TTAB - Trademark Trial and Appeal Board - *1 HOLMES PRODUCTS CORP. v. DURACRAFT CORPORATION Opposition No. 90,210 March 1, 1994

Trademark Trial and Appeal Board

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





Opposition No. 90,210

March 1, 1994


Before Sams, Seeherman and Hohein



Administrative Trademark Judges



Opinion by Seeherman



Administrative Trademark Judge



 Holmes Products Corp. has opposed the application of Duracraft Corporation to register TURBO for portable electrical fans. [FN1] In the notice of opposition, opposer has alleged that since January 1992 opposer "has been engaged in the manufacture and sale of portable electric fans of which applicant's mark is descriptive, and has been using one or more marks consisting of or comprising the word TURBO in connection with its sale or offering for sale of such portable electric fans." Specifically, opposer has asserted, as grounds for opposition, 1) applicant's mark, when applied to applicant's goods, is merely descriptive; 2) applicant's mark so resembles "one or more marks registered in the Patent and Trademark Office, including but not limited to at least one of TURBO-AIRE, U.S. Trademark Reg. No. 1,546,287, TURBO VENT, U.S. Trademark Reg. NO. 1,087,903, and TURBO FLEX, U.S. Trademark Reg. No. 1,159,860, or one or more marks or trade names previously used in the United States by another and not abandoned, as to be likely, when used on or in connection with the goods of the applicant, to cause confusion, or to cause mistake, or to deceive;" and 3) the specimens filed by applicant do not demonstrate use of the mark TURBO.



 Applicant denied these allegations in its answer.



 This case now comes up on applicant's motion for partial summary judgment as to Ground 2 of the notice of opposition, regarding the claim of likelihood of confusion. Applicant states that there is no genuine issue that opposer is not the owner of the registrations pleaded in the notice of opposition; that opposer has not alleged any privity with the owners of the registrations or any legal or equitable interest in the trademarks themselves; and that opposer therefore lacks standing to assert the ground of likelihood of confusion. In support of its motion applicant submitted the affidavit of its attorney, stating that searches of the CompuMark data base showed that the registrations listed in the notice of opposition were owned by parties other than opposer. The submission was subsequently supplemented by certified status and title copies of the registrations which, again, show that the registrations are not owned by opposer. [FN2]



 In response, opposer does not dispute that it is not the owner, and is not in privity with the owners, of the registrations mentioned in the notice of opposition. Instead, it argues that it has standing because it has a real interest in the proceeding beyond that of the general public because it is a competitor of applicant's, and that once standing is established as to one ground, an opposer may rely on any grounds set forth in Section 2 of the Trademark Act which negate an applicant's right to registration. Opposer has provided the affidavit of Stan Rosenzweig, its Chief Operating Officer, who stated that opposer manufactures and sells, inter alia, fans; that applicant is a competitor of opposer's, in that applicant also manufactures and sells fans; and that starting in 1992 opposer has made and sold a particular line of fans, one model of which was marketed for part of the 1992 season under the mark TURBO-JET-AIR, and another of which was marketed during the 1992 season under the mark TURBO. These models included switches which had a power/speed setting called "Turbo." [FN3]



  *2 The granting of a motion for summary judgment is appropriate where there exists no genuine dispute as to any material fact and where the moving party is entitled to judgment as a matter of law. See, Fed.R.Civ.P. 56(c); Buffett v. Chi-Chi's, Inc., 226 USPQ 428 (TTAB 1985). In this case, there is no genuine issue that opposer is not the owner of the registrations recited in its pleading of likelihood of confusion under Section 2(d), and that opposer is not in a position of privity with the owners of those registrations. [FN4]



 The only issue before us, then, is whether, as a matter of law, opposer is precluded from asserting the claim of likelihood of confusion. Although the parties have couched the issue in terms of standing, in actuality the question is that of the legal sufficiency of opposer's ground of likelihood of confusion.



