Trademark Trial and Appeal Board
Patent and Trademark Office (P.T.O.)
*1 UNITED RUM MERCHANTS LIMITED
DISTILLERS CORPORATION (S.A.) LIMITED
Opposition No. 76,413
November 2, 1988
By the Board:
J.D. Sams, G.D. Krugman and E.J. Seeherman
An application has been filed by Distillers Corporation (S.A.) Limited, a corporation of the Republic of South Africa, to register "LEMON BREEZE" ("LEMON" disclaimed) as a trademark for apertiffs distilled from sugar cane and lemon. [FN1]
Registration has been opposed by United Rum Merchants Limited on the grounds that applicant's mark so resembles opposer's previously used and registered marks "LEMON HART" and "PALM BREEZE" for rum liquor products as to be likely to cause confusion, mistake or to deceive. Opposer further alleges that the mark sought to be registered does not conform to the mark in the South African registration upon which the present application is based and that registration to applicant should be refused since applicant's application is not in compliance with Section 44 of the Act.
Applicant, in its answer to the opposition, has denied the allegations therein.
This case now comes up on opposer's motion for summary judgment and on applicant's cross motion for summary judgment. The motions have been fully briefed by the parties.
Opposer, in support of its motion, asserts that applicant's South African registration is for a stylized depiction of the term "LEMON BREEZE" together with a lemon shaped design, a sun burst design and three rectangles; that the mark sought to be registered is for the words "LEMON BREEZE" with no design features and in plain block or typed letters; that the mark sought to be registered is not the mark registered in applicant's country of origin as required by Section 44(e) of the Act and that since no genuine issues of material fact are in dispute, summary judgment against applicant is appropriate.
Applicant, on the other hand, asserts that opposer has no standing to oppose registration of applicant's mark. Specifically, applicant contends that the opposition essentially alleges likelihood of confusion from the use of applicant's mark and two of opposer's marks even though the two marks of opposer have no similarity to each other; that since opposer cannot show that it would be damaged by the issuance of the proposed registration, it has no standing to raise the question of whether the application conforms to the foreign registration and that applicant is entitled to summary judgment herein. Applicant further contends that the mark registered in South Africa is the equivalent of a specimen label ordinarily presented with applications based on use in the United States, that whether the mark sought to be registered conforms with the mark in the foreign registration should be determined under the same standard, and that under this standard the South African registration supports registration of the words LEMON BREEZE.
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).
*2 It is the burden of the moving party to establish the absence of any genuine issue of material fact and all reasonable doubt must be resolved against the moving party.
In the present case, opposer has pleaded prior use and registration of two marks which are assertedly confusingly similar to applicant's mark. While these two marks may be dissimilar from one another, that fact has no bearing on whether one or both of opposer's marks could be found to be confusingly similar to applicant's mark when the respective marks are used in connection with rum on the one hand and apertiffs on the other. We find that opposer has properly set forth allegations which, if proved, would demonstrate its real interest to bring the opposition (i.e., allegations of ownership of two previously registered marks, coupled with an allegation of likelihood of confusion, which allegation is not wholly without merit). Applicant's cross motion for summary judgment on this ground is accordingly denied.
While, as stated above, opposer has pleaded facts which, if proved, would be sufficient to establish its standing, it is clear that allegations alone cannot establish standing. See: Lipton Industries, Inc. v. Ralston Purina Co., 670 F.2d 1024, 213 USPQ 185 (CCPA 1982). Where, as here, a plaintiff moves for summary judgment, it must establish not only that there are no genuine issues of fact regarding the substantive ground or grounds, but it must also establish the absence of any genuine issue of fact as to its standing to bring the case, and that it has standing as a matter of law. See: International Order of Job's Daughters v. Lindeburg and Co., 727 F.2d 1087, 220 USPQ 1017, 1020 (Fed.Cir.1984). In this regard, applicant, in its answer to the opposition, has denied the allegations relating to opposer's use and registration of opposer's pleaded "LEMON HART" and "PALM BREEZE" marks. These matters, therefore, are in dispute and opposer has failed, in its motion for summary judgment, to demonstrate the absence of a genuine issue of fact as to its standing to bring this opposition (e.g., by offering with its motion status and title copies of its pleaded registrations). Accordingly, opposer's motion for summary judgment cannot be granted at this time.
While opposer's motion for summary judgment has been denied in view of opposer's failure to demonstrate its standing as a matter of law, we do agree with opposer that there are no genuine issues of fact relative to the matter of whether applicant's mark sought to be registered conforms with the mark in the South African registration upon which the U.S. application is based. We agree that this issue is a legal, rather than a factual one; that it is ripe for summary judgment and that no point would be served in going forward to trial on this issue.
Section 44(e) of the Act provides that "A mark duly registered in the country of origin of the foreign applicant may be registered...." In this regard, it should be noted that the statutory language does not include a requirement that the mark shown in the drawing of a United States application must be exactly the same as the mark in the foreign registration upon which the United States application is based. Indeed, Article 6 quinquies (c)(2) of the Paris Convention, to which Section 44 of the Trademark Act gives effect, provides that:
*3 No trademark shall be refused in the other countries of the Union for the sole reason that it differs from the mark protected in the country of origin only in respect of elements that do not alter its distinctive character and do not affect its identity in the form in which it has been registered in the said country of origin.
