Trademark Trial and Appeal Board
Patent and Trademark Office (P.T.O.)
*1 CORPORATE FITNESS PROGRAMS, INC.
WEIDER HEALTH AND FITNESS, INC. ASSIGNEE OF BEN WEIDER
April 10, 1987
Hearing: September 16, 1986
Opposition No. 67,868, to application Serial No. 292,633, filed January 12, 1981.
Seed & Berry for Corporate Fitness Programs, Inc.
Blakely, Sokoloff, Taylor & Zafman for Weider Health and Fitness, Inc.
Before Rice, Rooney, Cissel
An application has been filed by Ben Weider, and subsequently assigned to Weider Health and Fitness, Inc., to register the mark 'SHAPE' for a magazine relating to physical fitness and exercise, [FN1] use (through a licensee) since December 8, 1980 being asserted. In its application, applicant claimed ownership of Registration No. 1,001,800 issued January 14, 1975 (Section 8 affidavit accepted) for the mark 'SHAPE-UP' for a magazine.
Registration has been opposed by Corporate Fitness Programs, Inc. essentially on the ground that applicant's mark 'SHAPE', as applied to applicant's magazine, so resembles the mark 'SHAPE', previously used by opposer, through its predecessors in interest, as a trade name and trademark in connection with newsletters, questionnaires, information notebooks, T-shirts, posters, and other printed materials, as to be likely to cause confusion, deception, or mistake. The notice of opposition also includes allegations that applicant's first use of the mark 'SHAPE' on magazines was actually subsequent to the date of first use asserted in applicant's application; that the specimen submitted with applicant's application is insufficient to support a registration because it is merely promotional material and not a specimen showing the mark 'SHAPE' as actually used by applicant; that applicant has abandoned any alleged rights which it may have had in the 'SHAPE' mark 'by improper usage by and licensing to others, including Shape Magazine, Inc.'; and that applicant has, deliberately and with fraudulent intent, improperly used the registration symbol 'R in a circle' with its mark sought to be registered. [FN2]
Applicant, in its answer to the notice of opposition, has in effect denied all of the foregoing allegations. In addition, applicant has asserted affirmatively the reasons why it believes that there is no likelihood of confusion, as well as a claim that applicant is entitled to tack on its use of its registered mark 'SHAPE-UP' for magazines to its use of 'SHAPE', per se, for magazines, and hence that it is applicant, not opposer, which has priority of use.
The record consists of the pleadings; the file of applicant's involved application; five discovery depositions, with exhibits, taken and made of record by opposer (the parties stipulated that two of these depositions, namely, the depositions of John Cermak and Daniel Friedman, could be used by opposer as testimony depositions); five testimony depositions, with exhibits, in behalf of opposer; and two testimony depositions, with exhibits, in behalf of applicant. [FN3] Both parties have briefed the case and were represented at the oral hearing requested by applicant.
*2 Opposer's predecessor, Safeco Corporation, owned 100% of Safeco Life Insurance Company (hereafter, the term 'Safeco' is used to refer to Safeco Corporation and its various related companies collectively). Prior to November of 1978, Safeco had established for its employees an in-house health program, the purpose of which was to encourage the employees to develop healthier lifestyles. The program, which included a health hazard appraisal and a notebook containing information on diet, exercise, smoking, etc., was known by the name 'SHAPE', an acronym for 'Safeco Health Action Plan for Employees.' In November of 1978, the program was expanded to include a physical fitness newsletter entitled 'SHAPE Write-Up', with the term 'Write-up' being included in the title to distinguish the newsletter from the notebook.
The newsletter was originally distributed only to Safeco employees, including both employees who worked in the Safeco home office in Seattle, Washington and also those who worked in the various Safeco branch offices located around the United States (approximately 8,000, i.e., most, of Safeco's employees were located outside the State of Washington). About 30% of the Safeco employees, namely, those who were interested in the 'SHAPE' program, got the newsletter. Around May of 1979, the format of the newsletter was changed from an in-house format to one that was not so limited, and the newsletter began to be distributed both to individual subscribers who were not Safeco employees, and to companies who bought the newsletter for their employees. It is not clear exactly how many of the newsletters sent to companies bore the title 'SHAPE Write-up'. According to the testimony of Ms. Carol Garzona, founder and editor of the newsletter for Safeco, some of the companies were 'camera negative' clients who put their own names, rather than the title 'SHAPE Write-up', at the top front of their copies of the newsletter. Nevertheless, the evidence of record indicates that these copies did bear the mark 'SHAPE WRITE-UP' at the bottom of each page, as well as in the publication notice, which appeared at the end of each copy, and indicated publication by Safeco (through one of its related companies). Other companies used copies which bore the 'SHAPE Write-up' title and, in the upper right-hand corner of the copy, the additional notation 'Compliments of' together with the company's or entity's name.
