Trademark Trial and Appeal Board
Patent and Trademark Office (P.T.O.)
*1 DYNEER CORPORATION
AUTOMOTIVE PRODUCTS, PLC
Opposition No. 89,148
August 22, 1995
Before Cissel, Seeherman and Hohein
Administrative Trademark Judges
By the Board:
R.F. Cissel, E.J. Seeherman and G.D. Hohein
Administrative Trademark Judges
Applicant, by its involved application, seeks to register the mark SURETRAC for "land vehicle parts, namely axles, transmissions, differentials and drive lines," in international class 12. Opposer has an application pending, currently suspended in the Trademark Examining Groups, for registration of SURETRAC for "differentials for vehicles," in international class 12. Opposer's notice of opposition is based on a claim of priority of use and likelihood of confusion.
This case now comes up for consideration of cross motions for summary judgment and applicant's alternative motion, under Fed.R.Civ.P. 56(f), to stay consideration of opposer's motion for summary judgment so that applicant can take a discovery deposition of opposer's president.
Applicant's alternative motion is denied. Opposer filed a motion for summary judgment and applicant filed a combined response thereto and cross motion for summary judgment, within an extension of time agreed to by the parties. Applicant's Rule 56(f) motion was filed concurrently with the combined response and cross motion. Opposer, in filing a brief in response to applicant's cross motion, also argued against applicant's Rule 56(f) motion.
The only basis for the alternative motion is applicant's desire to take a discovery deposition of Ralph E. McGee, the president of opposer's Tractech division. In fact, applicant had such an opportunity, but apparently chose to wait until opposer's testimony period to question Mr. McGee because opposer had indicated that his testimony deposition would be taken then. While a discovery deposition of Mr. McGee might have facilitated applicant's response to opposer's motion for summary judgment, the failure to conduct one did not preclude applicant from framing a response.
A Rule 56(f) motion should only be filed when a party's ability to respond to its adversary's summary judgment motion is so constrained, because of an inability to take needed discovery, that the Rule 56(f) movant cannot present, by affidavit, facts essential to justify the party's opposition to its adversary's motion for summary judgment. See Fed.R.Civ.P. 56(f). Such is clearly not the case here, as applicant not only responded to opposer's motion, but also filed its own motion for summary judgment. Moreover, a Rule 56(f) motion requires a showing of need as to the specific areas in which the party needs to be able to take discovery, not merely a showing that it deferred taking discovery it otherwise might have engaged in had it known its adversary would file a motion for summary judgment. See Keebler Co. v. Murray Bakery Products, Inc., 866 F.2d 1386, 9 USPQ2d 1736 (Fed.Cir.1989); See also 6 (part 2) Moore's Federal Practice ¶ 56.24 (2d ed. 1985).
*2 Turning to the parties' cross motions for summary judgment, it is noted that the only real issue raised by the motions is the question of priority of use. Neither party, in responding to the other's motion for summary judgment, has attempted to establish that genuine issues of material fact exist in regard to the question of likelihood of confusion.
Opposer's motion for summary judgment is supported by a declaration from Ralph E. McGee, president of opposer's Tractech division, and the declaration's accompanying exhibits; in addition, there are other exhibits offered in direct support of the motion, substantially comprising applicant's responses to opposer's discovery requests. Applicant's combined response and cross motion for summary judgment is supported by affidavits from John Whetstone, general manager of the Suretrac division of applicant, and Sir John Carden, Bt, a director of Transmission Systems, Ltd., applicant's assignor [FN1], and the exhibits attached to the respective affidavits; in addition, there are other exhibits offered in direct support of the motion, chiefly copies of opposer's responses to applicant's discovery requests. A chronology of events relevant to the issue of priority follows, as established by the referenced submissions.
Transmission Systems, Ltd. (TSL), applicant's assignor, located in Jersey, British Isles, United Kingdom, developed its product in 1986 and coined the SURETRAC mark for use in conjunction therewith. From July, 1986 through October, 1987, TSL sent promotional materials regarding the company's SURETRAC differential to a dozen U.S. companies, soliciting prospective purchases or licensing arrangements. The U.S. companies include automotive manufacturers, such as Ford, General Motors and Chrysler, and heavy machinery manufacturers, such as Borg Warner, John Deere and Caterpillar.
