Trademark Trial and Appeal Board
Patent and Trademark Office (P.T.O.)
*1 FLEMING COMPANIES, INC.
v.
THRIFTWAY, INC.
v.
CERTIFIED GROCERS OF FLORIDA, INC.
Concurrent Use No. 547
April 11, 1991
Before Rice, Seeherman & Quinn
Members
Opinion by Quinn
Member
A concurrent use application has been filed by Fleming Companies, Inc. (hereinafter "Fleming") to register the mark THRIFTWAY for offering technical assistance to others in establishment and operation of grocery stores, and for retail grocery store services. [FN1] Fleming seeks registration for the area comprising the states of New Jersey, Delaware and Pennsylvania, excluding the Pennsylvania counties of Erie, Crawford, Mercer, Lawrence, Beaver, Washington, and Greene; as well as the metropolitan Washington, D.C. area, comprising the District of Columbia, Maryland and that portion of the State of Virginia within 30 miles from Washington National Airport; in Oklahoma, the counties of Mayes, Craig, Cherokee, Ottawa, Muskogee, Delaware, Wagener, Adair and Rogers; in Arkansas, the counties of Washington, Madison, Carroll, Benton, Franklin, Sebastian, Logan, Barry, Stone and MacDonald; in Missouri, the counties of Barton, Dade, Jasper, Lawrence, Taney, Christain, and Ozark; in Kansas, the counties of Cherokee, Labette, and Crawford. Stated as exceptions to Fleming's right to exclusive use are Thriftway, Inc. (hereinafter "Thriftway-Cincinnati") and Certified Grocers of Florida, Inc. (hereinafter "Certified Grocers"). Fleming acknowledges Thriftway-Cincinnati's territory as that set forth in Registration No. 977,722 and that Thriftway-Cincinnati's Registration No. 720,094 is geographically unrestricted. Of particular significance, as will become apparent later in this decision, is Fleming's listing of Certified Grocers as an exception that uses the mark THRIFTWAY in connection with grocery store services in the state of Florida. Fleming is the owner of concurrent use registrations (in stylized form) of the mark THRIFTWAY for grocery store services, advertising and promotional services to licensees; consultation and advice in merchandising, marketing, and operation of grocery stores; [FN2] and for grocery store services, and the establishment and operation of grocery stores for others. [FN3] The registrations are restricted to the states of New Jersey, Delaware and Pennsylvania, excluding the Pennsylvania counties of Erie, Crawford, Mercer, Lawrence, Beaver, Washington and Greene.
Thriftway-Cincinnati also has filed a concurrent use application to register the mark THRIFTWAY for bacon, potato chips and dairy products, namely eggs, butter, cottage cheese and milk. [FN4] Thriftway-Cincinnati seeks registration for the area comprising the entire United States with the exception of New Jersey, Delaware and Pennsylvania, excluding the Pennsylvania counties of Erie, Crawford, Mercer, Lawrence, Beaver, Washington and Greene. Stated as an exception is Fleming. Thriftway-Cincinnati acknowledges Fleming's territory as that set forth in Registration No. 923,347. While Thriftway-Cincinnati acknowledges Certified Grocers' claim to the mark THRIFTWAY in the state of Florida, Thriftway-Cincinnati goes on to assert that it "does not admit to or agree with" Certified Grocers' purported rights. Thriftway-Cincinnati is the owner of a geographically unrestricted registration of the mark THRIFTWAY (in stylized form) for meat products, namely weiners, sliced cooked ham, spiced luncheon meat, pepper loaf, chopped ham, salami, pickle loaf, sausage, old fashioned loaf and bologna; bread and sliced buns. [FN5] Thriftway-Cincinnati also owns a concurrent use registration of the mark THRIFTWAY for retail supermarket services for the area comprising the entire United States with the exception of New Jersey, Delaware and Pennsylvania, excluding the Pennsylvania counties of Erie, Crawford, Mercer, Lawrence, Beaver, Washington and Greene. [FN6]
*2 Another concurrent use application was involved in this proceeding, namely application Serial No. 73/071,984 filed by Certified Grocers. Certified Grocers sought a collective membership registration of the mark THRIFTWAY for grocery store services to indicate services rendered by members for the area comprising the state of Florida. Listed as exceptions to Certified Grocer's right to exclusive use were the other two parties in this proceeding, namely Fleming and Thriftway-Cincinnati. Certified Grocers, on July 17, 1989, filed an abandonment of its application; Certified Grocers indicated, however, that the abandonment was made "without waiving [Certified Grocer's] common law rights in the mark THRIFTWAY." Accordingly, the Board, on August 23, 1989, entered judgment against Certified Grocers to the extent that it is precluded from claiming any rights more extensive than that acknowledged in the two applications still involved in this proceeding. Of course, under Trademark Rule 2.135, Certified Grocers' abandonment of its application without the written consent of every adverse party precludes Certified Grocers from claiming any right to federal registration. However, Certified Grocers is still listed as a user in this proceeding.
