Trademark Trial and Appeal Board
Patent and Trademark Office (P.T.O.)
*1 GEORGIA-SOUTHERN OIL, INC.
July 19, 1990
Concurrent Use No. 756, between Applicant (Serial No. 640,507, filed January 20, 1987) and User
Douglas T. Johnson of Miller & Martin for Georgia-Southern Oil, Inc.
James F. Vaughan and Lawrence P. Colton for Harvey Richardson
Before Seeherman, Hanak and Quinn
Opinion by Quinn
A concurrent use application has been filed by Georgia-Southern Oil, Inc. (hereinafter "applicant") to register HUNGRY HARVEY for retail convenience store services. [FN1] Applicant seeks registration for the entire United States with the exception of McIntosh County, Georgia.
Applicant has named, as an exception to its right to exclusive use of the mark sought to be registered, one Harvey Richardson (hereinafter "user"). User is alleged to be using the mark HUNGRY HARVEY'S in connection with restaurant services in McIntosh County, Georgia.
User filed a statement pursuant to Trademark Rule 2.99(d)(2) wherein user objected to the registration sought by applicant. [FN2]
The record consists of the file of applicant's application; [FN3] testimony taken by each party with exhibits related thereto; excerpts from printed publications, a summary of user's Exhibit 44, and user's responses to certain discovery requests by way of applicant's notice of reliance; applicant's responses to certain discovery requests relied upon in user's notice of reliance; and the parties' joint stipulation into evidence of certain exhibits. [FN4] Both parties filed briefs on the case. No oral hearing was requested.
Applicant has demonstrated, through testimony, that its mark HUNGRY HARVEY was selected by Lynwood E. Gregory, III, who is responsible for the control and operation of applicant's chain of twenty-eight convenience stores and one gasoline jobbership. Nineteen of the stores are operated under the HUNGRY HARVEY mark in the counties of Floyd, Polk and Haralson in northwestern Georgia; the others under HANDI MART in the northwestern Georgia counties of Cobb and Cherokee. Mr. Gregory thought of the mark while he was previously employed by the STARVIN MARVIN convenience store chain in Georgia. Mr. Gregory began his employment with applicant on October 16, 1984 and, shortly thereafter, the HUNGRY HARVEY mark was placed on marquees at three of applicant's convenience stores. Applicant's stores sell cigarettes, soft drinks, beer, grocery items, magazines, health and beauty aids, novelty items, maps and certain fast foods. These stores also have gasoline pumps. Applicant's sales under its mark were approximately $14 million in 1987. Advertising expenditures by applicant itself totaled $43,000 in 1987 (figures for 1988 were incomplete). Applicant's services are advertised on signs at the stores, on billboards (approximately 6-10 in Floyd county), in local newspapers and on a radio station located in Rome, Georgia.
The named exception to applicant's right to exclusive use owns and operates one convenience store and fast food facility in Eulonia, Georgia. More specifically, user's facility is situated at the Townsend exit at the intersection of Interstate 95 and Georgia Route 57 in southeastern Georgia. User's facility sells gifts, food and drinks, as well as MOBIL brand gasoline. From its opening until 1982, user's facility operated under the name "Cricket Box." Harvey Richardson testified that he began use of the mark HUNGRY HARVEY'S in connection with his services in December 1982. Sales at user's facility in 1989 were estimated at $900,000. The mark appears on a sign at the facility and on a "blueboard" sign at the Townsend interstate exit. Other promotional efforts have included giveaway visors with the mark appearing thereon and one advertisement in a vacationers' magazine at the Georgia seashore. Harvey Richardson, an individual, owns a Georgia state trademark registration for the mark HUNGRY HARVEY'S for restaurant services.
*2 As to likelihood of confusion, we have no problem concluding that confusion would be likely to occur if the parties were to use their respective marks to identify their respective services in the same geographic area. The marks are virtually identical, differing by only a possessive letter "s" in user's mark. Moreover, the services actually rendered by the parties are substantially similar and, in part, identical.
The issue for us to decide in this case, accordingly, is whether applicant has demonstrated that it is entitled to registration of its service mark for the geographic area set forth in its application, that is, the entire United States except for McIntosh County, Georgia. [FN5] The primary concern in determining whether and to what extent a registration is to be granted to applicant is the avoidance of likelihood of confusion. In re Beatrice Foods Co., 429 F.2d 466, 166 USPQ 431, 437 (CCPA 1970). Applicant, as plaintiff in this concurrent use proceeding, has the burden of proof of demonstrating its entitlement to a concurrent use registration. Ole Taco Inc. v. Tacos Ole, Inc., 221 USPQ 912, 915 (TTAB 1984). As a general rule, a prior user of a mark is entitled to a registration covering the entire United States limited only to the extent that the subsequent user can establish that no likelihood of confusion exists and that it has concurrent rights in its actual area of use, plus its area of natural expansion. See: Pinocchio's Pizza Inc. v. Sandra Inc., 11 USPQ2d 1227, 1228 (TTAB 1989). Our reviewing Court has noted that actual use in a territory is not necessary to establish rights in that territory and that the extent of the area to be granted a concurrent use applicant depends on a number of factors, including the applicant's previous business activity, previous expansion (or lack thereof) and presently planned expansion. We find that these factors are relevant in this case.
