Trademark Trial and Appeal Board
Patent and Trademark Office (P.T.O.)
*1 MARSHALL FIELD & COMPANY
MRS. FIELDS COOKIES
Cancellation No. 16,572
September 21, 1992
Hearing: May 12, 1992
Opposition No. 78,031 to application Serial No. 73/530,088 filed April 1, 1985
Norman H. Zivin and Donna A. Tobin of Cooper & Dunham for Marshall Field & Company
Jerome Gilson, Thomas M. O'Malley, and Doris Maroko of Willian, Brinks, Olds, Hofer, Gilson & Lione, Ltd. for Mrs. Fields Cookies
Opinion by Rooney
An application was filed by Mrs. Fields Cookies [FN1] to register the mark MRS. FIELDS (as shown below) on the principal register under Section 2(f) for bakery goods, namely, cookies and brownies. [FN2] Use since November 15, 1981 was alleged.
Registration has been opposed by Marshall Field & Company on the ground that applicant's mark so resembles the mark FIELD'S previously used and registered by opposer for retail department store services [FN3] and the mark MARSHALL FIELD'S (as shown below) previously used and registered by opposer for baked goods and other foods [FN4] and for retail department store services, [FN5] as to be likely to cause confusion, mistake or deception.
Applicant admitted that opposer is the "purported" owner of the pleaded registrations; that applicant is engaged in the baking, advertising, distributing and selling of baked goods and other foods, including but not limited to chocolate chip cookies, brownies and candies and in rendering retail food services; and that it adopted and began use of the mark MRS. FIELDS in script form after opposer's first use of its pleaded marks. The remaining allegations were denied. Applicant affirmatively pleaded laches, acquiescence and estoppel.
Subsequently, Marshall Field & Company (opposer above) filed a petition to cancel the registrations of the marks MRS. FIELD'S COOKIES in the design shown below (the word, "cookies" disclaimed) for retail bakery store services; [FN6]
MRS. FIELD'S COOKIES in the same design with the same disclaimer for bakery goods, namely, cookies and brownies; [FN7] and MRS. FIELDS, as shown below, for retail bakery store services. [FN8]
The grounds for cancellation are that petitioner [FN9] has, for many years prior to respondent's date of first use, been engaged in the production and sale of baked goods and other foods and in rendering retail food and department store services; that, as early as 1865, petitioner adopted and was known by the mark FIELD'S in association with retail department stores and the sale of a wide variety of goods therein; that as early as 1881, petitioner adopted and was known by the mark MARSHALL FIELD'S in connection with retail department stores and the sale of goods therein; that as early as 1946, petitioner adopted and was known by the mark MARSHALL FIELD'S in connection with retail food store and department store services and the sale of food items, particularly cookies and brownies; that petitioner has registered FIELD'S for retail department store services, [FN10] and MARSHALL FIELD'S (in script form, as shown below) for baked goods and other foods, [FN11] and for retail department store services; [FN12]
*2 and that respondent's marks, as applied to its bakery goods and retail bakery store services, so resemble petitioner's marks as to be likely to cause confusion, mistake or deception.
Respondent admits that it is engaged in the sale of baked goods and retail bakery store services, as alleged in the petition; admits the allegations as to respondent's adoption and use of the marks shown in Regn. No. 1,256,315 and Regn. No. 1,299,149 and its ownership of Regn. Nos. 1,241,619, 1,256,315 and 1,299,149; and admits that it sometimes uses its mark in distinctive script and that it knew of petitioner's use of the marks FIELD'S and MARSHALL FIELD'S when it adopted and first used its marks. The remaining allegations are denied. Affirmatively pleading, respondent alleges that petitioner is guilty of laches, acquiescence and estoppel.
These two proceedings were consolidated upon motion made by respondent and approved by the Board.
Respondent later filed a counterclaim to cancel petitioner's Regn. No. 1,304,257 for the mark FIELD'S for retail department store services. As grounds for cancellation, respondent essentially alleged fraud in procuring the registration as a result of statements made in connection with a claim under Section 2(f). Petitioner has denied the significant allegations of the counterclaim and has affirmatively pleaded laches. [FN13]
The record consists of the files of respondent's registrations and its application and of petitioner's registration sought to be cancelled in the counterclaim; status and title copies of other registrations for marks which include the component FIELDS, owned and introduced by petitioner, copies of a number of printed publications, portions of the discovery deposition of Debra Fields, and respondent's answers to certain of petitioner's interrogatories and requests for admissions, filed under notices of reliance by petitioner; five testimony depositions with exhibits filed on behalf of petitioner; copies of third-party registrations, of portions of 116 printed publications, of portions of 21 telephone directories, 7 discovery depositions and certain of petitioner's answers to interrogatories, all filed under notices of reliance by respondent; and 14 testimony depositions with exhibits filed by respondent. Both parties have filed briefs and were represented at the oral hearing held in this matter.
Before proceeding to the merits of this case, there are some evidentiary matters to be resolved. Petitioner has filed a motion to strike portions of the evidence included in respondent's Notice of Reliance dated April 23, 1991. It is petitioner's position that respondent has improperly sought to introduce into evidence several discovery depositions, purportedly of petitioner's "agents"; a compilation purporting to be a listing of companies or businesses allegedly shown in telephone directory listings, which compilation is assertedly not a printed publication pursuant to Trademark Rule 2.122(e); the testimony deposition of Gary Capello, taken by written questions, which petitioner complains was amended substantively after the witness reviewed the transcript of his testimony; exhibits 68, 69, 71 and 72 marked during the deposition of Guy Colton, respondent's Director of Marketing; and Exhibits Nos. 47 through 66 introduced during the testimony of Debra Fields.
*3 Upon consideration of the arguments of both parties, the objections are resolved as follows. With respect to the discovery depositions of Paul B. Costello and Bernard Peter, we note that Rule 2.120(j)(1) provides that
The discovery deposition of a party or of anyone who at the time of taking the deposition was an officer, director or managing agent of a party, or a person designated by a party pursuant to Rule 30(b)(6) or Rule 31(a) of the Federal Rules of Civil Procedure, may be offered in evidence by an adverse party.
Petitioner has argued that neither Mr. Costello nor Mr. Peters was an officer, director or managing agent of petitioner at the time their depositions were taken and thus their depositions may not be made of record under a notice of reliance. Respondent argues that Paul Costello was petitioner's Director of Public Affairs beginning in November 1984 and in January of 1988 he personally responded to numerous press inquiries concerning the initiation of the instant controversy and that his testimony was related to these press inquiries and his public statements on behalf of petitioner.
