Trademark Trial and Appeal Board
Patent and Trademark Office (P.T.O.)
*1 MICHAEL C. COUP
VORNADO, INC., AND FEDDERS AIR CONDITIONING USA, INC., JOINED AS PARTY
Cancellation No. 16,560
September 16, 1988
By the Board:
R.L. Simms, R.F. Cissel and T.J. Quinn
Michael Coup petitioned for cancellation of Registration No. 594,890 on July 31, 1987. The registration sought to be cancelled, which PTO records show is owned by Fedders Air Conditioning USA, Inc., is for the mark "VORNADO" for "air conditioning units." [FN1] As grounds for cancellation petitioner alleged that since May of 1984 he has used "VORNADO" on rebuilt electric fans, that his application to register his mark for these goods has been rejected based on the registration he seeks to cancel, and that registrant has abandoned the mark. No answer has been filed.
This case now comes up on respondent's motion, filed April 25, 1988, to dismiss the proceeding or, in the alternative, for summary judgment in its favor. Respondent asserts the proceeding should be dismissed under Rule 12(b)(6), F.R.C.P. for petitioner's alleged failure to state a claim upon which relief can be granted "since as a matter of law no damage has been shown." In the alternative, respondent claims it is entitled to summary judgment under Rule 56, F.R.C.P., because petitioner either never acquired rights in the mark or has abandoned same. Respondent argues that petitioner merely rebuilds old "VORNADO" brand fans, and because the mark is already on the fans when they come into petitioner's possession for reconditioning, petitioner neither creates nor acquires trademark rights in the word "VORNADO", which continues to indicate the original manufacturer as the source of the fans. Additionally, respondent asserts, petitioner fails to comply with Federal Trade Commission requirements for labeling his rebuilt fans as used goods which have been reconditioned, and that in light of this failure to comply with federal law, petitioner's application to register his mark is void ab initio because such use of a mark is not lawful use in commerce. Respondent further charges that whatever use of "VORNADO" has been shown is use not by petitioner, but by corporations with which petitioner is affiliated, The Merlin Corporation and Vornado Air Circulation Systems, Inc. Alternatively, respondent asserts that if use was by either of these two entities, petitioner has abandoned any rights he may have had by virtue of permitting unlicensed use by others. These assertions of respondent are based upon petitioner's responses to respondent's interrogatories.
Responsive to the motion petitioner asserts that the original manufacturers of the "VORNADO" brand fans ceased using the mark in 1959 and that petitioner has a newly designed fan, Model 280SS, which he has promoted and plans to sell under the mark "VORNADO" in the near future. Petitioner further asserts that respondent did not acquire any rights when Vornado Inc., the original registrant, assigned to respondent the registration in question because at tht time the registrant was not engaged in business selling either fans or air conditioning units. Petitioner argues that the use by Vornado Air Circulation Systems, Inc. may be claimed by petitioner as petitioner's use and that Merlin Corporation, although owned by petitioner, has nothing to do with the mark in question.
*2 The motion to dismiss under Rule 12(b)(6) is denied because petitioner has clearly set forth a claim upon which relief can be granted. Petitioner has alleged his standing, in that he has alleged ownership of an application which has been refused registration because of respondent's registration. Petitioner has also stated a proper ground in his pleading that use of the registered mark has been abandoned by respondent. Petitioner's pleading is therefore sufficient to withstand an attack under Rule 12(b)(6). That motion is denied.
Turning to the motion under Rule 56, respondent has in essence alleged that petitioner's asserted rights in the mark are without proper legal foundation. The question for us to resolve in order to rule properly on this motion for summary judgment is whether or not there exist genuine issues of fact material to the pleaded claims of petitioner. Petitioner's claim for cancellation is based on his standing as well as on respondent's alleged abandonment of its mark. Facts relating to abandonment have not been developed. The only facts respondent has established relate to petitioner's right to register "VORNADO" in connection with rebuilt electric fans. Respondent's position is that since petitioner cannot establish the right to register the mark for rebuilt fans, petitioner lacks standing to attack respondent's registration as a matter of law.
We agree with respondent. Although petitioner has pleaded a proper claim, in that petitioner's standing and respondent's abandonment have been pleaded, respondent has shown, by means of the answers to interrogatories and other materials relied upon in support of its motion, that there can be no dispute as to petitioner's standing and that petitioner has no standing. This is because petitioner has not used the mark "VORNADO" as a trademark for fans.
The refusal to register the mark for rebuilt fans is the basis of petitioner's pleaded standing. Respondent has demonstrated petitioner cannot prove its standing. The materials of record establish beyond dispute that the mark was applied to the fans by the original manufacturer of them, O.A. Sutton Corporation. Even after the goods bearing a trademark descend through various levels of use, resale and remanufacturing, in the absence of evidence to the contrary, retention of the original trademark continues to indicate the original source of the goods rather than subsequent owners of them, even if repairs are made by the subsequent owners. This is analogous to the Supreme Court's holding that an original manufacturer of goods cannot prevail in a trademark infringement action against a remanufacturer of the goods who leaves the original mark on the goods after reconditioning them. Champion Spark Plug Co. v. Sanders, 331 U.S. 125, 73 USPQ 133 (1947). One who does not manufacture an article, but merely maintains and sells an inventory of goods previously produced by an original manufacturer which has abandoned the mark, establishes no rights in the mark. In order for a new party to acquire such rights the mark must have ceased being identified with the former owner and the mark must be identified with the new supplier of goods under the mark. Acme Valve and Fittings Co. v. Wayne, dba Gibralter, Ltd., 183 USPQ 629 (D.C.Tex., 1974).
*3 Petitioner in this case has not established that he has acquired rights in the trademark "VORNADO" for reconditioned fans. Petitioner has pleaded standing but cannot prove it. Respondent has shown by the answers to its interrogatories and materials submitted by petitioner in connection with those answers that there are no facts in dispute as to petitioner's use of "VORNADO." Petitioner has not established the existence of any genuine issues of fact as to his use of the term as a mark. There is no reason to expect a trial to result in any more evidence on this point than we already have. Moreover, speculation, without supporting evidence, will not suffice to withstand a motion for summary judgment. Pure Gold, Inc. v. Syntex (U.S.A.), Inc., 739, 624, 222 USPQ 741. Petitioner's plans to use "VORNADO" in the future as a trademark for newly designed fans which have yet to be marketed have no effect on his right to register the word for reconditioned fans.
Petitioner has not, by affidavit or any other evidence, established the existence of a genuine issue of fact as to whether he can be considered to be the owner of the mark for rebuilt electric fans. When confronted with a well supported motion for summary judgment it is petitioner's burden under Rule 56 to support his claim with affidavits on other evidence showing that a genuine issue exists. Petitioner has not met this burden.
Because there are no material facts in issue concerning petitioner's standing and because, based on the undisputed facts of record, respondent is entitled to judgment as to petitioner's standing, respondent's motion for summary judgment is granted.
R. L. Simms
R. F. Cissel
T. J. Quinn
Members, Trademark Trial and Appeal Board
FN1. The registration issued to Vornado, Inc. on September 7, 1954 and was subsequently assigned to Fedders.