As indicated above, user was the first to adopt and use the mark HUNGRY HARVEY'S in the state of Georgia, more specifically, McIntosh County, which is located in southeastern Georgia. Later, applicant adopted and used the mark HUNGRY HARVEY for its services in certain northwestern counties of Georgia remote from McIntosh County, namely Floyd, Polk and Haralson counties. It has been held in the past that concurrent rights arise where a party, in good faith and without knowledge of a prior party's use in another geographic area, adopts and uses the same or similar mark for the same or like goods or services within its own geographic area with a measure of commercial success and public recognition and without any resulting confusion as to source. [FN6] See: Woman's World Shops Inc. v. Lane Bryant Inc., 5 USPQ2d 1985 (TTAB 1988) and cases cited therein. On the record before us, we find that applicant initially adopted and used its mark for retail convenience store services without actual notice of user's prior use. Mr. Gregory testified that applicant was unaware of user's use of the mark HUNGRY HARVEY'S until the period June-July 1986; at that time, applicant was operating nine stores under its mark. We decline to adopt user's allegations that applicant's good faith adoption is in question; the evidence simply does not support this contention. The fact that Mr. Gregory at one time was previously employed in a town 150 miles from user's location does not in our minds cast any doubts on applicant's subsequent good faith adoption. Mr. Gregory testified that applicant's mark was selected because it was "as corney as 'Starvin Marvin'," the name of his prior employer (Gregory dep., p. 7). We thus proceed to determine the territorial rights to which applicant is entitled.
*3 The evidence of record establishes applicant's territory of actual use of the mark HUNGRY HARVEY in connection with retail convenience store services to be the counties of Floyd, Polk and Haralson in northwestern Georgia. Mr. Gregory testified as to planned expansion as follows at page 25:
Right now we are waiting for the outcome of this [proceeding] to determine whether to spend the money to go into the nine Handi Mart stores. In addition to that, we have some vacant property that we're planning on putting some ground up locations, and we're constantly looking up here in northeast [sic] Georgia for some more locations. [FN7]
The "Handi Mart" stores are located in the counties of Cobb and Cherokee in northwestern Georgia. Other than the above referenced testimony, the record is silent regarding any additional expansion plans by applicant. While we acknowledge that applicant's sales are impressive and that it has grown from four stores in 1984 to twenty-eight stores in 1989, there is no convincing evidence to suggest that it intends to expand out of the northwestern Georgia area. We accordingly do not believe, at least on the basis of the record now before us, that applicant's area of natural expansion, to which it is entitled as a good faith junior user, should extend beyond northwestern Georgia.
We are thus left to determine what area, if any, constitutes an area of natural expansion beyond Cobb and Cherokee counties. Quite frankly, we do not have much helpful evidence to make this determination. Nonetheless, looking at the location of the counties of Floyd, Polk, Haralson, Cobb and Cherokee, we find that the contiguous and close-in counties immediately surrounding Rome, Georgia constitute an area of natural expansion. We find this are to comprise the additional counties of Bartow, Paulding, Pickens, Gordon and Chattooga. We believe that our determination is in accord with the guidelines set forth in In re Beatrice Foods Co., supra, and Weiner King, Inc. v. The Wiener King Corporation, 615 F.2d 512, 204 USPQ 820 (CCPA 1980). Applicant, which has the burden of proof, simply has not shown that it is entitled to any greater area, much less the extensive area claimed in its application.
One final matter requires our consideration, namely the date of first use of the mark set forth in the involved application, which user asserts is incorrect. While user contends that applicant's incorrect date of first use constitutes fraud, no evidence persuasive thereof was introduced. User does not dispute that applicant made use of its mark prior to the filing date of the involved application. An erroneous date of first use could not possibly result in the allowance of a registration which would otherwise not be allowed, as long as there was technical trademark use prior to the filing of the application. Thus, the date of first use alleged by applicant in its application, even if false, cannot be said to constitute fraud on the Office. See: Colt Industries Operating Corp v. Olivetti Controllo Numerico S.p.A., 221 USPQ 73, 76 (TTAB 1983). We find, however, that applicant is not entitled to the alleged date of October 16, 1984 as the date of first use of the mark HUNGRY HARVEY in connection with applicant's services. That date represents the day when Mr. Gregory began his employment with applicant and the day that he "told managers and the employees that we were going to use the name Hungry Harvey on the existing convenience store and as we built the chain, we were going to use it" (Gregory dep., p. 48). Mr. Gregory went on to testify that, shortly after his arrival, the mark was placed on a marquee at three of applicant's stores "as quickly as the 17th or the 18th" (Gregory dep., p. 49). [FN8] The first "steel" sign bearing the mark was put up at applicant's store number 4 in November 1984 (Gregory dep., p. 49; response to interrogatory no. 9). In view of the uncertainty of Mr. Gregory and the lack of any documentation as to earlier use, applicant is entitled to claim only November 1984 as the date of first use. The specimens submitted in support of the application show use of the mark on what appear to be one of these "steel" signs, rather than marquees, as described by Mr. Gregory (Gregory dep., p. 50). Applicant's application is accordingly amended to show November 1984 as the date of first use anywhere and of first use in commerce.
