Trademark Trial and Appeal Board
Patent and Trademark Office (P.T.O.)
*1 BIG BLUE PRODUCTS, INC.
INTERNATIONAL BUSINESS MACHINES CORPORATION
Opposition No. 81,697
April 08, 1991
Before Sams, Hanak and Quinn
Opinion by Hanak
International Business Machines Corporation (applicant or IBM) seeks to register the mark BIG BLUE in block letters for ribbons for typewriters. In its application, IBM claimed that it first used this mark on July 11, 1988.
Big Blue Products, Inc. (opposer) filed a notice of opposition alleging that since long prior to 1988, opposer "has continuously used the trademark BIG BLUE for a wide variety of office equipment and computers," and further alleging that IBM's use of BIG BLUE for typewriter ribbons will deceive purchasers into believing that IBM's typewriter ribbons "emanate from opposer or are in some way approved by, or associated with, opposer." (Notice of Opposition paragraphs 2 and 4).
IBM filed an answer in which it agreed that the contemporaneous use of the trademark BIG BLUE by opposer and by IBM for their respective products is likely to cause confusion. (Answer paragraph 4). However, in its answer, IBM set forth two affirmative defenses either of which, according to IBM, would be sufficient by itself to cause the dismissal of this opposition. First, IBM contends that it is the owner of the mark BIG BLUE, and that "use by opposer of IBM's mark BIG BLUE is an infringement and misappropriation of IBM's rights thereto and is illegal and gives rise to no rights of opposer in said mark. As opposer has no right in or to the mark and name BIG BLUE, the opposition should be dismissed." (Answer paragraph 8). Second, IBM contends that "since the late 1960's the nickname BIG BLUE has been used publicly by the trade, by the news media and by the general public to identify IBM," and hence "IBM's rights in and to its name and mark BIG BLUE are long prior and superior to any claim of rights to said name and mark by opposer." (Answer paragraphs 11 and 23).
This case is now before us on a motion for a summary judgment filed by IBM based on its second affirmative defense. In its brief in support of its motion, IBM acknowledges that it did not begin use of BIG BLUE as a mark for typewriter ribbons until July 11, 1988--a date subsequent to opposer's first use of BIG BLUE in September 1984. Nevertheless, IBM contends that its "rights to the designation BIG BLUE are prior and superior to those of opposer" (IBM's brief page 23) based on the following facts which IBM contends cannot be seriously disputed:
"IBM has long been known by the name BIG BLUE. The origins of the name are obscure. Some account for the BIG BLUE name because of the blue color of IBM's mainframe computers in the 1960's and 1970's. . . . Similarly, no one is quite sure when the BIG BLUE nickname for IBM arose. . . . . Whatever the reason for its origin or the date that BIG BLUE first began to be used to identify IBM, there can be no doubt that IBM is known and is identified as BIG BLUE, both by the trade and the public, now and long prior to September 27, 1984, the date of first use claimed by opposer." (IBM's brief pages 3-4).
*2 In short, IBM contends that while IBM itself did not make use of BIG BLUE until 1988, nevertheless, IBM's rights to BIG BLUE are superior to opposer's based upon "the extensive use by the public, the trade and the news media of the term BIG BLUE to refer to IBM," which use long predates opposer's first use of BIG BLUE in September 1984. (IBM's brief page 18).
In support of its motion for summary judgment, IBM has submitted over 500 articles appearing in a wide array of publications which predate September 27, 1984 (opposer's claimed first use date) and in which the term "Big Blue" is used in association with IBM. In the vast majority of these articles, the term "Big Blue" is used as a trade name and as a synonym for IBM. However, in some of the articles, BIG BLUE is used by the writers in the manner of a trademark to refer to IBM's products, such as in the terms "BIG BLUE products" or "BIG BLUE expansion chassis." [FN1]
Opposer has filed a brief and supporting material in opposition to IBM's motion for summary judgment. In essence, opposer contends that the articles submitted by IBM simply are inadequate "to show that the trade or the public identifies BIG BLUE with any product or service furnished by IBM." (Opposer's brief page 4). Indeed, opposer contends that the record shows that IBM considered the term "Big Blue" to be an objectionable reference to IBM.
Summary judgment is, of course, proper only when there is no genuine dispute as to the material facts, and based upon those facts, the moving (or in some cases, non-moving) party is entitled to judgment in its favor as a matter of law. Sweats Fashions v. Pannill Knitting Co., 833 F.2d 1560, 4 USPQ2d 1793, 1795 (Fed. Cir. 1987). Under this standard, IBM is not entitled to summary judgment on its second affirmative defense. Even assuming for the sake of argument that IBM has established that prior to September 1984, the public and trade had come to understand the term "Big Blue" as another trade name for IBM, IBM has failed to establish that the public or trade had, prior to September 1984, come to view BIG BLUE as a mark for any product or service offered by IBM. IBM certainly has not established that prior to September 1984, the public or trade had come to view BIG BLUE as a trademark for typewriter ribbons emanating from IBM.
