Trademark Trial and Appeal Board
Patent and Trademark Office (P.T.O.)
*1 UNITED STATES OLYMPIC COMMITTEE
O-M BREAD, INC.
Opposition No. 86,739
January 22, 1993
Before Sams, Seeherman and Quinn
Opinion by Seeherman
This case comes up on applicant's motion for summary judgment [FN1] and opposer's motion to amend its notice of opposition.
Opposer, United States Olympic Committee, has opposed the application of O-M Bread, Inc. to register OLYMPIC KIDS for bakery products. [FN2] The application was filed on March 5, 1991, based on a bona fide intention to use the mark in commerce. In its original notice of opposition, opposer alleged that by virtue of 36 U.S.C. 380(c) opposer has the exclusive right to use the word OLYMPIC and, pursuant to 36 U.S.C. 380(a), it is entitled to challenge registration of a mark incorporating the word OLYMPIC when this word will be used without opposer's consent to induce the sale of any goods or services; that registration by applicant of OLYMPIC KIDS is likely to interfere with opposer's authority to prohibit use of OLYMPIC under 36 U.S.C. 380; that in violation of 36 U.S.C. 380 and 15 U.S.C. 1052, the mark OLYMPIC KIDS is likely to cause confusion, mistake or deception by improperly suggesting a connection between applicant's goods and an Olympic-related line of foods, and creating the mistaken impression that applicant's bakery goods are sponsored by opposer or U.S. Olympic Team members; that opposer has authorized the use of OLYMPIC in various forms in connection with products that are commercially related to bakery products; and that in 1987 opposer, together with Hanna-Barbera Productions, Inc., developed a series of U.S. Olympic Team mascots called OLYMPIKIDS.
Applicant denied the essential allegations of the notice of opposition in its answer, and subsequently brought its motion for summary judgment. Opposer opposed this motion, and moved to amend the notice of opposition, a motion which applicant has opposed. Both parties filed reply briefs in support of their respective motions and, while the rules do not specifically provide for the submission of reply briefs, in this case we have exercised our discretion to consider both. [FN3]
Turning first to opposer's motion to amend its pleading, we note that opposer has based this motion on "newly discovered" evidence of use of OLYMPIC KID by JCPenney under a sponsor and license agreement with opposer. The amended notice of opposition substitutes, for the allegation that in 1987 opposer, together with Hanna-Barbera Productions, Inc., developed a series of U.S. Olympic Team mascots called OLYMPIKIDS and that registration of applicant's mark will likely interfere and conflict with this prior use by opposer, the allegation that since 1987 opposer has been working on the development and marketing of a series of Olympic team mascots originally to be called OLYMPIKIDS; that by at least as early as November 1, 1991 and probably considerably earlier, opposer had decided to alter the mark to OLYMPIC KIDS; that the OLYMPIC KID mark is being used under a sponsor and license agreement between opposer and JCPenney; that additional uses of this mark are being examined; and that registration by applicant will likely interfere and conflict with this prior use by opposer as well as additional uses.
*2 Applicant has opposed the motion to amend on the basis that proceedings have been suspended pending the determination of the summary judgment motion and opposer's motion is not pertinent thereto; that the amendment would be prejudicial as applicant has already conducted discovery; that opposer has offered no proof to support its contention that JCPenney's use is newly discovered evidence; and that this evidence does not prove opposer's prior use of OLYMPIC KIDS as a trademark.
Opposer's motion to amend is granted. First, the motion is germane to applicant's motion for summary judgment, one part of applicant's motion being the contention that opposer has produced nothing in discovery regarding any public use by opposer of OLYMPIKIDS. Second, applicant would not be prejudiced because the proceeding is still in the pre-trial phase and, indeed, discovery has been extended. Moreover, opposer's amendment to the pleading is essentially just an expansion of its initial allegation, and merely provides additional details. As such, the amendment cannot be considered prejudicial.
