Trademark Trial and Appeal Board
Patent and Trademark Office (P.T.O.)
*1 SOCIETE DES PRODUITS MARNIER LAPOSTOLLE
DISTILLERIE MOCCIA S.R.L.
Opposition No. 73,080
Cancellation No. 15,631
January 12, 1989
By the Board:
J.D. Sams, G.D. Krugman and E.J. Seeherman
An application has been filed to register 'ROYAL MONIER' as a trademark for liqueurs. [FN1]
Registration has been opposed on the ground that the mark sought to be registered so resembles opposer's previously used and registered mark 'GRAND MARNIER' for cordials [FN2] as to be likely, when applied to applicant's goods, to cause confusion, mistake or to deceive.
In addition to the foregoing opposition, opposer/petitioner has petitioned to cancel applicant's/respondent's previously issued registration for 'ROYAL MONIER' and design in the form depicted below
TABULAR OR GRAPHIC MATERIAL SET FORTH AT THIS POINT IS NOT DISPLAYABLE
for liqueurs. [FN3] The grounds for the petition for cancellation are essentially the same as in the opposition.
Applicant/respondent, in answering the opposition and petition for cancellation, has denied the allegations therein.
On November 13, 1986, the Board consolidated these proceedings in view of the identity of the parties and the similarity of the issues to be determined.
This case now comes up on opposer/petitioner's motion for summary judgment on the ground that applicant/respondent has abandoned its marks. [FN4] Specifically, opposer/petitioner maintains that applicant/respondent admitted, in answers to discovery requests propounded by opposer/petitioner, that the last shipment of goods under the 'ROYAL MONIER' marks made by applicant/respondent to the United States was on December 21, 1984; that this admission demonstrates, prima facie, that applicant/respondent has not used its marks for more than two years and that this constitutes abandonment of said marks. Opposer/petitioner contends that this prima facie showing of non-use shifts the burden to applicant/respondent to show that such non-use is excusable and that the mere assertion that there is no intent to abandon the marks is insufficient to rebut the presumption of abandonment by virtue of the non-use.
In support of its position, opposer/petitioner has submitted a status and title copy of its pleaded registration and the declaration of Michel Roux, the president of Carillon Importers, Ltd., opposer/petitioner's exclusive importer and distributor. This declaration indicates continuous use by Carillon (through agreement with opposer/petitioner) of the 'GRAND MARNIER' mark for cordials since 1947 and details sales and advertising figures. Examples of labels used and of advertising material also have been attached to the Roux declaration. Opposer/petitioner has further submitted applicant/respondent's answers to interrogatories which indicate (answer to interrogatory no. 12) that the last shipment of products to the United States under applicant/respondent's 'ROYAL MONIER' marks was on December 21, 1984.
Applicant/respondent, in opposing the motion for summary judgment, concedes that the last shipment of 'ROYAL MONIER' products to the United States occurred on December 21, 1984 when some 2,400 bottles were shipped. Applicant/respondent contends, however, that the shipment of a product to a distributor in the United States is not the only act of use of mark in commerce since distributors who are importers will distribute the products to other distributors or retailers who then sell the product to the public and that there is use of the mark 'ROYAL MONIER' as long as a bottle of 'ROYAL MONIER' liqueur is on the shelf of a liquor store. Applicant/respondent maintains that for opposer/petitioner to satisfy its burden of proof regarding non-use, it must do more than demonstrate the lack of shipments subsequent to 1984 and it cannot merely urge a presumption that none of the bottles shipped at the end of 1984 remained in the channels of commerce in the United States until 1986 or 1987.
*2 Applicant/respondent further maintains that in 1983 and 1984, it made a number of shipments of liqueur to its distributor Pecora & Nasso; that this distributor went bankrupt about one year ago and that applicant/respondent has made and is making attempts to find other United States distributors of its products. Applicant/respondent concludes that its lack of post 1984 shipments is, at worst, a temporary cessation of use and that it intends to resume shipments to the United States upon finding a new distributor.
Applicant/respondent has also moved to amend its application and registration to claim the benefits of Section 44(d) of the Act based on its corresponding Italian applications (which have matured into registrations) in both cases. Applicant/respondent asserts that if the motion is granted, it will make moot the issue of abandonment, at least with respect to the opposition proceeding, citing Exxon Corporation v. Oxon Italia S.P.A., 219 USPQ 907 (TTAB 1982).
