TTAB - Trademark Trial and Appeal Board - *1 BAROID DRILLING FLUIDS, INC. v. SUN DRILLING PRODUCTS Cancellation No. 19,865 May 18, 1992

Trademark Trial and Appeal Board

Patent and Trademark Office (P.T.O.)





Cancellation No. 19,865

May 18, 1992


Before Sams, Rice and Quinn






Opinion by Quinn






 Petitioner, on May 23, 1991, filed a petition to cancel Registration No. 1,545,939, issued to respondent on July 4, 1989 for the mark ENVIRO-SPOT for chemical additives for oil and gas well drilling, namely to loosen a drilling pipe from a drilling well bore, in which respondent claimed first use dates of February 1988. Petitioner alleges in its petition that since April 1985 it, or its predecessors, has been using the mark ENVIRO-SPOT in connection with the sale of chemical additives for oil and gas well drilling, namely to loosen pipe from a drilling well bore and that this use has been continuous since at least the summer of 1985. Petitioner claims that in view of the identity of the marks and the identical nature of the goods of the parties, the likelihood of confusion exists and, accordingly, petitioner seeks cancellation of respondent's registration.



 Respondent, in its answer, admits that the respective marks are identical and that the goods with which petitioner is allegedly using its mark are chemical additives for oil and gas well drilling. Respondent also admits that petitioner or its predecessors were using the mark in 1985 and that petitioner is currently using the mark. Respondent then goes on to set forth as an affirmative defense the allegations that since before petitioner's alleged first use of its mark, respondent had created a family of marks comprising the prefix "enviro-" for oil and gas well drilling products and related services, as evidenced by various pleaded registrations, [FN1] and that petitioner's pleaded mark so resembles respondent's registered marks containing this prefix as to be likely to cause confusion, mistake or to deceive. Respondent concludes that it has prior rights in the mark ENVIRO-SPOT by virtue of its prefix "enviro-" family of marks established before petitioner's first use of the identical mark.



 Petitioner filed, on December 2, 1991, a motion for judgment on the pleadings or, in the alternative, to strike respondent's affirmative defense. Petitioner argues that in view of the admissions made by respondent in its answer and its failure to allege a date of use of the mark ENVIRO-SPOT earlier than that claimed in its registration, there is no material issue in dispute and judgment should be granted in favor of petitioner. In the alternative, petitioner requests that the affirmative defense of respondent be stricken, contending that the "family-of-marks defense" is not a proper affirmative defense in a cancellation proceeding and that respondent is in fact using its allegations of a family of marks as an attempt to tack on an earlier date of use of different marks, which are not the legal equivalents of the mark at issue, for purposes of priority. Petitioner asserts that the affirmative defense boils down to respondent's allegations that petitioner's use is confusingly similar to respondent's previously established family of marks. Petitioner argues that the issue in this case concerns not whether petitioner's first use of ENVIRO-SPOT is likely to be confused with an alleged previously established "enviro-" family of marks, but rather which party first used the specific mark ENVIRO-SPOT on similar or related goods.



  *2 Respondent has objected to the motion, contending that it has prior rights to marks comprising the prefix "enviro-" for oil and gas well drilling fluids by virtue of respondent's establishment of a family of marks prior to petitioner's first use of the mark ENVIRO-SPOT, and that the parties' marks are confusingly similar. Respondent goes on to point out that it is not attempting to claim prior rights by "tacking", but rather by prior establishment of a family of marks that is likely to cause confusion with petitioner's mark.



 Petitioner has filed a reply brief.



 We first turn to respondent's motion for judgment on the pleadings. A motion for judgment on the pleadings, which is provided for under Fed.R.Civ.P. 12(c), will be granted only if the moving party clearly establishes that no material issue of fact remains to be resolved and that it is entitled to judgment as a matter of law. For purposes of the motion, all well-pleaded factual allegations of the nonmoving party are assumed to be true and the inferences drawn therefrom are to be viewed in a light most favorable to the nonmoving party. Wright & Miller, Federal Practice and Procedure: Civil 2d § 1368 (1990). As a result, a plaintiff is not entitled to judgment on the pleadings if the answer raises issues of fact that, if proven, would defeat plaintiff's claim.



