Trademark Trial and Appeal Board
Patent and Trademark Office (P.T.O.)
*1 OSHMAN'S SPORTING GOODS, INC.
HIGHLAND IMPORT CORPORATION
Cancellation No. 17,298
August 20, 1990
Before Sams, Rice and Simms
Opinion By Simms
Oshman's Sporting Goods, Inc., petitioner herein, seeks cancellation of a registration held by Highland Import Corporation, d/b/a Rockport Company, Inc., respondent herein, of the mark SUPERSPORTS for shoes. [FN1] Petitioner asserts that it previously used (since May 11, 1980) the trademark and trade name SUPERSPORTS for shoes and that respondent's mark so resembles petitioner's mark as to be likely to cause confusion. Respondent has in its answer denied the essential allegations of the petition and has asserted several affirmative defenses including that petitioner's use of its mark has not been continuous such that petitioner has abandoned any rights in its asserted mark, and that petitioner is barred by the equitable doctrines of estoppel, acquiescence, laches and unclean hands.
This case now comes up on respondent's motion for summary judgment on the grounds that petitioner has abandoned its trademark rights or that its claims are barred by the equitable defenses of laches and unclean hands. The parties have filed briefs on the motion.
Essentially, it is respondent's position that, while petitioner may have used the SUPERSPORT mark as a "model name" for some of its store-branded sneakers until 1983, petitioner, following a trend toward nationally branded products, then shipped any leftover SUPERSPORT shoes to its warehouse or factory outlets to liquidate the inventory. Respondent asserts that petitioner has no records relating to these shoes after 1983 and has no plans to sell any new SUPERSPORT shoes. Rather, according to respondent, petitioner now seeks to revive this name for its retail store services.
More particularly, respondent states that in October 1986, petitioner contacted it (through respondent's parent corporation, Reebok International Ltd.) requesting permission to use respondent's SUPERSPORTS mark for petitioner's chain of retail stores. In January 1987, petitioner advised respondent that facts had just come to its attention showing that petitioner had used the SUPERSPORT name for shoes as early as 1980. However, after 1983, according to respondent, petitioner stopped ordering or advertising these shoes and shipped any leftover inventory to its factory outlets. Petitioner, as noted above, has no record of any sales after 1983 or any record of shipments to its factory outlets thereafter. According to affidavits of investigators hired by respondent in 1987 and 1988, no SUPERSPORT shoes appeared in petitioner's fourteen Dallas, Texas, area retail stores or in various other stores except for one PUMA SUPERSPORT cleated model (not licensed or sponsored by petitioner). Therefore, respondent argues that any rights petitioner may have had were abandoned after 1983 when petitioner ceased use of the mark with no intent to resume use. Any residual use by petitioner, argues respondent, has been insufficient to avoid abandonment and any existing vague plans to resume use cannot defeat abandonment.
*2 Petitioner has filed a brief in opposition to respondent's motion as well as its own motion for summary judgment, arguing that there are no genuine issues of material fact with respect to petitioner's priority and the continuous use of the mark SUPERSPORT or variations thereof, and that respondent's mark so resembles petitioner's mark as to be likely to cause confusion. Essentially, petitioner maintains that, since respondent cannot show that all facts material to its motion are not genuinely in issue and should be decided in its favor, and inasmuch as the evidence resolves all the issues in favor of petitioner, as a matter of law the Board should deny respondent's motion for summary judgment and grant petitioner's.
Briefly, it is petitioner's position that respondent's support for its own motion, much of which petitioner contends is inadmissible, demonstrates petitioner's continuous use since 1977. [FN2] The fact that petitioner stopped making or importing shoes bearing petitioner's mark and the fact that the public shifted its preference to national brands do not demonstrate abandonment of petitioner's mark, petitioner contends. Rather, it is petitioner's position, supported by affidavits and other evidence, that it continued to sell SUPERSPORT shoes (although not in all stores) and that restricted or decreasing use of a mark is not the same as discontinued use or abandonment. Moreover, petitioner began using the service mark SUPERSPORTS USA for its retail store services and filed three applications for registration of service marks containing those words in June 1986 and, since 1987, used this mark or variations thereof on other sports-related goods.