In August of 1981, Ms. Garzona left Safeco to take the position of editor of a newsletter put out by the Bob Hope International Heart Research Institute. She was allowed to take Safeco's corporate newsletter clients with her in exchange for an agreement that she would continue to write the 'SHAPE Write-up' newsletter at no cost through December of 1981. After October of 1981, the corporate clients received the Hope Institute newsletter. The individual subscribers, who had been retained by Safeco, continued to receive the 'SHAPE Write-up' newsletter.
In December of 1981, opposer purchased the 'SHAPE' program, and the 'SHAPE Write-up' newsletter. [FN4] Mr. Donald Scott, who owns half of the stock (and is a principal officer) of opposer, testified that when opposer took over the 'SHAPE Write-up' newsletter, the newsletter press run was about 16,000 (i.e., for the subscribers retained by Safeco, as opposed to those taken by Ms. Garzona); that the newsletter was being distributed all over the United States; and that some of the subscribers were individuals, while others were corporate or group subscribers, including Safeco, among others. By July of 1985, when opposer took its testimony, the 'SHAPE Write-up' newsletter press run had grown to slightly more than 23,000. [FN5] The principal subscribers to the newsletter are corporations, which typically order multiple copies of the newsletter for distribution to their employees. The list of subscribers also includes individuals. Over 80% of the subscribers receive the newsletter only; that is, they are not participants in the 'SHAPE' program. Opposer does not now, and has no plans to, sell its newsletter at newsstands, or to sell advertising therein.
*3 Opposer has promoted its newsletter through advertising in the Seattle Business Journal newspaper, through promotional brochures directed to employers, and through exhibit booths and/or newsletter give-away activities at conventions and trade shows (such as those of the American Subcontractors Association and American Fitness in Business), health fairs, exercise classes, physical fitness lectures, etc.
The record also shows that Safeco distributed an iron-on decal for T-shirts that bore the mark 'SHAPE'. Opposer has distributed (both sold, and given away at health and fitness fairs and conventions) T-shirts (about 400) and sweat shirts (25-50) bearing the mark 'SHAPE', and has also used the mark on materials relating to the 'SHAPE' program, and on the side and license plate of the company van. Opposer has some of the Safeco 'SHAPE' iron-on decals on hand but plans to discontinue them because they include a rainbow design that once was part of the 'SHAPE Write-up' logo but is no longer in use.
Applicant is one of a number of entities established by Joseph and Ben Weider in connection with their magazine publishing business. [FN6] In 1973, applicant brought out a new magazine, entitled 'SHAPE UP', which dealt with physical fitness, including body building and nutrition, and was intended for both men and women. Seven issues of the magazine were published over a period of a year and half. The distribution figure for the magazine was approximately 80,000 copies an issue. [FN7] The magazine was not as successful as applicant had hoped, and was discontinued around the end of 1974.
When the 'SHAPE UP' magazine was discontinued, it was not applicant's intention to give it up permanently, but rather to do further research so that the magazine could be relaunched in an improved format that would be more successful. After overcoming intervening financial setbacks, applicant began to plan, in 1978 or 1979, for publication of the new magazine. It was decided that the new magazine would be a women's magazine dealing with physical fitness, including body building. Among the titles considered by applicant for the new magazine were the names 'SHAPE', 'SHAPE UP', 'IN SHAPE', and 'GREAT SHAPE'. Based on the results of a shopping mall consumer preference survey, and the fact that one-word names were then in vogue for magazines, applicant chose the name 'SHAPE'. [FN8]
In the latter part of 1980, applicant prepared four-page issues, known in the trade as 'promotional pieces,' of two different magazines. One of them, dated December 1, 1980, was entitled 'SHAPE UP', while the other, dated December 7, 1980, was entitled 'SHAPE'. Four hundred copies of each of the issues were sent to applicant's national distributor, Kable News Company. The copies were accompanied by a letter, dated December 8, 1980, to Jack Cermak, the account executive for Kable News who had responsibility for the Weider account. The letter stated, in part: 'Enclosed please find 400 copies each (800 total) of SHAPE and SHAPE UP magazine, which have to appear on the newsstands tomorrow as per instructions of our patent attorneys.' Another letter relating to these same issues was written to Jack Cermak by Christine MacIntyne, the editor of 'SHAPE' magazine. The letter, dated December 9, 1980, read in part as follows:
*4 I am sorry that we had to send SHAPE MAGAZINE in such an unprofessional design and manner. Legal requirements dictated that we proceed with this line of action in order to save the trademark, SHAPE UP. Additionally, our lawyer advised us that it would be wise to set a precedent for SHAPE by publishing it before the date of another proposed magazine on fitness called IN SHAPE. I want to take this opportunity to bring you up to date on the actual progress of SHAPE--the real SHAPE Magazine, not the one which we sent to you.