 Respondent has admitted the similarities of the marks and the goods sold thereunder and petitioner's priority of use insofar as the specific mark ENVIRO-SPOT is concerned. However, respondent has raised, as an affirmative defense, its asserted prior ownership of a family of marks containing the prefix "enviro-". There is a problem with this defense, however, since we believe it is unavailable to a defendant in a Board proceeding.



 We are confronted in this case with the question of whether a defendant in a Board inter partes proceeding can rely upon its asserted ownership of a family of marks as a defense against a plaintiff's intervening common-law rights. [FN2] In discussing the propriety of respondent's affirmative defense in this case the parties have confined their discussion to published cases wherein the plaintiff was asserting a family of marks as part of its claim for relief--none of the cases cited by the parties involves a defendant's assertion of a family-of-marks defense in an attempt to defeat a plaintiff's alleged priority based on prior common-law rights. We recognize that there is a legion of cases involving a family-of-marks claim's being used by a plaintiff as a sword. [FN3] Those cases are to be distinguished, however, from the instant case which involves a defendant's use of a family of marks as a shield. After reviewing the Board's case law on whether a defendant can rely upon its asserted ownership of a family of marks as a defense against a plaintiff's intervening rights, we confess that the Board essentially has taken different views on the propriety of such a defense. We hope in this opinion to clarify the Board's current view and the reasons therefor.



  *3 There is a line of cases wherein the Board has nodded with approval, at least implicitly, at the availability of an affirmative defense grounded on prior ownership of a family of marks as against a plaintiff's intervening use. See: Victor Comptometer Corp. v. Shakespeare Co., 184 USPQ 634, 636 (TTAB1974); Combustion Engineering, Inc. v. Thiem Corp., 185 USPQ 52, 54 (TTAB 1974); DAP, Inc. v. Flex-O-Glass, Inc., 196 USPQ 438, 442-443 (TTAB1976); and Warnaco, Inc. v. Adventure Knits, Inc., 210 USPQ 307, 314 (TTAB1981).



 The DAP case is illustrative of the view that a defendant can assert ownership of a family of marks as a defense against a plaintiff's intervening use. In DAP, the applicant was attempting to register the mark FLEX-O-GLAZE for break-resistant plastic in sheet form, with applicant's claiming first use of this mark in November, 1971. Registration was opposed on the ground of likelihood of confusion with the opposer's previously used and registered mark FLEXIGLAZE for a glazing compound. After denying the essential allegations of the opposition applicant went on in its answer to affirmatively allege that it owned a family of "FLEX-O-" marks and registrations therefor including, among others, FLEX-O-GLASS, FLEX-O-FILM, FLEX-O-PANE, FLEX-O-PLASTIC and FLEX-O-CRYLIC for products similar to those sold under the mark FLEX-O-GLAZE; that applicant's first use of a mark in its family of "FLEX-O-" marks predated opposer's first use by several years; that FLEX-O-GLAZE was an extension of applicant's family of "FLEX-O-" marks; and that the public would associate the mark sought to be registered with applicant and its family of marks and not with opposer. The record included a status and title copy of opposer's pleaded registration as well as evidence of opposer's continuous use of the pleaded mark since 1955.



 The Board noted that the question of priority is not generally involved in an opposition where the opposer is the owner of a subsisting registration, citing the case of King Candy Co. v. Eunice King's Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108 (CCPA1974). [FN4] The Board nevertheless went on to consider the merits of applicant's family-of-marks defense against opposer's claim of priority. The Board stated as follows:





