Trademark Trial and Appeal Board
Patent and Trademark Office (P.T.O.)
*1 THE PROCTER & GAMBLE COMPANY
SENTRY CHEMICAL CO.
Opposition No. 81,901
February 28, 1992
Charles L. Gholz of Oblon, Spivak, McClelland, Maier & Neustadt, P.C.
Carol J. Ney and Jeffrey O. Davidson for Procter & Gamble Co.
Before Manbeck, Commissioner, and Samuels, Assistant Commissioner, and Sams, Chairman
Opinion by Sams
This case comes up on opposer's motion for partial summary judgment in the opposition and on the parties' cross motions for summary judgment on applicant's counterclaim for partial cancellation of opposer's pleaded registration. This case presents the issue of the extent and appropriate exercise of the Trademark Trial and Appeal Board's authority under Section 18 of the Lanham Act (15 USC § 1068), as amended by the Trademark Law Revision Act of 1988.
Sentry Chemical Company [applicant] has filed an application to register the mark "CAPTAIN CLEAN" for goods described in the application as "all purpose detergent." [FN1] The Procter & Gamble Company [opposer] has opposed registration of applicant's mark, under Section 2(d) of the Trademark Act, on the grounds that applicant's mark "CAPTAIN CLEAN," as applied to applicant's goods, so resembles opposer's previously used and registered trademark "MR. CLEAN," for detergent products, that confusion as to source is likely. Opposer pleaded ownership of a registration of the mark "MR. CLEAN" for "sudsing cleaner, cleanser, and detergent." [FN2]
Applicant filed an answer in which it denied the salient allegations of the notice of opposition and in which it asserted an affirmative defense of laches. After the answer was filed, opposer filed a motion for partial summary judgment, by which motion it sought a decision from the Board that, if applicant was entitled to any registration of its "CAPTAIN CLEAN" mark, the goods recited in such registration should not be "all purpose detergent," as applicant requested in its application, but should be limited to all purpose detergent sold in industrial and institutional trade channels. By this motion for partial summary judgment, opposer invoked the Board's authority under Section 18 of the Trademark Act. In support of the motion, opposer offered a copy of applicant's answers to opposer's first set of interrogatories and, in particular, the answer to interrogatory 17, where applicant states that its detergents are sold only in the industrial and institutional trade channels. In an order dated September 4, 1990, the Board noted that opposer was attempting to obtain partial judgment on an unpleaded ground, namely, that applicant had failed to use the "CAPTAIN CLEAN" mark in connection with all purpose detergent not sold in industrial and institutional trade channels. The Board noted that, in order to obtain such relief, opposer had to plead, in addition to its pleading of facts supporting its claim of likelihood of confusion, that applicant had not used its mark on all purpose detergent sold outside the industrial and institutional trade channels. Citing Microsoft Corp. v. Qantel Business Systems, Inc., 16 USPQ2d 1732 (TTAB 1990), the Board stated that relief under Section 18 of the Trademark Act had to be tied to a proper ground for opposition. A ruling on opposer's motion for partial summary judgment was deferred pending an amendment to the pleadings, which amendment was subsequently filed.
*2 By the time the Board issued its September 4, 1990 order, applicant had filed a motion for leave to file a counterclaim for partial cancellation of opposer's pleaded registration to restrict the identification of goods from "sudsing cleaner, cleanser and detergent" to "sudsing cleaner, cleanser and detergent sold in grocery stores, discount stores and club stores." In support of the motion, applicant submitted a copy of opposer's responses to applicant's interrogatories, in which opposer stated that the outlets through which opposer markets its "MR. CLEAN" products are grocery, discount and club stores. Opposer responded to applicant's motion for leave to file a counterclaim for partial cancellation by addressing the merits of the counterclaim, offering evidence to support its argument that opposer's "MR. CLEAN" mark had been used on cleaning products sold in institutional trade channels since at least five years prior to 1988. Noting that opposer's only response to applicant's motion for leave to file a counterclaim for partial cancellation was to file a response that addressed the merits of the counterclaim, the Board granted the motion for leave to file a counterclaim and set time for opposer's answer to the counterclaim.
Thereafter, applicant filed a motion for summary judgment on its counterclaim to limit the identification of goods in opposer's pleaded registration and, in reply, opposer filed a cross motion for summary judgment on applicant's counterclaim.
At this point in these proceedings, the parties' respective positions can be stated fairly simply. Opposer seeks to prevent applicant from registering its mark "CAPTAIN CLEAN" for all purpose detergent, no matter what the trade channels, but, as an alternative position, pleads that, if applicant is entitled to any registration at all for its "CAPTAIN CLEAN" mark the registration should be limited to the goods on which the mark "CAPTAIN CLEAN" has actually been used, namely, all purpose detergent sold in the industrial and institutional trade channels. Relying on applicant's answers to opposer's interrogatories, opposer argues that the Board may now enter partial summary judgment in opposer's favor by restricting the application for registration of the "CAPTAIN CLEAN" mark to all purpose detergent sold in the industrial and institutional trade channels.