While Mr. Costello may have been employed by and acting on behalf of petitioner from November of 1984 through early 1988, the fact is that he left petitioner's employ in July of 1988 to accept a position with the Dukakis for President campaign as press secretary to Mrs. Dukakis, and his deposition was not taken until August 1988. Mr. Costello testified that, while he was on "benefits leave of absence", he had actually resigned and was thus "terminated". In response to the question of how long he expected his employment with the campaign to last, he responded, "Depends on November 8th." When asked whether he had any plans of returning to petitioner's employ, Mr. Costello stated, "I hope not". Respondent urges us to consider that these last two responses reflected the uncertainty of the witness as to his future as a result of its being dependent on the results of the election. However, petitioner notes in a reply brief that, despite the fact that Mr. Dukakis was not elected, Mr. Costello did not return to petitioner's employ. We cannot ignore the fact that the witness considered his employment with petitioner terminated as of July 1988 and that, according to the rules of practice, his discovery deposition, taken thereafter, was not admissible under Rule 2.120(j)(1).
As to Mr. Peters, there is no question that he was not in the employ of petitioner at the time his deposition was taken. He had been working for another company for more than 4 years when he was deposed.
Respondent had ample opportunity to either seek to have these depositions admitted as testimony or to have taken the testimony depositions of these individuals. Having been improperly filed under the rules, the discovery depositions of Costello and Peters will not be considered. See Lutz Superdyne, Inc. v. Arthur Brown & Bro., Inc., 221 USPQ 354 (TTAB 1984) and National Fidelity Life Insurance v. National Insurance Trust, 199 USPQ 691 (TTAB 1978).
*4 Exhibit RNR-135, being a compilation of telephone directory listings, is not admissible under the definition of a printed publication found in Rule 2.122(e). However, inasmuch as copies of the pertinent pages of the telephone directories from which the compilation was made have been submitted, the compilation is unnecessary.
Petitioner has objected to the testimonial deposition upon written questions of Mr. Gary Capello on the ground that, upon review of his deposition, Mr. Capello made a number of substantive changes to his responses. Respondent argues that under Rule 30(e), FRCP, a witness may make changes of any nature in his deposition. However, Mr. Capello's was a testimony deposition, not discovery. The Board has made it clear that, while typographical and editorial corrections may be made in a transcript, any changes in a testimony deposition which are substantive in nature and, in effect, change the testimony after the fact, will not be considered. See Cadence Industries Corporation v. Kerr, 225 USPQ 331 (TTAB 1985) and Entex Industries, Inc. v. Milton Bradley Co., 213 USPQ 1116 (TTAB 1982). Accordingly, any portions of Mr. Capello's deposition which were changed substantively have not been considered.
Exhibits Nos. 68, 69, 71 and 72, introduced during the deposition of Guy Colton, are sought to be stricken by petitioner. Exhibits 68 and 69 have been objected to on the ground that No. 68 purports to be a summary of activities taking place in MRS. FIELDS COOKIES stores from 1977 through July 1989; that it appears to have been created for the purpose of the instant litigation; and that it is not clear who prepared it; while No. 69 purports to be a summary of annual sales estimates from 1978 through 1989 for MRS. FIELDS COOKIES; and that, in this case as well, it is not clear whether Mr. Colton prepared it. Petitioner maintains that for the foregoing reasons, these exhibits are inadmissible.
Contrary to petitioner's arguments, Mr. Colton, respondent's Director of Marketing, identified Exhibits 68 and 69 as records kept in the ordinary course of business. With respect to No. 68, Mr. Colton testified that he had prepared the summary himself; that it was not prepared at the request of Mr. O'Malley (respondent's attorney); and that the information on the list is used daily. Mr. Colton also testified that he personally prepared the sales list of Exhibit No. 69; and that it was prepared for his use to enable him to do business reviews in order to understand the business in terms of growth. In addition, the records from which these summaries were taken presumably were available to petitioner had they been requested and it does not appear that petitioner did, in fact, request those records. Petitioner's objections are not well taken with respect to these exhibits, which are deemed to be admissible.
With respect to Exhibits Nos. 71 and 72, No. 71 was identified as commercials for MRS. FIELDS COOKIES and No. 72 as a history of respondent's business. Mr. Colton testified in connection with these exhibits that he had not seen the commercials run on television and had never seen the history tape run at all. We find that these tapes are inadmissible for lack of foundation.
*5 Finally, petitioner has objected to Exhibits Nos. 47 through 66, comprising a series of photographs purportedly of MRS. FIELDS COOKIES stores, which were introduced during the deposition of Debra Fields. The ground for the objection is that the exhibits were unauthenticated because the witness could not specifically identify any of these exhibits as being photographs which she had taken herself. With regard thereto, there is no requirement that the witness take the photographs herself. It is sufficient that she testified that she has visited the stores and is familiar with them.
In view of the foregoing, the motion to strike is granted with respect to the Costello and Peters discovery depositions, the compilation of telephone directory entries and Exhibits 71 and 72. Inasmuch as it is not our practice to strike testimony depositions which were regularly taken, the motion is denied with respect to the Capello deposition, which will be considered except as to any substantive changes that Mr. Capello has made. The motion is denied as to Exhibits 68, 69 and 47 through 66.
Respondent has filed a paper entitled "Registrant's Objections to Deposition Transcripts and Exhibits", allegedly pursuant to Trademark Rule 2.124(g). Petitioner has moved to strike respondent's objections on the ground that Rule 2.124(g) relates solely to objections to questions and answers in depositions upon written questions and does not provide a basis for objections which refer to depositions upon oral examination, which respondent's are, and that the objections are untimely since the testimony to which they refer consists of depositions taken at least a year prior to the filing of the objections. Petitioner asserts that the "objections" are apparently an attempt by respondent to brief its objections without running afoul of the page limit for final briefs set by Rule 2.128(b).
Petitioner itself has filed a previously determined motion to strike evidence, which is, in effect, an expression of its objections to respondent's evidence. Moreover, there is no requirement in the rules that objections of the type raised in respondent's paper be made in a party's brief on the case rather than by a separate paper. Petitioner's motion to strike is denied.
Respondent has objected to the entire Leiderman transcript and exhibits on the ground that the witness lacks personal knowledge of the matters testified to, that the testimony is irrelevant to this proceeding, lacks foundation and is hearsay in nature and, in addition, that the testimony is unduly prejudicial.
The fact that the witness is clearly prejudiced against the respondent is evident from the testimony. However, since the Board does not strike properly taken and filed testimony, the probative weight to be afforded the testimony has been measured against the obvious bias of the witness as well as the other objections of respondent. Similarly, respondent's other objections have been taken into consideration in our determination of the probative value of this testimony.
*6 We next turn to respondent's objections to the testimony of Dr. Ivan Ross relative to the survey conducted by Dr. Ross on behalf of petitioner. Respondent asserts that the survey was highly unreliable and biased; and that it used highly prejudicial leading questions, side-by-side comparisons, irrelevant stimuli, lack of control questions, improper interpretation and a design incongruous with use in the marketplace.