   But, in any event, opposer's use of the mark "FLEXIGLAZE", as revealed by the record, antedates applicant's adoption and use of "FLEX-O-GLAZE" by many years. This logically leads to applicant's affirmative pleading that it owns a "family" of marks characterized by the prefix "FLEX-O" which had its origin prior to opposer's use of "FLEXIGLAZE" and that, notwithstanding applicant's subsequent adoption and use of "FLEX-O-GLAZE", it was an additional offspring of the "family" and thereby entitled to rely on the early members of the "family" for its existence and registration. In essence, the "family" of marks doctrine expressed by applicant is bottomed on the theory that applicant was in possession of a "family" of "FLEX-O" marks at the time of opposer's adoption and use of "FLEXIGLAZE" and that, by reason thereof, any association of the mark "FLEXIGLAZE" or, in fact, of any mark bearing a similar prefix including, of course, the mark "FLEX-O-GLAZE", must necessarily reside in applicant. Thus, according to applicant, opposer is in no position to claim that it would be damaged by the registration sought herein.

    *4 It appears that applicant's entry into the field of acrylic sheeting for use on windows, storm doors, and the like was a natural outgrowth of the technology in this field. That is, it is a natural expansion to move from oil cloth to plastic film and then to acrylic sheeting, all products designed to perform the same or similar functions. And since applicant has used the mark "FLEX-O-GLASS" on both the oil cloth and plastic sheeting, if applicant had used "FLEX-O-GLASS" for its acrylic sheeting, a viable argument could have been made for tacking on to this latest use of "FLEX-O-GLASS" the earlier uses thereof on different yet related products. But, applicant chose a different mark, "FLEX-O-GLAZE" for its acrylic sheets so that its contention as to opposer's claim of damage must turn on whether applicant possesses a "family" of marks and, more specifically, did such a "family" exist when opposer began to market its "FLEXIGLAZE" glazing material in 1955. If not, there is the problem of "intervening rights" which could seem to preclude the application of the "family" doctrine against opposer. [footnote omitted].

DAP, Inc., supra at 442-443. Although the Board ultimately found that the record was insufficient to establish a family of marks owned by the applicant, the Board appeared to leave open the possibility of such a defense, so long as an applicant's family of marks is in existence at the time of the opposer's intervening first use.



 In other cases, the Board has implied that a family-of-marks defense is not available against a plaintiff's intervening rights. See: National Distillers Corp. v. Industrial Condenser Corp., 184 USPQ 757, 760 n. 8 (TTAB1974) ["... applicant's ownership, use, and registrations of marks other than MULTIFILM cannot aid applicant's right of registration herein even under the theory of a 'family of marks' in view of opposer's intervening rights in MULTIFILM for its goods acquired prior to applicant's use of MULTIFILM and probably before applicant's 'gathering of the clan.' "]. See also: The Wella Corporation v. Clairol Incorporated, 169 USPQ 251 (TTAB1971).



 The Board most recently grappled with this issue in the case of Plus Products v. Medical Modalities Associates, Inc., 217 USPQ 464 (TTAB1983). In that case the applicant asserted, as part of its affirmative defenses, that the opposer knew or should have known of the applicant's family of marks, and that the opposer acquiesced to the applicant's use of its family of marks such that the opposer should not be permitted to prevail against a new member of the family sought to be registered. The Board opined as follows:

   .... Indeed, the doctrine of a family of marks seems of little use to the party in position of defendant. The doctrine usually has its application in situations where a plaintiff asserts that prior to defendant's first use of its mark in question, plaintiff established a family of marks that share a certain characteristic and that, because of the nature of defendant's mark, purchasers familiar with plaintiff's family of marks would believe the defendant's mark is but another member of that family. Thus, the doctrine of family of marks generally has application when it is asserted by one with priority of use....

*5 Id. at 465, n. 8.



 In each of the cases cited above, the Board was able, in effect, to avoid directly confronting the merits of the defense presently before us because either the defendant failed to prove that it owned a family of marks [FN5] or the defendant's family of marks was not established until a time after the plaintiff's first use. [FN6]



 In the present case we are not asked to evaluate the merits of respondent's defense grounded on the alleged ownership of a family of marks, that is, to determine (i) whether respondent owns a family of "ENVIRO-" marks and, if so, (ii) whether the family existed at the time of petitioner's intervening use. Nonetheless, at this early pleading stage, we are obliged to consider whether, in the first instance, the defense is even available to a defendant in a Board proceeding. We find that the defense is unavailable. Our reasons follow.