This Board has on rare occasions stated that even if a company itself has not made use of a term, it may have "a protectable property right in the term" if the public has come to associate the term with the company or its goods or services. E.g. American Stock Exchange, Inc. v. American Express Co., 207 USPQ 356, 364 (TTAB 1980). [FN2] However, the use by the public of a term to refer to a company and/or its products or services does not mean that the company has obtained rights to exclude others from using the same term for any product or service, and it certainly does not mean that the company has obtained rights to register the term as a mark for any product or service. In other words, if a company does not obtain rights to register a term for all goods or services based upon the company's own use of the term on particular goods or services or as a trade name, then the company certainly does not obtain rights to register the term for all goods or services based upon the public's use of the term to refer to particular goods or services emanating from that company, or to refer to the company itself.
*3 In short, we find that there is a genuine dispute of material fact as to whether prior to opposer's first use of BIG BLUE in September 1984, the public or trade had come to associate BIG BLUE with typewriter ribbons or substantially identical goods emanating from IBM. See American Hygienic Laboratories v. Tiffany & Co., 12 USPQ2d 1979, 1984 (TTAB 1989) ("While applicant has rights in the mark TIFFANY for a wide variety of items such as jewelry, silver, china, etc., the question in this proceeding is which party has prior rights as a result of use of the mark in connection with cosmetics and toiletry products. That is to say, while there is no doubt that applicant has priority of use of its marks on a wide array of products (jewelry, crystal, china, etc.), we do not believe that this use may be relied on to establish priority with respect to the specific cosmetic and toiletry products in its application.").
The Court of Appeals for the Federal Circuit has on a recent occasion considered the concept of "tacking" an earlier use of one mark onto a later use of a very similar mark. In Van Dyne-Crotty, Inc. v. Wear-Guard Corp., ------ F.2d ------, 17 USPQ2d 1866, 1868-69 (Fed. Cir. 1991) it was noted that "tacking" should be permitted only in "rare instances," and then only when the previously used mark was "the legal equivalent of the mark in question or indistinguishable therefrom." See also American Paging Inc. v. American Mobilphone Inc., 13 USPQ2d 2036, 2038 (TTAB 1989), aff'd in unpublished opinion 17 USPQ2d 1726 (Fed. Cir. 1990).
The present case does not, of course, involve the tacking of one term onto a second term. The only term in question is BIG BLUE. However, this case does involve pre-1984 (and for that matter, pre-1988) use by the public of BIG BLUE (with regard to IBM) vis-a-vis IBM's own 1988 use of BIG BLUE in connection with typewriter ribbons. IBM--in order to obtain a registration of BIG BLUE for typewriter ribbons--will be permitted to tack the two uses together only if the earlier public use of BIG BLUE involved typewriter ribbons or "substantially identical" products emanating from IBM. In other words, if the tacking of the use of one mark onto the use of a second mark--for the purposes of obtaining or maintaining a registration--is permitted only when the marks are "legal equivalents" or "indistinguishable," the tacking of the use of a mark for certain goods or services onto the use of the same mark for other goods or services--for the purposes of obtaining or maintaining a registration--should be permitted only when the two sets of goods or services are "substantially identical." [FN3]
To be perfectly clear, it should be noted that even if IBM ultimately is unable to present facts that would permit the tacking of the two uses that would in turn permit IBM to register BIG BLUE for typewriter ribbons, IBM may nevertheless well be able to establish pre-1984 trade name rights in BIG BLUE or pre-1984 trademark rights in BIG BLUE for other office products based upon public or trade usage that would in turn enable IBM to prevent registration of BIG BLUE by opposer. [FN4]
*4 Finally, we feel that it is important to comment upon the first affirmative defense raised by IBM, namely, that opposer's use of "BIG BLUE is an infringement and misappropriation of IBM's rights thereto and is illegal and gives rise to no rights of opposer in said mark." The Board has no jurisdiction to try issues of infringement, although the Board may, in determining priority of use, refuse to give a party benefit of a use that was not lawful. However, IBM will not prevail on this defense merely by establishing, for example, that prior to September 1984, IBM had acquired protectable trade name rights in the term "Big Blue" based upon usage by the public and trade of that term as a nickname (alternate trade name) for IBM. Such prior trade name rights in BIG BLUE residing with IBM would not, by themselves, cause opposer's subsequent use of BIG BLUE to be unlawful. Rather, in order to prevail on this affirmative defense, IBM would have to establish that opposer's adoption and use of BIG BLUE was in bad faith in that opposer intentionally sought to trade on IBM's good will. Cf. 1 J. McCarthy, Trademarks and Unfair Competition, Section 16:2 at pages 726-28 (2d ed. 1984); Selfway, Inc. v. Travelers Petroleum, Inc., 579 F.2d 75, 198 USPQ 271, 274 (CCPA 1978); Person's Co. Ltd. v. Christman, 900 F.2d 1565, 14 USPQ2d 1477, 1480-81 (Fed. Cir. 1990); Action Temporary Services Inc. v. Labor Force Inc., ------ F.2d ------, 10 USPQ2d 1307, 1310 (Fed. Cir. 1989) (". . . [M]ere knowledge of the existence of the prior user should not, by itself, constitute bad faith.") (emphasis in original). Of course, circumstantial evidence can be used to prove intent. 2 J. McCarthy, supra, Section 23:33 at page 146. [FN5]
In summary, IBM's motion for summary judgment based on its second affirmative defense is denied. The case will proceed in accordance with the attached schedule.