As for applicant's remaining points, opposer has provided, with its reply brief, a declaration attesting that the allegation is based on newly discovered evidence. Finally, whether or not this evidence is sufficient to prove opposer's allegations is irrelevant. Opposer need only allege in its notice of opposition facts which, if proved, would be sufficient to state a claim. [FN4]
This brings us to applicant's motion for summary judgment. Applicant's motion has three bases. First, applicant asserts that an opposition brought under Section 380(a) of the Amateur Sports Act falls outside the subject matter jurisdiction of the Board. Secondly, applicant asserts that the grandfather provision of the Amateur Sports Act permits registration of applicant's mark. Thirdly, applicant asserts that opposer has produced nothing in discovery that indicates public confusion or potential confusion over the mark OLYMPIC KIDS, or any public use of OLYMPIKIDS. With its reply brief, applicant has expanded this argument to assert that there is no genuine issue as to applicant's priority, and that opposer has failed to provide adequate evidence in support of its claim of prior use.
Opposer has opposed the motion on the grounds that there are material facts at issue and that, should the Board decide that there are no genuine issues of material fact, applicant is not entitled to judgment as a matter of law.
As has been frequently 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).
As to the first two bases of applicant's motion, we agree with applicant that there are no genuine issues of fact, and that their disposition can be determined as a matter of law.
*3 The first assertion in applicant's motion for summary judgment concerns the Board's jurisdiction. Applicant contends that, as a matter of law, the Board may not hear civil claims brought under Section 110(a) of the Amateur Sports Act of 1978, 36 U.S.C. 380(a). While the Board did say in U.S. Olympic Committee v. Olymp-Herrenwaschefabriken Bezner GmbH & Co., 224 USPQ 497 (TTAB 1984) that Section 380(a) did not provide a ground for opposition, it stated in the same opinion that Section 380(c) does provide such a ground, in that the use, by an entity other than opposer, of the terms and designs listed in that section would be an unlawful use in commerce. [FN5] Moreover, applicant has specifically recognized in its reply brief "that § 380(c) of the Act does provide a ground for opposition if a party attempts to register 'Olympic,' 'Olympiad,' 'Citius Altius Fortius' or any combination thereof." Brief, p. 3.
In its notice of opposition opposer has alleged that registration of applicant's mark would conflict with opposer's authority under 36 U.S.C. § 380. While it mentions Section 380(a) as entitling opposer to challenge a registration of a mark incorporating the word "Olympic," (and it should be noted that the Board stated, in the Olymp-Herrenwaschefabriken case, that Section 380(a) is pertinent to demonstrate opposer's standing), opposer does not limit its ground of opposition to Section 380(a). On the contrary, opposer has relied on Section 380 generally, alleging that applicant's attempt to register OLYMPIC KIDS encroaches upon opposer's statutorily protected exclusive right of use under 36 U.S.C. 380. The notice of opposition also specifically makes reference to opposer's rights under Section 380(c).
Because opposer has brought this opposition pursuant to Section 380 generally and 380(c) specifically, and because Section 380(c) provides a ground for opposition, we find, as a matter of law, that this Board has authority to rule on whether registration of OLYMPIC KIDS by applicant is prohibited by Section 380(c) of the Amateur Sports Act. Applicant's motion for summary judgment on the issue is therefore denied and partial summary judgment is entered in favor of opposer on the issue that opposer's claim pursuant to 36 U.S.C. 380, and specifically 380(c), is properly before the Board.