We have delayed the date of publication for several reasons:
1. We feel that quality outweighs speed in terms of publishing SHAPE Magazine. . . . With this delay, we are buying one more factor that I think you will appreciate. When we come out on the newsstands, we plan to have a second magazine at the printer and a third magazine ready to go to the printer. We want to avoid missing issues, and if we start out behind because we've tried to hurry, we will never catch up.
We have the photos for the first two covers and are preparing the copy of the table of contents. We are planning to publish our first magazine with a May cover date and have it on the newsstands by the last week in April.
I would have liked to have written to you sooner; however, many issues had not been settled, such as the legality of our name, etc. and I did not want to appear too tentative. . . .
The reasons for these shipments of the promotional piece issues bearing the marks 'SHAPE UP' and 'SHAPE' were described by applicant's president, Allan Dalfen, on pages 15-16 of his discovery deposition, as follows:
Q. Did you feel this December 7, 1980 edition of SHAPE magazine was a bonafide [sic] edition of the magazine?
A. Yes. It was--it served its purpose.
Q. Which was?
A. To register the name SHAPE. We also did for SHAPE UP at the same time.
Q. Why did you do it for SHAPE UP at the same time?
A. To continue the life of our mark. We were advised by our legal counsel that there were certain times that a mark stays alive, and we knew we were coming up with a new magazine. We just weren't sure of the name so we tried SHAPE UP and we tried--we wanted to continue SHAPE UP. We tried SHAPE and even then we weren't sure would that be the name. We also were thinking of GREAT SHAPE, and we hired . . . Kelly Girls and we went into shopping centers and got their opinions. . . .
Q. Do you remember what your circulation was for this initial December 7 SHAPE magazine?
A. Approximately 400,000--no, 400; I wish. 400 to 450.
Q. Was that a typical circulation for a monthly magazine?
A. Well, some magazines don't do that well, but for us, again, that was not the purpose to--we wanted to register the name SHAPE and we wanted to maintain our license. There is no other way I can define it than that was the purpose, and it was a legal purpose and we've accomplished our legal purpose from what we wanted to do. The government has a--the trademark office accepted it because they continued our license on SHAPE UP afterwards.
*5 Jack Cermak of Kable News testified that he didn't recall what he did with the copies of the December 1980 'SHAPE' and 'SHAPE UP' promotional piece issues; that he probably would have thrown away the 'SHAPE UP' copies, because applicant wasn't putting out a 'SHAPE UP' magazine; but that the 'SHAPE' copies could have been mailed out to wholesalers used by Kable News, because 'SHAPE' magazine was being discussed as a future product. [FN9] He also testified that Kable News typically used such promotional issues to promote a new or an existing magazine by mailing them to chain buyers, wholesalers, and its field force. Daniel Friedman, President of Kable News, also testified to this traditional use of such promotional issues in the magazine field, adding that the purpose of the practice was to introduce new magazines or to get retailers to agree to carry existing ones.
The first, or premiere, issue of 'SHAPE' magazine bore a date of September 1981 and went on sale in July of that year. Approximately 140,000 copies of the issue were actually sold. There was no October issue, because Kable News had decided that the first two issues should be left on the newsstands longer than usual to create greater visibility for the new magazine. However, another issue was published in November 1981, and the magazine has been published monthly ever since.
