Trademark Trial and Appeal Board
Patent and Trademark Office (P.T.O.)
*1 STRANG CORPORATION
THE STOUFFER CORPORATION
Cancellation No. 18,472
August 22, 1990
Before Rooney, Seeherman and Hohein
Opinion by Seeherman
Strang Corporation has petitioned to cancel two registrations owned by Stouffer Corporation for PARKERS' LIGHTHOUSE [FN1] and PARKERS' LIGHTHOUSE and design, [FN2] both for restaurant and cocktail lounge services. Essentially, petitioner asserts that these registrations should be cancelled on the ground of likelihood of confusion, based on its prior use and registration of the marks DON'S LIGHTHOUSE INN and DON'S LIGHTHOUSE INN and design for restaurant and retail food services.
This case now comes up on respondent's combined motion for summary judgment and to dismiss. Turning first to the motion to dismiss, respondent asserts that the petition for cancellation of Registration No. 1,305,529 for PARKERS' LIGHTHOUSE and design was filed on November 13, 1989, the fifth anniversary of that registration and, because it was not filed within five years from the date of the registration, likelihood of confusion cannot be raised as a ground for cancellation of this registration. Respondent also argues that, if Registration No. 1,305,529 is not subject to cancellation on this basis, petitioner is precluded from proceeding against Registration No. 1,410,928 for PARKERS' LIGHTHOUSE under the doctrine enunciated in Morehouse Mfg. Corp. v. J. Strickland and Co., 407 F.2d 881, 160 USPQ 715 (CCPA 1969).
Petitioner has filed a brief in opposition, pointing out that November 13, 1989, the date the petition for cancellation was filed, was a Monday, and that the preceding three days consisted of a federal holiday, a Saturday and a Sunday. Accordingly, petitioner argues that the petition, which was filed on the next succeeding business day, was timely filed under the provisions of Rule 1.7.
Respondent has submitted a reply brief [FN3] in which it argues that Rule 1.7 does not apply to and cannot be used to subvert statutory requirements, and that the statute specifically states "within five years."
We are not persuaded by respondent's arguments. Section 14 of the Act uses the language "within five years from the date of the registration" (emphasis added). Five years from the date of the registration would include the anniversary date as being within the relevant period. The Patent and Trademark Office has consistently interpreted such statutory references to include the anniversary date of the registration. See, for example, Section 8 of the Act ("within one year next preceding the expiration of such six years") and Section 1603.03 of the Trademark Manual of Examining Procedure (it is acceptable to file the Section 8 affidavit on the anniversary date at the end of the sixth year). See also, Section 9 of the Act and TMEP Section 1605.01.
Aside from the statutory interpretation, the petition for cancellation is considered to have been filed within five years from the issue date of Registration No. 1,305,529 by operation of the rules. Rule 1.7, which is applicable to trademark cases by virtue of Trademark Rule 2.1, provides that when the last day fixed by statute for taking any action in the Patent and Trademark Office falls on Saturday, Sunday or on a Federal holiday, the action may be taken on the next succeeding day which is not a Saturday, Sunday or Federal holiday. Accordingly, petitioner was entitled to plead in the petition filed on Monday, November 13, 1989, any grounds it was entitled to plead on November 10, 11, or 12.
*2 Respondent has also argued that Registration No. 1,305,529 is incontestable, and therefore is not subject to cancellation on the ground of likelihood of confusion. Under Section 15 of the Act, a registrant may obtain incontestable rights to use a mark which has been in continuous use for five consecutive years subsequent to the date of registration provided, inter alia, that there is no proceeding involving those rights pending in the Patent and Trademark Office and not finally disposed of. As stated above, petitioner filed its petition for cancellation within five years of the issuance of the registration, and a cancellation proceeding is commenced by the filing of the petition for cancellation. Trademark Rule 2.111(a). Accordingly, a proceeding involving registrant's rights in the mark was pending both prior to the expiration of the five year period and at the time respondent's Section 15 affidavit was filed. [FN4] Because registrant has not met one of the requirements for incontestability, its rights in the mark cannot be said to be incontestable. We are aware that the Affidavit/Renewal Examiner accepted respondent's Section 15 affidavit. However, the Office does not examine the merits of affidavits under Section 15, TMEP S. 1604, and the mere fact of the filing and the receipt of the affidavit cannot thus confer incontestability where it is not warranted.
There is also a more fundamental problem with respondent's position. By arguing that its registration is incontestable, respondent is attempting to circumvent the provisions of Section 14 which provide that a petition to cancel may be brought on any grounds if it is filed within five years of the date of registration. Section 14 and Section 15 speak to different purposes, Section 14 being in effect a five year time limit barring certain attacks on a registration, while Section 15 provides incontestable rights of use. Imperial Tobacco Ltd. v. Philip Morris Inc., 14 USPQ2d 1390 (Fed.Cir.1990). To this extent the concept of incontestability is irrelevant to a cancellation proceeding under Section 14 because a registration cannot become incontestable until a mark has been used continuously for five years subsequent to the date of its registration, and once a registration has been in existence for five years the grounds on which a cancellation action may be brought under Section 14 are limited regardless of whether Section 15 incontestability has been invoked.
Accordingly, respondent's motion to dismiss for failure to state a claim with regard to Registration No. 1,305,529 is denied. As a result, respondent's Morehouse defense with regard to Registration No. 1,410,928 must also fail.