J. D. Sams
E. W. Hanak
T. J. Quinn
Members, Trademark Trial and Appeal Board
FN1. IBM has also submitted numerous articles published subsequent to September 27, 1984 in which the term "Big Blue" is used in association with IBM. In addition, one of IBM's attorneys submitted an affidavit stating that she conducted a search of the NEXUS database for articles wherein "IBM" appeared within 25 words of "Big Blue." The search revealed that there were over 4,000 such articles.
FN2. It should be noted that the statement in American Stock Exchange that a company may have "a protectable property right in [a] term even if the company itself has made no use of the term" was dicta inasmuch as in that case, the terms in question--AMEXCO or AMEX--were shown to have been used "by the public and by applicant itself to refer to applicant and its services." 207 USPQ at 364 (emphasis added).
FN3. For purposes of tacking, equating the term "substantially identical goods or services" to the term "legally equivalent or indistinguishable marks" is supported by cases involving the Morehouse defense which have held that "if an applicant had previously registered the same or a substantially identical mark for the same or substantially identical goods opposition cannot be sustained because of a lack of possibility of damage to opposer." Jackes-Evans Mfg. Co. v. Jaybee Mfg. Corp., 481 F.2d 1342, 179 USPQ 81, 83 (CCPA 1973) (emphasis added); Morehouse Mfg. Corp. v. J. Strickland & Co., 407 F.2d 881, 160 USPQ 715, 717 (CCPA 1969); Bausch & Lomb Inc. v. Leupold & Stevens Inc., 1 USPQ2d 1497, 1500 (TTAB 1986).
FN4. This Board and the courts have on occasion employed the term "natural expansion of business" in discussions of whether a junior user's use of a mark on certain goods is likely to cause confusion with a senior user's use of the same or similar mark on noncompeting but related goods. E.g. W.E. Kautenberg Co. v. Ekco Products Co., 251 F.2d 628, 116 USPQ 417, 419 (CCPA 1958); J.C. Hall Co. v. Hallmark Cards, Inc., 340 F.2d 960, 144 USPQ 435, 438 (CCPA 1965). In both W.E. Kautenberg and J.C. Hall, the senior user/opposer prevailed despite the fact that it had not used the mark on goods competitive with those of the junior user/applicant. The court noted that, in one sense, the doctrine of "natural expansion of business" merely represents "another facet of the subject of confusion-in-trade . . . [wherein] the confusion involved, of course, is not a confusion of goods but a confusion of business [origin or source]." W.E. Kautenberg, 116 USPQ at 419; J.C. Hall, 144 USPQ at 438. While the doctrine of "natural expansion of business" can be considered in determining whether a senior user can prevent registration of the same or similar mark to a junior user for related goods, the doctrine does not represent the test to be applied when the senior user himself seeks to register a mark for certain goods by relying on his earlier use of the same mark for "related" (but not "substantially identical") goods.
FN5. Opposer's president has testified that prior to his adoption of BIG BLUE in September 1984, he was unaware that the term was being used by any other entity or "in any other way." (Alnwick deposition 48-49, 121). Moreover, opposer has submitted evidence indicating that since the early 1980s, IBM employees were aware of opposer's use of "Big Blue" as part of opposer's trade name (if not as a trademark), and that IBM raised no objections until 1989. Opposer suggests that if IBM did indeed have prior rights in BIG BLUE, it would have objected to opposer's use of the term (in whatever manner) long before 1989.
On the other hand, IBM has presented evidence which it contends shows that the pre-1984 use of "Big Blue" by the trade and public to refer to IBM was so widespread as to make opposer's claim of lack of knowledge of such use "remarkable," especially because opposer's president has worked in the office equipment industry since 1966. Moreover, IBM notes that opposer, in association with BIG BLUE, uses a stylized "BB" logo formed of horizontal blue lines, and that prior to adopting this form for its BB logo, opposer was aware that IBM depicted "IBM" in similar form.
In any event, the question of opposer's good or bad faith in adopting BIG BLUE (i.e. IBM's first affirmative defense) is a matter not explicitly before us. If it were, we would find that there is a genuine dispute as to material facts which would preclude us from determining on a motion for summary judgment whether in adopting BIG BLUE in 1984, opposer intended to trade on IBM's good will such that opposer's adoption and use was in bad faith and thus unlawful.