With respect to the objections to the testimony of Dr. Ross as well as to all of respondent's objections to the aforementioned evidence, we reiterate that the Board does not strike testimony regularly taken and submitted under the rules. Respondent's objections will be duly considered in our weighing of the probative value of the evidence.
Respondent has also objected to portions of Mr. Rozak's testimony. The objection to Mr. Rozak's statement of his opinion that Marshall Field is the dominant retailer in Chicago, the Northern Illinois area and nationwide, on the ground that there is no foundation for his testimony as to the public awareness of the name, is well taken. The same is true of Mr. Rozak's testimony that the public uses the names FIELDS'S and MARSHALL FIELD'S interchangeably. Mr. Rozak is, of course, entitled to express his opinion regarding his perception of the public awareness of the name and what has been his experience with use of the names FIELD'S and MARSHALL FIELD'S in the marketplace. The probative value of such testimony will be weighed in light of the fact that Mr. Rozak is relating his impressions based on his personal experiences rather than on any established qualifications in this area.
With respect to Mr. Rozak's testimony relative to alleged instances of actual confusion, we note that the fact that three individuals called and asked whether MRS. FIELDS is a part of MARSHALL FIELD'S or a franchise of MARSHALL FIELD'S indicates that rather than being confused, those individuals actually recognized that these were two separate entities. Even if this could be considered confusion, we do not have the benefit of the testimony of the allegedly confused individuals from which to determine what may have been responsible for such confusion. Mr. Rozak's testimony is thus not persuasive evidence of actual confusion arising from the contemporaneous use of the involved marks of the parties.
Turning now to the merits of these proceedings, the facts revealed by the record show that petitioner has 26 department stores in the United States. In addition to the usual retail store services, the company issues catalogs and sells through mail and telephone orders. The main products in MARSHALL FIELD'S stores are apparel, housewares and furniture. In addition, MARSHALL FIELD'S stores contain restaurants and sell candy and bakery products. The first in-store restaurant was opened in 1890. There are 41 restaurants in 21 stores. There is a group of restaurants called Greener Fields and another group all having names of trees, such as, the Walnut Room and the Linden Room. Certain dishes on the menus of petitioner's restaurants are referred to by the name FIELD'S, such as, FIELD'S Special Sandwich and FIELD'S Covered Apple Pie. When this practice started is not quite clear, although there is testimony that it occurred at least as early as 1970. The bakeries use the name MARSHALL FIELD'S or MARSHALL FIELD'S GOURMET on their packaging, and those bakery goods which are considered MARSHALL FIELD'S specialties are sometimes, at the discretion of the department manager, labeled as FIELD'S, such as, Field's Pecan Pie. When this practice was initiated has not been established.
*7 There has been a full-line bakery operating on the 13th floor of the Chicago store since 1920 producing breads, pies, cakes, tortes, cookies, muffins and wedding cakes which are baked fresh daily and are sold in the in-store bakeries or in the restaurants. There are five stores which have free-standing bakery counters and there are five bakeries that are outside of, but adjacent to, restaurants in MARSHALL FIELD'S stores. In 1988, petitioner had sales of just over a billion dollars. In the same year, petitioner's sales of baked goods amounted to $3 million.
Petitioner issues several mail order catalogs each year and has done so since the 1920's. These are mailed to over 800,000 charge account customers and are available in the retail department stores. Since the 1940's petitioner has issued a catalog for packaged food items and includes packaged food items in its Christmas catalog. Petitioner makes candy which is sold in its retail stores and is also available through mail and telephone order catalogs. Petitioner's goods are packaged in bags, boxes and other packaging bearing its marks either in block print or in a distinctive script.
Petitioner employs various media for its advertising, i.e., radio, television, print and in-store distributed brochures. The evidence illustrates that petitioner's stores are often referred to as FIELD'S in newspaper and magazine articles as well as in books. Certain of the departments in the retail operations use the term FIELD'S, i.e., FIELD'S AFAR is a gift department, FIELD'S CHOICE, FIELD GEAR and FIELD MANOR are apparel departments, and there is also a FIELD'S FASHION SERVICE which is a shopping service for customers.
Petitioner owns registrations for the marks, MARSHALL FIELD'S for baked goods and other foods; MARSHALL FIELD'S for retail department store services; MARSHALL FIELD'S GOURMET and design for baked goods and other foods; FIELD'S for retail department store services; MARSHALL FIELD'S GOURMET for retail grocery store, mail and telephone order food services and restaurant services, FIELD GEAR for men's, women's and children's clothing; FIELD SPORT for men's and women's clothing; FIELD'S CHOICE for women's clothing; FIELD'S AFAR for clothing and retail department store services; and MARSHALL FIELD'S EXPRESSED for mail and telephone order services.
Respondent's business came into being in 1977 when Mrs. Debra Fields opened a cookie shop called MRS. FIELDS CHOCOLATE CHIPPERY in Palo Alto, California. By 1981, there were 23 MRS. FIELDS CHOCOLATE CHIPPERY stores. The mark was used in the stores and on the packaging for the cookies. During this period, some of the stores carried only the name MRS. FIELDS because of size constraints or because of landlord specifications. In 1981, respondent began use of the marks MRS. FIELDS in script form and MRS. FIELDS COOKIES in script form on a polka dot background and began use of a red and white motif which was, and is, used in the stores on signs and uniforms and on the packaging. There are currently more than 400 MRS. FIELDS stores in the country. Respondent does not use FIELDS alone, although there were one or two instances, noted in publications, of references to respondent as FIELDS by third parties. However, in these instances this was the author's shorthand method of referring back to MRS. FIELDS, which had been previously mentioned.
*8 The marks are also used by respondent's related company, La Petite Boulangerie, of which there are more than 100 and by Mrs. Fields Bakery stores, which number 8. The MRS. FIELDS mark has been licensed to Ambrosia Chocolate Company, a subsidiary of W.R. Grace Inc., for use on chocolate chips sold in supermarkets and grocery stores. Marriott Corporation has also sought a license from respondent to use the mark in connection with bakery and food service units in airports and toll road plazas. Figures for 1989 show that sales were $116 million dollars that year, having grown from $10 million in 1982.
The persona of Debra Fields is central to all of respondent's advertising and she has made and continues to make frequent public appearances at lectures, meetings, on television, etc. In addition, the company uses other methods of advertising such as television, radio, print and in-store point of purchase materials. Debra Fields estimated that about 5% of annual sales are spent on advertising. A great many articles have been written about the company and about Debra Fields in newspapers and magazines.