In support of its motion to amend, applicant/respondent states that both its applications Serial No. 438,032 (opposed herein) and 438,031 (now Registration No. 1,385,389 sought to be cancelled herein) were filed in the Office on August 5, 1983 based on use in commerce between the United States and Italy and that while neither application claimed the benefits of Section 44(d) based on a corresponding Italian application, the benefits of that statutory section could have been claimed since both U.S. applications were filed within six months of the filing of the corresponding Italian application and since both Italian applications have since matured into Italian registrations. Applicant/respondent maintains that granting of the proposed amendment at this time is justified and will not prejudice opposer/petitioner herein.
Opposer/petitioner has filed a brief in opposition to the motion to amend.
Upon review of the proposed amendment and the arguments of the parties relative to the motion, we do not believe applicant/respondent should be allowed to amend its application and registration in the manner sought. In this regard, we recognize that the purpose of Section 44 of the Act is to give effect to this country's treaty obligations and to allow foreign applicants to obtain U.S. registrations based on registrations obtained in their country of origin. Since Sections 44(d) and (e) provide an exception to the normal registration procedure whereby a party is required to use the mark in commerce prior to the application filing date, we believe it is appropriate to construe this exception narrowly rather than broadly. See: United Rum Merchants Limited v. Distillers Corporation, (S.A.) Limited, ___ USPQ2d ___ (TTAB 1988).
While under the applicable treaty provisions, it is clear that each country may set a time by which a claim of registration based on the treaty must be made, there is no date set by either the statute or rules by which an applicant must claim the benefits of Section 44 of the Act. Moreover, we are aware of no case law on this point. Under the circumstances, we think that, applying general principles of equity and fairness, it is necessary for one claiming the benefits of Section 44 to make that claim in a timely, seasonable manner. Since the requirements concerning Section 44 require examination of various matters by the Examining Attorney and since a mark published for opposition gives notice to the public of the details concerning an application, including the alleged date of first use and/or information concerning the corresponding foreign registration, we believe a Section 44 claim is seasonable if made during the ex parte prosecution of the application when the Examining Attorney has jurisdiction over the case. Where, as here, the application is taken out of the Examining Attorney's jurisdiction by being published for opposition, any amendment to add Section 44 as a basis for registration (or to change the basis from use in commerce to Section 44) is, in our view, untimely. This policy is consistent with our long held position that an opposer is generally entitled to an adjudication of the issues raised by it against an application as published and we conclude that, in the present case, to allow the proposed amendment would be unfair to opposer/petitioner herein.
*3 For the foregoing reasons, the motion to amend is denied.
In support of its position in opposition to the motion for summary judgment, applicant/respondent has submitted several documents which are stated to be samples of letters by which applicant/respondent's price lists were sent to some U.S. importers in 1988. These documents, it is asserted, evidence applicant/respondent's attempts to locate a new distributor. These documents were subsequently verified by a declaration submitted by applicant/respondent of Giovanni Strini, its managing director. The Strini declaration further states that some bottles of 'ROYAL MONIER' were displayed at a trade show in New York in 1987. Applicant/respondent explains that this declaration could not be obtained in time to respond to the motion for summary judgment within the time allowed because of delays in communicating between its counsel in Washington, D.C. and its counsel in Italy.
Opposer/petitioner has filed a response to applicant/respondent's brief, asserting that the Strini declaration was not timely and that the declaration raises new information regarding the asserted display of the products at a 1987 New York trade show which was not provided to opposer/petitioner in response to discovery requests.
As has often been stated, the purpose of summary judgment is one of judicial economy, that is, to save the time and expense of a useless trial where no genuine issue of material fact remains and more evidence than is already available in connection with the summary judgment motion could not reasonably be expected to change the result. See; Pure Gold, Inc. v. Syntex (U.S.A.) Inc., 739 F.2d 624, 222 USPQ 741 (Fed. Cir. 1984), citing Exxon Corp. v. National Foodline Corp., 579 F.2d 1244, 1246, 198 USPQ 407, 408 (CCPA 1978).
We have reviewed all the arguments of the parties, together with the supporting material. With respect to opposer/petitioner's standing to maintain the opposition and cancellation proceedings, we are persuaded that opposer/petitioner has demonstrated its real interest in these matters and that it has shown, as a matter of law, that it has standing to bring these proceedings. Accordingly, partial summary judgment is entered in favor of opposer/petitioner on the issue of its standing.
With respect to the issue of abandonment, opposer/petitioner has demonstrated, by submitting applicant/respondent's answers to discovery requests, that the last shipment of goods in commerce with the United States bearing applicant/respondent's marks was on December 21, 1984 and that no subsequent shipments have taken place. In our view, this constitutes non-use of the mark for at least two years and is sufficient, prima facie, to raise the presumption of abandonment and shift the burden to applicant/respondent to rebut the inference of abandonment. [FN5] See: Burroughs Wellcome Co. v. Warner-Lambert Company, 203 USPQ 191 (TTAB 1979). Volkswagenwerk Aktiengesellschaft v. Advance Welding & Mfg. Corp., 193 USPQ 673 (TTAB 1976); Bangor Punta Operations v. American Sterling Enterprises, Inc. 184 USPQ 243 (TTAB 1974) and cases cited therein.
