Trademark Trial and Appeal Board
Patent and Trademark Office (P.T.O.)
*1 ALBERTO-CULVER COMPANY
F.D.C. WHOLESALE CORP.
July 9, 1990
Hearing: September 12, 1989
Opposition No. 68,235 to application Serial No. 309,303 filed May 8, 1981.
Raymond I. Geraldson Jr. and Pattishall, McAuliffe & Hofstetter for Alberto-Culver Company
David Goldberg, William M. Borchard and Lynn S. Fruchter for F.D.C. Wholesale Corp.
Before Sams, Cissel and Quinn
Opinion by Sams
F.D.C. Wholesale Corp. has filed an application to register the mark "FDC" for the following goods:
chemicals, namely, sodium saccharin, for use as an artificial sweetener (in International Class 1)
baby shampoo, baby powder, enriched vitamin E cleanser for the skin, liquid hand soap, bubble bath, suntan lotion and cleansing skin lotion, baby oil and moisturizing skin lotion for external use (in International Class 3)
buffered aspirin, antacid liquid laxative, petroleum jelly, medicated and Vitamin E-enriched skin cream, antihistamine, decongestant cold capsules, wetting solution for hard contact lenses, vitamin tablets for the hair, stool softeners, acetaminophen, antacid liquid and glycerine suppositories; natural protein powder for use as a dietary food supplement (in International Class 5)
dental floss (in International Class 10) [FN1]
Alberto-Culver Company has opposed registration of applicant's mark "FDC", under Section 2(d) of Trademark Act, on the ground that applicant's mark "FDC", as applied to certain of the personal care products recited in its application, [FN2] so resembles the mark "FDS", previously used by opposer on a variety of personal care products and registered by opposer for "deodorants" [FN3] and "personal deodorant, personal deodorant towelette, and bath oil preparations," [FN4] as to be likely to cause confusion as to source.
Applicant filed an answer, in which it denied the salient allegations of the notice of opposition. Applicant filed also a counterclaim to cancel opposer's two pleaded registrations of the mark "FDS." As grounds for the counterclaim to cancel, applicant alleged that opposer has discontinued use of "FDS" on all products except feminine deodorant spray (that, in effect, opposer has abandoned the mark in connection with all products except feminine deodorant spray) and that the continued existence of the pleaded registrations with recitations of goods that encompass a broader range of products than that to which opposer in fact applies its mark is to applicant's detriment. Applicant's prayer for relief in its counterclaim to cancel is that Registration No. 831,204 be cancelled to the extent that the recitation of goods in that registration (namely, "deodorants") be limited to "feminine deodorant spray" and that Registration No. 863,268 be cancelled to the extent that the items "personal deodorant towelette" and "bath oil preparations" be stricken from the registration and the product listed as "personal deodorant" be restricted to "feminine deodorant spray". [FN5] Opposer answered the counterclaim by denying the allegations of abandonment.
*2 The record in the case consists of the application file of the opposed application, the registration files of the registrations subject of the counterclaim to cancel, applicant's answers to certain of opposer's interrogatories (made of record by opposer by means of a notice of reliance), discovery depositions taken by opposer during the discovery phase of proceedings (and introduced by opposer during the testimony period by notice of reliance), a testimony deposition filed on behalf of opposer, copies of registrations owned by applicant, [FN6] additional portions of the deposition taken by opposer during the discovery phase of proceedings (offered by applicant under Trademark Rule 2.120(j)(4)), opposer's responses to certain of applicant's requests for admissions, opposer's answers to certain of applicant's interrogatories, a testimony deposition offered on behalf of applicant, stipulated testimony of several witnesses (offered by opposer as rebuttal evidence), and a copy of a registration renewal notice issued for one of opposer's pleaded registrations (offered by opposer in rebuttal under notice of reliance).