'SHAPE' magazine is distributed throughout the United States. About 75% of 'SHAPE' magazine sales are single copy sales through newsstands, including the magazine counters in supermarkets, drug stores, health stores, and the like, and the remainder are subscription sales. Applicant prints between 850,000 and 950,000 copies of 'SHAPE' magazine a month, depending on the month; approximately 550,000 of the magazines are actually sold each month (unsold copies are either destroyed or returned to applicant).
It is clear from the record that 'SHAPE' magazine has been successful; that it has been extensively promoted through a variety of media; and that applicant has established substantial good will in the mark.
We turn first to the issue of priority of use. Opposer's evidence is sufficient to establish that opposer, through its predecessor, has continuously used the mark 'SHAPE Write-up' in connection with its newsletter since November of 1978. [FN10] Applicant argues, however, that it is entitled to tack on to its use of the mark 'SHAPE' for magazines its earlier use of the mark 'SHAPE UP' for magazines, and hence that it has priority of use. We do not find this argument to be persuasive.
It is settled that the owner of a mark may change the display, or form, of the mark at any time, without working an abandonment, provided that both forms of the mark create the same, continuing commercial impression; in such a situation, the rights acquired through use of the earlier form inure to the later form. See Ilco Corp. v. Ideal Security Hardware Corp., 527 F.2d 1221, 188 USPQ 485 (CCPA 1976) [use of 'HOME PROTECTION HARDWARE' cannot be tacked on to use of HOME PROTECTION CENTER']; Feed Flavors Inc. v. Kemin Industries, Inc., 214 USPQ 360 (TTAB 1982), affirmed in unpublished opinion, Appeal No. 82-605 (CAFC April 7, 1983); and Humble Oil & Refining Co. v. Sekisui Chemical Co., 165 USPQ 597 (TTAB 1970). As stated by the Board in the latter case, at pages 603-604:
*6 It is settled that a person may change the display of a mark at any time because whatever rights he may possess in the mark reside in the term itself rather than in any particular form or arrangement thereof. [citation omitted.] The only requirement in these instances is that the mark be modified in such a fashion as to retain its trademark impact and symbolize a single and continuing commercial impression. That is, a change which does not alter its distinctive characteristics represents a continuity of trademark rights. Thus, where the distinctive character of the mark is not changed, the mark is, in effect the same and the rights obtained by virtue of the earlier use of the prior form inure to the later form.
In the present case, applicant's earlier mark 'SHAPE UP' and its current mark 'SHAPE' are obviously different designations which have different meanings and create different commercial impressions. In this regard, we note that the noun 'shape' is defined in Webster's New World Dictionary (Second College Edition, 1982) as '1. that quality of a thing which depends on the relative position of all points composing its outline or external surface; physical or spatial form 2. the form characteristic of a particular person or thing, or class of things 3. the contour of the body, exclusive of the face; figure . . .,' while the term 'shape up' is listed as a colloquial term meaning '1. to develop to a definite form, condition, etc. 2. to develop satisfactorily or favorably 3. to do what is expected of one, behave as required.'
Moreover, there was no continuity of use of the two marks by applicant. As indicated above, the mark 'SHAPE UP' was used on seven magazine issues published over a period of a year and a half during 1973 and 1974. During all of the years since that time, applicant has never again published any magazine under the mark 'SHAPE UP' except for the four-page promotional issue which was published, along with a four-page promotional issue of 'SHAPE' magazine (the first use made by applicant of the mark 'SHAPE'), in December 1980. It is manifest from the record that these promotional issue uses were both token uses, made in the case of 'SHAPE UP' for the purpose of maintaining applicant's registration of the mark, [FN11] and in the case of 'SHAPE' for the purpose of laying a foundation for registration of that mark. Indeed, the record reveals, with respect to the mark 'SHAPE UP', that even in June of 1984 (when opposer took discovery depositions), nearly ten years after the publication of the last commercial issue of 'SHAPE UP' magazine, Joseph Weider, though denying any intent to abandon the mark 'SHAPE UP', and maintaining that applicant might still come out with a magazine bearing the mark, had no particular plans to publish such a magazine.