An affidavit from James Hinds, a shoe buyer for petitioner for over 24 years, attests to petitioner's use of the mark SUPERSPORT at least as early as April 15, 1977. Shoes bearing this mark were imported and distributed to petitioner's stores from petitioner's Houston, Texas, warehouse. According to Mr. Hinds, petitioner continues to offer SUPERSPORT shoes to the public in its outlet stores and, in 1989, he saw SUPERSPORT shoes at one of petitioner's Houston outlets. Also, according to Mr. Hinds, discussions have been held with several shoe manufacturers concerning making an up-to-date model of this shoe and he anticipates that it will be available for sale before the current inventory is depleted. He also states that, being the one who chooses names for private label shoes, he has no intention to discontinue the use of this mark "because I feel good about it." In a January 1990 discovery deposition, Mr. Hinds testified that he believes that certain SUPERSPORT models are still being sold in petitioner's outlet stores because he has seen them in inventory "probably" within the last year. Also, an affidavit and excerpts from a deposition of Marvin Aronowitz, former president and chief operating office of petitioner, indicate that he saw 25 to 30 pairs of SUPERSPORT shoes being displayed and offered for sale at one of petitioner's outlet stores in late November or early December of 1986. He also believes, in accordance with corporate practice, that these shoes would be continuously on display in a store of petitioner's until they were sold out.
*3 The parties have filed reply briefs on the motion. However, we have not considered petitioner's sur-reply brief filed May 10, 1990.
Upon careful consideration of the motions of both parties and the support therefor, we agree with the parties that there are no genuine issues of material fact concerning the issue of abandonment. While it may be that there are gaps of information, it appears that no additional evidence relating to the issue of abandonment is available for trial. [FN3]
It is clear that petitioner adopted its mark in 1977 and continued to use the mark SUPERSPORT on shoes until 1983. After 1983, petitioner stopped importing SUPERSPORT shoes and shipped leftover inventory to its factory outlet stores. According to the record, approximately 25,000 pairs of SUPERSPORT shoes were imported between the years 1981 and 1983. It is clear that, after 1983, petitioner no longer ordered or imported SUPERSPORT shoes. Nor did petitioner advertise these shoes for sale. This was because of the retail trend away from store-branded shoes and toward nationally branded merchandise. Petitioner's remaining SUPERSPORT shoes were shipped in 1983 to its factory outlet stores. However, petitioner has no records of shipments to (or sales by) its factory outlets stores. Nor is there any record of the inventory available after 1983. While petitioner's witnesses have testified that some SUPERSPORT shoes were seen in two of petitioner's stores in late 1986 and "probably" in 1989, others indicated that they did not believe the shoes were available in the outlet stores. We believe that this record establishes that any sales by petitioner after 1983 where of a de minimis nature. Also, there was no intention on the part of petitioner to resume use of this mark on shoes. Indeed, as of January 1990, petitioner had no specific plans to reintroduce a SUPERSPORT shoe. There is no testimony or other evidence demonstrating that the reason for the discontinuance of the ordering and selling of petitioner's shoes under the mark--the trend away from store-branded merchandise--has changed. Petitioner's use after 1983 was so minimal and inconsequential that, when it contacted respondent in late 1986 to obtain permission to use respondent's mark for petitioner's retail stores, petitioner was unaware of its discontinued and leftover line of merchandise. Only after further investigation did it "come to light" that petitioner had earlier used the mark for shoes. The cessation of importation of SUPERSPORT shoes and the selling off of remaining inventory without any intent to resume use is deemed abandonment of the mark. Compare Societe Des Produits Marnier Lapostolle v. Distillerie Moccia S.R.L., 10 USPQ2d 1241, 1244-45 (TTAB 1989) and Bangor Punta Operations, Inc. v. American Sterling Enterprises, Inc., 184 USPQ 243, 247-48 (TTAB 1974). The fact that petitioner opened large retail stores in 1987 and 1988 under the mark SUPERSPORTS USA and also sold some sporting equipment and clothing under that mark does not demonstrate an intent to resume use of the mark SUPERSPORT on shoes. Because petitioner has no superior rights in the pleaded mark, its petition for cancellation grounded on Section 2(d) must be dismissed.
J. D. Sams
J. E. Rice
R. L. Simms
Members, Trademark Trial and Appeal Board
FN1. Registration No. 1,356,745, issued August 27, 1985.
FN2. Petitioner contends that respondent's reliance upon telephone responses of petitioner's employees is "sloppy" methodology and leads to unreliable data and erroneous and inadmissible legal conclusions. Suffice it to say that responses to inquiries made over the telephone do not demonstrate discontinuance of use of petitioner's mark.
FN3. Petitioner's responses to respondent's discovery requests reveal that petitioner does not keep records on an annual basis of sales and advertising of its branded products.