Douglas McAuley, opposer's vice president for U.S. Consumer Products, testified for opposer. Mr. McAuley testified that he had been employed by opposer since January 1983, had held the position of vice president and general manager of the toiletries division of opposer and was, at the time of his testimony deposition, responsible for overseeing the household products and toiletries divisions of opposer. Mr. McAuley testified that opposer had sold a number of products under the mark "FDS", the most important of which products has been opposer's "FDS" feminine deodorant spray. In conjunction with his testimony, opposer offered in evidence exhibits showing packaging for the "FDS" feminine deodorant spray. Mr. McAuley testified that opposer has about six fragrances of "FDS" feminine deodorant spray on the market. He also testified that, over the years, opposer has sold other products under the "FDS" mark, including personal deodorant towelettes, underarm deodorant, and a feminine itching product. He testified that "FDS" products have been sold throughout the United States and in some foreign countries. Opposer's principal trade channels are drug stores, supermarkets, mass-merchandisers, hotel gift shops, dime stores, and general merchandise stores. Opposer sells its "FDS" products to retailers, sometimes directly and sometimes through wholesalers, rack jobbers, or other middlemen. He stated that products bearing the "FDS" mark are distributed through at least ninety percent of drug stores in the United States and eighty-five percent of chain food stores in the United States. Also in conjunction with Mr. McAuley's testimony, opposer offered in evidence, under seal, sales records maintained in connection with its "FDS" products. Sales have been substantial.
Mr. McAuley testified that opposer advertises its "FDS" products primarily on television (the witness testifying that he personally had seen television advertising for the "FDS" feminine deodorant spray as early as 1966, some 17 years before he became an employee of opposer), in magazines, and in newspapers; occasionally advertises on the radio; and, with some of its customers, does cooperative advertising. Opposer introduced into the record exhibits showing samples of such cooperative advertising and samples of print and television advertising for its "FDS" feminine deodorant spray. Opposer's "FDS" feminine deodorant spray is also advertised by point-of-sale displays of various types. Also under seal, in connection with Mr. McAuley's testimony, opposer offered evidence of the advertising and promotional expenditures it has made in connection with its "FDS" products over a number of years. Advertising and promotional expenditures for opposer's "FDS products" have been substantial.
*3 Mr. McAuley also testified that there exists a high degree of brand awareness for opposer's "FDS" mark. In support of the witness's opinion, opposer offered in evidence a brand awareness report prepared at opposer's direction. The report, dated December 30, 1983, states that a survey was conducted in August and September 1982 and in September and October 1983; that nine out of ten women surveyed were aware of feminine deodorant spray as a product category; and that eight of those ten women were aware of "FDS" feminine deodorant spray. Of those women who were aware of feminine deodorant spray as a product category, ninety-one percent were aware of the "FDS" brand (41 percent unaided, 50 percent aided). This degree of brand awareness was higher than for any other feminine deodorant spray involved in the survey. During the taking of Mr. McAuley's testimony deposition, applicant's counsel voiced an objection to the testimony concerning the survey, on the ground that no proper foundation had been laid for the witness's opinion testimony concerning the degree of brand awareness for "FDS" nor for the witness's expertise in interpreting survey results. Nonetheless, when opposer's counsel moved to admit this exhibit, applicant's counsel failed to object, nor did applicant object, in its brief on the case, to our considering this evidence. Therefore, we have considered Mr. McAuley's testimony concerning brand awareness and the survey that was introduced in conjunction with his testimony. We have, of course, taken into consideration that Mr. McAuley did not himself prepare the survey and that his testimony concerning the survey was, basically, that of one who had read the survey rather than one who was expert in designing survey questions and interpreting survey results.
On cross-examination, Mr. McAuley testified that opposer's "FDS" spray could be used for "any type of feminine deodorizing." Also on cross-examination, he testified that, since he had been employed by opposer, he was unaware of any shipment of personal deodorant towelettes under the mark "FDS" but "thinks" that the towelettes are still available at retail. Further along this line of cross-examination, applicant's counsel referred to the list of products in connection with which applicant seeks to register its "FDC" mark and inquired of Mr. McAuley whether opposer had on the market, as of the time of the deposition, under the "FDS" mark, any of the products from that list. As to each of the products about which inquiry was made, Mr. McAuley indicated that opposer did not market a product of that type under the "FDS" mark.