In the United States, property rights in a trademark arise through use of the mark in connection with a particular product or service. See: Dynamet Technology, Inc. v. Dynamet Inc., 593 F.2d 1007, 201 USPQ 129 (CCPA 1979); Computer Food Stores Inc. v. Corner Store Franchises, Inc., 176 USPQ 535 (TTAB 1973); and cases cited therein. Thus, Section 1 of the Trademark Act of 1946, 15 U.S.C. 1051, provides for the registration of a mark 'used in commerce' if certain requirements are met. The fact that a sale or shipment of goods may have been designed to lay a foundation for registration does not, per se, invalidate any application or registration based thereon. That is, a token sale or a single shipment in commerce, with the color of a bona fide transaction, may be sufficient to support an application for registration provided that it is followed by other shipments or accompanied by activities or circumstances which would indicate a continuing effort or intent to continue such use and place the product on the market on a commercial scale. See: Ralston Purina Co. v. On-Cor Frozen Foods, Inc., 746 F.2d 801, 223 USPQ 979 (CAFC 1984); Fort Howard Paper Co. v. Kimberly-Clark Corp., 390 F.2d 1015, 157 USPQ 55 (CCPA 1968); Visa International Service Assn. v. Life-Code Systems, 220 USPQ 740 (TTAB 1983); and La Maur Inc., v. International Pharmaceutical Corp., 199 USPQ 612 (TTAB 1978).
*7 A party who has acquired rights in a mark through use may thereafter lose those rights if use of the mark is discontinued. Section 45 of the Statute, 15 U.S.C. 1127, provides in part that a mark is deemed to be abandoned when, inter alia,
(a) . . . its use has been discontinued with intent not to resume. Intent not to resume may be inferred from circumstances. Nonuse for two consecutive years shall be prima facie abandonment.
When evidence of nonuse of a mark for two or more years has been introduced, the burden shifts to the party contesting abandonment to make a convincing showing of 'excusable nonuse' that would negate any intent not to resume use of the mark. See: Hamilton Burr Publishing Co. v. E. W. Communications, Inc., 216 USPQ 802 (TTAB 1982), and Burroughs Wellcome Co. v. Warner-Lambert Co., 203 USPO 191 (TTAB 1979). Further, a party's testimony of subjective intent to resume use may not be persuasive in the face of other evidence indicative of abandonment. See: J. Thomas McCarthy, Trademarks and Unfair Competition, § 17.3C, at page 773 (Second Edition, 1984), and cases cited therein. As stated in Ideal Toy Corp. v. Cameo Exclusive Products, Inc., 170 USPQ 596 (TTAB 1971), at page 599:
Intent is an essential part of abandonment but a purely subjective intention in a person's mind to re-engage in a former enterprise at some indefinite future time is not sufficient to avoid abandonment where an objective analysis of the situation furnishes evidence to warrant the inference of abandonment.
Applying the foregoing principles to the facts in the present case, we are of the opinion that applicant's use of the mark 'SHAPE' on the four-page promotional magazine issue of December 7, 1980 was sufficient to serve as a foundation for applicant's involved application for registration, and we therefore reject opposer's claim that the specimen submitted with applicant's application (i.e., a copy of the promotional issue) is insufficient to support a registration. In this regard, we note particularly the testimony that such promotional issues are commonly used in the magazine for the introduction, to distributors, wholesalers, and retailers, of a new magazine; as well as the fact that the use of the mark on the promotional issue was preceded, accompanied, and followed by efforts to launch the magazine on a commercial scale, culminating in the distribution of the premiere commercial issue of 'SHAPE' magazine just seven months later, in July 1981.
On the other hand, insofar as the mark 'SHAPE UP' is concerned, the situation is considerably different. At the time when the token promotional issue use was made in December of 1980, the mark had not been used for approximately six years; the token use was admittedly made for the purpose of maintaining applicant's registration of the mark; such use was not accompanied or followed by any efforts to launch a new magazine bearing the mark; and by December of 1985, that is, more than five years after the token use, there still had been no further use of the mark as the title of a magazine, and applicant's testimony revealed no particular plans for such use. [FN12] Under the circumstances, we are not persuaded, on the basis of the record herein, that applicant has any currently existing common law rights in the mark 'SHAPE UP', nor do we believe that applicant had any such rights in the mark at the time when it first used the mark 'SHAPE'. Cf. Hamilton Burr Publishing Co. v. E. W. Communications, Inc., supra, and Bangor Punta Operations, Inc. v. American Sterling Exterprises, Inc., 184 USPQ 243 (TTAB 1974).