In view of the fact that petitioner has pleaded and relies upon its registration of the mark FIELD'S for department store services, we will turn first to the counterclaim to cancel the registration of that term. [FN14]
Respondent has alleged that petitioner admitted in its application for registration of FIELD'S that the mark was in use by third parties; that, in a subsequent statement in connection with its claim under Section 2(f), petitioner stated its belief that FIELD'S had become distinctive in relation to the services by reason of substantially exclusive and continuous use by applicant in interstate commerce for five years next preceding the filing of the application and that petitioner filed the affidavit of its chairman stating that the facts in the application as amended are true; that the claim of substantially exclusive and continuous use made by petitioner was knowingly false, unsupported and without adequate investigation or inquiry; that, at the time of the signing and filing of the Section 2(f) affidavit, petitioner and its attorneys had knowledge of widespread and active third-party use of marks consisting of or including the term FIELD'S, FIELD or FIELDS in connection with similar services during the subject time period; that petitioner's use of FIELD'S during this period was substantially nonexclusive; that petitioner's Chairman has admitted that, before he signed the supplemental affidavit, he did not examine company records to determine whether others were using the name, nor, to his knowledge, did any other Marshall Field employee; that the Chairman has admitted having knowledge that others were using the mark at the time he made the statement of substantially exclusive use; that he has admitted that petitioner has not used the FIELD'S mark of the registration as a service mark in any public fashion during the term of his employment; and that, in view of the foregoing, the registration of FIELD'S was obtained fraudulently or through willful falsehood.
*9 Fraud in procuring a trademark registration occurs when an applicant for registration knowingly makes false, material representations of fact in connection with an application to register. See Torres v. Cantine Torresella S.r.l., 808 F.2d 46, 1 U.S.P.Q.2d 1483 (Fed.Cir., 1986). A party making a claim of fraud against the Patent and Trademark Office is under a heavy burden since fraud must be proved by clear and convincing evidence, leaving nothing to speculation, conjecture or surmise. Should there be any doubt, it must be resolved against the party making the claim. See Smith International, Inc. v. Olin Corporation, 209 USPQ 1033 (TTAB 1981).
With respect to the claim made in connection with respondent's statement of "substantially exclusive" use, we note the statement of the Court in the case of The Money Store v. Harriscorp Finance, Inc., 689 F.2d 666, 216 USPQ 11 (CA7 1982) that there is no mandate in the Lanham Act specifically requiring one who seeks a federal registration of a mark to make a preapplication search for other users of that mark. However, it is recognized that reference in The Money Store case was to the application oath.
In this case, petitioner was more than candid in making its statement regarding its knowledge of third-party users when it filed the application for registration. However, respondent's position is that, despite the earlier statement made in the application regarding third-party users, petitioner's knowledge of eleven third-party users of FIELD'S precludes it from making a good faith statement that its use of FIELD'S for retail department store services was substantially exclusive.
Respondent lists the eleven uses of which it claims petitioner had knowledge when it filed its declaration of substantially exclusive use:
2. Use of J.M. FIELDS for retail stores.
3. A retail store in Jackson, Michigan under the name FIELD'S.
4. A retail clothing store in Decatur, Illinois.
5. A department store in Reynoldsville, Pa. called FIELDS.
6. A company called FIELDS Hosiery.
7. An application for FIELDS filed by Allied Stores.
8. FIELD'S retail and/or department store services in Beverly Hills, Ca.
9. FIELD'S Jewelers in San Antonio, Texas.
10. FIELD'S Gift Shop in Miami, Florida.
11. FIELDS for wearing apparel in Newark, N.J.
Respondent has the burden to prove that petitioner deliberately attempted to mislead the Examining Attorney with respect to its claim under Section 2(f). In order to do that, respondent must establish that the information possessed by petitioner at the time the declaration was executed was such that no reasonable person could knowingly state that use of the mark by the respondent was "substantially exclusive" for the identified services. Showing merely that, for some indeterminate time and to some indeterminate extent, during the relevant five year period each of these parties had used the term FIELD or FIELDS and that petitioner knew or should have known of these uses is not enough for us to conclude that petitioner deliberately sought to deceive the Patent and Trademark Office when it claimed to have substantially exclusive use of the mark during that period. All that is required of the declarant in these cases is a reasonable belief of substantially exclusive use. In view of the forthright disclosure of known third-party users by petitioner in its application, which petitioner stated were believed to be local and without superior rights to its own, we are not convinced that petitioner committed fraud in executing the statement under Section 2(f). That is to say, it was not unreasonable for there to have been a reasonable belief in the truth of the statement regarding petitioner's substantially exclusive use during the relevant five year period.
*10 With respect to the assertion that petitioner committed fraud when it claimed to have continuous use during that same five year period, we reiterate that in order to be fraudulent, there must be a false representation of a material fact. The claim that a party seeking a registration under Section 2(f) has had continuous use during the five years immediately preceding the filing of an application under Section 2(f) is unquestionably a material representation.
The main thrust of respondent's challenge to the validity of the registration is respondent's assertion that the statement was made by petitioner's chairman, who had no personal knowledge of such use and that there had been no investigation of records or inquiry directed to persons with personal knowledge.
Chairman Miller testified that, while he did not have personal knowledge, he relied on the persons charged with preparing and verifying the documents which he signed. Ms. Dynek, petitioner's in-house counsel, indicated that she had not investigated the relevant use of FIELD'S but relied on Mr. Zivin, petitioner's counsel, who had prepared the documents [FN15] and also on her own personal knowledge as a customer of petitioner for many years. The question is whether Chairman Miller, who was not with the company during the five year period in question, had a reasonable belief that the statement was true when he signed it.
It is not unusual nor unreasonable for an executive of a large corporation to sign documents of which he or she does not have personal knowledge which have been prepared for signature by those who are charged with the responsibility of preparing accurate documents. Thus, Mr. Miller's reliance on Ms. Dynek and Mr. Zivin was not a breach of his responsibilities. Moreover, we have Ms. Dynek's testimony that she was relying on her own personal knowledge, as well as on Mr. Zivin, when the documents were prepared. But, more important is the fact that the statement was not false.
There is no question that a party may not be excused from a charge of fraud simply because he had no personal knowledge when he signed a document which contained false statements. Nor can he hide behind the fact that the documents were prepared by those authorized by the company to prepare those documents. See Mister Leonard Inc. v. Jacques Leonard Couture Inc., 23 U.S.P.Q.2d 1064 (TTAB 1992). However, in this case, perusal of the catalogs submitted as exhibits in the record substantiate that there has been use of the term FIELD'S in connection with department store services for many years. The following illustrate such uses:
Exhibit 126, a catalog identified as dating from the 1950's, entitled: "Festive Foods From Field's";
Exhibit 127, also from the 1950's, p. 16: "Come here for sweets of Field's assured good quality ..." "... exciting treats from Field's Budget Floor";
Exhibit 102, a 1976 catalog, "If you wish, we will enclose a Field's gift card";
*11 Exhibit 128, October 1977 catalog order form: "If you wish, we will enclose a Field's gift card ...";
Exhibit 129, 1979, p. 10: "Field's own 3-lb. pineapple glazed, cloved ham." On p. 21, "Its [sic] a beer fest, compliments of Field's ...";
Exhibit 130, 1980, p. 42: "They'll know where it's from when they see the famous Field's clock [FN16] printed in brown and white on the lid";
Exhibit 131, Marshall Field's Christmas Gourmet Gifts, 1981: p. 6, Item A. Replica of Field's clock in milk chocolate. On the order form, reference to use of a Field's charge or an American Express charge for purchases;
Exhibit 82, Gourmet Gifts, 1982: Reference to charging purchases on Field's charge; and
Exhibit 133, 1983 catalog: "... chocolates created by expert 'house dippers' in Field's 13th Floor Candy Kitchen ...".