Additional evidence concerning opposer's use of its "FDS" mark was introduced into the record by applicant. In particular, during the discovery period, applicant served on opposer certain requests for admissions and interrogatories. The responses to those requests and interrogatories were offered in evidence by applicant under notice of reliance. Opposer admitted that the only product it now sells under its "FDS" mark is a feminine deodorant spray. Opposer admitted that sales of "FDS" feminine towelettes ceased in 1981; sales of "FDS" feminine itching medication ceased in 1980; sales of "FDS" bath oil ceased in 1982; and sales of "bath oil beads" ceased in 1978. Opposer stated that it believed that some of the "FDS" products which it had discontinued selling were, nonetheless, still available on retail shelves. In answer to an interrogatory posed by applicant, opposer stated that it had not been able to identify anyone who had been confused as a result of the contemporaneous use of "FDC" and "FDS" but that it believed that confusion had occurred and would continue to occur.
*4 Applicant offered in evidence the testimony deposition of William E. Multack, who serves as president of applicant, F.D.C. Wholesale Corporation, and president of Fedco, Inc. Other statements by Mr. Multack, made during a discovery deposition taken by opposer, were offered in evidence by opposer, under notice of reliance, and, during its testimony period, applicant submitted in evidence additional portions of that discovery deposition. The testimony deposition and proffered portions of the discovery deposition of Mr. Multack establish certain facts about applicant and its business.
Applicant F.D.C. Wholesale Corporation is a wholly-owned subsidiary of Fedco, Inc. Fedco, Inc. owns eighteen drug stores, some of which incorporate pharmacies and all of which feature health and beauty aid products. Fedco, Inc. owns also several wholesale divisions which supply to it the products that are sold in its retail drug stores. One of the wholesale companies owned by Fedco, Inc. is applicant F.D.C. Wholesale Corporation. F.D.C. Wholesale Corporation packages and sells to Fedco, Inc. "FDC" private label merchandise, including "FDC" vitamins and health and beauty aids. At least as early as 1971, when Mr. Multack became an employee of applicant, applicant was in the business of making private label vitamins for Fedco, Inc. Use of the "FDC" private label expanded from vitamins to vitamin E cream in about 1973. In approximately 1975, applicant decided that it would begin packaging vitamins for distribution to Fedco, Inc., rather than continuing to obtain prepackaged vitamins to which it applied the "FDC" trademark. In 1976 applicant opened a facility to begin packaging its own vitamin products. That operation continues to the present. In about 1978, applicant expanded its private label program and began distributing "FDC" baby shampoo, baby powder, baby oil, and an expanded line of vitamin E products. Applicant offered in evidence exhibits showing photographs of some of its private label "FDC" products. Applicant also made of record a photocopy of a label for "FDC" petroleum jelly, which product applicant began distributing under the "FDC" mark "a few years ago." Among the products marked with the "FDC" private label and distributed by applicant are bubble bath, suntan lotion, skin care lotion, baby oil, enriched skin lotion, liquid hand soap and body soap, medicated skin cream, baby shampoo, petroleum jelly, underarm deodorant, and a feminine hygiene (disposable douche) product.
Mr. Multack stated in his testimony deposition that "FDC" products are distributed primarily through Fedco, Inc. retail locations and are also exported to South America, Central America, the Caribbean, and also to Italy. Fedco, Inc. markets "FDC" products, typically, by placing them adjacent to a similar product bearing a well-known trademark (a "national brand"), with a sign beneath the products giving the "national brand" price and the "FDC" price. Advertising of "FDC" products is most often accomplished by use of "COMPARE AND SAVE" signs, placed in the retail establishments in which the products are sold. There is almost no newspaper or television advertising of "FDC" products.
*5 Mr. Multack testified that he was aware of the "FDS" feminine deodorant spray and that the product was carried in Fedco retail stores in four different types and each type in two different sizes. Further supplementing the evidence of applicant's awareness of the "FDS" mark, opposer made of record, by notice of reliance, the discovery depositions of three employees of applicant's related companies. These witnesses testified that they knew of the use of the "FDS" mark in connection with feminine hygiene deodorant spray as early as the 1960s.