In November, 1987, TSL made similar proposals to BMW and Porsche in Europe. In January, 1988, an article about TSL's SURETRAC product appeared in "Eureka" magazine. [FN2] In July and August, 1989, applicant commissioned various mark clearance searches, for U.S., British, and international applications. Additional proposals were tendered to prospective customers in Europe from February, 1990, through July, 1990.
The next step, chronologically, was taken by opposer. On November 29, 1990, in the United States, opposer's Tractech division sent a letter to Caterpillar, Inc. with price quotations and invited an order for its SURETRAC differential. On January 10, 1991, Caterpillar placed an order, via "fax". On January 30, 1991, Caterpillar followed its fax with a purchase order, which bears a stamped date of receipt by opposer's Tractech division on February 7, 1991.
On or about May 13, 1991, TSL invoiced a sale of its SURETRAC mark to applicant. A covering letter for the invoice is dated May 15, 1991 and the letter and invoice appear to have been received and agreed to by applicant on or about May 20, 1991.
*3 In June, 1991, opposer issued a press release promoting its SURETRAC differential. Applicant acknowledges publication of the release no later than December, 1991.
On June 17, 1991, Caterpillar canceled its order for SURETRAC differentials from opposer, originally placed in January, 1991, and substituted a new order. On August 28, 1991, opposer invoiced the substitute order.
On November 8, 1991, applicant mailed a brochure regarding its SURETRAC differential to General Motors. On November 18, 1991, applicant filed its intent-to-use application for registration of its SURETRAC mark.
On November 24, 1992, opposer filed its use-based application for registration of its SURETRAC mark, claiming use "at least as early as 11/18/91."
Entry of summary judgment is appropriate only where there are no genuine disputes as to material facts and judgment may be rendered as a matter of law based on the undisputed facts. See Sweats Fashions v. Panill Knitting Co., 833 F.2d 1560, 4 USPQ2d 1793 (Fed.Cir.1987). Issues of fact are not to be tried via a motion for summary judgment, but rather, all that is to be determined is whether issues of fact exist which should be tried. See Continental Can Co. USA Inc. v. Monsanto Co., 948 F.2d 1264, 20 USPQ2d 1746 (Fed.Cir.1991), and Flatley v. Trump, 11 USPQ2d 1284 (TTAB 1989).
It is clear from the pleadings and the parties' cross motions for summary judgment that no genuine issues of material fact exist as to opposer's standing to bring the opposition or the question of likelihood of confusion. What we must decide is whether a genuine issue remains in regard to the question of priority. We start our examination of that question with the filing date of applicant's intent-to-use application, November 18, 1991. Opposer has attempted to establish both technical trademark use prior to that date and use analogous to trademark use even earlier than its technical use. Applicant has attempted to leapfrog over opposer to establish use analogous to trademark use prior to anything provable by opposer and to tack this use onto the constructive use date attributable to the filing date of its application.
Use analogous to trademark use must be of "such a nature and extent as to create an association of said [term] with a single source ... sufficient to create a proprietary right in the user deserving of protection." Era Corp. v. Electronic Realty Associates, Inc., 211 USPQ 734, 745 (TTAB 1981). The manner of use must be "calculated to attract the attention of potential customers or customers in the applicable field of trade" so as to create an association of the term with a single source, even if anonymous. Liqwacon Corp. v. Browning-Ferris Industries, Inc., 203 USPQ 305, 308 (TTAB 1979).
*4 Based on the evidence presented, we find that there is no genuine issue of material fact that TSL, applicant's predecessor-in-interest, used the SURETRAC mark in a manner analogous to trademark use. The evidence presented by applicant in support of its cross motion for summary judgment establishes that applicant's predecessor, a U.K. company, forwarded proposals to upwards of a dozen customers in the United States during a period of time stretching from July, 1986 through October, 1987. The evidence also establishes that actual meetings took place between representatives of TSL and these U.S. companies and that a prototype of TSL's SURETRAC differential was made available for examination. Moreover, some responsive letters sent to TSL by these U.S. customers acknowledge TSL's claim of proprietary rights in the SURETRAC mark. [FN3]
While opposer argues that TSL contacted only "a small number of U.S. vehicle manufacturers," the list includes immediately recognizable major manufacturing concerns in the United States that could have become purchasers of TSL technology or licensees that might have spread the technology to a great many ultimate purchasers.
