made and opposer and Baldwin remained
on good terms, opposer made a decision in the summer of 1989
to end its relationship with Baldwin. Opposer was not
meeting its sales goals for its EVERETT pianos, the market
position of EVERETT pianos was weak, and in late 1989, the
contract between opposer and Baldwin was terminated.
Manufacturing of EVERETT pianos quickly ceased and,
according to Mr. Lewis, opposer has not produced a single
EVERETT piano since then. (dep. 1, p. 14; dep. 2, p. 41).
Opposer continued to manufacture its YAMAHA pianos at the
plant in Georgia.
At least two printed publications documented the
cessation of production of EVERETT pianos. The Piano Book
(2d ed. 1990) indicated that “[w]hen Yamaha moved its U.S.
piano manufacturing to Thomaston, Georgia, Everett did not
go with it.” The publication went on to state that “[t]he
contract under which Baldwin was manufacturing these pianos
for Yamaha ended in 1989 and the Everett name and piano line
was dropped permanently.” The third edition of The Piano
Book, published in 1994, included the same information.
Another piano reference book, Pierce Piano Atlas (10th ed.
Opposition No. 108,787
9
1997), stated the following: “Yamaha closed the South Haven
plant in September 1986 and moved to Thomaston, GA. Yamaha
stopped production of Everett.” Although Mr. Lewis
acknowledged these specific statements during his second
deposition, he went on to assert that there are factual
mistakes appearing elsewhere in the publications.
After manufacturing ceased in 1989, opposer continued
to sell off the excess inventory of new EVERETT pianos built
under the contract with Baldwin. Mr. Lewis testified that
“we sold out that inventory over a period of-–of years and
months after that, and again, I can’t tell you exactly when
that ceased, but we were actively engaged in selling those
pianos sometime after that.” (dep. 2, pp. 42-43). Mr.
Lewis explained that turnover in piano inventory is slower
than in other industries, and, in the specific case of
EVERETT pianos, “there was a significant business momentum
that took some time to disappear.” (dep. 2, p. 43). More
specifically, Mr. Lewis testified, at his first deposition,
that the last EVERETT pianos were sold “in around 1992.”
(dep. 1, p. 31). In his second deposition, Mr. Lewis stated
that “we sold our last EVERETT piano from inventory roughly
around 1992, 1993. I don’t have an exact date with me.”
(dep. 2, p. 19).
Regarding the sell-off of inventory, Bill Brandom,
opposer’s national piano service manager, testified that
Opposition No. 108,787
10
opposer had a substantial inventory of new EVERETT pianos
through 1992, and that EVERETT pianos were sold as late as
November 1996. In total, Mr. Brandom indicated that between
April 1989 and November 1997 (that is, when the notice of
opposition was filed), opposer sold over 3,000 new EVERETT
pianos. Upon closer inspection, we note that Exhibit 38 of
Mr. Brandom’s deposition reveals that of these 3,000 pianos,
virtually all were sold before 1991, with only 9 sold in
1992, and only 3 sold after 1992. The last two sales
occurred in September and November of 1996; Mr. Brandom
explained that “[m]ost likely they would have been pianos
sitting in one of our warehouses that Sales finally got
around to selling.” (dep., p. 22).
Mr. Heid, identified earlier, and Thomas Hoy, president
and owner of five retail music stores and two warehouses,
all located in Michigan, testified as to their sales of new
EVERETT pianos. When EVERETT pianos were being
manufactured, both Mr. Heid and Mr. Hoy sold new EVERETT
pianos in their stores. Mr. Hoy recalled that he last sold
a new EVERETT piano in 1989. Mr. Heid testified that the
last shipment of new pianos to dealers occurred in 1992,
although “I know we had EVERETT pianos on our sales floor
even, you know, for years after they were no longer
manufactured with the EVERETT name on them.” Upon further
questioning, Mr. Heid quantified these years to be “two to
Opposition No. 108,787
11
three years,” and identified his last sale of an EVERETT
piano (“not the hottest seller”) in October 1995. (dep.,
pp. 22-23; 27).
The bulk of the information relating to sales of used
EVERETT pianos also comes from Messrs. Hoy and Heid. Mr.
