*1 GRINNELL CORPORATION
GRINNELL CONCRETE PAVINGSTONES, INC.
Opposition No. 80,482
April 10, 1990
William E. Booth of Fish & Richardson for Grinnell Corporation
Klauber & Jackson for Grinnell Concrete Pavingstones, Inc.
Before Sams, Rice and Quinn
By the Board:
An application has been filed by Grinnell Concrete Pavingstones, Inc. to register the mark shown below (in reduced form)
for paving stones. [FN1]
Registration has been opposed by Grinnell Corporation on the ground that applicant's mark, when used on its goods, so resembles the mark GRINNELL and various design marks featuring the letter "G"', all previously used and registered by opposer for a variety of pipe fittings and goods and services related to fire protection systems, as to be likely to cause confusion, mistake or deception.
This case now comes up on applicant's motion to extend its time to answer (filed November 20, 1989); applicant's motion for leave to withdraw its application Serial No. 735,790 and to terminate the opposition (filed December 19, 1989); and opposer's motion for entry of notice of default and an order to applicant to show cause why judgment should not be entered against applicant (filed January 8, 1990).
Applicant's uncontested motion filed November 22, 1989 to extend its time to answer the notice of opposition until December 19, 1989 is granted.
On December 19, 1989 applicant did not file an answer, but rather filed its motion for leave to withdraw its application. Applicant's failure to file an answer was not unreasonable in light of its pending motion for leave to withdraw its application which, if granted, would obviate the need for an answer.
Accordingly, opposer's motion for entry of notice of default and an order to show cause to applicant is denied.
Turning now to applicant's motion for leave to withdraw application Serial No. 735, 790, applicant asserts that it is not the owner of the mark therein; and that applicant should be allowed to abandon the application without prejudice and have the opposition dismissed without prejudice. Applicant contends that in investigating the allegations of the notice of opposition, applicant has ascertained that applicant, Grinnell Concrete Pavingstones, Inc., is not the owner of the mark applied for, but rather applicant is a "related"' company to Grinnell Enterprises, Inc., formerly known as Grinnell Sand and Gravel; that Grinnell Enterprises, Inc. and/or its owner hold the controlling interest in applicant and other "Grinnell"' companies; that applicant's error in filing the application in its own name was innocent; that opposer will not consent to applicant's abandonment of the application; and that forcing a judgment in this case is unfair to Grinnell Enterprises, Inc., a non-party to this case.
In response thereto opposer contends that applicant cannot circumvent Trademark Rule 2.135 which provides for judgment against an applicant who abandons its application without the written consent of the opposer; that opposer has a right to a decision on the merits of this case; that applicant's alleged factual statements regarding the relationship between the "related"' companies are vague, equivocal and in direct contradiction of statements made under oath by applicant; that opposer should not have to accept such statements on their face; and that possible unfairness to Grinnell Enterprises, Inc. is speculative and is not a sufficient ground to circumvent the rules.
*2 Applicant responded, arguing that judicial economy calls for the Board to allow the withdrawal of the application based on the flaw in the ownership, and to dismiss the opposition; that there is no reason to punish applicant for candidly apprising the Board of the fatal defect in the application; and that if the Board determines that opposer is entitled to seek a judgment in this case on the issue of likelihood of confusion, then applicant should be allowed time in which to file an answer to the notice of opposition or to have the real party in interest institute a declaratory judgment suit. [FN2]
Trademark Rule 2.135, as amended, effective November 16, 1989, reads as follows:
After the commencement of an opposition, concurrent use, or interference proceeding, if the applicant files a written abandonment of the application or of the mark without the written consent of every adverse party to the proceeding, judgment shall be entered against the applicant. The written consent of an adverse party may be signed by the adverse party or by the adverse party's attorney or other authorized representative.
The provisions of Rule 2.135 concerning abandonment of an application without the consent of the opposer apply even where, as here, the motivation for the abandonment is a concession by the applicant that it is not the owner of the mark that is the subject of the opposed application.
Accordingly, applicant's motion for leave to withdraw the application without prejudice is denied. Applicant is allowed until April 30, 1990 in which to file an answer to the notice of opposition, upon receipt of which discovery and trial dates will be set.
J. D. Sams,
J. E. Rice,
T. J. Quinn,
Members, Trademark Trial and Appeal Board
FN1. Application Serial No. 735,790, filed June 22, 1988. The application includes a statement that "the mark includes the stylized letter 'G'." Applicant claims dates of first use and first use in commerce of July 10, 1985 and September 18, 1985, respectively.
FN2. In the event a civil action is commenced, the Board should be notified. Attention is directed to Trademark Rule 2.117(a) and (c).