Mr. Multack testified that the "FDS" product is displayed in the feminine hygiene section of each Fedco retail store, in which section are also displayed douche products, feminine syringes and water bottles, feminine deodorant sprays, pregnancy test kits, contraceptive products, tampons, feminine napkins, and feminine-related analgesics. Mr. Multack testified also as to the sections of the Fedco retail stores in which the products in connection with which it seeks to register its mark are displayed. In particular, "FDC" baby shampoo, baby powder, baby oil, and petroleum jelly are displayed in the baby products section; "FDC" vitamin E cleanser, moisturizing skin lotion, and vitamin E enriched skin cream are displayed in the skin and cream lotion section; "FDC" vitamins are displayed in the vitamin section; "FDC" liquid hand soap is displayed in the bar soap section; "FDC" baby bubble bath is displayed in the bath products section; "FDC" suntan lotion is displayed in a separate suntan lotion section; and petroleum jelly is displayed in the analgesics section (as well as the baby products section) of the stores.
Mr. Multack testified that he knew of no trademark for a feminine hygiene product which was also being used by its owner on products other than feminine hygiene products. The witness did recall, however, the marketing of an "FDS" underarm spray at the time he began working with applicant.
On cross-examination, Mr. Multack stated that he believed that deodorants are designed and promoted for specific body areas and are not interchangeable. By stipulation, opposer added to the record pages from the discovery deposition of Mr. Multack in which Mr. Multack stated that applicant's list of proposed products could be properly described as both "bath personal care products" and "toiletries."
In rebuttal, opposer offer the stipulated testimony of five witnesses. Four of these witnesses testified as to their having used or having observed others use "FDS" feminine deodorant spray for a purpose other than feminine hygiene: viz., as a foot deodorant and as an underarm deodorant. The stipulated testimony of one additional witness, Dr. August Fiebig, was also offered. Dr. Fiebig testified that the chemical makeup of "FDS" feminine deodorant spray makes it suitable as a deodorant for any part of the body or as an after bath spray or fragrance spray.
The positions taken by the parties in this opposition can be stated succinctly. Opposer argues that, because of the widespread recognition of its previously used and registered trademark "FDS" in connection with feminine deodorant spray, use of the similar mark "FDC" on the toiletry and bathroom personal care products in connection with which applicant seeks to register the latter mark is likely to cause confusion as to source. For its part, applicant argues that, while the mark "FDS" is registered for a number of products and, in particular, for goods described as a "deodorant" and a "personal deodorant," the actual use of the "FDS" mark has been on a single product, feminine deodorant spray, which product occupies a distinct market in the toiletries field, such that purchasers would not be likely to believe that products bearing its "FDC" mark emanate from the same source as does the "FDS" feminine deodorant spray. Applicant's counterclaim for partial cancellation of opposer's pleaded registrations, thus, forms an essential part of applicant's defense to the opposition. We believe that the evidence in this case establishes that opposer is entitled to judgment, even if its registrations were restricted in the manner sought by applicant in its counterclaim for partial cancellation.
Likelihood of Confusion
*6 In determining the issue of likelihood of confusion, we have examined the evidence of record in light of the factors established by our reviewing court in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). The first relevant du Pont factor for consideration is the similarity or dissimilarity of the marks, in their entireties, as to appearance, sound, connotation and commercial impression. Here, both marks consist of three letters ("FDS" and "FDC"), the first two of which are identical. Although the parties may have derived their three-letter marks from the initial letters of quite different three-word phrases (and the evidence is not entirely clear concerning the derivation of applicant's "FDC" mark), neither party's combination of letters has been shown to have any special meaning, aside from trademark significance, to purchasers of the parties' goods. Both marks are unpronounceable letter combinations. As such, they may be inherently difficult to remember and thus more susceptible of confusion or mistake than are word marks, particularly where, as here, the marks consist of three letters and only the last letters are different. See Weiss Associates, Inc. v. HRL Associates, Inc., 902 F.2d 1546, 14 USPQ2d 1840, 1841 (Fed. Cir. 1990) [confusion found likely in contemporaneous use of "TMM" and "TMS" on computer software]; Chemetron Corp. v. N.R.G. Fuels Corp., 157 USPQ 111 (TTAB 1968) [confusion found likely in contemporaneous use of "NCG" for compressed gases and "NRG" for liquified petroleum gas, etc.]