*8 For the foregoing reasons, we conclude that applicant is not entitled to tack on to its use of the mark 'SHAPE' its earlier use of the mark 'SHAPE UP', and that it is opposer, rather than applicant, which has priority of use. Cf. General Mills, Inc. v. Frito-Lay, Inc., 176 USPQ 148 (TTAB 1972).
This brings us to the issue of likelihood of confusion. Turning first to the goods, there are, as applicant notes, specific differences between a newsletter, on the one hand, and a magazine, on the other. However, the issue in a proceeding such as this is not whether the goods or services of the parties are likely to be confused, but rather whether the offering of the goods or services under the involved marks is likely to cause confusion as to source. Thus, goods and/or services need not be the same or even competitive in nature in order to support a finding of likelihood of confusion, it being sufficient for the purpose that they are related in some manner and/or that the conditions surrounding their marketing '. . . are such that they would be likely to be encountered by the same persons under circumstances that could give rise [because of the marks employed thereon] to the mistaken belief that they originate from or are in some way associated with the same producer.' See: Mobay Chemical Co. v. Standard Oil Co., 163 USPQ 230 (TTAB 1969). See also: Kraft, Inc. v. Country Club Food Industries, Inc., 230 USPQ 549 (TTAB 1986), and Monsanto Co. v. Enviro-Chem Corp., 199 USPQ 590 (TTAB 1978).
In the present case, applicant's goods are identified as 'magazine relating to physical fitness and exercise.' Opposer's newsletter relates to the same subjects. Opposer's newsletter is marketed through subscription sales and applicant's magazine is marketed through the usual channels for a magazine, including newsstands and subscription sales to the general public. Both publications are promoted through attendance and/or give-away activities at physical fitness conventions, clinics, etc. Indeed, both publications were distributed as 'give-aways' at the 1985 convention of the International Dance- Exercise Association. Moreover, while some or most of opposer's subscribers may be insurance customers of opposer's sister company, others are not, and even those who are are still part of the general public; that is, they are among the potential purchasers of applicant's magazine. Under the circumstances, we are of the opinion that opposer's newsletter and applicant's magazine are closely related in nature and that their contemporaneous marketing under the same or similar marks would be likely to cause confusion as to source. Cf. Mack Trucks, Inc. v. California Business News, Inc., 223 USPQ 164 (TTAB 1984), and Hamilton Burr Publishing Co. v. E. W. Communications, Inc., supra.
*9 Turning then to the respective marks of the parties, there is a dispute as to exactly what constitutes opposer's mark--opposer claims that the mark is 'SHAPE', while applicant maintains that it is 'SHAPE WRITE-UP'. The title of opposer's newsletter has appeared in three different formats over the years. The three formats are shown in chronological order below (the latter two are shown in reduced size):
As used in these three formats, we believe that the words 'SHAPE Write-up' create a unitary commercial impression. Further, we note that until opposer purchased the newsletter from Safeco, the title of the newsletter appeared at the bottom of each page, and in the publication notice, as 'SHAPE WRITE-UP'. Accordingly, we agree with applicant's contention that the title of the newsletter is the whole designation, rather than just the word 'SHAPE'.
At the same time, we agree with opposer's apparently alternative argument that 'SHAPE' is the dominant part of its mark. Obviously, 'SHAPE' is visually dominant by reason of its much greater size. Moreover, the noun 'write-up' is defined in Webster's Third New International Dictionary (1976) as 'la: an esp. flattering written or printed official, literary, or journalistic account b: a written or printed account designed to emphasize or overstress the interest or significance of a topic,' while the verb 'write up' is defined, inter alia, as 'la: to write an account of: describe fully . . .' Thus, the words 'Write-up' in 'SHAPE Write-up' are likely to be perceived by purchasers as having descriptive significance, and hence as being subordinate, in significance and in source-indicating function, to the word 'SHAPE'.
In view thereof, and comparing the marks in their entireties, we believe that they so resemble one another that purchasers who encounter both 'SHAPE Write-up' newsletter and 'SHAPE' magazine are likely to believe that the two publications emanate from or are somehow associated with the same source; as, for example, that 'SHAPE Write-up' designates a newsletter put out by the publishers of 'SHAPE' magazine, or that 'SHAPE Write-up' newsletter was the forerunner of 'SHAPE' magazine. [FN13] Accordingly, we conclude that applicant's mark 'SHAPE', as applied to applicant's magazine, so resembles opposer's mark 'SHAPE Write-up' as to be likely to cause confusion, mistake, or deception.