 In Otto Roth & Co., Inc. v. Universal Foods Corp., 640 F.2d 1317, 209 USPQ 40, 43 (CCPA 1981), the Court stated:

   One who opposes registration to an applicant under section 2(d) is attempting to protect his individual rights, as the owner of some means of identifying the source of his goods, by preventing registration of a mark so similar to that which he asserts identifies source that concurrent use of the two is likely to cause confusion and thus foil the function of his means of identification. [citations omitted) In this situation, the opposer must prove he has proprietary rights in the term he relies upon to demonstrate likelihood of confusion as to source, whether by ownership of a registration, prior use of a technical "trademark," prior use in advertising, prior use as a trade name, or whatever other type of use may have developed a trade identity.

The Court went on to say that:

   the issue is not merely whether public confusion as to source is likely, but whether the identification of source results from trade identity rights in opposer which the law will recognize.

   Under section 2(d), as utilized in an opposition, confusion, or a likelihood thereof, is not recognized where one claiming to be aggrieved by that confusion does not have a right superior to his opponent's....

   209 USPQ at pp. 44-45.



 Otto Roth, thus, requires that in order to succeed on a likelihood of confusion claim or, in other words, to have a legally sufficient likelihood of confusion ground, the opposer must have a proprietary right in its pleaded mark which is superior to applicant's right in the opposed mark.



 Opposer argues that:

   Once standing is established, an opposer is entitled to rely on any of the grounds set forth in Section 2 of the Lanham Act which negate an applicant's right to its subject registration. See Jewelers Vigilance Comm., Inc. v. Ullenberg Corp., [823 F.2d 490] 2 U.S.P.Q.2d 2021, 2023 (Fed.Cir.1987); Aruba v. Excelsior, Inc., 5 U.S.P.Q.2d 1685 (TTAB 1987). For purposes of Ground II [likelihood of confusion with third-party registered marks), Opposer is relying on Section 2(d), which by its own terms does not differentiate between the prior uses of opposers and the prior uses of third parties. In the Jewelers Vigilance case, the Federal Circuit held that a trade association was entitled to rely on the prior use of third parties with which the trade association had no propriety interest. There is no rational basis for applying a different standard to the facts of the instant case where a direct competitor, as opposed to a trade association, is involved.

    *3 Brief, pp. 4-5.



 We are not persuaded by opposer's arguments. As noted previously, the real issue here is not standing, but the sufficiency of the pleaded claim of likelihood of confusion. As the Court pointed out in the Jewelers Vigilance opinion cited by opposer, there is a distinction between standing and the grounds of a case.



 When we consider opposer's asserted ground of likelihood of confusion, we find that there is a significant difference in the fact situations of the instant case and that presented in Jewelers Vigilance. Jewelers Vigilance involved an opposition brought by a trade association, whose members were manufacturers, distributors and retailers of diamonds and diamond jewelry, against the registration of the mark DEBEERS on the grounds of "false suggestion of association and likelihood of confusion with the name DEBEERS of a third party, DeBeers Consolidated Mines, Ltd. (DCBM)...." 7 U.S.P.Q.2d at 1629. The jewelers used the name DEBEERS in promoting their jewelry, and the linkage of the name DEBEERS to diamonds was to the benefit of the jewelry industry as well as DBCM.



 Thus, although the jewelry trade association did not have proprietary rights in the name DEBEERS, it had a connection with DBCM, the owner of the name, such that any confusion that arose from the contemporaneous use by DCBM of its name and by applicant of the mark DEBEERS was the same confusion that would affect the association.



 In the second opinion rendered in that case, 853 F.2d 888, 7 U.S.P.Q.2d 1628 (Fed.Cir.1988), (a decision on the merits), the Court made it clear that "ordinarily, a person should not be heard on a third party's rights, that is, allowed to sue to vindicate the rights of another." 7 U.S.P.Q.2d at 1631. The reason the plaintiff in the Jewelers Vigilance case was able to assert the rights of a third party was that

   the trade association convincingly established that it was not a mere intermeddler in asserting a claim predicated on a third party's name and had sound reasons for fearing damage to itself and its members if Ullenberg's mark were registered. In sum, JVC asserted its own claim which happened to involve the proprietary rights of a third party.




 Although some commentators have criticized the Court's opinion for its allowing opposers to rely on third parties' trademarks, we think it would be inappropriate to read the language of the opinion so broadly. [FN5] The statements must be read in the context of the factual situation before the Court; and that factual situation included a plaintiff which was able to establish its legitimate interest in preventing likelihood of confusion. Specifically, the plaintiff's interest was to see that the continued use of the DEBEERS mark by its members was protected against a potential claim by applicant, a junior user of the DEBEERS mark, of a right to exclusive use of the DEBEERS mark and likelihood of confusion.