Hoy claimed that his stores have displayed an EVERETT piano
on showroom floors every year since 1990, and he estimated
that perhaps twenty pianos were on the floors over any one-
year period. Messrs. Hoy and Heid also testified about the
sale of EVERETT pianos coming off of rent-to-own programs
(the customer ultimately converting to ownership after a
rental period) and rent-to-rent programs (after a rental
period and resulting depreciation, the piano is then sold to
another customer). Mr. Hoy indicated that he sold such
pianos through the mid-1990’s. Mr. Hoy also testified as to
warranties on opposer’s pianos that he sold (whether new,
used or in the rental programs), indicating that “we still
potentially could have Everett pianos out there with
warranties in existence today, which would--but certainly
even in the late mid ’90s, we certainly had Everett pianos
out there with service warranties, which was a 10 or 12 year
parts and warranty on that piano.” (dep., p. 28). Mr. Hoy
stated that his music company continued to service Everett
pianos and that “probably most of the warranties would have
ended in 1999, or the year 2000.” (dep., p. 29).
Opposition No. 108,787
12
Mr. Heid recounted that, in addition to pianos coming
off of the rent-to-own program, his company sold used
EVERETT pianos. His company would purchase the piano from a
seller and then resell it, or, if the seller and Mr. Heid
could not agree on a price, the piano would be sold on a
consignment basis. Although Mr. Heid testified that used
EVERETT pianos were sold “every year,” he could not estimate
how many were sold each year; according to Mr. Heid, “it
falls under our radar scope of brand sales.” (dep., p. 29).
Mr. Heid estimated, however, that his company had an EVERETT
piano on its showroom floors in each of the last ten years.
(dep., p. 30). Mr. Heid specifically mentioned the EVERETT
“Style 11” pianos that were sold to schools, then traded in
and resold by Mr. Heid.
Insofar as service and parts for EVERETT pianos are
concerned, Mr. Brandom testified relative thereto. Mr.
Brandom’s duties, as opposer’s national piano service
manager, include management of warranty and service support
for EVERETT pianos, as well as of parts for such pianos.
Although Mr. Brandom acknowledged that no dealer is
currently selling new EVERETT pianos, he estimated that
there are over 200,000 EVERETT pianos still in use today.
He further estimated that 700-800 EVERETT pianos sold by
opposer were still under warranty at the time of his
testimony in September 2000. Mr. Brandom further indicated
Opposition No. 108,787
13
that opposer repairs EVERETT pianos beyond the life of the
warranty period in order to maintain good customer service
relations. Mr. Brandom also testified that opposer has “a
portion of the Yamaha.com Web site that is there for
consumers to be able to find out the specific age of their
EVERETT piano.” (dep., p. 7). According to Mr. Brandom,
opposer also maintains an inventory of spare parts for
EVERETT pianos. For parts not kept in inventory, opposer
contacts outside entities to manufacture such parts that may
be needed. In this connection, Mr. Heid indicated that many
piano parts are generic, although some parts are specific to
EVERETT pianos. There is no testimony, however, that any of
the parts for the EVERETT pianos bears the mark EVERETT.
Mr. Brandom stated that opposer annually receives
approximately 100-150 service calls for EVERETT pianos.
Service is then arranged by opposer, even after the warranty
has expired. Opposer maintains contact with various service
technicians with regard to servicing EVERETT pianos, and
opposer maintains service manuals for the pianos.
Mr. Lewis testified that opposer has given
consideration to manufacturing EVERETT pianos at its plant
in Georgia. Nothing was ever brought to fruition, however,
“[b]ecause the piano market actually began to improve during
the ’90s, and we did not have the excess factory capacity to
produce the instrument.” (dep. 1, p. 15). Mr. Lewis also
Opposition No. 108,787
14
confirmed that no consideration has been given to
outsourcing the EVERETT piano. Mr. Lewis indicated that “we
did discuss the possibility of selling EVERETT [pianos] to
different distribution channels than the existing Yamaha
distribution channels as an opportunity to expand the
market, but our sales and utilization of current factory
capacity was so strong, that we were not sufficiently
motivated to go further with that idea.” (dep. 1, p. 16).
Mr. Lewis testified as to other discussions regarding the
use of EVERETT, the most recent of which occurred in 1997
relative to possible production at a factory in China.
Mr. Lewis testified that the life span of an upright
console acoustic piano (the type sold under the mark
EVERETT) is estimated by the piano manufacturers’ trade
association at 68 years. Mr. Hoy stated that “older
American pianos, like Everett, were built extremely well, so
they hold up for 40, 50, 60 years. They don’t have much of
an obsolescence. So instead of people buying a new one,
they are handed down through generations before the piano
gets bad enough.” (dep., p. 32). Mr. Lewis confirmed that
opposer continues to repair and service EVERETT pianos, and
that such activities extend beyond the warranty period of
ten years.