Applicant's next contention is that, as a matter of law, the grandfather provisions of the Act warrant a grant of summary judgment in its favor. Thus, even if we were to find that applicant's use of OLYMPIC KIDS would otherwise be prohibited by Section 380(c) because the mark contains the word "Olympic," applicant's position is that its use of this mark falls within the exception to opposer's exclusive rights because of applicant's preexisting rights. Section 380(a) defines these rights as follows:
*4 ... any person who actually used the emblem in subsection (a)(2), or the words, or any combination thereof, in subsection (a)(4) for any lawful purpose prior to September 21, 1950, shall not be prohibited by this section from continuing such lawful use for the same purpose and for the same goods or services. In addition, any person who actually used, or whose assignor actually used, any other from continuing such lawful use for the same purpose and for the same goods or services. In addition, any person who actually used, or whose assignor actually used, any other trademark, trade name, sign, symbol, or insignia described in subsection (a)(3) and (4) for any lawful purpose prior to enactment of this Act [enacted Sept. 21, 1950] shall not be prohibited by this section from continuing such lawful use for the same purpose and for the same goods or services.
There is no genuine issue that applicant did not use the applied-for mark, OLYMPIC KIDS, prior to September 21, 1950, the date of enactment of the Amateur Sports Act. Applicant's current application is based on an intent to use the mark OLYMPIC KIDS, rather than actual use, and the application was filed on March 5, 1991. Further, in its answers to opposer's interrogatories, applicant stated that the date of first use of the mark was January 1991.
However, applicant asserts that the grandfather clause of the Amateur Sports Act protects its right to use OLYMPIC KIDS, based on its pre-1950 use, and hence its grandfathered rights, to the marks OLYMPIC and OLYMPIC MEAL. There is no genuine issue that applicant used OLYMPIC as a trademark for bread and other bakery products prior to September 21, 1950. Not only has opposer admitted this in response to applicant's request for admissions and acknowledged this in its brief, but applicant has submitted a copy of its registration for OLYMPIC for various bakery products which issued from an application filed in 1936. [FN6]
The question before us, then, is a matter of interpretation of the grandfather clause of Section 380, i.e., whether applicant's use of OLYMPIC KIDS for bakery products is encompassed within its grandfathered rights. As such, this issue is amenable to disposition by summary judgment.
Applicant has advanced various arguments as to why the Statute's grandfather provisions permit its use of OLYMPIC KIDS. In its memorandum in support of its summary judgment motion, it asserted that because it has long-standing rights to the marks OLYMPIC and OLYMPIC MEAL, opposer cannot suffer any damage from applicant's registration of OLYMPIC KIDS. In addition, it asserted that "the marks OLYMPIC KIDS and OLYMPIC for bread products are so similar that the grandfather provision of the Amateur Sports Act applies to both marks, especially since KIDS is descriptive." Brief, p. 11. In its reply brief, applicant's position has changed somewhat. Applicant asserts that it does not need grandfather rights to use the term "kids" as part of the mark OLYMPIC KIDS. According to applicant, because the only potentially offending part of the mark OLYMPIC KIDS is OLYMPIC, and because it has grandfathered rights to use the word OLYMPIC, the "grandfather rights granted to Applicant for use of the mark " 'OLYMPIC' on bread products include the right to combine that grandfathered term with the neutral term 'kids' to form the mark 'OLYMPIC KIDS' for the same purpose, namely selling bread products, for the same goods, namely, bread products." Brief, p. 9. Applicant also contends that
*5 nowhere does the statute state that the grandfather rights provided for under the statute extend only to the exact same mark for the exact same goods. Rather, the statute provides for grandfather rights in a mark used for the same purpose and for the same goods or services. Clearly, the purpose and the goods for which the marks "OLYMPIC" and "OLYMPIC KIDS" are used are the same, as they are both used with bread products. Brief, p. 10.