The instant concurrent use proceeding was instituted as a result of Certified Grocers' application. Fleming and Thriftway-Cincinnati each elected to file an answer to the notice instituting this proceeding as provided by Trademark Rule 2.99(d)(2). Thriftway-Cincinnati filed, on July 30, 1984, an answer wherein it asserted that this concurrent use proceeding is improper because Certified Grocers is not a lawful user since Thriftway-Cincinnati's prior use was known to Certified Grocers before its first use. Fleming, in its answer filed on September 4, 1984, simply stated the area for which it sought registration and indicated that "as to any other involved in this proceeding, [Fleming] reserves its right to set forth its position after discovery has been completed."
This case now comes up on the following matters:
1. Thriftway-Cincinnati's motions, filed January 25, 1991, for summary judgment and to stay its discovery responses; and
2. Fleming's motion, filed February 19, 1991, to compel discovery.
Thriftway-Cincinnati has moved for summary judgment on two principal grounds, namely (i) that the parties, in settlement of prior Concurrent Use Nos. 347 and 384, agreed to restrict the territories of each party; and (ii) that Fleming's expansion does not constitute lawful use due to the constructive notice provisions of Section 22 of the Trademark Act, as amended. The motion is accompanied by counsel's declaration and a copy of an agreement executed by the parties on August 24, 1962 and a copy of the Board's order dated September 3, 1974 in Concurrent Use No. 384.
On the same date that the motion for summary judgment was filed, Thriftway-Cincinnati moved to suspend the time for serving its responses to Fleming's outstanding discovery requests. Thriftway-Cincinnati contends that the suspension is in the interests of judicial economy given the potentially dispositive nature of its motion for summary judgment.
*3 Fleming has filed a brief in opposition to summary judgment, arguing that there are genuine issues of material fact regarding the extent of third-party use which has worked an abandonment of Thriftway-Cincinnati's mark; Fleming's natural and actual area of expansion; and contract issues involving the parties' earlier agreements. Fleming also urges that equitable principles preclude judgment in Thriftway-Cincinnati's favor. Counsel has submitted declarations accompanied by a printout of an electronic "Yellow Pages" search showing over 350 listings for THRIFTWAY grocery stores operated by third parties. Fleming also has filed a motion to compel discovery. Fleming does not contend that it needs discovery to enable it to respond on the merits to the motion for summary judgment (see Fed. R. Civ. P. 56(f)); rather, Fleming asserts that the unanswered discovery requests concern issues such as the abandonment of Thriftway-Cincinnati's mark which, Fleming contends, entitles Fleming to the expanded area for which it now seeks registration.
Thriftway-Cincinnati has filed a reply brief in support of its motion for summary judgment.
The purpose of summary judgment is one of judicial economy, that is, to save the time and expense of a useless trial where no genuine issue of material fact remains and more evidence than is already available in connection with the summary judgment motion could not reasonably be expected to change the result. See: Pure Gold, Inc. v. Syntex (U.S.A.), Inc., 739 F.2d 624, 222 USPQ 741 (Fed. Cir. 1984). We believe that the instant case is ripe for summary judgment. We find that Fleming is not entitled, as a matter of law, to more territory than that acknowledged in an existing agreement and in its prior registrations. Moreover, we conclude that Thriftway-Cincinnati is entitled to the registration it seeks.
A review of the existing agreement between Fleming and Thriftway-Cincinnati and the prior litigation involving these parties is crucial in understanding the result in this case. At the outset, it should be noted that Central Grocers was neither a party to any prior agreement nor a party to any prior litigation involving Fleming and Thriftway-Cincinnati.
In an agreement dated August 24, 1962, Thriftway Super Markets, Inc. and Thriftway Foods Inc. set forth territorial restrictions as to their use and registration of the mark THRIFTWAY for grocery products and grocery store services. Thriftway-Cincinnati was formerly known as Thriftway Super Markets, Inc. before a change of name. Fleming is a successor in interest to Thriftway Foods Inc. The agreement between the parties was executed in settlement of Interference No. 5,917.