This brings us to respondent's motion for summary judgment. Respondent asserts, essentially, that there are no genuine issues of fact, that the only common element in the parties' marks is the word LIGHTHOUSE, that this word means a tower located at some place important or dangerous to navigation, and that petitioner, respondent and certain third parties have registered marks which incorporate this word. [FN5] From these facts, respondent argues that "lighthouse" identifies a prominent structure which is "adopted into the names of places and things," that "people know that 'lighthouse' is descriptive of the structure and/or location (adjacent the 'lighthouse') and the surname or personal name identifies the specific establishment," and that "lighthouse" "is a relatively weak element used by others on directly competing services." Brief, p. 4. Accordingly, respondent asserts that it is entitled to judgment as a matter of law.
*3 Petitioner has opposed the motion, submitting the affidavit of its vice president and treasurer to the effect that for the past 17 years the general public has often referred to DON'S LIGHTHOUSE INN as THE LIGHTHOUSE, and that petitioner has extensively advertised its services under its two pleaded marks. [FN6]
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 issues of material fact remain and more evidence than is already available in connection with the summary judgment motion could not reasonably be expected to change the result. Pure Gold, Inc. v. Syntex (U.S.A.) Inc., 739 F.2d 624, 222 USPQ 741 (Fed.Cir.1984). Under Fed.R.Civ.P. 56, the moving party has the initial burden of proving that there is no genuine issue of material fact. See, Celotex Corp. v. Catrett, 477 U.S. 317 (1986).
After reviewing the arguments of the parties, together with the supporting documentary material, it is our view that respondent has failed to demonstrate that no genuine issues of material fact exist and that summary judgment in its favor is warranted. For example, we think there are genuine issues with regard to the strength of petitioner's mark and the extent of use by third parties of the term LIGHTHOUSE.
In summary, respondent's combined motion to dismiss and motion for summary judgment is denied. Trial dates, including the time for discovery, are set as shown in the accompanying trial order.
L. E. Rooney
E. J. Seeherman
G. D. Hohein
Members, Trademark Trial and Appeal Board
FN1. Registration No. 1,410,928, issued September 23, 1986.
FN2. Registration No. 1,305,529, issued November 13, 1984.
FN3. Petitioner has moved to strike respondent's reply brief as not being provided for in the rules. Alternatively, if the brief is considered, petitioner has requested leave to file a surreply brief. Petitioner is correct that the rules do not provide for reply briefs; it is within the Board's discretion as to whether they will be considered. While the Board generally discourages the filing of such briefs, in this case we have exercised our discretion and have considered respondent's reply. However, petitioner's request for permission to file a surreply brief is denied because we see no useful purpose to be served by it.
FN4. Petitioner has implied that respondent misrepresented in its Section 15 affidavit that no proceeding was pending, despite having been advised by petitioner of the filing of the cancellation petition. To the extent that petitioner is suggesting that respondent is guilty of fraud on the Patent and Trademark Office, petitioner is advised that it must move to amend its pleadings if it wishes to allege fraud as a ground, and further that fraud must be pleaded with particularity.
FN5. In addition to petitioner's two pleaded registrations and respondent's registrations which are the subject of this proceeding, respondent has submitted copies of the following third party registrations: LIGHTHOUSE INN and design for restaurant and cocktail lounge (Reg. No 1,378,584), QUINN'S LIGHTHOUSE and design for restaurant and bar services (Reg. No. 1,017,624), LIGHTHOUSE BRAND for food seasonings (Reg. No. 1,266,490), LIGHTHOUSE and design for canned, dried, and pickled fish, canned fish roe, caviar spread, lobster paste, crab paste, canned shrimp, canned vegetables, canned fruits, canned berries, canned soups and canned blood pudding (Reg. No. 602,787), LIGHTHOUSE for real estate agency services (Reg. No. 1,078,563), THE SUMMIT LIGHTHOUSE for association services--namely, promoting the interests of a spiritual and philosophical organization (Reg. No. 1.076,677), and FARO (translates as "lighthouse") for canned jalapeno peppers, serrano peppers and pineapples (Reg. No. 1,195,299).
FN6. Petitioner has also argued that entry of judgment on the motion is inappropriate until the discovery period in the proceeding has been set and utilized by the parties. It appears that petitioner may be confused about the effect of the trial order, which sets the date for discovery to close, but which has no bearing on when discovery opens. That, of course, is governed by the Federal Rules of Civil Procedure, as made applicable by Trademark Rule 2.116(a). Accordingly, petitioner had the opportunity to serve discovery requests after service of the petition on respondent, which occurred on February 12, 1990.
To the extent that petitioner may be attempting to invoke the provisions of Fed.R.Civ.R. 56(f), a request for discovery under that section is denied. The affidavit of petitioner's attorney that during discovery "petitioner will seek to elicit information and obtain documents relevant to the issue of likelihood of confusion, including items relevant to consumer recognition, use, prior knowledge, channels of trade, consumer sophistication, and other Dupont factors" is considered to be no more than the "discovery for discovery's sake" that was condemned by the Court in Keebler Co. v. Murray Bakery Products, 866 F.2d 1386, 9 USPQ2d 1736 (Fed.Cir.1989).