We have arrived at this conclusion without regard to opposer's testimony as to alleged incidents of actual confusion. The testimony is not, for the most part, hearsay, since most of the third-party statements were offered not for the truth of the statements but rather simply for the fact that they were made. See: Finance Company of America v. BankAmerica Corp., 205 USPQ 1016 (TTAB 1979, as amended 1980), affirmed in unpublished opinion, Appeal No. 80-558 (CCPA February 12, 1981), and Mustang Motels, Inc. v. Patel, 226 USPQ 526 (CD Calif. 1985). Nevertheless, we agree with applicant's contention that the testimony is of little probative value in the absence of testimony from the third persons themselves as to whether they were confused and, if so, what caused their confusion. To the extent that this testimony has any probative value, however, it serves to buttress our conclusion of likelihood of confusion. [FN14]
*10 Decision: The opposition is sustained, and registration to applicant is refused.
L. E. Rooney
R. F. Cissel
Members, Trademark Trial and Appeal Board
FN1. Serial No. 292,633, filed January 12, 1981.
FN2. Opposer did not pursue its registration symbol misuse and improper licensing claims either in its brief or at oral hearing. Accordingly, these claims are deemed to have been waived and will be given no consideration herein.
FN3. Applicant failed to make its pleaded registration for the mark 'SHAPE-UP' of record herein. See: Trademark Rule 2.122(d)(2). At oral hearing, counsel for applicant asked that the Board take judicial notice of the registration. The Board does not take judicial notice of registrations that reside in the Patent and Trademark Office. See: In re Duofold, Inc., 184 USPQ 638 (TTAB 1974), and Hydrotechnic Corp. v. Hydrotech International, Inc., 196 USPQ 387 (TTAB 1977). Moreover, the mere claim of ownership of a registration in an application does not, ipso facto, make the registration of record in an opposition against the application, even though the application file is of record. See: Edison Brothers Stores v. Brutting E. B. Sport-International, 230 USPQ 530 (TTAB 1986), and Copperweld Corp. Arcair Co., 200 USPQ 470 (TTAB 1978). Accordingly, the registration has been given no consideration in our determination of this case. However, applicant is, of course, entitled to rely upon the evidence which it introduced relating to its use of the mark 'SHAPE-UP'.
FN4. Because Safeco wanted to control the 'SHAPE' mark for one year after opposer purchased the program to ensure that opposer would maintain the same standards of quality as Safeco had, opposer was initially given a permanent exclusive license plus an agreement that the mark would be assigned at a future date if quality was maintained. The mark was actually assigned to opposer effective November 1, 1982.
FN5. An additional 2,000 copies of the newsletter bearing the title 'To Your Health' and 'by SHAPE', instead of the title 'SHAPE Write-up', are distributed to enrollees of the King County Medical/Blue Shield insurance plan.
FN6. The term applicant is used herein to refer both to applicant and to its predecessors in interest.
FN7. The record shows that the sales figures for the magazine would have differed considerably from the distribution figure, because the magazine was sold primarily through newsstands (with the remainder of sales being made through subscriptions), and only a percentage, perhaps around 60%, of the magazines which were sent to the newsstands would have actually been sold.
FN8. It is not clear from the record exactly when the decision on the name was made, or even when the survey was done. For example, Christine MacIntyre, editor of 'SHAPE' magazine, testified that the survey was done in the early summer of 1980 (see page 125 of the MacIntyre testimony deposition), while Allan Dalfen, President of applicant, testified that he imagined it was in April or May of 1981 (see page 59 of the Dalfen testimony deposition). The testimony as to when the name selection was made, that is, whether it was made prior to or after December of 1980, is somewhat conflicting and, at times, vague. However, this point is not critical to our determination of this case.
FN9. Although we cannot tell, from the evidence of record, whether the 'SHAPE' and 'SHAPE UP' promotional pieces were distributed by Kable News, this is another question of fact which is not critical to our determination of this case.