In connection with the life span of pianos, Mr. Lewis
went on to say that
Opposition No. 108,787
15
the EVERETT trademark was a valuable
piano trademark, and piano trademarks
have a very long shelf life in the piano
industry.
Piano trademarks tend to have a lot
of long-term goodwill value associated
with the name. Even brands that have
remained dormant for years that have
been picked up by others have been
renewed with a high degree of market
success because pianos are an instrument
that lasts a very, very long time, have
established a reputation over
generations of piano teachers and piano
technicians. And the goodwill
associated with some of the better names
has lasted a very long time even though
the pianos may have not been
continuously manufactured over a
sustained period of time. (dep. 1, pp.
16-17)
Insofar as opposer’s now-canceled registration of the
mark EVERETT for pianos is concerned, it expired in 1996 for
failure to renew under Section 9 of the Act. Opposer filed
an intent-to-use application to register the mark EVERETT
for pianos on August 29, 1996 (compared with the December
26, 1995 filing date of the involved application).
The Law
Section 45 of the Trademark Act provides, in pertinent
part, that a mark is abandoned when the following occurs:
When its use has been discontinued with
intent not to resume such use. Intent
not to resume may be inferred from
circumstances. Nonuse for three
consecutive years shall be prima facie
evidence of abandonment. “Use” of a
mark means the bona fide use of that
mark made in the ordinary course of
Opposition No. 108,787
16
trade, and not made merely to reserve a
right in a mark.
A party claiming abandonment has the burden of
establishing the case by a preponderance of the evidence.
Introduction of evidence of nonuse of the mark for three
consecutive years constitutes a prima facie showing of
abandonment and shifts the burden to the party contesting
the abandonment to show either evidence to disprove the
underlying facts triggering the presumption of three years
nonuse, or evidence of an intent to resume use to disprove
the presumed fact of no intent to resume use. Rivard v.
Linville, 133 F.3d 1446, 45 USPQ2d 1374 (Fed. Cir. 1998);
Imperial Tobacco Ltd. v. Philip Morris Inc., 899 F.2d 1575,
14 USPQ2d 1390 (Fed. Cir. 1990); Cerveceria Centroamericana
S.A. v. Cerveceria India Inc., 892 F.2d 1021, 13 USPQ2d 1307
(Fed. Cir. 1989); and Stromgren Supports, Inc. v. Bike
Athletic Company, 43 USPQ2d 1100 (TTAB 1997). The burden of
persuasion remains with the party claiming abandonment to
prove abandonment by a preponderance of the evidence. On-
line Careline Inc. v. America Online Inc., 229 F.3d 1080, 56
USPQ2d 1471 (Fed. Cir. 2000).
ANALYSIS
The record establishes, and opposer does not dispute,
that opposer ceased production of EVERETT pianos in 1989,
and that opposer’s last sales of new EVERETT pianos from its
Opposition No. 108,787
17
inventory of 3,000 pianos occurred in 1996. The specific
breakdown in sales volume, as shown by Exhibit 38 (pages
0001337-38) to Mr. Brandom’s testimony, is as follows:
1991--53 pianos; 1992--9 pianos; 1993--0 pianos; 1994--1
piano; 1995--0 pianos; and 1996--2 pianos. Thus, the
evidence shows that all but 65 of the pianos were sold
before 1991; and that only three pianos were sold after
1992. So as to be clear, only 65 pianos were sold under the
EVERETT mark by opposer after 1990; only three were sold
after 1992; and no pianos were sold after 1996. As noted
above, Section 45 of the Act provides that “use” of a mark
means the bona fide use of that mark made in the ordinary
course of trade, and not made merely to reserve a right in a
mark. Here, we find that opposer’s nonuse of the mark
EVERETT for pianos began in 1992, and that the sales of
three pianos over the next four years fall short of use of
the mark in the ordinary course of trade. These sales are
especially negligible given opposer’s prominence in sales
and market share in the piano trade.
Opposer’s nonuse of the mark EVERETT for pianos since
1992 constitutes a prima facie showing of abandonment.
Lipton Industries, Inc. v. Ralston Purina Co., 670 F.2d
1024, 213 USPQ 185 (CCPA 1982); and Colgate-Palmolive Co. v.