The second relevant du Pont factor to consider is the similarity or dissimilarity in the nature of the goods or services, as described in the application or registration or in connection with which opposer has shown prior use of its mark. Applicant attempted during its testimony period to introduce evidence that would convince us that feminine hygiene deodorant spray (opposer's product) is a unique product and would be so viewed by prospective purchasers. To that end, applicant introduced evidence showing that feminine hygiene products are sold in a section of its parent company's retail stores different from those sections in which those retail stores sell the "FDC" products for which applicant seeks registration of its mark. That evidence notwithstanding, this record establishes that the general nature of feminine deodorant spray and many of the products for which applicant seeks to register its "FDC" mark is the same: they are all relatively inexpensive, cosmetic, personal care products applied to the body. Thus, we find the products more similar than dissimilar in basic nature, for purposes of determining whether prospective purchasers would believe such products emanate from the same commercial source.
The third relevant du Pont factor to be considered is the similarity or dissimilarity of established, likely-to-continue trade channels. While applicant's "FDC" products are now being sold (at least in the United States) only in retail stores operated by applicant's parent company, Fedco, Inc., the recitation of goods in the application contains no limitation as to channels of trade. Here, in any event, the record makes clear that opposer's "FDS" product has been sold for many years in applicant's parent's retail establishments. While these products may not all be sold in the same section of those retail stores, this record presents convincing proof that opposer's product and applicant's products are sold in the same general distribution channels, namely, drug stores and similar consumer-oriented retail outlets.
*7 The fourth relevant du Pont factor, namely, the conditions under which and buyers to whom sales are made, i.e. "impulse" vs. careful, sophisticated purchasing, also weighs in opposer's favor. Here, the products of both parties are relatively inexpensive cosmetic items, which are likely to be purchased on impulse, without careful study of the trademark applied to the product. See Helene Curtis Industries, Inc. v. Suave Shoe Corp., 13 USPQ2d 1618 (TTAB 1989) [in holding confusion likely in the contemporaneous use of "SUAVE" for shoes and for personal care products, the Board found the parties' goods to be subject to impulse purchase and frequent replacement].
The fifth relevant du Pont factor requiring our attention is the fame of the prior mark (sales, advertising, length of use). Here, the record establishes that opposer's "FDS" mark has been in use on feminine hygiene deodorant spray for more than twenty years; that sales have been extensive; and that advertising of the mark, including television advertising, has been substantial. The inference we draw from the evidence submitted by opposer is that its "FDS" mark is widely recognized in its product category, an inference made even more compelling to draw by the survey evidence of record, showing opposer's "FDS" mark to have an extremely high recognition among women who were aware of feminine deodorant sprays as a product category. Where a mark is famous, that factor is entitled to careful consideration in determining the issue of likelihood of confusion. See Specialty Brands, Inc. v. Coffee Bean Distributors, Inc., 748 F.2d 669, 223 USPQ 1281 (Fed. Cir. 1984). While the fame of opposer's "FDS" mark attaches to one particular product, namely feminine hygiene deodorant spray, opposer's goods and those for which applicant seeks registration of its "FDC" mark are sufficiently related in basic nature, as noted above, that the famous "FDS" mark would be likely to quietly insinuate itself into the prospective purchaser's mind as she (or he) casually scanned the retail drug store shelves and encountered cosmetic and personal care products bearing the similar "FDC" trademark.
The sixth relevant du Pont factor is the number and nature of similar marks in use on similar goods. Here, there is no evidence that any party, other than those before us, uses a trademark consisting of letters similar to either "FDS" or "FDC" on cosmetic products of the type on which these parties use their respective marks. The absence of such evidence makes out an even stronger case for according the fame of the "FDS" mark great weight in this case.
The seventh relevant du Pont factor is the nature and extent of any actual confusion. The evidence presented to us fails to show any instance of actual confusion, in spite of sales of both parties' products in the same retail stores. Thus, this du Pont factor weighs in applicant's favor. Nonetheless, as has often been said, evidence of actual confusion is difficult to come by, particularly where inexpensive consumer items are involved.
*8 In weighing the evidence in this case in light of all the relevant du Pont factors, we are obliged to find that confusion as to source is likely. In particular, we deem confusion likely in view of the similarity of the parties' letter marks, the similarity in nature of the parties' cosmetic, personal care products, the similarity of distribution channels, and the well-established fame of opposer's mark.