The agreement set forth Thriftway Super Markets, Inc.'s (now Thriftway-Cincinnati) territorial rights to use and register its mark for the entire United States except the states of New Jersey, Delaware and Pennsylvania, excluding the Pennsylvania counties of Crawford, Mercer, Lawrence, Beaver, Washington, Greene and Erie (paragraph 2). On the other hand, the parties agreed that Thriftway Foods Inc. (now Fleming) was entitled to use and register its mark for the area comprising the states of New Jersey, Delaware and Pennsylvania, excluding the Pennsylvania counties of Crawford, Mercer, Lawrence, Beaver, Washington, Greene and Erie (paragraph 1). Paragraph 6 of the agreement specifically provided that the agreement "shall inure to the benefit of and shall be binding upon the successors and assigns of the parties." The agreement resulted in restrictions in Thriftway-Cincinnati's Registration No. 720,094 and Fleming's Registration No. 746,371.
*4 These parties found themselves before the Board again in Concurrent Use No. 384. The concurrent use proceeding involved Thriftway-Cincinnati's application Serial No. 415,411 (now Registration No. 997,722) and Fleming's Registration Nos. 746,371 (now cancelled) and 923,347. The Board, in an order dated September 3, 1974, noted that the parties were involved in two previous proceedings, namely Interference No. 5,917 and Concurrent Use No. 347 wherein
it was adjudged that Thriftway Foods, Inc. [now Fleming] was entitled to a concurrent registration of its mark for the States of New Jersey, Delaware and Pennsylvania, excluding the Pennsylvania counties of Erie, Crawford, Mercer, Lawrence, Beaver, Washington and Greene, and that Thriftway Super Markets, Inc. [now Thriftway-Cincinnati] was entitled to a concurrent registration of its mark for the entire United States with the exception of the aforesaid area.
As a result of that Concurrent Use No. 384, Thriftway-Cincinnati was issued Registration No. 997,722.
Thriftway-Cincinnati has indicated in the instant proceeding that it has no objection to Fleming's application Serial No. 73/498,242 insofar as the application coincides with the territorial restrictions already established as indicated immediately above. Thriftway-Cincinnati does object, however, to the territorial expansion now sought by Fleming comprising the following territory:
the metropolitan Washington, D.C. area, comprising the District of Columbia, Maryland and that portion of the state of Virginia within 30 miles from Washington National Airport; in Oklahoma, the counties of Mayes, Craig, Cherokee, Ottawa, Muskogee, Delaware, Wagener, Adair and Rogers; in Arkansas, the counties of Washington, Madison, Carol, Benton, Franklin, Sebastian, Logan, Barry, Stone, and MacDonald; in Missouri, the counties of Barton, Dade, Jasper, Lawrence, Taney, Christian, and Ozark; in Kansas, the counties of Cherokee, Labette, and Crawford.
We find, as a matter of law, that Fleming is not entitled to a registration which includes the expanded area set forth immediately above. By virtue of the August 1962 agreement between Thriftway-Cincinnati and Fleming's predecessor, Fleming is precluded, in the face of Thriftway-Cincinnati's objection, from registering its mark for an area exceeding that acknowledged in the agreement. The agreement specifically provides that successors in interest and assignees are bound by the terms of the agreement. As to Fleming's contention that the agreement is unenforceable, suffice it to say that mere argument with no corroborating evidence does not raise an issue for trial. Moreover, as pointed out by Thriftway-Cincinnati, even in the absence of the parties' agreement and/or the prior proceedings, Fleming is still precluded from claiming the expanded territory for which it now seeks registration since the expansion occurred after notice of issuance of Thriftway-Cincinnati's registrations.
It is undisputed that Fleming commenced use in the expanded territory after issuance of Thriftway-Cincinnati's registrations which include this expanded area. Nothing in the 1962 agreement or in the prior Board judgments provides for Fleming's expansion into the District of Columbia, Maryland and portions of Virginia, Oklahoma, Arkansas, Missouri and Kansas. Under such circumstances, Fleming's use in these states has not been the result of a good faith expansion. See: Mid-States Distributing Co. Inc. v. Morrison Oil Co., 10 USPQ2d 1860, 1862-63 at n. 8 (TTAB 1989). The fact that distinguishes the instant case from the decisions relied upon by Fleming is that Fleming's use in the expanded area occurred after issuance of Thriftway-Cincinnati's registrations. We know of no cases holding that a party's use in an expanded area after issuance of an existing registration for that area constitutes anything but bad faith or unlawful use in the expanded area. Accordingly, Fleming is not entitled, as a matter of law, to registration for the expanded area. Simply stated, Fleming is not entitled to its claimed area of expanded use since the expansion was established after notice, both constructive and actual, of Thriftway-Cincinnati's registrations. See: Thriftimart, Inc. v. Scot Lad Foods, Inc., 207 USPQ 330, 334 (TTAB 1980). In the absence of an agreement with Thriftway-Cincinnati, the expansion by Fleming (the junior user) is not in good faith and, accordingly, cannot be listed in a registration issued to Fleming. See also: J. Rice, Tips from the TTAB: Concurrent Use Applications and Proceedings, 72 TMR 403, 410 (1982). As to Fleming's urging that we balance equity in its favor, we are hard pressed to do so given the fact that Fleming is bound by an existing agreement wherein Fleming's predecessor agreed to territorial limits on its mark which do not include the expanded area.