Applicant's position is that there is no likelihood of confusion in the use of the mark "CAPTAIN CLEAN" on all purpose detergent and the mark "MR. CLEAN" on "sudsing cleaner, cleanser, and detergent." Applicant argues that, no matter what the outcome of this case with respect to likelihood of confusion, opposer's "MR. CLEAN" registration should be restricted by limiting the goods for which the mark is registered to those trade channels in which the product was sold as of the time the application for registration of "MR. CLEAN" was filed, namely, sudsing cleaner, cleanser, and detergent sold in grocery stores, club stores, and the like. Applicant argues that the fact that opposer has sold institutional cleaners under the "MR. CLEAN" mark since the 1980s is not a sufficient factual basis to defeat the counterclaim for partial cancellation, because the propriety of the restriction to opposer's registration must be judged by the use made by opposer of its "MR. CLEAN" mark on all purpose cleaners as of the date it filed its application to register "MR. CLEAN."
*3 Because both parties are seeking relief under Section 18 of the Trademark Act, as amended by the Trademark Law Revision Act of 1988, we must decide the extent of the Board's authority under Section 18 and the circumstances under which the Board can and should exercise that authority.
In Qantel Business Systems, Inc. v. Microsoft Corp., supra, the Board held that Section 18, as amended by the Trademark Law Revision Act of 1988, is a remedy provision of the Trademark Act and that any party requesting relief under Section 18 must first establish--that is, plead and prove--its standing to oppose (or its standing to petition to cancel) and a proper ground for opposition (or cancellation). Put another way, the point is, simply, that a request for relief under Section 18 must be tied to some statutory ground for opposition or cancellation. Where a party seeks to restrict or narrow in some manner the goods recited in its party opponent's application or registration, the ground for such requested relief will ordinarily be that the party opponent has not used its mark on the entire range of goods comprehended by the statement of goods included in the application or registration. Such a ground for opposition or cancellation may be asserted against an application for registration or against a registration less than five years old.
A different issue arises where the Board is asked, under authority of Section 18, to restrict a Principal Register registration that was issued more than five years prior to the request for restriction (partial cancellation) of that registration, because Section 14(3) of the Trademark Act limits the grounds on which most Principal Register registrations more than five years old may be cancelled. Non-use (as opposed to abandonment) may not be asserted as a ground for cancellation of a registration over five years old. In Alberto-Culver Co. v. FDC Wholesale Corp., 16 USPQ2d 1597 (TTAB 1990), the Board considered a request for restriction of a Principal Register registration issued more than five years prior to the request for restriction. In particular, there was a request that the Board modify opposer's registrations by changing the recitation of goods from "deodorant" and "personal deodorant" to "feminine deodorant spray." Although the requested restriction was denied in that case, the Board decided, in the context of a motion filed prior to trial, that such a request for restriction, under Section 18, could be premised on the ground of abandonment. We specifically reiterate here that the ground of abandonment is properly established by a party who pleads and proves that the owner of a registration (including a registration in existence for more than five years) is not using (or has never used) its mark on certain goods that are within the scope of the goods recited in the certificate of restriction; that the registrant has no intention to resume (or commen use on such goods; and that the restriction sought is a commercially significant one. A restriction is "commercially significant" if its entry would avoid a finding of likelihood of confusion in the proceeding in which the restriction request has been made. Even where entry of the proposed restriction would not avoid a finding of likelihood of confusion, a proposed restriction is "commercially significant" if the evidence adduced at trial (or on summary judgment) establishes clearly and convincingly that the registrant has recited its goods in terms that so overstate either the range of goods registrant actually markets under the registered mark of the trade channels in which registrant's goods move that fairness demands that an appropriate restriction to the registration be entered.
The Ground of Abandonment as a Basis for Restricting the Identification of Goods
*4 Allowing a pleading of "abandonment" to support a claim for Section 18 relief under these circumstances is consistent with both the law of the U.S. Court of Appeals for the Federal Circuit and the underlying purpose for the Trademark Law Revision Act's amendment to Section 18.