 At the outset, we view the Board's prior, and somewhat inconsistent, pronouncements on whether a defendant can rely upon its ownership of a family of marks as a defense against a plaintiff's rights as mere dicta. We further note, quite frankly, that the opinions fail to set forth any compelling analysis on this matter. As indicated above, in each of the prior cases, the defendant failed either to establish a family of marks or that the family existed at the time of the plaintiff's intervening first use. Moreover, in each of those cases, the plaintiff owned a registration. Since, in each instance, the defendant failed to file a counterclaim, priority was not an issue to be adjudged. See: King Candy Co., Inc., supra. Rather, in light of the ownership of valid registrations by each of the plaintiffs, the Board's remarks regarding priority were gratuitous and do not preclude us from considering the availability of ownership of a family of marks as a defense against a plaintiff's intervening common-law rights.



 Section 2(d) of the Act prohibits the registration of "a mark which so resembles a mark registered in the Patent and Trademark Office, or a mark or trade name previously used in the United States by another and not abandoned" as to be likely to cause confusion. In this connection, it is clear that a plaintiff can rely upon a family of marks in pursuing a claim of likelihood of confusion. The plaintiff pleads that it has a family of marks, each mark containing the family "surname." The plaintiff then relies upon this family of marks in contending that the defendant's mark, which includes the family "surname", is confusingly similar to the entire family of marks. [FN7] A plaintiff asserting a cause of action under Section 2(d) essentially can rely upon any mark or marks as to which it can assert its prior use (or its ownership of a registration), coupled with an allegation of likelihood of confusion that is not wholly without merit. [FN8]



 The issue under Section 2(d) is whether applicant's mark sought to be registered, or respondent's mark, the registration of which is sought to be cancelled, so resembles plaintiff's registered and/or previously used mark or marks as to be likely to cause confusion. Thus, the fact that a plaintiff may rely upon any confusingly similar mark which it has either registered or previously used, is to be contrasted with the fact that a defendant, whose sole mark in issue is its mark sought to be registered or its mark sought to be cancelled, can rely upon only its rights in that mark, except in very limited situations.



  *6 One situation involves a defendant's claim that it already owns a substantially similar registered mark for substantially similar goods and/or services such that the second registration (or second registration sought) causes no added injury to the plaintiff. See: Morehouse Manufacturing Corp. v. J. Strickland & Co., 407 F.2d 881, 160 USPQ 715 (CCPA1969).



 A second situation involves a defendant's attempt to defeat a plaintiff's priority of use claim by virtue of the defendant's earlier use of a mark which is the legal equivalent of defendant's involved mark for the same or similar goods. This latter situation involves the concept of "tacking." See: Van Dyne-Crotty Inc. v. Wear-Guard Corp., 926 F.2d 1156, 17 USPQ2d 1866 (Fed.Cir.1991), aff'g 18 USPQ2d 1804 (TTAB1990); and American Paging Inc. v. American Mobilphone Inc., 13 USPQ2d 2036 (TTAB1989), aff'd unpublished 17 USPQ2d 1726 (Fed.Cir.1990). These cases hold that a party seeking to tack on its use of an earlier mark to its use of a later mark may do so only if the earlier mark is the legal equivalent of the mark in question or indistinguishable therefrom, and would be considered by purchasers as the same mark. For purposes of tacking, two marks are not necessarily legal equivalents merely because they are considered to be confusingly similar. Tacking of an earlier use of one mark onto the later use of a very similar mark, for purposes of priority, has been permitted only in "rare" instances. 1 Gilson, Trademark Protection and Practice, supra at § 3.03.