In interpreting Section 44(e) of the Trademark Act, the Trademark Manual of Examining Procedure 1011 provides that in situations such as this, where the U.S. application is based on a foreign registration, the drawing in the U.S. application must be materially the same as the mark in the foreign registration. While little case law exists on this point, we do note that one 1941 pre-Lanham Act case held that portions of the matter in the foreign registration may be omitted where the outstandingly predominant feature of the foreign registration was the matter sought to be registered in the domestic application. See: Ex parte Parrabere, 50 USPQ 221 (Com'r.1941).
In determining the standard for what constitutes "a mark duly registered in the country of origin ..." for purposes of Section 44(e) of the Act, we must recognize, at the outset, that the purpose of Section 44(e) 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 countries of origin. This procedure is an exception to the normal registration process whereby a party is required to use the mark in commerce prior to the application filing date. Because the registration procedure under Section 44(e) is such an exception, we believe it would not be appropriate to construe it broadly and we reject applicant's suggestion that the standard should be that we view the mark in the foreign registration as a specimen, and if, as a specimen, it would support registration of the applied-for mark, it should support registration under Section 44. [FN2]
Further reinforcing our view that the exception to registration procedure set forth in Section 44 of the Act should be construed narrowly is our concern that a foreign applicant might otherwise be able to obtain a U.S. registration for a mark he would not be entitled to register in his country of origin. This could result in a perversion of Section 44(e) from a means of obtaining protection in the U.S. for a foreign registered mark to a means of bootstrapping a foreign registration into a registration for a different mark in the United States.
While we believe, as we have indicated above, that it is proper to construe narrowly the Section 44(e) exception to normal registration procedure, we also reject the standard that the mark in the foreign registration must be exactly identical to the mark in the U.S. application. We reject this standard because of the differences in trademark practices in foreign countries. We recognize that many foreign jurisdictions have different technical requirements for registration of marks and that matter which might be registrable in a foreign country would be rejected for registration in the U.S. on the ground that the matter presented constituted more than one mark (e.g. multiple views of a mark or multiple labels). Moreover, certain countries may require that a label mark contain all the material found on the label, while this is not the practice in the U.S. In such circumstances as that described above, the Patent and Trademark Office should be able to determine which part of this matter constitutes the mark under U.S. practice and limit the drawing in the U.S. application to the registrable matter even though the drawing would then not be identical to the mark shown in the foreign registration.
*4 In view of the foregoing, it is our view that the "materially the same" standard set forth in the Trademark Manual of Examining Procedure is the correct standard and the one we adopt in situations such as that presented herein. While this standard is, necessarily, a subjective one, it appears to balance the need to narrowly construe the Section 44(e) exception to normal registration procedure with the need for the Office to allow for flexibility in what may be registered under Section 44(e) in view of the differences in trademark registration practices in other countries.
Turning to the mark in the present case, we find that the mark registered in South Africa as depicted in footnote 1, supra, is not materially the same as the mark applied for herein. The mark in the South African registration includes the term "LEMON BREEZE" as well as a distinctive design element comprising what appears to be a stylized configuration of a lemon inside of which a stylized sun design appears along with other matter. This mark is, in our opinion, materially different from the term "LEMON BREEZE," per se, which is the subject matter presented for registration herein.
Accordingly, we conclude that the mark sought to be registered is not the "... mark duly registered in the country of origin...." While registration to applicant will ultimately be refused, we may not grant opposer's motion for summary judgment at this time for the reason explained earlier, namely, that opposer has failed to demonstrate the absence of any genuine issue of fact as to its standing to bring this opposition. Accordingly, opposer is allowed thirty days from the mailing date of this ruling in which to submit a supplement to its motion for summary judgment demonstrating the absence of any genuine issue of fact regarding its standing. If opposer submits the required showing, the motion for summary judgment will be granted solely on the ground that the mark sought to be registered does not conform to the mark in the South African registration. If opposer fails to demonstrate its standing within the time allowed, its motion for summary judgment will be denied and trial dates, including the time for discovery, will be reset in connection with the remaining issue of standing. [FN3]
Proceedings are suspended pending response by opposer to the Board's ruling.
J. D. Sams
G. D. Krugman
E. J. Seeherman
Members, Trademark Trial and Appeal Board
FN1. Application Serial No. 560,931 filed December 14, 1984 under Section 44(e) of the Trademark Act based on South African Registration no. 76/2470 registered May 17, 1976 for the mark "LEMON BREEZE" and design in the form depicted below
TABULAR OR GRAPHIC MATERIAL SET FORTH AT THIS POINT IS NOT DISPLAYABLE
FN2. We further note that where specimens are submitted showing actual use of a mark, the commercial impression of a mark can be determined. If a specimen shows words and a design, it could be found that the specimens support registration of the words alone where the words create a separate commercial impression on purchasers. In the present case, however, where the applicant seeks registration under Section 44(e) and no specimens have been submitted, we cannot use the same standard since we cannot ascertain the commercial impression of the mark.
FN3. With respect to the issue of likelihood of confusion, opposer may, if it so desires, elect to go forward and obtain an adjudication of this question vis-a-vis the mark "LEMON BREEZE" and opposer's pleaded marks. If opposer elects to go forward on this issue, it should advise the Board within thirty days from the mailing of this ruling and the Board, regardless of its decision on the summary judgment motion based on the nonconformity of the applied-for mark with the mark in the foreign registration, will resume proceedings on the question of likelihood of confusion.