There are similar uses in the 1984, 1985, 1987 and 1988 catalogs as well as exhibits showing advertising use of FIELD'S in 1983. It is abundantly clear that respondent has failed to carry the burden of proving that petitioner's assertion of continuous use from 1978 to 1983 was false and that there was a deliberate attempt to deceive the Patent and Trademark Office.
Accordingly, the counterclaim is dismissed.
Turning to the question of likelihood of confusion, petitioner's evidence of its ownership of valid and subsisting registrations of its pleaded marks make it unnecessary for us to examine the question of priority with respect to petitioner's registered marks for the goods and services listed in the registrations. See King Candy Co. v. Eunice King's Kitchen, 496 F.2d 1400, 182 USPQ 108 (CCPA 1974). Apart therefrom, there is ample evidence of use of the marks MARSHALL FIELD'S for retail department store services for a very long period of time before the date of first use by respondent. There is also evidence that petitioner has used the mark FIELD'S as well for department store services, and that the public has come to recognize the mark FIELD'S in connection with the famous department store since before respondent's first use of its marks. There is further evidence that FIELD'S has been used to designate certain foods, including baked goods, on menus in petitioner's restaurants since at least 1970 and that at some time FIELD'S came to be used to designate certain specialty items in petitioner's bakeries.
Petitioner argues that respondent's marks are nearly identical to petitioner's marks, FIELD'S and MARSHALL FIELD'S; that the evidence of record of petitioner's and the public's use of the nickname or abbreviation FIELD'S to refer to petitioner and the goods sold and services rendered by petitioner supports its ownership of the mark FIELD'S; that respondent's marks are MRS. FIELDS and MRS. FIELDS COOKIES; that respondent has abandoned the earlier version of its mark, MRS. FIELDS' CHOCOLATE CHIPPERY, and has essentially stopped using MRS. FIELDS COOKIES; that the dominant portion of both parties' marks is FIELD'S; and that purchasers familiar with petitioner's marks are likely to assume, upon encountering respondent's advertising or packaging bearing the marks MRS. FIELDS or MRS. FIELDS COOKIES that those marks are mere variations of petitioner's marks and that there is a business association or connection between the parties. It is asserted that the other portions of respondent's mark merely add to the commercial impression the idea that a relative of a person named FIELD or FIELDS is selling similar goods. It is also petitioner's position that respondent has increased the likelihood of confusion between its mark and petitioner's since its initial use of MRS. FIELDS' CHOCOLATE CHIPPERY in connection with the sale of cookies and brownies; that it now seeks to register and to maintain registrations for marks which are nearly identical to petitioner's marks, particularly petitioner's FIELD'S mark with the marks presented in a similar signature script, while at the same time expanding the types of goods sold by respondent and the channels of trade through which its goods are sold so that they are more similar to those through which the goods of petitioner are sold than was previously so.
*12 With respect to the services of these parties, it is noted that respondent's application and one of its registrations are for "bakery goods, namely, cookies and brownies" while the other two registrations are for retail bakery store services. Petitioner uses its marks FIELD'S and MARSHALL FIELD'S in relation to retail department store services. Petitioner has a number of bakeries and restaurants within its department stores and respondent has sold its bakery products in major department stores, i.e., Bloomingdale's and Macy's. We would have to conclude that there is a relationship between the parties' goods and services such that the use of the same or confusingly similar marks is likely to cause confusion, mistake or deception. The question to be resolved is whether the marks of these parties are so similar as to be likely to cause this confusion.
It is noted initially that petitioner's Chairman Miller has testified that it was only because of the evolution of respondent's marks from MRS. FIELDS CHOCOLATE CHIPPERY to MRS. FIELDS COOKIES to MRS. FIELDS and the change from block letters to script that petitioner has come to believe that respondent's marks have become progressively closer to its own marks, thereby increasing the likelihood of confusion. It is Mr. Miller's testimony that
We would not have a problem with Mrs. Fields using her name in conjunction with cookies and baked goods products if it were not conflicting in design and color with Marshall Field's traditional signature and our use of color.
Introduced during Mr. Miller's testimony was a newspaper article dated January 31, 1988 from the Sun Times in which a MARSHALL FIELD'S employee was quoted as saying much the same thing, i.e., that petitioner does not oppose respondent's using the name for bakery goods, but that the evolution of the name to its current use is at the root of the dispute. Mr. Miller stated that he did not disagree with that statement.
With that in mind, we turn to the question of likelihood of confusion of the parties' marks. [FN17] As to the mark MARSHALL FIELD'S, it is used in connection with all of the department store services performed by petitioner. There is no doubt that, for petitioner's department store services, the mark MARSHALL FIELD's is extremely well known. There is also evidence that this mark is used in connection with petitioner's in-store bakeries and restaurants. For the most part, petitioner uses the mark MARSHALL FIELD'S GOURMET and design and MARSHALL FIELD'S on the packaging used in the bakeries and for those carry-out items sold in its restaurants.
Petitioner has argued that FIELD'S is the dominant part of the mark MARSHALL FIELD'S and that the purchasing public will assume upon seeing MRS. FIELDS on baked goods that there is a connection between the MRS. FIELDS bakeries and MARSHALL FIELD'S department stores. With respect to that argument, we note that Field(s) is a common surname as shown by a number of telephone directories and in two dictionaries of surnames, American Surnames, 1969, Chilton Book Company and A Dictionary of Surnames, 1989, Oxford University Press, submitted by respondent. In addition, respondent has also introduced a number of third-party registrations of marks having as a component thereof the name FIELD(S) and its variations as well as deposition testimony of nine individuals involved in retail sales who use the name FIELD(S) in connection therewith.