Sanford Chemical Co., 162 USPQ 424 (TTAB 1969). The burden
thus shifts to opposer to show evidence of an intent to
Opposition No. 108,787
18
resume use to disprove the presumed fact of no intent to
resume use. We find that the circumstances surrounding
opposer’s nonuse warrant a finding that the nonuse was
accompanied by an intent not to resume use of the mark
EVERETT.
As noted above, Mr. Lewis testified that after 1989 no
new pianos were produced under the EVERETT mark. This was a
result of a decision made by opposer to cease production.
Sales made after the cessation in production consisted only
of the sell off of leftover inventory, virtually all of
which occurred by the end of 1990. In addition, Mr. Lewis
indicated that after the sell off of inventory, opposer did
not actively advertise and promote the EVERETT brand; in
point of fact, out of a considerable amount of advertising
expenditures since that time, opposer has not spent any
money in promoting pianos bearing the EVERETT mark.
Further, opposer did not license use of the EVERETT mark to
any third party, and opposer did not enter into any
agreement with a third party to manufacture pianos under the
mark EVERETT. (dep. 2, p. 43-44). The last trade show at
which an EVERETT piano was exhibited was in January 1989.
Simply put, after opposer stopped production of EVERETT
pianos and the inventory was sold off, the record is devoid
of evidence to show that the mark was used on pianos in the
ordinary course of trade.
Opposition No. 108,787
19
Due to a downturn in the piano market, opposer made a
conscious decision to stop production of EVERETT pianos in
1989. The cessation in 1989 was total in nature, with
apparently no thought given to scaling production to
correspond with the reduced market demand. When opposer
later considered resumption of production of EVERETT pianos
at its Georgia factory in light of an improved piano market
in the 1990’s, opposer decided against it because of the
lack of any excess capacity at the factory. Thus, it is
particularly telling that, in the face of an improved
market, opposer chose to use the manufacturing capacity it
did have to produce pianos under marks other than EVERETT.
When the Georgia factory did have excess capacity in the
mid-1990’s, opposer made a decision not to resume production
of EVERETT pianos because, in Mr. Lewis’ words, opposer “did
not want to disrupt traditional channels of distribution.”
Mr. Lewis also testified that opposer, in 1993-94, gave
thought to producing a digital piano under the EVERETT mark.
Opposer chose not to go forward with the idea due to
prohibitive expense and uncertain market potential. In
1997, opposer considered production of EVERETT pianos at one
of its factories located in China. Opposer declined to go
further with this idea, however, because it had an existing
contractual obligation to use another mark. Although Mr.
Lewis testified that it is “possible” that in the future
Opposition No. 108,787
20
opposer may consider having EVERETT pianos manufactured in
China, no further specifics were given.
The record reveals that when opportunities arose to use
the EVERETT mark after 1989, even during times of an
improved piano market, opposer made a business decision not
to do so. Such deliberate decisions, made on at least four
occasions, during the period of nonuse are not those that a
reasonable businessman would make pursuant to a plan to
resume use of the mark. Rivard v. Linville, supra at 1337.
These business decisions undercut opposer’s rights in the
mark and any goodwill that might have attached to the mark
in connection with pianos.4
Further, considerations regarding resumption of use
were sporadic and appear to be casual in nature, with no
specific details given about the depth of such discussions.
The “considerations” are vague, and there is no
documentation, as, for example, business plans or marketing
studies relative thereto. In short, there are no concrete
plans to resume use at any time in the future. See:
Imperial Tobacco Ltd. v. Philip Morris Inc., supra at 1394
[“the Lanham Act was not intended to provide a warehouse for
unused marks”].
4 Further, opposer does not suggest, nor has it submitted any
evidence, to indicate that it has deferred production of EVERETT
pianos because of this litigation which has been pending since
1997.
Opposition No. 108,787
21
A significant aspect of opposer’s arguments in response
to the claim of abandonment relates to the presence of
EVERETT in the piano aftermarket by way of dealers’ sales of
used pianos, and of opposer’s sales of parts, as well as by
the servicing of EVERETT pianos. Opposer argues that
notwithstanding cessation of production of EVERETT pianos in
1989, the mark continues to be in use and that, in any
event, there remains considerable residual goodwill in the
EVERETT mark.
With respect to opposer’s provision of parts and repair
services for previously sold EVERETT pianos, it would appear
that such activities are not done under the EVERETT mark.