*5 Fleming's evidence of a purported abandonment by Thriftway-Cincinnati does not raise any material fact issues for trial. Firstly, as the prior user, Thriftway-Cincinnati is entitled to a registration covering the entire United States limited, of course, to that area established by the parties' prior agreement and the concurrent use proceedings. Secondly, the printout from an electronic "Yellow Pages" data base is not competent evidence of third-party use. The printout simply fails to show that the listed THRIFTWAY marks are in use or that the public is familiar with them such that Thriftway-Cincinnati's mark has lost its source indicating function.
Fleming also has filed a motion to compel discovery. Fleming concedes that its discovery requests seek information which goes beyond the issues raised on summary judgment. Nevertheless, Fleming contends that responses should be served by Thriftway-Cincinnati regarding matters such as abandonment. [FN7] We do not think that Fleming's motion warrants either a deferral or denial of summary judgment. As stated above, the evidence accompanying Fleming's response does not raise a material fact issue for trial. In addition, more evidence than is already before us on summary judgment could not reasonably be expected to change the result in this case.
In view of the above, Fleming's motion to compel discovery is denied; and Thriftway-Cincinnati's respective motion for summary judgment is granted.
Another matter requires our consideration, namely that of Fleming's and Thriftway-Cincinnati's respective territorial rights vis-a-vis the alleged territorial rights of Certified Grocers. Fleming and Thriftway-Cincinnati's briefs are completely silent on this point; nevertheless, inasmuch as Certified Grocers has been listed as an exception, we need to address the parties' respective rights relative to the alleged rights of Certified Grocers.
We first turn our attention to Thriftway-Cincinnati and Certified Grocers. We note that while Thriftway-Cincinnati's application technically lists Certified Grocers as an exception, it goes on to assert that Thriftway-Cincinnati "does not admit to or agree with" Certified Grocers' purported rights set forth in application Serial No. 73/071,984. Moreover, in its answer, Thriftway-Cincinnati essentially contended that Certified Grocers' adoption and use was in bad faith since the use occurred with Certified Grocers' knowledge of Thriftway-Cincinnati's prior use.
As we see it, Thriftway-Cincinnati never set forth Certified Grocers as a lawful exception to its right to exclusive use. In both its application and its answer Thriftway-Cincinnati did not concede that Certified Grocers was a lawful concurrent user entitled to registration for the state of Florida. Moreover, Certified Grocers, by filing its concurrent use application, had the burden of proving its entitlement to registration for the state of Florida; in essence, Certified Grocers had the burden of showing entitlement to carve out the state of Florida from Thriftway-Cincinnati's territorial area as shown in Thriftway-Cincinnati's application and registrations. By abandoning its application, Certified Grocers essentially abandoned its attempt to carve out Florida for itself from Thriftway-Cincinnati's area. Thus, we see no reason to delete the state of Florida from the area listed in Thriftway-Cincinnati's application and prior registrations.
*6 Fleming's rights vis-a-vis Certified Grocers' purported rights, however, present an entirely different situation. Fleming, in its application, listed Certified Grocers as an exception to Fleming's right to exclusive use, and reserved comment, in an answer, on Certified Grocers' territorial rights. However, no further word from Fleming has been received on this point. As noted earlier in this decision, Certified Grocers abandoned its application, and the abandonment and the judgment resulting therefrom essentially preclude Certified Grocers from claiming in this proceeding any right to registration for any area; any rights at all as against Thriftway-Cincinnati, which did not, in its pending application, concede that Certified Grocers had any rights as a lawful concurrent user; and any common law rights as against Fleming for any area other than for the state of Florida. We further note that in abandoning its application Certified Grocers made no mention of any abandonment of its use of the mark; to the contrary, Certified Grocers specifically claimed that it was not waiving its common law rights in the mark.