 To allow a defendant to plead and prove as a defense against a plaintiff's intervening common-law rights that it owns an earlier family of marks would create, at least in our minds, an unacceptable loophole to the stringent standards applicable to the two situations set forth above. [FN9] The loophole would be unacceptable because, as noted above, the priority-of-use issue under Section 2(d) (when priority of use is in issue) is whether the defendant's use of its mark sought to be registered, or the registration of which is sought to be cancelled, precedes the plaintiff's use of plaintiff's pleaded mark(s), not whether the defendant has priority of use of another mark or marks which the plaintiff's mark(s) so resembles as to be likely to cause confusion. Thus, we must narrowly construe the availability of defenses grounded upon ownership of other earlier-used and/or registered marks.



 Accordingly, the sole issues in this case are which party was the first to use the specific mark ENVIRO-SPOT and whether or not respondent's specific mark ENVIRO-SPOT under attack is confusingly similar to petitioner's identical mark. See: American Hygienic Laboratories Inc. v. Tiffany & Co., 12 USPQ2d 1979, 1984 (TTAB1989). While respondent assertedly may have priority of use of a family of "enviro-" marks on similar goods, we do not believe that this use can be of benefit to respondent to establish superior rights to the specific mark ENVIRO-SPOT in question. The fact that respondent may own other registered marks, including a family of marks, is irrelevant unless, of course, respondent can plead and prove that it owns a mark or marks meeting the strict tests set out above. Respondent has not so pleaded.



  *7 Our decision to preclude a defendant from claiming ownership of a family of marks as a defense against a plaintiff relying on its intervening common-law rights creates no substantial prejudice to that party. While the defendant might lose the battle before the Board, the defendant could conceivably file a civil action against the plaintiff. In the civil action, the defendant before the Board, now a plaintiff in the civil action, could rely upon its alleged prior family of marks and obtain injunctive relief against the opponent's intervening use, thereby winning the war. Thus, a party unable to claim a family-of-marks defense for priority nonetheless has an adequate remedy in a court with appropriate jurisdiction. Moreover, if the plaintiff were ever to file an application to register, the defendant could file an opposition thereagainst, relying on its asserted ownership of an earlier family of marks. Cf. American Hygienic Laboratories, id.



 In view of the above, petitioner's motion for judgment on the pleadings is granted. [FN10] The petition for cancellation is dismissed.



J.D. Sams



J.E. Rice



T.J. Quinn



Members, Trademark Trial and Appeal Board



FN1. Respondent claims prior use of the following registered marks: Registration No. 1,336,236 of the mark ENVIRO-LUBE for "lubricants used in oil well drilling," issued May 21, 1985; Registration No. 1,360,018 of the mark ENVIRO-KLEAN 76 for "detergents, degreasing agents and dispersants for use in oil and gas well drilling," issued September 17, 1985; Registration No. 1,361,273 of the mark ENVIRO-KLEAN CL for "detergent added to drilling fluid to wash oil from drill bits and to improve fluidity of drilling fluid," issued September 24, 1985; and Registration No. 1,409,897 of the mark ENVIRO-MUD for "providing consultation and advice to oil well drillers concerning the selection and use of drilling fluids and chemical additives for drilling fluids," issued September 16, 1986. Respondent also claims ownership of the following registered marks which it claims were used subsequent to petitioner's first use: Registration No. 1,451,627 of the mark ENVIRO-DEFOAM for "chemical additives for oil and gas well drilling, namely foam reducing agents," issued August 11, 1987; and Registration No. 1,452,736 of the mark ENVIRO-DRIL for "chemical additives for oil and gas well drilling, namely shale encapsulators and borehole stabilizers, and lubricants used in oil and gas well drilling," issued August 18, 1987.



FN2. For a general discussion of the family-of-marks argument, see 2 J.T. McCarthy, Trademarks and Unfair Competition, § 23:19 (2d ed. 1984); 1 J. Gilson, Trademark Protection and Practice, § 5.04 (1974).



FN3. See, e.g.: Marion Laboratories Inc. v. Biochemical/Diagnostics Inc., 6 USPQ2d 1215 (TTAB1988).



