Trademark Trial and Appeal Board
Patent and Trademark Office (P.T.O.)
*1 AMERICAN PAGING, INC.
AMERICAN MOBILPHONE, INC.
Cancellation No. 16,232
November 15, 1989
Hearing: February 16, 1989
Barry J. Cutler, Tmothy W. Jenkins and O'Connor & Hannan for American Paging, Inc.
Thad G. Long, Linda A. Friedman, Michael J. Brandt and Bradley, Arant, Rose & White for American Mobilphone, Inc., pro se.
Before Sams, Seeherman and Hanak
American Paging, Inc. (petitioner) has petitioned to cancel Registration No. 1,388,576 for the mark AMERICAN MOBILPHONE PAGING and design (below) owned by American Mobilphone, Inc. (registrant). The services listed in the registration are "mobile communications, namely radio paging services and mobile radio telephone services." The registration issued on April 1, 1986 with a claimed first use date of July 15, 1983. For the sake of clarity, it should be noted that a radio pager or "beeper" is a one-way communication device that sends a signal to the wearer notifying him that a message is waiting. Pagers or beepers are often worn by doctors. In contrast, a mobile radio telephone is a two-way communication device that allows conversation between multiple parties.
TABULAR OR GRAPHIC MATERIAL SET FORTH AT THIS POINT IS NOT DISPLAYABLE
Petitioner alleges that continuously since September 1981, it has made use of the mark AMERICAN PAGING for radio paging services. Petitioner further alleges that the contemporaneous use of AMERICAN MOBILPHONE PAGING and design by registrant and AMERICAN PAGING by petitioner is likely to result in confusion, mistake or deception. Section 2(d) of the Lanham Trademark Act (15 U.S.C. § 1052d). In addition, petitioner has filed a motion to amend its petition for cancellation to include a claim that registrant has abandoned its rights in the mark AMERICAN MOBILPHONE PAGING. [FN1]
In response, registrant alleges that priority lies in its favor because (1) in actuality, it began identifying its services as AMERICAN MOBILPHONE PAGING prior to September 1981, and (2) in any event, registrant is entitled to "tack" onto its use of AMERICAN MOBILPHONE PAGING its earlier use of the mark AMERICAN MOBILPHONE which, having commenced in January 1980, predates petitioner's earliest use of AMERICAN PAGING. In this regard, registrant contends that "the term 'paging' is merely descriptive of, if not generic for, the services provided by [registrant].... As a result, [registrant] is permitted to add the descriptive term 'paging' to its existing service mark [AMERICAN MOBILPHONE], and to retain its admitted priority...." (Registrant's brief page 6).
As for the issue of abandonment, registrant has moved to strike evidence relating to this claim on the ground that petitioner failed to offer evidence on this issue during petitioner's testimony period and instead improperly relied upon rebuttal testimony. [FN2]
Finally, registrant has pled that petitioner should be barred from obtaining the relief which it seeks inasmuch as petitioner has misused the federal trademark registration notice in connection with petitioner's unregistered mark AMERICAN PAGING.
We will consider first the issue of priority of use. As noted, in its application to register AMERICAN MOBILPHONE PAGING and design (now Registration No. 1,388,576), the registrant claimed a first use date of July 15, 1983. However, in this proceeding, registrant claims that it "began answering its telephone and otherwise identifying its services as 'American Mobilphone Paging' prior to petitioner's commencing customer service [under the mark AMERICAN PAGING] in September 1981." (Registrant's brief page 17). [FN3] In support of its claim that it used AMERICAN MOBILPHONE PAGING prior to September 1981, registrant relies upon the testimony of W.C. Blane, its former CEO, and upon invoices dated May 1, 1981 and August 1, 1981. Mr. Blane testified that in 1979, registrant utilized the name AMERICAN MOBILPHONE, and the name "sort of very quickly evolved into AMERICAN MOBILPHONE PAGING." We find Mr. Blane's testimony to be vague as to time periods, and, as registrant concedes, unsupported by documentary evidence.
As for the invoices, what appears on them, in part, is the following statement which is depicted in subordinate fashion in typed, solid capital letters: "WE APPRECIATE YOUR COOPERATION AND PLEDGE TO YOU OUR CONTINUING EFFORTS TO IMPROVE THE QUALITY AND FLEXIBILITY OF THE AMERICAN MOBILPHONE PAGING SYSTEM." On the top of each of these two invoices there appears in prominent fashion the mark AMERICAN MOBILPHONE and design, as shown below.
It is clear that on the invoices, registrant is not using the phrase AMERICAN MOBILPHONE PAGING in the manner of a service mark or trade name. Rather, as used on the invoices, "paging system" would be viewed as a separate phrase identifying the type of service provided by AMERICAN MOBILPHONE, and registrant concedes as much. (Registrant's brief page 18). Accordingly, we find that registrant has not established use of the mark or name AMERICAN MOBILPHONE PAGING prior to September 1981. [FN4]
As noted earlier, registrant also claims priority of use for the mark AMERICAN MOBILPHONE PAGING and design on the basis that onto such use can be "tacked" registrant's earlier use of AMERICAN MOBILPHONE and design (shown above), which petitioner concedes dates back to January 1980. Registrant argues that there can be no dispute that the term "paging" is merely descriptive of, if not generic for, at least some of the services provided by registrant, and as a result, registrant "is permitted to add the descriptive term 'paging' to its existing service mark [AMERICAN MOBILPHONE], and to retain its admitted priority." (Registrant's brief page 6).