In view of Fleming's acknowledgment of Certified Grocers as an exception to Fleming's right to exclusive use, Fleming has the burden of showing that the concurrent use of its mark in its territory is not likely to cause confusion due to Certified Grocers' use of its mark in the state of Florida. Inasmuch as judgment has been entered against Certified Grocers as indicated in the Board's August 23, 1989 order, Fleming may show its entitlement to the concurrent use registration sought through an ex parte type of showing (e.g., affidavits), rather than through trial testimony. Cf. Precision Tune Inc. v. Precision Anti-Tune Inc., 4 USPQ2d 1095 (TTAB 1987). In sum, so long as Certified Grocers is listed as an exception in Fleming's application, this proof is required. If Fleming were to delete Certified Grocers as an exception, claiming, after further consideration, that Certified Grocers is not a lawful concurrent user in the state of Florida, the requirement of ex parte proof from Fleming would be discharged. [FN8]
We now summarize our rulings in this case. In view of the prior agreement and concurrent use proceedings, it is determined that Thriftway-Cincinnati is entitled, on the basis of its application Serial No. 73/324,386, to a concurrent use registration of the mark THRIFTWAY for bacon, potato chips and dairy products, namely eggs, butter, cottage cheese and milk for the area comprising all of the United States except Delaware, New Jersey and Pennsylvania, excluding the Pennsylvania counties of Erie, Crawford, Mercer, Lawrence, Beaver, Washington and Greene.
In reviewing the files of the registrations joined in this proceeding, we note that Registration No. 720,094 owned by Thriftway-Cincinnati is geographically unrestricted, unlike every other application or registration involved in this proceeding. We further note, however, that the parties' August 1962 agreement specifically provided for geographic restrictions in Registration No. 720,094 (paragraph 2). For unknown reasons, and to the Board's bewilderment, it appears that the appropriate restrictions were never made with respect to the registration. We accordingly now correct this mistake which has quietly resided in the Office records for almost thirty years.
*7 Registration No. 720,094 is hereby restricted to the area comprising all of the United States except Delaware, New Jersey and Pennsylvania, excluding the Pennsylvania counties of Erie, Crawford, Mercer, Lawrence, Beaver, Washington and Greene.
With respect to Fleming's application Serial No. 73/498,242, we conclude that it may be entitled, at most, to registration for the area comprising the states of New Jersey, Delaware and Pennsylvania, excluding the Pennsylvania counties of Erie, Crawford, Mercer, Lawrence, Beaver, Washington and Greene; it is not entitled to the expanded area listed in the application. Fleming must first prove, however, that concurrent use of its mark in its territory and Certified Grocers' use of its mark in its territory is not likely to cause confusion. It may submit such proof by an ex parte showing. Fleming is allowed until sixty days from the date hereof to submit its proofs. [FN9]
Proceedings herein remain otherwise suspended.
J. E. Rice
E. J. Seeherman
T. J. Quinn
Members, Trademark Trial and Appeal Board
FN1. Application Serial No. 73/498,242, filed September 7, 1984, claiming use since January 1959.
FN2. Registration No. 746,371, issued March 5, 1963; renewed.
FN3. Registration No. 923,347, issued November 2, 1971; combined Sections 8 and 15 affidavit filed.
FN4. Application Serial No. 73/324,386, filed August 20, 1981, claiming use since January 2, 1965.
FN5. Registration No. 720,094, issued August 15, 1961; renewed.
FN6. Registration No. 997,722, issued November 5, 1974; combined Sections 8 and 15 affidavit filed.
FN7. When couched in these terms, the motion regarding discovery clearly is not one arising under Fed. R. Civ. P. 56(f).
FN8. Fleming is required, of course, to serve Certified Grocers with any such motion to delete Certified Grocers as an exception. Certified Grocers, pursuant to Trademark Rule 2.127(a), could then object to the motion.
FN9. It is important to note that if Fleming retains Certified Grocers as a named exception and is able to show no likelihood of confusion, the Board's decision on Fleming's entitlement to a concurrent use registration will not determine Certified Grocers' rights, if any, as a lawful concurrent user. See: Georgia-Southern Oil Inc. v. Richardson, 16 USPQ2d 1723 (TTAB 1990). Certified Grocers' own concurrent use rights, if any, can only be determined if it eventually files a new application for federal registration, and is able to overcome the res judicata effect of the judgment entered against it in this proceeding as a result of its abandonment of its application. Lastly, the Board is readily aware of the somewhat unusual conclusion that may be reached in this case; that is, Fleming's registration will list both Thriftway-Cincinnati and Certified Grocers as exceptions, whereas Thriftway-Cincinnati's new and existing registrations will list only Fleming as an exception.