  *4 Thus, we find implicit in the Court's opinion the requirement that, where the plaintiff does not have a proprietary interest in--that is, does not own--the mark which it pleads as the basis for a likelihood of confusion ground, it must have some other legitimate interest in preventing confusion between the pleaded mark on which it predicates its Section 2(d) claim and the mark whose registration it opposes. Any other interpretation could lead to the result that a business competitor who used a mark totally different from an applicant's mark would be able to harass the applicant simply by searching the register and asserting the ground of likelihood of confusion based on any marks it happened to find there. In addition, the interpretation espoused by opposer leaves open the question of the effect of a Board likelihood-of-confusion decision on the rights of the registrant whose registration plaintiff is asserting, where the plaintiff's interest in asserting the issue and, consequently, plaintiff's forcefulness in litigating it, may diverge from the interests of the registrant. Obviously, any interpretation of Jewelers Vigilance which would lead to such results is untenable.



 In the present case, opposer has not asserted any legitimate interest in preventing likelihood of confusion between applicant's mark and the marks of the several registrations which it pleaded in its notice of opposition. In saying this, we recognize that the pleaded marks do contain the element TURBO, and opposer has alleged use of the mark TURBO (although opposer did not claim a date of first use of its mark prior to the filing date of the opposed application). However, opposer has not alleged that it has used the third-party TURBO marks. Nor has it alleged any connection with these marks or with those who registered them that would establish its legitimate interest in preventing likelihood of confusion; and we hold that such a legitimate interest is a necessary element of a ground of likelihood of confusion predicated on the third-party registrations.



 Because, as a matter of law, opposer's ground of likelihood of confusion based on third-party registrations is legally insufficient, applicant's motion for partial summary judgment is granted. The case will proceed on the two remaining grounds. [FN6] The parties are reminded that this decision is interlocutory in nature and may not be appealed until a final decision is rendered in the proceeding. See Copelands' Enterprises, Inc. v. CNV, Inc., 887 F.2d 1065, 12 U.S.P.Q.2d 1563 (Fed. Cir. 1989). Trial dates, including the closing date for discovery, are reset as shown in the attached order.



J.D. Sams



E.J. Seeherman



G.D. Hohein



Administrative Trademark Judges



Trademark Trial and Appeal Board



FN1. Application Serial No. 74/236,945, filed January 13, 1992, and asserting first use and first use in commerce on January 7, 1991.



FN2. A print-out from the data base records of a private search service would normally be insufficient to demonstrate ownership of a registration. However, the status and title copies of the registrations prepared by the Office are acceptable evidence.



FN3. Although the declaration submitted by opposer refers to its own use of TURBO as a trademark, it is clear that opposer, whose asserted use of this mark was subsequent to the claimed date of use by applicant, has not based its claim of likelihood of confusion on any rights it may have in TURBO through its own use of the mark.



FN4. In its memorandum opposing applicant's motion, opposer recited applicant's arguments challenging opposer's standing in this case (e.g. opposer does not own the pleaded registrations), and then stated "none of the alleged deficiencies raised by Duracraft need be met by Holmes for Holmes to establish, as a matter of law, its standing to raise Ground II." p. 2. Although opposer did not specifically state that it is not the owner of the registrations, etc., opposer has not submitted any evidence to show that it owns the registrations or is in privity with the owners of those registrations, nor has it submitted any evidence which would show that there is a genuine issue as to whether it has any rights in those marks.



FN5. "This decision opens up some troubling possibilities of opposers relying upon trademarks owned by others." J.T. McCarthy, McCarthy on Trademarks, § 20.04[1], p. 20-26 (3d ed. 1992); A. Wells, "Are Registered Marks Open to Attack by Subsequent Users?," 72 JPTOS 865 (1990).



FN6. Because applicant's motion dealt solely with the ground of likelihood of confusion pleaded in the notice of opposition, our review of the pleading has been limited to that ground. We make no comment on the legal sufficiency of any other claims.


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