Accordingly, we find as a matter of law that applicant's predecessor engaged in a sufficient effort to establish an identification of the SURETRAC mark with TSL among a very substantial group of relevant manufacturers. [FN4]
The parties have focused on the time between TSL's 1986-87 activities and the filing of the involved application, approximately four years after the last of these activities, as presenting a question of whether TSL or Automotive Products, plc abandoned the mark. [FN5] Opposer has spent much effort attempting to establish that even when surveyed from a variety of measuring points, one cannot help but reach the conclusion that there was a period of more than two years of nonuse by applicant, thus establishing a prima facie case for abandonment. Applicant has spent much effort countering opposer's charge of abandonment by noting activities of it or its predecessor which, in applicant's view, establish that there was never an intent to abandon the mark during any measurable period of nonuse. Opposer denigrates these activities by noting that they all occurred outside the United States, with the exception of a mark clearance search conducted in the U.S. in July of 1989 which, in any event, was more than two years prior to applicant's filing date for its application.
Although the parties have discussed these activities of applicant in terms of abandonment, the issue is whether applicant may be permitted to tack on its use analogous to trademark use to establish priority. Because of the passage of time between applicant's use analogous to trademark use and its application filing date, there are the additional questions of whether applicant, during this time, had a continuing intent to cultivate an association of the mark with itself and its goods and whether members of the relevant purchasing public in fact made such an association. While the issue of applicant's intent involves considerations similar to those we would consider in a case where abandonment is alleged, the issue of association of the mark with applicant and its goods relates more to the lasting consequences of applicant's earlier use analogous to trademark use.
*5 With use analogous to trademark use, the proper inquiry generally is whether any delay between such use and actual, technical trademark use is commercially reasonable. See Evans Chemetics, Inc. v. Chemetics International Ltd., 207 USPQ 695, 700 (TTAB 1980) (question is whether services "were actually rendered or available for performance soon enough after the initial advertising ... to preclude a finding that the advertising was merely an attempt to preempt a mark for use at an indefinite future date"). See also, Computer Food Stores Inc. v. Corner Store Franchises, Inc., 176 USPQ 535, 538 (TTAB 1973) (use analogous to trademark use must be "in a manner sufficient to ... inform or apprise prospective purchasers of the present or future availability" of the goods or services). Contrary to opposer's assertion, when use analogous to trademark use is involved, the user need not necessarily have a capacity to produce goods for sale under the involved mark at the time of the analogous use. See PacTel Teletrac v. T.A.B. Systems, 32 USPQ2d 1668 (TTAB 1994). [FN6]
There is no compelling evidence of any use analogous to trademark use by applicant for the approximately four-year period running from October, 1987 until the filing of applicant's intent-to-use application on November 18, 1991. Below, we discuss applicant's activities during this time, excluding activities conducted solely outside the U.S.
First, there is applicant's mark clearance search in July, 1989 preparatory to filing of a U.S. application. This clearly is not a "use" of a mark either as trademark or in a manner analogous to trademark use.
Second, applicant has produced a copy of a promotional brochure for its SURETRAC differential dated June 28, 1990, and the affidavit of Automotive Product's general manager states that the brochure is an example of what applicant has produced. [FN7] There is no evidence of record, however, as to specific distribution of this brochure.
Third, applicant asserts in its cross motion for summary judgment that approximately <<PoundsSterling>>40,000, per year, was spent on promotional and advertising activities in 1990 and 1991, "in connection with the SURETRAC limited slip differential." These expenditures were attested to in applicant's response to opposer's interrogatory no. 18, which also states that the expenditures were made "in the United States and elsewhere." Neither one of the affidavits offered by applicant provides any specific information about the asserted promotional and advertising activities.
Finally, applicant's response to opposer's interrogatory no. 12 states that promotional materials were sent to General Motors in the United States "at least as early as November 8, 1991." The specific materials were not, however, identified; nor has any evidence of their transmittal been provided.
