Trademark Trial and Appeal Board
Patent and Trademark Office (P.T.O.)
*1 UNITED STATES OLYMPIC COMMITTEE
O-M BREAD, INC. AND ROUSH PRODUCTS COMPANY, INC., JOINED AS PARTY DEFENDANT
Opposition No. 86,739
October 20, 1993
Mary Jane Saunders of Arther & Hadden for United States Olympic Committee
G. Franklin Rothwell of Rothwell, Figg, Ernst & Kurz for O-M Bread, Inc. and Roush Products Co. Inc.
Before Sams, Seeherman and Quinn
Administrative Trademark Judges
Opinion by Seeherman
This case now comes up on opposer's motion for summary judgment, filed on March 29, 1993. Applicant [FN1] has opposed the motion, and opposer filed a reply brief, which applicant has moved to strike. With respect to the latter motion, the Board, as previously noted in these proceedings, has the discretion to consider reply briefs. However, we discourage the filing of such briefs and, because in this case opposer's reply brief consists essentially of a reiteration of the arguments made in its main brief, we have elected not to consider this paper.
Although opposer's second amended notice of opposition [FN2] recites a number of grounds, its current motion for summary judgment is based on Section 110(c) of the Amateur Sports Act, 36 U.S.C. 380(c), on the ground that applicant has no lawful right to use the mark OLYMPIC KIDS, and therefore no right to register this mark. Because opposer's motion is limited to this single ground, it asserts, and we agree, that the existence of genuine issues of fact regarding the other pleaded grounds, likelihood of confusion and false suggestion of a connection, do not preclude the entry of summary judgment on this particular ground. [FN3]
In our decision issued January 22, 1993 in connection with applicant's motion for summary judgment, reported at 26 U.S.P.Q.2d 221, we held that opposer's claim pursuant to Section 110 of the Amateur Sports Act, and specifically 110(c), is properly before the Board, and the protection of the grandfather clause of Section 110(a) does not extend to applicant's use of OLYMPIC KIDS. However, we specifically declined to enter judgment in favor of opposer, the nonmoving party, that applicant's use of OLYMPIC KIDS was in derogation of the exclusive rights granted to opposer by Section 110(c), and therefore that applicant's constructive use of OLYMPIC KIDS was not lawful. This was because the question of whether applicant's use of OLYMPIC KIDS, absent the protection of the grandfather clause, violated that provision of the statute, was not discussed in either party's papers, and thus applicant's failure to discuss this issue may have been a concession of the issue solely for purposes of its summary judgment motion.
With its current motion, opposer has brought this issue squarely before us. Essentially, it is opposer's position that there is no genuine issue that the Amateur Sports Act gives opposer certain rights, including the right to exclusive use of the word "Olympic"; that applicant's mark OLYMPIC KIDS incorporates this term; that applicant's grandfathered rights in the word OLYMPIC do not extend to the use of OLYMPIC KIDS; and therefore that applicant's use/constructive use of OLYMPIC KIDS is unlawful. We are thus asked to determine whether, as a matter of law, applicant's use of OLYMPIC KIDS is in derogation of the exclusive rights granted to opposer by Section 110(c) of the Amateur Sports Act.
*2 In opposing the motion, applicant argues that opposer cannot rely on its rights under Section 110(c) as a ground for opposition. [FN4] Applicant argues:
In this opposition proceeding, USOC [opposer] does not contest the validity of Roush's registration for and Roush's grandfathered rights to use the mark OLYMPIC. The remaining portion of the OLYMPIC KIDS mark at issue is the word "kids." Since the word "kids" is not the same as "Olympic," "Olympiad," "Citius Altius Fortius" or a "combination thereof" the issue of whether the OLYMPIC KIDS mark is registrable does not fall within Section 380(c) of the Amateur Sports Act. Consequently, USOC's allegations related to USOC's rights under Section 380(c) of the Act do not state a claim for which relief can be granted in this opposition proceeding.
Applicant's brief, p. 11.
Part of this argument is reminiscent of applicant's position with respect to the grandfather clause issue (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' ", applicant's reply brief in support of its motion for summary judgment, p. 9), a position which we rejected in our previous decision. However, it also appears that applicant is arguing that because OLYMPIC KIDS is not OLYMPIC, and because Section 110(c) specifies that opposer has the exclusive right to use the words OLYMPIC, OLYMPIAD, CITIUS ALTIUS FORTIUS or combinations thereof, applicant is not barred by this section from using the mark OLYMPIC KIDS.