The Counterclaim for Partial Cancellation
We turn now to applicant's counterclaim for partial cancellation. We note, first of all, that, although we have found for opposer on the issue of likelihood of confusion, that finding does not deprive applicant of the standing to assert its counterclaim for partial cancellation. The standing for that counterclaim flows from applicant's having had both registrations asserted against it in the opposition that we have just decided in opposer's favor. Thus, although applicant has not prevailed in the opposition proceeding, if evidence in this case proves the existence of a proper ground for sustaining applicant's counterclaim for partial cancellation, the Board has authority to effect such partial cancellation.
Section 18 of the Lanham Act (15 U.S.C. Sec. 1068), as amended by the Trademark Law Revision Act of 1988, spells out the Commissioner's authority, exercised by the Trademark Trial and Appeal Board, in inter partes cases. That section, as amended, provides as follows:
In such proceedings [interference, opposition to registration, application to register as a lawful concurrent user, or application to cancel the registration of a mark] the Commissioner may refuse to register the opposed mark, may cancel the registration, in whole or in part, may modify the application or registration by limiting the goods or services specified therein, may otherwise restrict or rectify with respect to the register registration of a registered mark, may refuse to register any or all of several interfering marks, or may register the mark or marks for the person or persons entitled thereto, as the rights of the parties hereunder may be established in the proceedings....
The language of amended Section 18 is broad, especially that language allowing the Board to "restrict or rectify with respect to the register the registration of a registered mark4)4B'D'DD' The "rectify with respect to the register" language of amended Section 18 is nearly identical to the language included in Section 37 of the Lanham Act (15 U.S.C. 1119), which spells out the authority of the courts in cases involving registered trademarks. [FN7] In spite of the broad language of Section 18, the somewhat scant legislative history of the amendments to Section 18 describes a purpose for amending the section that is more narrow of focus than the broad language of the amendment would suggest. In particular, that history states that one of the purposes of the revision to Section 18 was to give the Board authority "to limit or otherwise modify the goods or services in a registration or application in order to avoid a likelihood of confusion4)4B'D'DD' (emphasis added) (H. R. Rep. No. 1028, 100th Cong., 2d Sess. 12) or "to base determinations of likelihood of confusion on marketplace realities rather than on hypothetical facts." (S. Rep. No. 515, 100th Cong., 2d Sess. 35). The blueprint for the change to Section 18, as with many of the changes wrought by the Trademark Law Revision Act of 1988, was the United States Trademark Association's Trademark Review Commission Report and Recommendations, 77 Trademark Rep. 375 (1987). That report briefly discussed the Board's hypothetical, rather than "real world," approach to decision-making in some cases, which approach was believed to be attributable to limitations imposed on the Board by the Lanham Act, and recommended amending Section 18 to give the Board authority to "modify a description [of goods or services] if it would avoid likelihood of confusion." (77 Trademark Rep. at 452-3). The language recommended by the Trademark Review Commission Report for amending Section 18 was the broad language eventually included in the Trademark Law Revision Act of 1988.
*9 Although the legislative history of Section 18 refers to situations in which a finding of likelihood of confusion may be avoided by restriction of the goods or services in an application or registration (and that situation is the one most likely to provoke a request that the Board exercise its authority under Section 18), the language of Section 18 is broad enough to allow the Board to "rectify" the register by deleting from the registration asserted by a plaintiff (i. e., an opposer or a cancellation petitioner) specific items of goods on which the plaintiff's mark is no longer used or by modifying or restricting an overbroad statement of plaintiff's (registrant's) goods, even where a deletion, modification, or restriction will not avoid a finding of likelihood of confusion. [FN8] Thus, in this case, even though we have found that confusion is likely no matter how narrowly opposer's "deodorants" are described, the Board has authority under Section 18 to restrict opposer's registrations, if the evidence adduced at trial shows that the registrant is using the registered mark on a narrower class of goods or services than that for which it was originally registered. Given the proper evidentiary showing, such an exercise of authority would amount to recognition of "real world" trademark use of the sort alluded to in the Trademark Review Commission's report and recommendations.