*13 It is duly noted that, except in the case of the deposition evidence, the remaining third-party evidence is subject to the objection that this material does not prove use of FIELD(S) by third parties. However, we do not have to find proof of use of FIELD(S) as a trade or service mark in order to conclude that this is a common surname easily recognized as such and that purchasers are accustomed to distinguishing between such common surnames by whatever slight differences may exist in the marks as a whole. In this case, the question is whether the addition to FIELD(S) of, on the one hand, the given name MARSHALL and, on the other, the title MRS., is enough of a difference to enable purchasers to make that distinction. We believe that, given the fame of MARSHALL FIELD'S for department store services and the fame shown to have been afforded to MRS. FIELDS for its bakery services and goods, the public will readily recognize the differences in the marks as used on the respective goods and services and are not likely to be confused as to the sources of the goods and services offered thereunder.
We recognize that MARSHALL FIELD'S is a famous mark and that famous marks are normally afforded a wide scope of protection. See Kenner Parker Toys Inc. v. Rose Art Industries Inc., 22 U.S.P.Q.2d 1453 (Fed.Cir.1992). However, in this case we are faced with a situation in which the respondent's mark has also achieved a significant degree of fame in the marketplace. It is because both marks are famous that we believe the public will easily recognize the differences in the marks and distinguish between them. It might have been a closer question had there been some evidence that MARSHALL FIELD'S used other familial terms with FIELD'S such as MISS FIELD'S, MR. FIELD'S or even GRandMA FIELD'S. But the combining forms used by petitioner have altogether different connotations, such as, FIELD'S AFAR, FIELD'S CHOICE, FIELD GEAR, FIELD'S MANOR and FIELD'S FASHION SERVICE. Rather than causing an association to be assumed between MRS. FIELDS and MARSHALL FIELD'S, these combined terms are more likely to have the opposite effect.
It appears to the Board that the script used in each mark is different enough that, combined with the differences in the words, purchasers are not likely to confuse the source of the goods or services offered thereunder because of the script forms in which they are presented. As for petitioner's arguments relative to trade dress, it is recognized that trade dress may have some effect as well in the public's perception of a mark. See Kenner Parker Toys, Inc., supra. However, we do not believe the trade dress used by these parties would foster a likelihood of confusion between these marks. Respondent uses the colors red and white on its packaging and signs while petitioner has frequently referred to its own color scheme as MARSHALL FIELD'S green. The only time respondent uses any green in its packaging is during the Christmas and St. Patrick's Day holidays, at which time the colors will be perceived as holiday decorations. We do not think that the parties' color schemes are likely to foster any confusion in the minds of purchasers. [FN18]
*14 There are a number of additional reasons which lead us to this conclusion. While there is abundant evidence of the fame of the mark MARSHALL FIELD'S, as used in connection with department store services, we are not convinced that MARSHALL FIELD'S is equally famous for bakery goods and services, except to the extent that they are sold within its department stores. That is to say, the evidence is clear that the restaurant and bakery store services of petitioner have always been confined to its own premises so that customers of petitioner would not expect to find a bakery belonging to petitioner standing alone in a shopping mall or on a city street. When they purchase baked goods in either the in-store bakeries or restaurants, customers know they are dealing with MARSHALL FIELD'S department store. As to those MRS. FIELDS bakeries located in Bloomingdale's and Macy's, it is unlikely that a bakery found in a competing department store would be attributed to petitioner.
Turning to petitioner's mark FIELD'S, the record shows that in addition to use as a service mark for department store services, FIELD'S is sometimes used to identify bakery products, such as, FIELD'S cheese cake, in bakery counter displays and is used to identify specialty items on menus in petitioner's restaurants, as in FIELD'S Famous Specialties, The FIELD'S Special or FIELD'S Fruit Cake. Although petitioner has achieved secondary meaning for the mark FIELD'S alone, as illustrated by petitioner's catalogs and the numerous publications referring to petitioner by that name, we agree with respondent that the secondary meaning of that mark is limited to department store services and does not extend to restaurant and bakery store services. The evidence strongly suggests that use of the mark FIELD'S in catalogs and in the stores is intended to be and is recognized as a shorthand reference to MARSHALL FIELD'S. As petitioner itself has suggested, companies are frequently called by shortened names, such as, Penney's for J.C. Penney's, Sears for Sears and Roebuck (even before it officially changed its name to Sears alone), Ward's for Montgomery Ward's, and Bloomies for Bloomingdale's. Moreover, we believe that FIELD'S for petitioner's services may be readily distinguished from MRS. FIELD'S for respondent's goods and services in the same way that KING'S for candy was held to be distinguishable from MISS KING'S for cakes. See King Candy Company v. Eunice King's Kitchen, Inc., 182 USPQ 108 (CCPA 1974).
In reaching our conclusion on the likelihood of confusion, we have taken into consideration the survey introduced by petitioner. In June of 1988, petitioner engaged the services of Dr. Ivan Ross, Professor of Marketing at the University of Minnesota, to design and supervise a mall intercept survey to determine whether there is a likelihood of confusion between the marks of these parties. The interviews were conducted by trained market research interviewers under the direction of Dr. Leon Kaplan of Princeton Research and Consulting of Princeton, New Jersey.
*15 The study took place in shopping malls in Chicago, Milwaukee and Houston. The cities were selected because both parties had retail stores in those markets, but the particular malls at which the interviews were conducted were selected to exclude any in which the parties' stores were located. The respondents were adults of 18 years or older who did not work at any of the stores in that particular mall. A total of 450 persons were interviewed.
The survey featured three cells. Cell 1 involved the MRS. FIELDS CHOCOLATE CHIPPERY bag and a MARSHALL FIELD'S (green) bag. Cell 2 involved the MRS. FIELDS' COOKIES bag and the same MARSHALL FIELD'S (green) bag. Cell 3 involved the MRS. FIELDS MACADAMIA ROYALES chocolate covered nuts box and MARSHALL FIELD'S (green) bag. The last comparison was changed in Houston and Milwaukee where a MARSHALL FIELD'S Frango raspberry chocolate box was substituted for the green bag.
Potential interviewees were approached by the interviewer and asked initial screening questions. Following successful screening and agreement to an interview, these individuals were taken to an interview location and assigned randomly to one of the 3 study cells where the first inquiry was as follows.
I'd like you to look at these two bags. (SHOW RESPONDENT TWO Bags marked 12 and 46). Would you say that the store whose things come in this bag (Hand 12 BAG TO RESPONDENT) and the store whose things come in this bag (Hand 46 BAG TO RESPONDENT) have a business connection or a business association with one another, or not?
To those responding affirmatively, the first question was followed by questions as to how the respondent thought they were connected or associated. Respondents who gave a negative answer were asked why they answered as they did, while the interviewees who indicated that they didn't know the answer to the first question were then asked the personal information questions which concluded each participant's interview.