In arguing that tacking should not be permitted, petitioner asserts that AMERICAN MOBILPHONE PAGING and design is not the legal equivalent of AMERICAN MOBILPHONE and design, as witnessed by registrant's own actions. In particular, petitioner points to the fact that registrant filed separate applications for (1) AMERICAN MOBILPHONE and design with a claimed first use date of November 1, 1979 (now Registration No. 1,405,568), and for (2) AMERICAN MOBILPHONE PAGING and design with a claimed first use first use date of July 15, 1983. Petitioner also argues that registrant recognizes that its two marks create different commercial impressions as shown by the way registrant uses these marks in its own advertising. Petitioner notes, for example, that in the October 1987 South Central Bell Yellow Pages for Birmingham, Alabama, registrant advertised its services under three separate classifications. When registrant advertised under "Cellular Telephones" and under "Mobile Telephone Equipment & Supplies," it utilized the designation AMERICAN MOBILPHONE and design. In contrast, when registrant advertised under "Paging & Signaling Equipment & Systems," it utilized the designation AMERICAN MOBILPHONE PAGING and design.
*3 It has been noted that the "tacking" of an earlier use of one mark onto the later use of a very similar mark, for the purposes of priority, has been permitted only in "rare instances." 1 J. Gilson, Trademark Protection and Practice, Section 3.03 at page 3-48 (1983). A party seeking to rely on its use of an earlier mark may do so only if the earlier mark is "the legal equivalent of the mark in question or indistinguishable therefrom, and would be considered by purchasers as the same mark." Compania Insular Tabacalera v. Camacho Cigars, Inc., 167 USPQ 299, 303 (TTAB 1970). See also Ilco Corp. v. Ideal Security Hardware Corp., 527 F.2d 1221, 188 USPQ 485, 487, (CCPA 1976). Moreover, it has been made clear that for the purposes of tacking, two marks are not necessarily legal equivalents merely because they would be deemed confusingly similar. Compania Insular Tabacalera, 167 USPQ at 303.
Applying the foregoing standard to the facts of this case, we hold that AMERICAN MOBILPHONE and design is not the legal equivalent of AMERICAN MOBILPHONE PAGING and design, and that therefore the uses of these two marks cannot be tacked together. While we concede that this is a close question, we believe that purchasers would distinguish the two marks and would not consider them to be the same.
We note that in arguing that AMERICAN MOBILPHONE and design and AMERICAN MOBILPHONE PAGING and design are legal equivalents, registrant relies primarily on American Security Bank v. American Security and Trust Co., 571 F.2d 564, 197 USPQ 65 (CCPA 1978) where the court held that, when used for banking services, the marks AMERICAN SECURITY and AMERICAN SECURITY BANK are legal equivalents because "customers using the services would know they were dealing with a bank." American Security Bank, 197 USPQ at 67. However, in contrast to American Security Bank, registrant herein does not provide one type of service, but rather two types: mobile phone services and radio paging services. Customers who simply saw the mark AMERICAN MOBILPHONE and design and who simply utilized registrant's mobile phone services, would not know they were dealing with a company that also rendered paging services. In short, the mark AMERICAN MOBILPHONE PAGING and design conveys more information to potential customers than does the mark AMERICAN MOBILPHONE and design. Thus, when registrant advertised in the 1987 Birmingham Yellow Pages under "Paging & Signaling Equipment & Systems," it did not use simply the mark AMERICAN MOBILPHONE and design, taking for granted that consumers would automatically recognize that registrant is also a paging company. Rather, registrant--when it advertised under the "Paging & Signaling Equipment & Systems" category--used a different and more informative mark, namely, AMERICAN MOBILPHONE PAGING and design. In short, the marks AMERICAN MOBILPHONE and design and AMERICAN MOBILPHONE PAGING and design create different commercial impressions and hence are not legally identical.
*4 In making our decision, we recognize that visually registrant's two marks are quite similar. Both are dominated by the word AMERICAN and the same star and double bar design. The words MOBILPHONE and MOBILPHONE PAGING are, of course, depicted in subordinate fashion. Nevertheless, even if the marks are visually barely distinguishable, they are distinguishable when spoken. Moreover, as noted above, in terms of connotation, the mark AMERICAN MOBILPHONE PAGING and design is more informative than and hence legally different from AMERICAN MOBILPHONE and design.
Having found that registrant cannot tack its earlier use of AMERICAN MOBILPHONE and design onto its later use of AMERICAN MOBILPHONE PAGING and design, and having found that petitioner used AMERICAN PAGING before registrant used AMERICAN MOBILPHONE PAGING and design, we find that priority of use rests with the petitioner. Moreover, we agree with petitioner that when the marks AMERICAN PAGING and AMERICAN MOBILPHONE PAGING and design are used for identical services (i.e. radio paging services), there is likelihood of confusion. Registrant does not seriously dispute the fact that confusion is likely, as witnessed by the fact that nowhere in its brief does registrant discuss the issue of likelihood of confusion.