As Mr. Heid testified, many piano parts for EVERETT pianos
are generic. Moreover, it does not appear that any parts,
including those specific to EVERETT pianos, bear the mark
EVERETT, either directly on the part or on the packaging for
the part. As to the repair services, again the record is
devoid of any evidence showing use of the EVERETT mark in
connection with the repair services. Thus, although opposer
offers parts and repair services for its EVERETT pianos, the
mark EVERETT has not been used in connection with either.
Further, the use of EVERETT on opposer’s web page is merely
a reference so that an owner of a EVERETT piano can
determine its age.
Opposition No. 108,787
22
Opposer also relies upon subsequent sales of used
EVERETT pianos by dealers such as Messrs. Heid and Hoy. We
recognize that when a manufacturer who owns a trademark is
an active participant in the aftermarket for its goods, and
continues to advertise, promote, and exploit the goodwill in
the mark to the exclusion of others, abandonment generally
will not be found. See discussion, infra. Residual
goodwill, however, is not sufficient to avoid a finding of
abandonment where the goodwill is generated through
subsequent sales of a product by distributors or retailers.
Societe des Produits Marnier Lapostolle v. Distillerie
Moccia S.R.L., 10 USPQ2d 1241, 1244 n. 5 (TTAB 1989).
Further, residual goodwill in a mark by virtue of a long
shelf life and continued sales by retailers is of little
moment here. Opposer cannot rely on some residual goodwill
through post-abandonment sales of used EVERETT pianos by
distributors or dealers. Parfums Nautee Ltd. V. American
International Industries, 22 USPQ2d 1306, 1309 (TTAB 1992).
The sales by Messrs. Hoy and Heid do not inure to opposer’s
benefit, such that these sales show use of the mark by
opposer in the ordinary course of trade. Further, there is
little information relative to the volume of such sales;
other than stating that used EVERETT pianos have been sold,
no specific number has been made of record. What evidence
Opposition No. 108,787
23
we do have suggests very limited sales, with Mr. Heid
remarking that his sales “fell under his radar scope.”
The three publications on pianos submitted by
applicant, which state that production of EVERETT pianos had
ceased, suggest that there was a perception in the industry
that the mark had been abandoned. In response to opposer’s
point that there is residual goodwill in the EVERETT mark
among service technicians and piano teachers, we would point
out that these classes of individuals may be the ones most
likely to be aware of the subject publications that state
the mark is no longer used by opposer. Although we
recognize the probative limitations of the printed
publications relied upon by applicant, these publications
tend to support the view that use of the EVERETT mark was
discontinued with an intent not to resume use.
Opposer’s self-serving testimony that opposer never
intended to abandon the mark is simply outweighed by the
objective evidence supporting the conclusion that the mark
was abandoned with an intent not to resume use. See:
Imperial Tobacco Ltd. V. Philip Morris Inc., supra. Given
the entirety of the circumstances herein, any goodwill
remaining in the EVERETT mark simply does not overcome the
evidence bearing on opposer’s lack of an intent to resume
use of the mark. The record falls short of establishing
that reasonable constancy of effort in marketing EVERETT
Opposition No. 108,787
24
pianos which would constitute persuasive evidence of an
intention to resume use of the mark in the ordinary course
of trade after 1990 when virtually all of the inventory of
EVERETT pianos had been sold. The evidence simply does not
establish that opposer is an active participant in the use
of the mark EVERETT.
In arguing that it has not abandoned the EVERETT mark,
opposer cites to several cases in support of its position,
most of which appear in its reply brief. Opposer chose to
highlight two of the cases during oral argument and, thus,
these cases bear discussion, with the caveat, however, that
“as is true with most issues of trademark law, the
determination of abandonment is peculiarly dependent on the
facts of each particular situation and remarks in prior
opinions are of little help.” Sterling Brewers, Inc. v.
Schenley Industries, Inc., 441 F.2d 675, 169 USPQ 590, 593
(CCPA 1971).
The first case is American Motors Corporation v.
Action-Age, Inc., 178 USPQ 377 (TTAB 1973) wherein the Board
found a likelihood of confusion between opposer’s mark
RAMBLER for cars and applicant’s mark SCRAMBLER for off-
highway recreational vehicles. In deciding the case, the
Board considered applicant’s affirmative defense that
opposer had abandoned its RAMBLER mark. The Board noted
that production of RAMBLER brand automobiles ceased in mid-
Opposition No. 108,787
25
1970, and went on to make the following findings of fact
relative to the abandonment claim:
While opposer does not presently employ
the mark RAMBLER on its new automobiles,
approximately two hundred to two hundred
and fifty of its dealers display the
mark RAMBLER on signs in their windows
or on their windows; about sixty dealers
incorporate the mark RAMBLER in their
company names or trade names; over two
million RAMBLER automobiles are
currently registered for vehicle
licenses throughout the United States;
opposer distributes a wide range of
automobile accessories and replacement
parts for the RAMBLER cars in cartons
and envelopes prominently displaying the
RAMBLER mark; and automobiles bearing
the mark RAMBLER are presently being
sold in South Africa, Mexico and
Australia.