In a case involving a U.S. registration issued under Section 44 of the Trademark Act, on the basis of a foreign registration of the mark, the Federal Circuit considered the definition of "abandonment" set forth in Section 45 of the Trademark Act and, in particular, the statutory language that a mark is deemed abandoned "... [w]hen its use has been discontinued with intent not to resume such use." (emphasis added). Imperial Tobacco Ltd. v. Philip Morris Inc., 14 USPQ2d 1390 (Fed.Cir.1990). Because the Section 44 registrant in that case had never used its registered mark in the United States, the statutory definition of "abandonment" as "discontinued" use coupled with a lack of intent to "resume" use did not seem to apply. The Court was unfazed by this anomaly of language. It found that the statutory definition of "abandonment" had to be viewed with some common sense: in the case of a registration issued under Section 44, a claim of abandonment would be established by proof that the owner of the registration had not "commenced" use of its mark after its U.S. registration had issued and had no intent to "commence" use (such lack of intent to commence use having been established, prima facie, by evidence that two years had passed since the issue date of the registration, without any use of the mark).
In an analogous way, the owner of a registration for goods broadly described, who has not commenced use on the full range of goods encompassed by the recitation, may be held to have abandoned its mark, for those goods on which no use has been made, by failing to "commence use" on all such goods and not having "intent to commence use" on such goods.
Finding "abandonment" in these circumstances appears also to fulfill the purposes of the amendment to Section 18: to make registrations conform, as nearly as possible, to marketplace realities and to allow registrations on the register where the only bar to registration is the existence of a registration that overstates the extent of the registrant's use of its mark in commerce.
Applicant's Counterclaim to Limit Opposer's Pleaded Registration
Applicant made a proper pleading of abandonment by its allegation in the answer and counterclaim that opposer is not using its mark "MR. CLEAN" on cleaning products in the industrial and institutional trade channels, that is, in the channels where applicant's "CAPTAIN CLEAN" products are sold. We turn, then, to consider the cross motions for summary judgment on applicant's counterclaim for partial cancellation. Summary judgment is, of course, appropriate in Board proceedings where there is no genuine issue of material fact and where a trial is not likely to produce additional evidence that could reasonably be expected to change the result. Pure Gold, Inc. v. Syntex (U.S.A.) Inc., 739 F.2d 624, 222 USPQ 741, 743 (Fed.Cir.1984).
*5 There is no genuine issue of fact for trial concerning opposer's use of its "MR. CLEAN" mark. Opposer is now using its mark "MR. CLEAN" on cleaning products sold in both (1) ordinary consumer trade channels (e.g., grocery stores, club stores, etc.) and (2) industrial and institutional trade channels. The evidence submitted by opposer in opposition to applicant's motion establishes the extent of opposer's use of its "MR. CLEAN" mark, and applicant has not offered any evidence to raise an issue for trial concerning opposer's use. Applicant's argument is, rather, that, at the time opposer made application to register and at the time opposer's "MR. CLEAN" registration was issued, opposer had not used its mark on cleaners sold in industrial and institutional trade channels; that opposer did not commence use of its mark on cleaners sold in industrial and institutional trade channels until the 1980s; and that, as between opposer and applicant, applicant was the first to use its mark in industrial and institutional trade channels. We are not persuaded by applicant's argument and find that, in the absence of any genuine issue of material fact, opposer is entitled to judgment on applicant's counterclaim to limit (cancel in part) opposer's pleaded registration of its "MR. CLEAN" mark.
In seeking a restriction of opposer's registration under Section 18, applicant is asking, in essence, for an equitable remedy. We must ask, therefore, whether equity demands that, in determining whether to limit opposer's registration, we look to the nature of the use made by opposer as of the time it sought registration of its "MR. CLEAN" mark or, instead, to the use made by opposer as of the time applicant sought to restrict opposer's registration. We believe equity demands that we look to the latter date.
If, in considering the question of restriction of a registration under Section 18, we were to look to the nature of the use made by the registrant as of the time it sought registration of its mark, as opposed to the time a restriction to the registration is sought, we would be injecting into the trademark registration system a strain of uncertainty. Any normal expansion of commerce, in the form of either a new product formulation or a new trade channel for the registrant's goods, would bring with it the question of whether such expansion of trade was protected by the existing registration or whether, to the contrary, the registration was vulnerable to a restriction under Section 18. This is not a result intended by Section 18.
On the other hand, if a registrant is faced in a Board proceeding with a claim of abandonment and a request for Section 18 restriction of its registration, or if a registrant suspects that such a claim may be made in a Board proceeding, that registrant may not defeat a claim of partial abandonment and imposition of a remedy under Section 18 simply by making a defensive, token use of its mark on additional goods or in additional trade channels. Cf. Continental Grain Co. v. Strongheart Products Inc., 9 USPQ2d 1238 (TTAB 1988) (and cases cited there) [nominal use of a mark held insufficient to avoid holding of abandonment, where such use amounted to nothing more than an attempt to prevent use by others].