FN10. Applicant's contention that use of a mark as the name of a house organ (the type of use made, at least intially, by opposer's predecessor Safeco) is not a valid trademark use is not well taken. See, for example: American Express Co. v. Darcon Travel Corp., 215 USPQ 529, 532 (TTAB 1982), and In re American Can Co., 125 USPQ 354 (TTAB 1960). Cf. American International Reinsurance Co., Inc. v. Airco, Inc., 570 F.2d 941, 197 USPQ 69 (CCPA 1978). Nor does the fact that the 'SHAPE Write-up' newsletter has been used, in part, by opposer and its predecessor as an extra service to subscribers to insurance programs offered by related companies or affiliates of first Safeco, and later opposer, serve in any way to diminish opposer's rights in the mark. Cf. Astec Industries, Inc. v. Barber-Greene Co., 196 USPQ 578 (TTAB 1977). Finally, we cannot agree with applicant's argument that the term 'SHAPE' is merely descriptive as applied to the goods herein, and that the party with superior rights is the one which first established secondary meaning. This is a claim which should have been, but was not, pleaded. In any event, while the term 'SHAPE' may be somewhat suggestive as applied to these goods, it is not, in our opinion, merely descriptive of them.
FN11. As noted above, at footnote 3, no copy of the registration was made of record herein by applicant.
FN12. Joseph Weider testified, in his discovery deposition of June 11, 1984, that applicant was using the designation 'SHAPE UP' as the title of a department in a sister magazine, 'MUSCLE & FITNESS', and was planning to use it in the same manner in the 'SHAPE' magazine, but had not yet done so. However, there was no testimony as to the extent of the asserted use, and the only issue of 'MUSCLE & FITNESS' magazine made of record, namely, the February 1986 issue, contains no use of the mark 'SHAPE UP', nor does the only submitted issue of 'SHAPE' magazine, namely, the September 1985 issue. Accordingly, the evidence is insufficient to establish that such a use was made, or, if it was made, what commercial impact, if any, it had. Cf. In re Broadcasting Publications, Inc., 135 USPQ 374 (TTAB 1962). Moreover, even had the asserted use been proved, it is clearly not a use of the mark on a magazine. Cf. Hamilton Burr Publishing Co. v. E. W. Communications, Inc., supra, and Food Producers, Inc. v. Swift Co., 194 USPQ 299 (TTAB 1977).
FN13. We have not overlooked applicant's arguments based on the testimony of opposer's witness Carol Garzona as to her recollection of some trademark search information furnished by Safeco's attorneys at a time when Safeco was contemplating registration of the mark 'SHAPE' (Safeco did in fact register 'SHAPE', not for the newsletter but for providing group instruction regarding diet, exercise and health habits, and consulting services to individuals regarding the same matters; the registration was later assigned to opposer). The testimony indicates that the attorneys, based on the search, concluded that Safeco could go ahead and apply for registration; that there was at that time one company using the mark 'SHAPE' in connection with a weekend fitness retreat program that Safeco didn't regard as being anything like its program; and that recently that outfit has begun to produce a newsletter. We cannot accord much probative value to this evidence because there is no concrete information concerning the use in question; for all we know, Safeco may well have been the prior user (it is clear that the Safeco trademark search was not done until sometime after safeco began publishing its newsletter--Safeco used the mark 'SHAPE' in connection with its fitness program for a length of time before it began publishing the newsletter); it is not necessary for purposes herein that opposer be either the first or the exclusive user of its mark in order to challenge applicant's right to registration, it being sufficient that opposer have use prior to applicant's and that the contemporaneous use of the marks of the parties in connection with their respective goods is likely to cause confusion; and, finally, a single third-party use (this one being, apparently, the only activity in opposer's field revealed by the trademark search report) cannot serve to establish that the term 'SHAPE' is 'weak' in the sense that it has been so commonly used in this field as not to have very much effect in distinguishing source.
FN14. We also note that opposer has offered considerable testimony and evidence to prove actual damage to opposer resulting from the alleged 'sensationalized' character of applicant's magazine, and applicant has offered responsive testimony and evidence. However, it is not necessary that opposer allege or prove damage, whether actual or otherwise, herein. See: International Order of Job's Daughters v. Lindeburg & Co., 727 F.2d 1087, 220 USPQ 1017 (CAFC 1984); Rosso and Mastracco, Inc. v. Giant Food, Inc., 720 F.2d 1263, 219 USPQ 1050 (CAFC 1983); and Selva & Sons, Inc. v. Nina Footwear, Inc., 705 F.2d 1316, 217 USPQ 641 (CAFC 1983).