As noted above, applicant has discussed the referenced activities in terms of their tendency to establish applicant's intent not to abandon its mark. We consider them in conjunction with the test we bring to bear, below, on applicant's cross motion for summary judgment and to decide whether they raise a genuine issue of fact which precludes granting opposer's motion for summary judgment.
*6 As noted earlier, the theory under which use analogous to trademark use can provide a party with priority over another user of the same mark requires that actual, technical trademark use must follow the use analogous to trademark use within a commercially reasonable period of time. In this case, applicant has not, to date, made any technical use of its mark as a trademark [FN8]; rather, applicant has based its application to register the mark on its intention to use the mark in commerce. Accordingly, we modify the test regarding analogous use, in this instance, to ask whether applicant engaged in a continuing effort to cultivate an association of the SURETRAC mark with itself and its goods, and whether the association created by the established use analogous to trademark use in 1986-87 continued up until the date of filing of applicant's intent-to-use application. [FN9]
We note that our modified test contemplates the "tacking" of applicant's use analogous to trademark use, and any continuing association of the mark with applicant and its goods which may be shown to have resulted therefrom, onto the constructive use date which applicant would obtain through issuance of a registration for its mark. While this is an issue of first impression for the Board, we believe that an intent-to-use applicant, with a bona fide intent to make use of the applied for mark in commerce, should be permitted to engage in such tacking, if circumstances show that the party has had a continuing intent to cultivate an association of the mark with itself and its goods or services and that such an association was created.
In this case, where there are cross motions for summary judgment, each party bears the burden, in regard to its own motion, of establishing that there are no genuine issues of material fact and that it is entitled to prevail as a matter of law. As the moving party on the cross motion for summary judgment, applicant, under the test we have articulated, bears the burden of establishing its continuing intent to cultivate an association of the SURETRAC mark with itself and its goods and that such an association was created and continued during the approximately four year period between October, 1987 and November 18, 1991. [FN10]
Applicant, having concentrated its efforts on showing that it had no intent to abandon the mark during this period, has failed to present any evidence on the question of the continuing association of the SURETRAC mark with applicant and its goods. Having been presented with no such evidence, we cannot grant applicant's cross motion for summary judgment.
This brings us to opposer's motion for summary judgment. Opposer began this case with the burden of proving its priority over applicant's filing date and, in its motion for summary judgment, opposer attempted to prove that there were no genuine issues of material fact on this issue.
Opposer argues that the evidence of record which may be considered in support of its motion establishes either its use analogous to trademark use or, at least, actual, technical trademark use prior to applicant's filing date. However, we have already determined that applicant made use analogous to trademark use for a period of time that predates both opposer's asserted use analogous to trademark use and its technical trademark use. As we have previously stated, there is a genuine issue as to whether there was a continuing association of the SURETRAC mark with applicant and its goods during the approximately four years following its established use analogous to trademark use. This genuine issue of material fact precludes entry of summary judgment in favor of opposer.
*7 Specifically, we find that applicant's claim that the goods in issue "understandably may require months, if not years, of engineering and marketing efforts," coupled with applicant's claim of continuing expenditures for promotional activities in the United States during 1990 and 1991, create a genuine issue of fact as to whether there was a continuing association of the SURETRAC mark with applicant and its goods during the period of time following applicant's established use analogous to trademark use. This issue of fact relates not only to the nature and extent of applicant's promotion and marketing in 1990 and 1991, but also to the question of whether the previously created association survived the period of time between its creation and these promotional activities.
Another genuine issue of fact precluding entry of summary judgment in favor of opposer relates to opposer's asserted priority based on technical trademark use. Specifically, opposer claims that it uses its mark on hang tags for its goods and on instruction manuals shipped with its goods. Applicant has raised an issue as to whether the hang tag of record could have been used by opposer in connection with the shipment of its goods alleged to provide opposer with priority over applicant's filing date. [FN11] Also, although the McGee declaration offered by opposer claims that opposer presently uses the mark on instruction manuals shipped with its goods, there is no specific claim that the manual of record was included with the initial shipment.
Finally, we note that this decision has focused almost exclusively on the issue of priority, because the parties have not disputed the issue of likelihood of confusion and applicant did not dispute opposer's standing to bring the case. In contrast, we note that opposer will have the burden, at trial, of proving its standing and likelihood of confusion, in addition to its priority of use.