*4 In attempting to rebut the inference of abandonment from its more than two years of non-use, applicant/respondent has indicated that it has had difficulties in finding a new distributor since its previous distributor went into bankruptcy; that it has unsuccessfully attempted to find other distributors and that the product was displayed at a New York trade show in 1987. These assertions have been supported by a declaration of applicant/respondent's managing director.
We accept applicant/respondent's late filed declaration in opposition to the motion for summary judgment based on applicant/respondent's representation that the delay in submitting the declaration was occasioned by difficulties and delays in communication between applicant/respondent in Ferrara, Italy, applicant/respondent's counsel in Milan, Italy, and applicant/respondent's local attorney in Washington, D.C. We find that the showing by applicant/respondent is sufficient to demonstrate that there exist genuine issues of material fact relative to applicant/respondent's intent to resume use of the 'ROYAL MONIER' marks for liqueurs. The facts and circumstances concerning applicant/respondent's display of the goods at a 1987 trade show and its attempts to find a distributor are matters that, we believe, should be developed at trial and we do not believe summary judgment is appropriate at this juncture. [FN6]
In view of the foregoing, while partial summary judgment is granted in favor of opposer/petitioner on the issue of its standing, the motion for summary judgment is otherwide denied. Opposer/petitioner is allowed twenty days from the mailing date of this ruling in which to respond to the outstanding motion to compel following which the motion will be decided and trial dates, beginning with opposer/petition's testimony period, will be reset.
Proceedings remain otherwise suspended.
J. D. Sams
G. D. Krugman
E. J. Seeherman
Members, Trademark Trial and Appeal Board
FN1. Application Serial No. 438,032 filed August 5, 1983.
FN2. Registration No. 1,013,041 issued June 10, 1975, Section 8 affidavit accepted, Section 15 affidavit received.
FN4. While abandonment has not been pleaded as a ground for opposition or cancellation, opposer/petitioner has filed, with its motion for summary judgment, a motion to amend the notice of opposition and the petition for cancellation to set forth this ground.
Applicant/respondent, while indicating that it has no objection to the amendment to the notice of opposition and petition for cancellation, urges that the motion for summary judgment be denied as untimely since it is based on grounds which have not been pleaded and that opposer/petitioner should have awaited a decision on the motion to amend and the filing of amended answers prior to filing the motion for summary judgment. Alternatively, applicant/respondent asserts that when and if it is afforded the opportunity to answer the amended allegations, it will deny them.
Since applicant/respondent has responded to the motion for summary judgment on the merits and since opposer/petitioner's motion to amend is unopposed and, moreover, is well taken, it would serve no purpose to deny the motion for summary judgment as premature and require opposer/petitioner to re-file said motion after the motion to amend is determined and after amended answers are filed. Accordingly, the motion to amend is granted and the pleadings are considered amended to assert the claim of abandonment. Moreover, the allegations of abandonment are considered to be denied by applicant/respondent and the motion for summary judgment will be decided herein on the merits.
FN5. Applicant/respondent argues that its mark is still in use in commerce as long as a bottle of 'ROYAL MONIER' liqueur sits on a shelf in a retail store. The sum and substance of this argument appears to be that because of some 'residual goodwill' generated by the mark 'ROYAL MONIER' as a result of sales made since the December 21, 1984 shipment by retailers, the Board cannot find that applicant/respondent has abandoned its mark for liqueurs. Applicant/respondent has failed to support its position with any authority, however, and, in our view, a party cannot defend against a claim of abandonment by relying on same 'residual goodwill' generated through subsequent sales of the product by distributors or retailers. Compare: Kingsmen v. K-Tel International Ltd., 57 F. Supp. 178, 200 USPQ 1045 (SDNY 1983).
FN6. We note opposer/petitioner's objections that the asserted 1987 use at a New York trade show is new information not previously provided to opposer/petitioner in response to discovery requests. However, opposer/petitioner has failed to document this assertion by showing that such information was requested but was not provided. Moreover, even if we did not consider the statements made in the declaration regarding the asserted 1987 trade show, we think that applicant/respondent has, in any event, demonstrated that factual issues are in dispute relative to the abandonment issue which are sufficient to warrant denial of the motion for summary judgment.