Applicant has provided no support for its theories. On the contrary, applicant's position is contradicted by the clear language of the Statute itself, as well as legislative history and case law. The Statute provides that any person who used a trademark as described in the Statute for any lawful purpose prior to enactment of the Act would not be prohibited by the Act from continuing such lawful use for the same purpose and for the same goods or services (emphasis added). The Act, thus, states that the grandfathered rights are limited to marks which were in use at the time of enactment of the Statute. There is no indication that these rights extend to other marks so long as they contain a mark with grandfathered rights. [FN7]
Applicant's expansive reading of the Statute is also contradicted by the definition of a "grandfather clause," i.e., an exception to a restriction that allows all those already doing something to continue doing it even if they would be stopped by the new restriction. Black's Law Dictionary, 5th ed., (c)1979. Moreover, the Supreme Court has characterized the Congressional purpose in enacting Section 380 as being to grant opposer broad protection with respect to the word OLYMPIC, "to grant the USOC exclusive use of the word 'Olympic' without regard to whether use of the word tends to cause confusion...." San Francisco Arts & Athletics Inc. v. U.S. Olympic Committee, 483 US 522, 530, 107 S.Ct. 2971, 2978, 3 USPQ2d 1145, 1149 (1987).
We note applicant's argument that, if opposer's position were to be accepted, applicant could never amend or revise its grandfathered OLYMPIC mark, even if such revision were merely a change to the design or stylization of the mark. Even if this were opposer's position, the mark OLYMPIC KIDS is not a mere design or stylization change of applicant's mark OLYMPIC. Despite applicant's attempts to characterize OLYMPIC KIDS as being essentially the same mark as OLYMPIC by taking the position that KIDS is descriptive of bakery products because they are eaten by children, OLYMPIC KIDS is not the legal equivalent of OLYMPIC. It does not create the same commercial impression, and would not be considered the same mark by consumers. See, Van Dyne-Crotty, Inc. v. Wear Guard Corp., 926 F.2d 1156, 17 USPQ2d 1866 (Fed.Cir.1991) and cases cited therein. [discussion of legally equivalent marks].
As for applicant's argument that opposer cannot be damaged by the registration of OLYMPIC KIDS, this argument is apparently based on language in the unpublished Board decision referred to in footnote 6. The decision in that case, however, turned not on the question of "damage" but on opposer's admission that applicant had rights in the mark OLYMPIC MEAL since prior to enactment of the Amateur Sports Act in 1950, and is inapposite to the present situation, where applicant's use of OLYMPIC KIDS did not commence until 1991.
*6 We find as a matter of law that applicant is not protected by the grandfather clause of Section 380(a) in the use of OLYMPIC KIDS, and we therefore enter judgment against applicant on this point. We decline, however, to enter judgment in favor of opposer on the ground that applicant's use of OLYMPIC KIDS is in derogation of the exclusive rights granted by opposer by 36 U.S.C. 380(c), and therefore that applicant's use/constructive use of OLYMPIC KIDS is not lawful. Applicant did not discuss, in connection with its motion for summary judgment, whether, absent the grandfather clause, its use of OLYMPIC KIDS would violate the Amateur Sports Act, nor was this issue addressed in opposer's papers. While the absence of such discussion may indicate that applicant has conceded that the mark violates the Act's provision but for the grandfather clause, it is equally possible that such concession was made solely for purposes of the motion. Accordingly, we will not enter summary judgment on this point in favor of opposer, the nonmoving party.
Finally, applicant has moved for summary judgment on the basis that there is no genuine issue that any public confusion has resulted from applicant's use of OLYMPIC KIDS, or that opposer ever used OLYMPIKIDS publicly as a mark. This was extended in applicant's reply brief to include the assertion that opposer has not raised a genuine issue that it used OLYMPIC KIDS as a mark prior to applicant's constructive first use date.
We find that the affidavit and materials which opposer submitted in opposition to applicant's motion are sufficient to demonstrate a genuine issue as to when opposer began using the trademarks OLYMPIKIDS and OLYMPIC KIDS, or made trademark-analogous use of such terms. As for applicant's seeking summary judgment on the basis that there is no evidence of actual confusion, this does not demonstrate the lack of a genuine issue as to likelihood of confusion, particularly where applicant's use of its mark began no earlier than January 1991 and where applicant has provided no information regarding extent of its sales and advertising.