Applicant seeks, by means of its counterclaim, to delete from one of opposer's registrations two products for which the "FDS" mark is registered but on which, applicant claims, opposer no longer uses the mark "FDS." The counterclaim also seeks to restrict both registrations insofar as those registrations list opposer's goods as "deodorants" or "personal deodorant", when in fact the product in connection with which opposer has always used its mark is a specific kind of deodorant, namely, feminine hygiene deodorant spray. As a statutory ground for partial cancellation of opposer's two registrations (i. e., for deletion of two items of goods from one registration and modification, in the form of a restriction of the recitation of goods, of both registrations), applicant asserted abandonment, urging that opposer has, in effect, abandoned use of the mark "FDS" on all deodorant (or personal deodorant) products except for feminine hygiene deodorant spray. For purposes of considering whether applicant has established a basis for restricting opposer's registrations in the manner sought, we will accept, without reexamining in this case, the Board's prior determination, discussed above, that abandonment is a proper ground for seeking partial cancellation in the nature of a restriction.
As to opposer's Registration No. 863,268, applicant has sustained the burden of proving that opposer has ceased use, with no intention to resume use, of "FDS" on personal deodorant towelettes and bath oil preparations. While opposer offered some testimony to the effect that some of opposer's "FDS" personal deodorant towelettes, sold by opposer several years ago, may remain on retailer's shelves, the evidence was not compelling. More compelling was the admission by Mr. McAuley, in his testimony deposition, that he was unaware of any shipment of "FDS" products, apart from feminine hygiene deodorant spray, since his employment with the company. Moreover, in answer to applicant's requests for admissions, opposer admitted that it is now manufacturing for sale under the "FDS" mark only its feminine hygiene deodorant product and that it discontinued sales of "FDS" feminine deodorant towelettes in 1981, feminine itching medication in 1980, bath oil in 1982 and bath oil beads in 1978. Opposer offered no evidence from which an inference could be drawn that opposer had any plans to resume use of the "FDS" mark on any of these goods. Thus, we find, on this record, that applicant is entitled to judgment on its counterclaim for cancellation of opposer's registration for the mark "FDS" as to "personal deodorant towelette and bath oil preparations" in Registration No. 863,268.
*10 A different issue arises with respect to the cancellation counterclaim insofar as it seeks to restrict the identification of goods in opposer's registrations from "deodorant" or "personal deodorant" to "feminine deodorant spray." While the evidence in this case shows that opposer now uses its mark on feminine hygiene deodorant spray and not on any other sort of personal deodorant, we do not believe applicant has made out a case, on the grounds of abandonment, for the restrictions it seeks to make in opposer's two registrations.
Restriction of opposer's registrations in the manner sought by applicant would be an appropriate remedy to impose only if the evidence of record demonstrated that opposer's goods, as they are identified in the registration, included a meaningful sub-category of goods or services in connection with which opposer had abandoned (i. e., never made use or no longer makes use of) its mark. Stated differently, the Board will decline to exercise its authority under Section 18 to narrow recitations of goods and services in existing registrations unless the party seeking such a narrowing or restriction has established by a proper evidentiary showing that a narrowing or restriction is necessary to represent fairly the nature of registrant's goods vis-a-vis the goods of others in the marketplace. No such case has been made here (and, indeed, it would seem difficult to make such a case in the face of a finding by the trier of fact that confusion is likely even with respect to the proposed narrower recitation of goods). While feminine hygiene deodorant spray is arguably a narrower product category than "personal deodorant," applicant did not marshal evidence that convinces us that, in the trade or in the minds of consumers, "personal deodorant" is an overbroad description of the products on which opposer uses its mark "FDS." Both the term "deodorant" and the term "personal deodorant" aptly and fairly describe the product on which this record shows opposer now uses its trademark "FDS."
DECISION: The opposition is sustained; the goods in International Class 3 of applicant's application will be stricken from the application, and the items "petroleum jelly" and "medicated and Vitamin E-enriched skin cream" will be stricken from the list of goods recited in International Class 5 of applicant's application. The counterclaim for cancellation is sustained only to the extent that the items "personal deodorant towelette and bath oil preparations" will be stricken from Registration No. 863,268.