There is relatively little case law on the interpretation of Section 110(c). In the Olymp-Herrenwaschefabriken case, supra, the Board found that the mark OLYMP was not the same as OLYMPIC or OLYMPIAD and is not a "combination thereof." Similarly, in In re Midwest Tennis & Track, Co., --- U.S.P.Q.2d ----, S.N. 74/076,496 (TTAB August 27, 1993), the mark OLYMPIAN GOLDE was found not to be a combination of the terms OLYMPIC, OLYMPIAD or CITIUS ALTIUS FORTIUS. Both those cases are different from the present situation, in that here applicant's mark OLYMPIC KIDS includes OLYMPIC, a word that is specifically enumerated in the Amateur Sports Act, rather than being a derivation or simulation of that word.
The only other case we have found which specifically discusses Section 110(c) is Stop the Olympic Prison v. United States Olympic Committee, 489 F.Supp. 1112, 207 USPQ 237 (SDNY 1980). That case involved a poster consisting, inter alia, of the words STOP THE OLYMPIC PRISON above a drawing of five vertical steel-grey bars on which was superimposed opposer's five-interlocking-ring-symbol. The court, in discussing the meaning of the exclusive rights granted to opposer by Section 110(c), concluded that this subsection did not apply to noncommercial speech, but that the purpose of the subsection was "to prevent all persons other than opposer from registering the Olympic words and symbols as trademarks or service marks in connection with any types of goods or services whatsoever...." 207 U.S.P.Q.2d at 245. Implicit in this discussion is the recognition that trademark use of a term which includes the word OLYMPIC, even if the mark includes other nonprohibited words or symbols, would be in violation of the exclusive rights granted to opposer by this subsection.
*3 We agree with this interpretation of Section 110(c). The reading that applicant suggests--that opposer's exclusive right to use OLYMPIC is limited to that word per se, and that another party could use OLYMPIC as long as it was done in combination with another word or design--finds no support in the case law, legislative history, or in common sense. Under applicant's interpretation, a party would be able to use OLYMPIC in a circle, or OLYMPIC GAMES, GO OLYMPIC or even OLYMPIC followed by a generic name for its goods, as a trademark without running afoul of opposer's statutorily granted exclusive rights, simply because the mark was not just the word OLYMPIC alone. Such an interpretation would, in effect, render Section 110(c) nugatory, because under it a party need only make a minor addition to the word OLYMPIC in order to overcome the exclusive rights granted to opposer. Such a result would be clearly contrary to the purpose of subsection (c), a provision which was suggested by the Patent and Trademark Office, and was designed to give opposer something more than the protection offered by Section 2(a) and Section 2(d) of the Trademark Act. See letter from Commissioner of Patents and Trademarks Donald W. Banner, appended to H.R.Rep. No. 95-1627 (1978). [FN5]
Accordingly, we find that, as a matter of law, applicant's OLYMPIC KIDS mark is in violation of the exclusive rights granted to opposer under Section 110(c) of the Amateur Sports Act, and the use/constructive use of the mark is therefore not lawful use in commerce. [FN6]
Applicant has also raised the issue of opposer's standing, asserting that opposer cannot be damaged by registration of OLYMPIC KIDS. The basis for applicant's position is a so-called Morehouse defense, Morehouse Mfg. Corp. v. J. Strickland & Co., 407 F.2d 715, 160 USPQ 715 (CCPA 1969): Because applicant owns incontestable registrations for OLYMPIC and OLYMPIC MEAL for bread and other bakery products, and because OLYMPIC is the only objectionable portion of applicant's mark, opposer can suffer no additional damage by the issuance of a registration for OLYMPIC KIDS.