*6 Here, opposer has, indisputably, used its mark "MR. CLEAN" on all purpose cleaners in consumer trade channels and in industrial and institutional trade channels and has done so since a time prior to applicant's request for restriction of opposer's registration. The recitation of goods in its long-standing registration is "sudsing cleaner, cleanser, and detergent," a term that aptly describes all the products to which its "MR. CLEAN" mark has been applied, irrespective of the trade channels in which the various cleaners are sold.
Thus, the evidence on applicant's summary judgment motion fails to establish the first requisite for a holding of abandonment: that opposer had not, as of the filing date of the request for restriction, commenced using its mark on cleaners sold in industrial and institutional trade channels. Because applicant has failed to establish the non-use by opposer of its mark "MR. CLEAN" on products sold in industrial and institutional trade channels as of that date, opposer is entitled to judgment on applicant's counterclaim for partial cancellation; and we need not reach the question of whether the restriction sought by applicant is a commercially significant one (or more precisely, the question of whether there exists any genuine issue of material fact touching on the commercial significance of the restriction applicant seeks to make its opposer's pleaded registration).
That applicant may have used "CAPTAIN CLEAN" on cleaning products sold in industrial and institutional trade channels from a time prior to opposer's sale of "MR. CLEAN" products in those trade channels is a legally insufficient basis for sustaining the counterclaim for partial cancellation here. We are concerned not with priority of use in industrial and institutional trade channels but with whether opposer has abandoned use of its mark in those trade channels.
Opposer's Claim for Restriction of Any Registration Issued to Applicant
Opposer has moved for partial summary judgment on its claim that applicant's application for registration of its "CAPTAIN CLEAN" mark be restricted to cleaners sold only in the industrial and institutional trade channels. Opposer requests that this restriction to the application be entered before trial of the Section 2(d) claim of priority and likelihood of confusion. As grounds for the Section 18 relief requested, opposer asserts non-use of the "CAPTAIN CLEAN" mark on cleaning products sold in consumer trade channels. [FN3]
The evidence submitted in support of opposer's motion for summary judgment, as noted above, is applicant's acknowledgment, in answer to one of opposer's interrogatories, that it has not used its "CAPTAIN CLEAN" mark on cleaning products sold in consumer trade channels. We decline to enter, at this stage of proceedings, partial summary judgment in opposer's favor on its claim for restriction of applicant's application. While there appears no genuine issue of material fact that applicant has not used its mark "CAPTAIN CLEAN" on cleaners sold in consumer trade channels, there remains an issue of fact concerning the commercial significance of the restriction requested. Based on the evidence adduced by the parties in connection with opposer's Section 2(d) claim, the Board may find: (1) confusion is likely in the contemporaneous use of "MR. CLEAN" and "CAPTAIN CLEAN" on the parties' respective goods (in which case opposer's claim for partial restriction of the application will be dismissed as moot) or (2) confusion is not likely in the contemporaneous use of the parties' marks (in which case the Board will consider whether the evidence submitted at trial supports a finding that the restriction opposer seeks is one with commercial significance, i.e., whether "all purpose detergent" is, in the marketplace, an unreasonably broad term for applicant's detergents, which are sold only in institutional and industrial trade channels).
*7 IT IS ORDERED: Applicant's motion for summary judgment on its counterclaim for partial cancellation of opposer's pleaded registration is denied, and opposer's motion for summary judgment on the counterclaim is granted. [FN4] Opposer's motion for partial summary judgment in the opposition is denied. Discovery and trial dates are set in accordance with the accompanying order.
Jeffrey M. Samuels
J. David Sams
Members, Trademark Trial and Appeal Board
FN1. Application Serial No. 73/779,915, filed February 10, 1989.
FN2. Registration No. 658,915, issued February 25, 1958 (combined affidavit under Section 8 & 15 filed; renewed).
FN3. As noted above, the ground of non-use may be asserted in an opposition against an application for registration or in a petition to cancel a registration less than five years old. In these situations, a party is not limited in the grounds it may assert, as is the case where a challenged Principal Register registration is over five years old.
FN4. This decision is interlocutory in nature. Appeal may be taken within two months after the entry of a final decision in the case.
IN EACH INSTANCE, a copy of the transcript of testimony together with copies of documentary exhibits, must be served on the adverse party WITHIN THIRTY DAYS after completion of the taking of testimony. Rule 2.125.
THE PERIOD FOR DISCOVERY TO CLOSE: March 20,
Testimony period for party in position of plaintiff to close May 19, 1992
(opening thirty days prior thereto)
Testimony period for party in position of defendant to close July 20, 1992
(opening thirty days prior thereto)
Rebuttal testimony period to close (opening fifteen days prior September 3,
Briefs shall be filed in accordance with Rule 2.128(a) and (b).
An oral hearing will be set only upon request filed as provided by Rule 2.129.