J. D. Sams
R. F. Cissel
T. J. Quinn
Members, Trademark Trial and Appeal Board
FN1. Serial No. 309,303, filed May 8, 1981.
FN2. Opposer's opposition in this case was filed against only two classes of goods in which applicant seeks to register its "FDC" mark: International Class 3 and International Class 5. In its notice of opposition, opposer stated its objection to registration of applicant's mark as to all the goods recited in the application in International Class 3 but, as to those goods recited in International Class 5, opposer objected only to the registration of applicant's mark "FDC" for "petroleum jelly" and "medicated and vitamin E-enriched skin cream."
FN3. Registration No. 831,204, issued June 27, 1967 (combined affidavit under Sections 8 & 15 filed; renewed).
FN4. Registration No. 863,268, issued January 7, 1969 (combined affidavit under Sections 8 & 15 filed; renewed).
FN5. When, prior to the trial of this case, applicant moved to amend its answer to assert a counterclaim to cancel opposer's two registrations, opposer filed a brief in opposition to the motion to amend to add a counterclaim, asserting that the remedy of partial cancellation or restriction of its registrations, sought by applicant by way of a counterclaim, was not available by the mechanism of a counterclaim for cancellation. Opposer argued also that the proposed counterclaim did not, in any event, state a claim, in that applicant acknowledged that opposer had been using and had not ceased use of the mark "FDS" on the same type of deodorant product, namely, feminine deodorant spray, since the time it applied for and obtained its registration.
The Board allowed the counterclaim, finding that it had authority to entertain a counterclaim for partial cancellation and that the allegations made by applicant in its counterclaim stated a proper ground of abandonment under the Trademark Act. Alberto-Culver Co. v. F.D.C. Wholesale Corp., 3 USPQ2d 1460 (TTAB 1987). In so finding, the Board cited authority in support of its position. The authority of the Board to consider a counterclaim for partial cancellation, under certain circumstances, would seem now to be indisputable in view of the amendment to Section 18 of the Trademark Act (15 U.S.C. Sec. 1068) effected by the Trademark Law Revision Act of 1988. The Commissioner's authority under Section 18, discussed more fully, infra, is now exercised by the Board under Trademark Rule 2.133, amended effective November 16, 1989.
FN6. During its testimony period, applicant offered in evidence, under a notice of reliance, copies of some nine trademark registrations issued to applicant by the U.S. Patent and Trademark Office for marks incorporating the letters "FDC", all but one of the marks having been registered for vitamins. At the time of the submission of this evidence, opposer filed a motion to strike, on the grounds that applicant's ownership of previously issued registrations of its mark "FDC" for products not involved in the present opposition proceeding was irrelevant to any issue in the proceeding. The Board, at that time, deferred action on the motion. Opposer renewed the motion in its brief on the case and again on oral argument. The motion to strike is denied. As applicant argues in opposition to the motion, to the extent that certain evidence offered by opposer suggests that applicant knew of opposer's "FDS" mark at the time it adopted the mark "FDC" for the products covered by present application and to the extent that an inference might be drawn from that evidence that applicant had an intent to trade upon opposer's "FDS" mark when it adopted the allegedly similar "FDC" mark for the goods in the present application, the existence of prior registrations of applicant's "FDC" mark for vitamins and other products tends to rebut such an inference of bad faith adoption.
FN7. Section 37 of the Lanham Act (15 U.S.C. Section 1119) provides as follows:
In any action involving a registered mark the court may determine the right to registration, order the cancellation of registrations, in whole or in part, restore cancelled registrations, and otherwise rectify the register with respect to the registrations of any party to the action. Decrees and orders shall be certified by the court to the Commissioner, who shall make appropriate entry upon the records of the Patent and Trademark Office, and shall be controlled thereby.
FN8. Any exercise of the Board's authority to restrict or otherwise modify a plaintiff's pleaded registration is governed by Trademark Rule 2.133(d), effective November 16, 1989, which provides as follows:
A plaintiff's pleaded registration will not be restricted in the absence of a counterclaim to cancel the registration in whole or in part, except that a counterclaim need not be filed if the registration is the subject of another proceeding between the same parties or anyone in privity therewith.