The report on the study indicates that the highest degree of source connection was between the MRS. FIELDS' box for chocolate covered macadamia nuts and the MARSHALL FIELD'S Frango raspberry chocolate box (27.5% +/- 10% at .95 confidence level) and the smallest between the MRS. FIELDS' macadamia box and the MARSHALL FIELD'S bag (6% with sample size 50, not significantly greater than zero). Intermediate levels of 8.4 to 11.7% (+/- 7/5 at the .95 confidence level) source connection was seen between MRS. FIELDS' bags and MARSHALL FIELD'S green bag. Following a discussion of the responses, it was concluded by Dr. Ross that "a significant number of consumers in geographically dispersed markets in which MARSHALL FIELD'S and MRS. FIELDS compete erroneously believe that there is a business connection or association between these two stores because of their names."
Respondent argues, based on the testimony of its witness, Dr. Sorensen, who found a number of flaws in the design, implementation and interpretation of the survey, that the findings of the survey are based on leading questions, side-by-side comparisons, irrelevant stimuli, an absence of control questions and a design incongruous with the marketplace.
*16 Survey evidence is often controversial, if only because there are so many factors to be considered in determining the weight to be given to this type of evidence. We frankly confess that we are not experts in this area. However, we tend to agree with Dr. Sorensen on several of the points he made. It appears to us that the initial inquiry to the respondents was indeed a leading question in that it clearly indicated the direction that the responses would be expected to go. We do not think that it can be seriously disputed that this is a leading question from the emphasis intended to be given to certain words and the formation of the question, which introduces nothing more than the idea that a business association indeed exists right up to the final two words. This question tends to deliberately plant in the respondent's mind the idea that there is a connection between the stores from which the two packages come. See Wuv's International, Inc. v. Love's Enterprises, Inc., 208 USPQ 736 (DC D.Colo1980). Such a question is certainly highly prejudicial to the results.
The presentation of the packages side-by-side also appears to us to be prejudicial inasmuch as they are unlikely to be seen in this mode in an actual encounter in the marketplace. This type of presentation introduces additional features, such as the trade dress of the packages, which are not directly involved in a determination of the likelihood of confusion between the marks. We agree also that the use of a bag showing the MRS. FIELDS CHOCOLATE CHIPPERY mark is not helpful to our present determination of likelihood of confusion inasmuch as that mark had been discontinued almost a decade before the survey was conducted. Another objection that we find to be of merit is to the question concerning the parties' boxes for candies, goods which are not involved in this proceeding.
For these reasons, we find the survey to be seriously flawed and the results to be of little probative value.
Finally, we are convinced that respondent's mark was not selected with any motive of trading on petitioner's good will. Nor do we believe that the selection of the sites for MRS. FIELDS cookie stores were made with any such intent. Rather, the evidence supports the contention that the site selections were made in accordance with the requirements discussed by Mr. Murphy during his deposition and that these requirements involved questions of traffic patterns, visibility, accessibility and opportunity. As to those stores in locations close to petitioner's stores, there appears to be no reason to believe that respondent located any of its stores near a MARSHALL FIELD'S store in order to trade on petitioner's good will.
As for the purported instances of actual confusion, we have previously indicated that Mr. Rozak's testimony to the effect that he had spoken to at least three persons, known to him, who asked him whether MRS. FIELDS is a part of, or a franchise of, MARSHALL FIELD'S does not convince us that there has been actual confusion. This is because the inquiries indicate that these persons were aware that MARSHALL FIELD'S and MRS. FIELDS were two different entities. Another reason we find this testimony unpersuasive is because none of these persons was called as a witness and questioned as to the reasons for his inquiries. See Georgia-Pacific Corporation v. Great Plains Bag Co., 614 F.2d 757, 204 USPQ 697 (CCPA, 1980), Bethom Corporation v. Meredith Corporation, 203 USPQ 819 (DC ND Ca.1978) and Hershey Foods Corporation v. Cerreta, 195 USPQ 246 (TTAB 1977). The same is true with respect to similar testimony from Mr. Miller, petitioner's Chairman. Nor can we say that actual confusion was expressed by respondent's attorney in referring to MARSHALL FIELD'S when he meant MRS. FIELDS during the course of deposing a witness. It is obvious that respondent's attorney was quite aware of the differences between the two and that what occurred was nothing more than a slip of the tongue under the pressure of conducting the interrogation. See VMC Corporation v. Distributor's Marketing Service, 192 USPQ 227 (TTAB 1976).
*17 Since we have determined that there is no likelihood of confusion, it is not necessary that we consider the question of laches. However, in the interest of a complete record, we turn finally to respondent's claim of laches and acquiescence.
Respondent asserts that in the spring of 1982, a representative of petitioner in Houston, Texas contacted respondent's vice president of real estate to explore the possibility of opening a MRS. FIELDS cookie store within the MARSHALL FIELD'S store in the Houston Galleria; that a written proposal was prepared by respondent at petitioner's request, which included the requirement of using MRS. FIELDS colors, uniforms, signage, graphics and packaging for the store within a store; but that the proposal was not implemented and negotiations were terminated. These facts were the subject of the testimony of Mr. Murphy. It is also noted by respondent that as far back as the spring and summer of 1983, petitioner had investigated and obtained extensive information about respondent's business and in 1986, petitioner's Chairman, Mr. Miller, invited Debra Fields to become a member of the Greater State Street Council, an organization of Chicago businesses, because of respondent's operation of retail stores within the jurisdiction of the Greater State Street Council.
In response to the charge of laches and acquiescence, petitioner argues that respondent provoked the dispute with petitioner by challenging petitioner's rights in a FIELD'S mark in February, 1987 and that the filing of the first petition to cancel followed in June 1987. In addition, petitioner asserts that respondent used another mark from late 1977 until late 1981 or early 1982, i.e., MRS. FIELDS' CHOCOLATE CHIPPERY with a chocolate kiss design; that until 1982 respondent operated principally in California; that respondent obtained registrations for that mark, but the mark was later abandoned and the registrations cancelled; that respondent then dropped the CHOCOLATE CHIPPERY and design part of the mark and from about 1982 until about 1987 used the mark MRS. FIELDS COOKIES in script with a dot design and began expanding to open cookie stores across from the entrances to petitioner's stores in the Midwest; that respondent began to phase out the COOKIES portion of the mark and the dot design and began using just MRS. FIELDS in a script design; that the product line was then expanded beyond cookies to a wider variety of food products including candy and to restaurants; and that by these actions, respondent has progressively encroached upon petitioner's rights and increased the likelihood of confusion.
The latest decision involving the issue of laches and acquiescence is National Cable Television Association Inc. v. American Cinema Editors Inc., 937 F.2d 1572, 19 U.S.P.Q.2d 1424 (Fed.Cir.1991) wherein the Court stated that there is no precedent requiring it to determine laches in an opposition or cancellation proceeding under a standard based on the time running from knowledge of use rather than knowledge of the application for registration. Thus, stated the Court, "... laches begins to run from the time action could be taken against the acquisition by another of a set of rights to which objection is later made. In an opposition or cancellation proceeding the objection is to the rights which flow from registration of the mark." Therefore, laches begins to run in this case from the date the applications for registration were published for opposition and it is respondent's burden to show an unreasonable delay by petitioner in asserting its rights against respondent and prejudice from that delay since the dates of publication.