Moreover, it is unclear from the pleadings whether opposer has based its opposition on Section 2(a) or 2(d) of the Trademark Act, or on both subsections. Further, to the extent that opposer is alleging likelihood of confusion under Section 2(d), it is not clear whether the basis for such ground is solely its use of the marks OLYMPIKIDS and OLYMPIC KIDS or also includes its use of " 'Olympic' marks in various forms," as indicated in Paragraph 4. Whether the basis for the opposition is Section 2(a) or 2(d) or both, however, there are genuine issues of material fact which preclude granting summary judgment for applicant.
In summary, applicant's motion for summary judgment is denied. Partial summary judgment is granted in favor of opposer on the issues that the Board has jurisdiction to consider oppositions brought pursuant to 36 U.S.C. 380(c), that opposer's notice of opposition has been brought pursuant to this statutory basis, and that applicant's grandfathered rights in OLYMPIC do not extend to the mark OLYMPIC KIDS. Opposer's motion for leave to amend its notice of opposition is granted. Moreover, opposer is allowed thirty days to file a second amended notice of opposition to clarify its grounds for opposition as indicated above, and in particular specifying the subsections of 15 U.S.C. 1052. Applicant will then have thirty days to file an answer to the amended notice, after which trial dates, including the close of discovery, will be reset. Proceedings remain otherwise suspended.
Members, Trademark Trial and Appeal Board
FN1. Applicant filed an initial motion for summary judgment on September 21, 1992. On October 8, 1992 it filed a motion for leave to file a corrected motion for summary judgment. Opposer responded to this corrected motion on October 28, 1992. Applicant's motion is granted, to the extent that we have considered the memorandum in the corrected motion, rather than in the original motion.
FN2. Application Serial No. 74/144,766.
FN3. Opposer also filed a reply to applicant's reply brief, to which applicant has objected. Because opposer's surreply merely reargues the points made in its previous papers, and because the Board discourages the filing of surreply briefs except in the most unusual circumstances, opposer's surreply brief has not been considered.
FN4. Applicant has not moved to dismiss opposer's Section 2(d) ground on the basis that opposer has failed to state a claim, and we make no determination in this connection on the sufficiency of the pleading.
FN5. Section 380(c) of Title 36 (the Amateur Sports Act), provides:
The Corporation shall have exclusive right to use the name "United States Olympic Committee"; the symbol described in subsection (a)(1) [5 interlocking rings]; the emblem described in subsection (a)(2) [an escutcheon with 5 interlocking rings on a blue chief, and vertical red and white bars on the base]; and the words "Olympic", "Olympiad", "Citius Altius Fortius" or any combination thereof subject to the preexisting rights described in subsection (a).
FN6. Applicant has not made a similarly sufficient showing of pre-1950 use of OLYMPIC MEAL. Its "evidence" on this point consists of a Board decision in a case where the instant opposer had opposed the instant applicant's application for OLYMPIC MEAL. While, in that decision, the Board found that opposer had, in a contract between the parties, acknowledged applicant's grandfather rights in OLYMPIC MEAL, and treated this acknowledgment as an admission against interest, this finding of "fact" in the previous case is not applicable to the present proceeding. However, even if the prior decision were sufficient to demonstrate that there is no genuine issue that applicant's use of OLYMPIC MEAL began prior to 1950, this would not affect our decision herein.
FN7. There exists, we realize, an unpublished Board decision between these same parties which discusses the grandfather clause and which contains somewhat ambiguous language which might be interpreted as conflicting with our decision herein. This apparently conflicting language may be explained to some degree by the fact that the pleading in that case was based on 36 U.S.C. 380(a), rather than 380(c). In any event, the case before us squarely presents the issue of whether the grandfather clause is applicable to a mark of which only a portion is a grandfathered mark, and our decision herein reflects the views of the Board on that issue.