Applicant's argument is not well taken. Although the Morehouse, or prior registration, defense was originally articulated in terms of damage and standing, in subsequent cases the Court of Customs and Patent Appeals and the Court of Appeals for the Federal Circuit made clear that the damage necessary to establish standing would be that the plaintiff have a real interest in the proceedings, and not be an "intermeddler." See, Lipton Industries, Inc. v. Ralston Purina Co., 670 F.2d 1024, 213 USPQ 185 (CCPA 1982). Thus, the Morehouse defense evolved into an equitable defense in the nature of laches, estoppel or acquiescence. Like other equitable defenses, the Morehouse defense is not applicable in all cases, e.g., the Morehouse defense will not lie against a ground of fraud, abandonment or descriptiveness. See, TBC Corp. v. Grand Prix Ltd., 12 U.S.P.Q.2d 1311 (TTAB 1989); Bausch & Lomb Inc. v. Leupold & Stevens Inc., 1 U.S.P.Q.2d 1497 (TTAB 1986).
*4 One of the grounds in the present proceeding is that applicant's use is in violation of Section 110(c) of the Amateur Sports Act or, in other words, that applicant's use or constructive use of OLYMPIC KIDS is unlawful. In the same way that the Morehouse defense cannot be invoked against the grounds of fraud or abandonment, we think that it would be inappropriate for a party to use this equitable defense when the ground is that the party's use is unlawful because it is prohibited by statute.
As we stated in our previous decision on applicant's motion for summary judgment, Section 110(a) of the Amateur Sports Act demonstrates opposer's standing to challenge the registration of applicant's mark, and the affidavits submitted in connection with that motion show that there is no genuine issue that opposer has a genuine interest in this proceeding, and therefore has standing.
Accordingly, opposer's motion for summary judgment on the ground that applicant's use of OLYMPIC KIDS would be in derogation of the exclusive right granted to opposer by 36 U.S.C. 110(c), and is therefore unlawful, is granted, and the opposition is sustained on this ground.
Administrative Trademark Judges, Trademark Trial and Appeal Board
FN1. On March 16, 1993, applicant filed a motion to substitute Roush Products Company, Inc. as the applicant, submitting evidence that an assignment of the OLYMPIC KIDS mark and application had been recorded in the Patent and Trademark Office. It is Board policy that when an assignment of an application occurs after the commencement of a proceeding, the assignee is joined as a party, rather than substituted.
FN2. This notice of opposition was filed on February 22, 1993, in response to the Board's instructions in the decision mailed January 22, 1993.
FN3. We note that applicant has argued that summary judgment should be denied because there are genuine issues of material fact, but these factual issues are concerned with the other grounds pleaded in the notice of opposition, and therefore they are not material to the issues on which opposer's summary judgment motion has been brought. Similarly, applicant's claim that responses to its discovery requests are outstanding cannot give rise to a motion under 56(f) of the Federal Rules of Civil Procedure, because these discovery requests relate to the other grounds of opposition.
FN4. We do not take applicant's argument to mean that Section 110(c) does not provide a ground for opposition, since we clearly stated in our January 22, 1993 decision, citing U.S. Olympic Committee v. Olymp-Herrenwaschefabriken Bezner GmbH & Co., 224 USPQ 497 (TTAB 1984), that this section provides such a ground, in that the use, by an entity other than opposer, of the terms and designs listed in Section 110(c) of the Amateur Sports Act would be an unlawful use in commerce.
FN5. In its brief in opposition to the summary judgment motion, applicant has made certain arguments regarding a need for opposer to prove likelihood of confusion. These arguments seem to be made in connection with its point that Section 110(a) of the Amateur Sports Act does not provide a ground for opposition, and therefore cases brought under Section 110(a) which state that likelihood of confusion need not be proved are inapposite. While it is correct that Section 110(a) does not provide a ground for opposition, that fact has nothing to do with the issue before us, which is whether applicant's use of OLYMPIC KIDS is unlawful in light of the exclusive right to use OLYMPIC granted to opposer under Section 110(c). Proof of likelihood of confusion is not an element of the ground for opposition based on Section 110(c), as both the statutory language and the legislative history make clear.
FN6. Applicant also cites certain language in another Board case between the parties, United States Olympic Committee v. O-M Bread, Inc., CN 19,512 (TTAB Sept. 24, 1991). As we had acknowledged in our January 22, 1993 decision, that case's discussion of the grandfather clause contained some ambiguous language which might have been interpreted as conflicting with our January decision. We specifically stated that the earlier case differed from this case, in that it was based on Section 110(a), and further that the decision in that case turned not on the question of damage but on certain of opposer's admissions in that case which are not apposite to the present situation. In any event, to the extent that the September 24, 1991 decision in that unpublished case appears to mandate a different result herein, we reject such an interpretation.