FN4. The Board also recognized that any challenge to an assertion of prior rights based on ownership of a subsisting registration must be by way of a petition to cancel the registration (that is, a counterclaim to cancel in these circumstances). The DAP case is peculiar in that, notwithstanding the absence of a counterclaim to cancel the opposer's pleaded registration, the Board proceeded to consider the merits of applicant's claim of priority. Applicant's priority claim, raised as an affirmative defense, constituted a collateral attack on opposer's registration and, in our minds, should not have been entertained by the Board in the absence of a counterclaim. See: Trademark Rule 2.106(b)(2)(ii); and Textron, Inc. v. The Gillette Co., 180 USPQ 152 (TTAB1973).



FN5. In most cases, a party's claim of a family of marks fails for lack of proof. See: McCarthy, Trademarks and Unfair Competition, supra ["The family of marks argument is often raised but infrequently bears fruit."]; Gilson, Trademark Protection and Practice, supra ["The argument that the use of a number of trademarks having the same prefix, suffix, or other component creates protectible rights against an otherwise dissimilar mark having the same component has had a checkered career."].



FN6. A former Board member, writing in 1977 on the matter of the family of marks theory in general, viewed the ownership of a family of marks as a defense as follows:

   Occasionally an applicant or registrant will predicate a defense to an opposition or cancellation on the theory that the mark under attack fits into a family of marks already possessed by the defendant. In general, the Board has not been hospitable to such a defense on the ground that, if there is a likelihood of confusion between the defendant's new mark and that of the plaintiff, as applied to their respective goods or services, the existing rights of the plaintiff cannot be jeopardized. (footnote citing The Wella Corp. v. Clairol Inc., 169 USPQ 251 (TTAB1971) ("The [family of marks defense] cannot be invoked to preclude a prior user, much less a user, as here, prior to any of the marks said to constitute said 'family,' from seeking to prevent the registration of a mark which it believes to be in conflict with its previously used and registered trademark. See: General Mills, Inc. v. The Morrison Milling Co., 157 USPQ 532 (TTAB1968). That is, the sole issue herein is whether or not the specific mark ... for which applicant presently seeks registration is confusingly similar to opposer's ... mark.") It is incumbent upon one seeking to preserve and thereafter extend a family of marks to be vigilant and alert against the invasion of the family domain. An alleged addition to a family will not justify an encroachment on intervening rights which have been theretofore tolerated. If the argument is that the plaintiff's registration is improper because it invaded the defendant's family of marks, a counterclaim for cancellation must be pleaded because a collateral attack on the validity of a plaintiff's registration is otherwise improper. (Footnote omitted). Of course, if the adverse party has rights in its mark from a date prior to the alleged establishment of the family of marks sought to be relied upon, the subsequent founding of a family will not justify the addition to the family of a new mark which is too close, as a whole, to the mark of the adverse party when the goods or services are the same or are related.

D.J. Kera, Tips from the TTAB: Family of Marks, 67 TMR 419, 422-423 (1977).



FN7. It has been posited by one commentator that the family-of-marks argument does not exempt a mark from the standard tests of trademark protection and that "[i]n most cases, use of the 'family' argument appears to add little, if anything, to a straight argument of a likelihood of confusion between plaintiff's marks and defendant's mark." McCarthy, Trademarks and Unfair Competition, supra at § 23:19.



FN8. This extends, of course, to defendants as counterclaim plaintiffs if they seek to cancel a pleaded registration. That is to say, a defendant/counterclaim petitioner may rely on a family of marks for purposes of the counterclaim since such party is, in effect, a plaintiff in a cancellation action.



FN9. To the extent that a defendant could establish an earlier "family" with only two family member marks having the common "surname," it is all the more reason why a "family-of-marks defense" should not be available. If a defendant is unable to tack because its one earlier mark is not the legal equivalent of its mark in question, but the defendant would be allowed to tack by virtue of a two-member family of earlier marks, it seems to us that the mere existence of one more "family" member mark would create a windfall for that party against any good-faith intervening user.



FN10. In view of our decision, petitioner's alternative motion to strike is rendered moot.


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