The parties' respective motions for summary judgment are denied and trial dates are reset in the attached order. [FN12]
FN1. In this decision, applicant should be read to include both Automotive Products plc and its assignor, Transmission Systems, Ltd. Where there is a need to delineate particular acts of only one of these companies, more specific reference has been made.
FN2. The parties disagree as to the area of circulation of the magazine. This subject is discussed infra.
FN3. Opposer contends that these proposals focused on the product and not the mark and fail to evidence association of the mark with TSL by any of these potential customers. We disagree.
Admittedly, one of TSL's targets, Rockwell International, later sent a communication to opposer stating that "somebody is using your name." But this communication was sent well over six years after TSL's contact with the same prospective customer, and applicant's exhibits include a letter from Rockwell to TSL which acknowledges TSL's claim of rights in the SURETRAC mark.
The 1987 letter to TSL from Rockwell, thanking TSL for a demonstration of the technology, references the "Suretrac" differential. We do not believe that the later faxed alert to opposer in any way undermines the clear acknowledgment by the earlier letter of TSL's claim of proprietary rights in the SURETRAC mark; and, in view of the fact that the faxed alert was sent to opposer by a different individual than the one who corresponded with TSL, we do not find the alert sufficient to create a genuine issue of fact as to whether this prospective customer associated the mark with TSL as of the time of TSL's proposal.
FN4. Also of evidence is a January, 1988, article about TSL's differential which appeared in "Eureka" magazine. The article acknowledges adoption of the name SURETRAC to identify the differential as TSL's. While the parties dispute whether this magazine circulated in the United States, the question as to whether the publication constituted use analogous to trademark use is not material to our deciding the parties' motions for summary judgment.
FN5. Applicant, here, includes both TSL and Automotive Products, plc, since the former did not assign the mark to thelatter until May, 1991.
FN6. It appears that there was some capacity for applicant to produce its differentials. The evidence establishing proposals to both U.S. and European customers refers to demonstrations of a prototype vehicle utilizing TSL's SURETRAC differential. In any event, since the extent of applicant's capacity to produce large numbers of differentials is not determinative of whether applicant may rely on its use analogous to trademark use, we need not consider the precise extent of applicant's manufacturing capacity.
FN7. The brochure bears the name of applicant Automotive Products, plc, even though the assignment of the mark from TSL did not occur until May, 1991. While it is not clear that a 1990 brochure by Automotive Products could have laid legitimate claim to ownership of the SURETRAC mark, it may be that the brochure was produced with the approval of TSL.
FN8. We note that applicant responded to opposer's interrogatory number 22 by noting that it had not made a single sale of a differential in the three-year period from April, 1990 to April, 1993. Since there is no evidence of a sale prior to April, 1990, or between April 1993 and the filing of applicant's cross motion for summary judgment, we conclude that there have been no sales. Nor is there any evidence of any other transport of applicant's goods, bearing the mark, in commerce. Therefore we have no evidence of technical trademark use of the mark.
FN9. While applicant, under our test, bears the burden of establishing both the requisite intent and association, opposer, as the adverse party could prevail by establishing the lack of either intent or association.
FN10. We acknowledge the parties' disagreement as to whether there was use analogous to trademark use in January, 1988, when the "Eureka" magazine article was published. However, as we noted supra in footnote 4, this disagreement is not material to our deciding the parties' motions for summary judgment. If a continuing association of the SURETRAC mark with applicant and its goods existed until the filing date of applicant's intent-to-use application, then it is immaterial whether the last use analogous to trademark use was in October, 1987 or January, 1988.
Also, we acknowledge that there may have been a use analogous to trademark use by applicant 10 days prior to the filing date of its application, i.e., when a mailing to General Motors assertedly was made, but the difference between the filing date of the application and the date of the mailing to General Motors is de minimis.
FN11. Neither the purchase order for the goods nor the shipping invoice accompanying the shipped goods shows the SURETRAC mark.
FN12. This decision, being interlocutory in nature, is not presently appealable; appeal can be taken within two months following the issuance of a final order or decision. See Copelands' Enterprises, Inc. v. CNV, Inc., 887 F.2d 1065, 12 USPQ2d 1563 (Fed.Cir.1989).