Based on the evidence before it, the Board found no
abandonment:
While opposer has discontinued the use
of RAMBLER as a trademark for vehicles
produced by opposer over the past few
years, the record falls short of
establishing any abandonment thereof.
[footnote omitted] In fact, there is a
considerable reservoir of goodwill in
the mark RAMBLER in this country that
inures to opposer as a consequence of
the large number of RAMBLER vehicles
still on the road; opposer’s activities
in supplying RAMBLER parts and
accessories to owners of these vehicles;
and the use by dealers of the term
RAMBLER as a portion of their corporate
or business names and their maintenance
of RAMBLER signs on their premises.
Opposition No. 108,787
26
The facts in the present case, quite simply, are not as
compelling as those in the cited case. The uses of the mark
RAMBLER by American Motors Corporation represented
significant ongoing commercial activity. There is no
evidence herein that opposer uses the mark EVERETT in the
same manner or to the same extent. Dealers (the record
includes evidence of only two) for opposer’s used pianos do
not display the mark EVERETT on any signs or displays; no
dealers appear to use EVERETT as part of their names; and
parts supplied by opposer for EVERETT pianos do not bear the
EVERETT mark, and are not shipped in packaging bearing the
mark. Further, and in any event, the record is silent as to
the scope of revenue generated by sales of replacement parts
and the rendering of repair services, and therefore opposer
has not shown that its activities are of the breadth of the
activities in American Motors. Moreover, the period of
nonuse in the present case is at least four years longer
than that in American Motors.
The second case is Ferrari S.p.A. Esercizio Fabbriche
Automobili e Corse v. McBurnie, 11 USPQ2d 1843 (SD Cal
1989). The court there found that although production of
DAYTONA SPYDER automobiles ceased in 1974, the trademark
owner continued to manufacture and sell and to license the
manufacture and sale of mechanical and body parts for the
automobile. The court also noted that the owner maintained
Opposition No. 108,787
27
original molds and tooling for the cars, and that the cars
have continued to be driven, serviced, restored, sold and
exhibited by Ferrari customers. The court concluded that
the mark DAYTONA SPYDER remained in the public eye, and that
the goodwill symbolized by the mark was still strongly
associated with Ferrari.
We view the facts in Ferrari to be distinguishable from
the ones in the present case. Quite simply, opposer’s
ostensible level of activity under the EVERETT mark does not
rise to the levels undertaken by Ferrari. As the record
indicates, many piano service and replacement parts,
including those for EVERETT pianos, are generic, and there
is no indication that the parts supplied by opposer herein
bear the trademark at issue. Opposer itself has done very
little in the way of deliberate and continuous business
activity to keep the EVERETT mark in the public eye.
Lastly, opposer accuses applicant of being an
opportunist, with an intent to trade upon opposer’s goodwill
in the mark EVERETT. Opposer points to the fact that
applicant originally was named “Everett Piano Company” with
an address in South Haven, Michigan, that is, the town in
which opposer’s EVERETT pianos were manufactured. Opposer
also points out that applicant filed its involved
application a mere three days after opposer’s registration
expired for failure to file a renewal. Suffice it to say
Opposition No. 108,787
28
that, based on opposer’s cessation of production of EVERETT
pianos in 1989, de minimis sales after 1990, and the
expiration of opposer’s registration in 1995, it was
reasonable for applicant to believe that opposer’s mark was
abandoned and now available for adoption by it. As
succinctly stated by Professor McCarthy: “Once abandoned, a
mark may be seized immediately and the person so doing may
build up rights against the whole world.” 2 J.T. McCarthy,
McCarthy on Trademarks and Unfair Competition, §17:2 (4th
ed. 2001).
In sum, we find that opposer has abandoned the mark
EVERETT for pianos and that, therefore, it does not have
superior rights in the mark. Accordingly, opposer has not
established one of the necessary elements of a claim of
likelihood of confusion. See: American Standard Inc. v.
AQM Corporation, 208 USPQ 840, 841 (TTAB 1980).
Decision: The opposition is dismissed.