*4 Decision: Applicant Georgia-Southern Oil Company, Inc. is entitled to a concurrent use registration for the mark HUNGRY HARVEY for retail convenience store services for the area comprising the counties of Floyd, Polk, Haralson, Cobb, Cherokee, Bartow, Paulding, Pickens, Gordon and Chattooga in the state of Georgia. Moreover, the dates of first use in the application are amended to read November 1984.
E. W. Hanak
T. J. Quinn
Members, Trademark Trial and Appeal Board
FN1. Application Serial No. 640,507, filed January 20, 1987, alleging dates of first use of October 16, 1984.
FN2. The statement was filed by Harvey Richardson. The Board, however, misconstrued allegations in the statement and incorrectly identified the user as Hungry Harvey's Inc. Upon further review, the Board believes that the user is properly identified as Harvey Richardson, and the files of this proceeding have been changed accordingly. In so doing, the Board makes no legal determination in this case regarding the ownership of user's application. See n. (4) infra.
FN3. User's application Serial No. 702,735, contrary to the parties' assertions, is not involved in this proceeding. See n. (4) infra.
FN4. The parties, during the testimony depositions, raised numerous objections. Some of these objections have been reiterated in the briefs, in particular, user's objections to applicant's exhibits 6-10. The objections relative to Exhibits 6 and 7 are well taken and, thus, this evidence has not been considered. In any event, not all of the complained-of exhibits are crucial in our determination of the issues herein.
FN5. We note that there is pending a geographically unrestricted application (Serial No. 702,735) filed by Hungry Harvey's, Inc. The application, filed December 24, 1987, seeks registration of HUNGRY HARVEY'S for retail convenience store services and restaurant services and sets forth dates of first use of December 1, 1982. This application has been suspended pending disposition of Georgia-Southern's earlier-filed application involved herein. Both parties have treated the later-filed application as if of record, and the parties have spent considerable effort in arguing over issues related to this application of Hungry Harvey's Inc. Since this application seeks a geographically unrestricted registration, however, it was not possible to join Serial No. 702,735 in this proceeding and, accordingly, the application is not before us. Since the application is not involved in this proceeding, issues regarding ownership of Serial No. 702,735 are not properly before us and we have not given any consideration to those issues. The fact that a copy of application Serial No. 702,735 was submitted as evidence does not mean that the application can be substantively reviewed, as for example, for ownership questions in the context of this concurrent use proceeding. The only issue properly before us concerns applicant's entitlement to registration. The specific territorial rights to which user is entitled are not before us except, of course, to the extent that user's rights are limited by the territorial rights to which applicant shows entitlement. Those rights of user can be determined only if and when a concurrent use proceeding is instituted involving user's application, assuming, of course, that user amends its application to one seeking a concurrent use registration. Otherwise, the registration issuing to Georgia-Southern will bar, under Section 2(d), an unrestricted registration to user. Assuming that user amends its application to name Georgia-Southern as an exception, and that user claims exclusive rights in the entire United States except for Georgia-Southern's rights as determined in the instant proceeding, user's application would then be published. Assuming that no oppositions are filed thereagainst, a concurrent use proceeding would be instituted with user as plaintiff and Georgia-Southern as defendant. If Georgia-Southern contests user's claimed territory, user would have the burden of proving its entitlement to registration for the entire United States except for Georgia-Southern's territory.
FN6. We find user's evidence bearing on actual confusion to be of limited probative value. User has relied upon two instances where Harvey Richardson was served with court papers meant for applicant. User also points to its receipt of invoices from a supplier of food products, the receipts being intended for applicant. Lastly, applicant was once asked by a customer if it had a store along Interstate 95. As to the mistaken service of process, and the mistaken shipment by a supplier, we can only speculate as to the reason or reasons for the mistakes. Based on the insufficiency of evidence, we cannot conclude that these instances are ones of actual confusion. Likewise, the instance when one customer told applicant that his wife had seen user's mark on I-95 and wondered if there was a connection, aside from the hearsay problem, falls far short of a probative showing of actual confusion.
FN7. The reference to "northeast" is in error. While not noted by the deponent in his corrections to the transcript, applicant's counsel in his brief referenced this testimony relative to expansion in "northwest Georgia" (applicant's brief, p. 8).
FN8. Mr. Gregory described a marquee as "one of these little flashing arrow signs that you see everywhere that you've got the interchangeable letters on there" (Gregory dep., p. 50).