*18 Two applications for the mark MRS. FIELDS COOKIES in script with the red dot design were published for opposition in March and August 1983. The application for MRS. FIELDS in script without the red dot design was published for opposition in July 1984. On these dates, petitioner was on notice that respondent was seeking the rights which attach to a federal registration.
Mr. Miller testified that he arrived in Chicago in July of 1983; that he first was aware of respondent's business when he saw the store across the street from the MARSHALL FIELD'S State Street store at that time; that he was very surprised to see a MRS. FIELDS cookie shop in Chicago and was concerned about an infringement on petitioner's mark; that he continued to monitor MRS. FIELDS stores and their product line; that he was aware during the period from 1983 to 1987 that additional MRS. FIELDS stores were being opened in the Chicago area; and that the first formal challenge by petitioner of respondent occurred in early 1987.
The evidence shows that in September 1986, Chairman Miller talked with Mrs. Fields and exchanged correspondence with her relative to his invitation to join the Greater State Street Council. He expressed no concern during these communications about the similarity of the marks, While Mr. Miller has testified that he and Ms. Dynek had had discussions about the marks being used by respondent as early as 1983, the first affirmative action occurred in 1987.
It appears that beginning on February 4, 1987, a series of communications were exchanged between the parties relative to the filing by respondent of an extension of time to oppose an application filed by petitioner for the mark FIELD'S CHOICE for clothing. This was followed by petitioner's letter stating that if the opposition were to be filed, petitioner would vigorously defend and would take other appropriate action. A letter on June 1, 1987 informed respondent that the petition and the opposition had been prepared. The proceedings were subsequently filed.
Petitioner's argument that it only became concerned when respondent began to market products which are closer to those marketed by petitioner and when respondent's mark moved closer to its own by dropping the term CHOCOLATE CHIPPERY and design and later the word COOKIES from its mark is without merit. It is clear from the evidence in this case that the changes in the mark occurred years before the applications were filed and published and any change in the products marketed by respondent has no bearing in this case since our determination of the issues concerns only the goods and services set forth in the application and the registrations at issue, which are bakery goods and services. It is clear that there was a substantial delay in asserting petitioner's rights in its mark against respondent. It appears, moreover, that petitioner had no great concern about any alleged similarities in the marks but was willing to coexist until respondent appeared to threaten its applied-for mark. Respondent was given reason to presume that there would be no challenge from petitioner and, during the period from 1983 to 1987, respondent continued to open additional stores and add to its goodwill. [FN19] We therefore believe that respondent is severely prejudiced by the untimeliness of petitioner's decision to challenge the marks shown in its registrations and that respondent's laches and acquiescence defenses, with regard to these registrations, is well taken. [FN20] However, inasmuch as the opposed application was not published for opposition until March 31, 1987, petitioner cannot be held to have been guilty of laches with respect thereto. See National Cable, supra.
*19 In view of the foregoing, the petitions for cancellation are denied, the opposition is dismissed and the counterclaim for cancellation is dismissed.
L. E. Rooney
E. J. Seeherman
G. D. Hohein
Members, Trademark Trial and Appeal Board
FN1. The application was assigned from Mrs. Fields Cookies to Mrs. Fields Inc. and later assigned to Mrs. Fields Development Corporation. It appears that the same is true of the registrations sought to be cancelled.
FN2. Ser. No. 73/530,088 filed April 1, 1985.
FN3. Regn. No. 1,304,257 issued November 6, 1984; Section 8 affidavit accepted, Section 15 affidavit filed.
FN5. Regn. No. 1,273,987 issued April 10, 1984 and Regn. No. 1,273,988 issued April 10, 1984; Section 8 affidavit accepted, Section 15 affidavit filed, in both.
FN6. Regn. No. 1,241,619 issued June 7, 1983; Section 8 affidavit accepted.
FN7. Regn. No. 1,256,315 issued November 1, 1983; Section 8 affidavit accepted.
FN8. Regn. 1,299,149 issued October 2, 1984; Section 8 affidavit accepted.
FN9. In the interest of clarity, Marshall Field's will henceforth be referred to as petitioner and Mrs. Fields Development Corporation will be referred to as respondent in relation to the petitions, the opposition and the counterclaim.
FN10. Regn. No. 1,304,257 issued November 6, 1984.
FN11. Regn. No. 1,270,920 issued March 20, 1984.
FN12. Regn. No. 1,273,987 issued April 10, 1984.
FN13. Laches is not available as a defense when the ground for cancellation is fraud. See Loglan Institute Inc. v. Logical Language Group Inc., 22 U.S.P.Q.2d 1531 (Fed.Cir.1992) and American Speech-Language-Hearing Association v. National Hearing Aid Society, 224 USPQ 798 (TTAB 1984).
FN14. Petitioner requested, in its brief, that the Board reconsider its decision to allow the counterclaim. Apart from the fact that petitioner should have filed a request for reconsideration following the allowance of the counterclaim, but did not, and this request is now not only untimely but improper as part of its brief, we see no error in the allowance of the counterclaim. Accordingly, petitioner's request is denied.
FN15. It was stipulated that the documents were prepared by Mr. Zivin's office.
FN16. The clock which hangs outside the State Street store has become somewhat of a landmark for petitioner's store and is referred to and featured in its catalogs from time to time.
FN17. There also has been some testimony and argument to the effect that petitioner was not concerned about a conflict until respondent began to market other products under its mark, such as t-shirts and toys. However, we must point out that the registrations sought to be cancelled and the application being opposed are all for MRS. FIELDS or MRS. FIELDS COOKIES in script form for baked goods and bakery services. The question of likelihood of confusion must be determined with respect to the goods or services identified in the respondent's application or registrations at issue vis-a-vis the goods or services in petitioner's pleaded registrations and/or on which petitioner has previously used its pleaded marks. See Saks & Co. v. Snack Food Association, 12 U.S.P.Q.2d 1833 (TTAB 1989).
FN18. There is some testimony regarding the similarity of the boxes each party uses to package its candy. However, as previously noted, candy is not involved in this proceeding.
FN19. There was testimony concerning respondent's store closings intended to give the impression that respondent's business was failing. However, Exhibit 68 indicates that in the years 1983 through 1987, respondent opened 286 new stores while closing only 16.
FN20. The question we have been called upon to decide here is whether or not respondent has been led into a false sense of security by petitioner's inaction, to respondent's detriment, not whether petitioner's decision to file the petitions and the opposition were justified under the circumstances.