Having found that priority rests with petitioner and that there is a likelihood of confusion, we consider now whether petitioner is barred from the relief it seeks by virtue of its misuse of the federal trademark registration notice in connection with its unregistered mark AMERICAN PAGING. In reviewing all of the evidence, we are persuaded that petitioner's misuse of the "(R)" symbol was inadvertent, and was not a deliberate act to deceive. Accordingly, petitioner is not barred from obtaining the relief which it seeks in this proceeding. See generally 1 J. McCarthy, Trademarks and Unfair Competition, § 19:53 at pages 1004-1005 (2d ed. 1984). [FN5]
In sum, we find that Registration No. 1,388,576 for AMERICAN MOBILPHONE PAGING and design should be canceled on the basis that priority of use rests with petitioner, and that the contemporaneous use of petitioner's mark AMERICAN PAGING and registrant's mark AMERICAN MOBILPHONE PAGING and design is likely to cause confusion when both marks are used for paging services.
Having determined that petitioner is entitled to the relief it seeks based upon its claim pursuant to Section 2(d) of the Lanham Act, we need not address petitioner's claim that registrant has abandoned its rights in the mark AMERICAN MOBILPHONE PAGING and design. Cf. Sweetheart Plastics, Inc. v. Detroit Forming, Inc., 743 F.2d 1039, 223 USPQ 1291, 1296 n. 4 (4th Cir.1984); Soweco, Inc. v. Shell Oil Co., 617 F.2d 1178, 207 USPQ 278, 288 n. 30 (5th Cir.1980); Goldring, Inc. v. Towncliffe, Inc., 234 F.2d 265, 110 USPQ 284, 285 (CCPA 1956). Moreover, inasmuch as registrant has moved to strike petitioner's claim of abandonment, and inasmuch as petitioner has urged that we not consider its abandonment claim if we grant its cancellation petition pursuant to Section 2(d) (Petitioner's brief pages 46-47), we elect to consider neither whether the claim of abandonment is properly before us, nor the merits of the claim of abandonment. [FN6]
*5 Decision: The petition for cancellation is granted pursuant to Section 2(d) of the Lanham Trademark Act.
J. D. Sams
E. J. Seeherman
E. W. Hanak
Members, Trademark Trial and Appeal Board
FN1. Petitioner also contends that its original pleading calls into question registrant's ownership of the mark AMERICAN MOBILPHONE PAGING, and hence raises the issue of abandonment, albeit in an oblique manner. Moreover, petitioner further contends that the issue of registrant's purported abandonment was tried by the implied--indeed, perhaps express--consent of the parties.
FN2. In our order of June 28, 1988, we deferred ruling on both registrant's motion to strike evidence relating to the abandonment claim as well as petitioner's motion to amend its petition to assert the abandonment claim until final hearing.
FN3. It is noted that registrant does not dispute the fact that petitioner has been using the mark AMERICAN PAGING continuously since September 1981. Moreover, the parties have stipulated that petitioner commenced advertising its paging services under the name AMERICAN PAGING as early as December 1980. (Donnelley stipulation, March 10, 1988).
FN4. It should be made clear that in ascertaining that registrant failed to establish use of AMERICAN MOBILPHONE PAGING prior to September 1981, we applied "the preponderance of evidence standard" rather than the stricter "clear and convincing evidence" standard. Hydro-Dynamics Inc. v. George Putnam & Co., 811 F.2d 1470, 1 USPQ2d 1772 (Fed.Cir.1987). This is because registrant does not claim that it used the mark AMERICAN MOBILPHONE PAGING and design prior to the date set forth in its application (July 15, 1983). Rather, registrant is simply claiming that it used the mark AMERICAN MOBILPHONE PAGING per se prior to July 15, 1983, and indeed, prior to September 1981.
FN5. In particular, we note that when the petitioner made a cease and desist demand of a company using the mark ALL AMERICAN PAGING, the principal of that third party company understood that petitioner had not yet obtained a federal trademark registration for AMERICAN PAGING, but rather was in the process of applying to register AMERICAN PAGING. Accordingly, petitioner did not deceive ALL AMERICAN PAGING regarding the registration status of petitioner's mark AMERICAN PAGING.
FN6. In view of our determination not to consider the abandonment issue, we need not consider registrant's motion to strike evidence relating to this issue. As for registrant's motion to strike petitioner's exhibits 75-95 on the basis that they constitute hearsay, registrant's motion is denied. Exhibits 75- 95 are excerpts from business and trade periodicals that relate to paging equipment and mobile telephone equipment. Petitioner has offered them in connection with the "tacking" issue to show how the public has been exposed to these two types of equipment. Petitioner has not offered the excerpts to prove the truth of the statements contained therein, and hence the excerpts do not constitute hearsay. In re Omaha National Corporation, 819 F.2d 1117, 2 USPQ2d 1859, 1860 (Fed.Cir.1987).