Trademark Trial and Appeal Board
Patent and Trademark Office (P.T.O.)
*1 JEWELERS VIGILANCE COMMITTEE, INC.
v.
ULLENBERG CORP.
Opposition No. 69,744
September 30, 1987
Roberta L. Jacobs for Jewelers Vigilance Committee, Inc.
Berman, Aisenberg & Platt for Ullenberg Corp.
By the Board:
L.E.Rooney, R.L. Simms and R.F. Cissel
Members
On June 9, 1987, the Board's decision granting applicant's motion for summary judgment on the ground that opposer had failed to plead sufficient facts to establish its standing to be heard in this proceeding was vacated by the Court of Appeals for the Federal Circuit and remanded for further action.
The Court, treating applicant's motion as one to dismiss, found that the opposer, Jewelers Vigilance Committee, Inc., as the representative of its members, possesses the real interest necessary to establish its standing to be heard in this proceeding.
In accordance therewith, we proceed with the next step in this proceeding, which is to consider opposer's motion for summary judgment which was declared moot in view of our decision on applicant's motion. For this purpose, we presume familiarity with the facts as set forth in the prior decision and the decision on opposer's appeal.
Opposer moved for summary judgment on the ground that the pleadings, depositions, answers to interrogatories and affidavits submitted show that there is no genuine issue as to any material fact and that Jewelers Vigilance Committee, Inc. is entitled to judgment as a matter of law.
The facts according to opposer are as follows. DeBeers Consolidated Mines Limited of South Africa (hereinafter DBCM) has mined and supplied rough diamonds to the world market since its formation in 1888 in South Africa. The DeBeers name has been widely promoted in the United States since 1939. The advertising agency (N.W. Ayer) responsible for these promotional activities supplies jewelers with, among other things, countercards, posters and window displays that "tie into" ads in print and other advertising media. The jewelers use these and other such materials as aids in selling diamond jewelry. These promotions link the name DeBeers to diamonds to the benefit of DBCM and the jewelry industry. Ullenberg knew about DBCM when it adopted its mark and acknowledges that the general public knew about DeBeers. Ullenberg does no business with DBCM and does not know which, if any, of its diamonds originate with DBCM. The Jewelers Vigilance Committee (JVC) is a trade association composed of manufacturers, retailers, and distributors of jewelry. Its objective is to protect the public confidence in the jewelry industry. Its members look to JVC to oppose applicant's application. Opposer asks that applicant's application be refused registration under Sections 2(a) and (d) because the mark sought to be registered is deceptive and likely to cause confusion in the jewelry industry and confusion among members of the relevant public by falsely suggesting a connection between applicant and DeBeers Consolidated Mines Limited.
*2 In response to the motion, applicant does not dispute that the material facts involved herein are not in controversy, but argues that those undisputed facts do not support the legal conclusions propounded by opposer. Specifically, applicant argues, inter alia, [FN1] that opposer has not alleged any statutory grounds for precluding the registration sought by applicant; that opposer has not alleged that it or any of its members own and use a trade name in the United States which is likely to cause confusion with applicant's mark; and that opposer has not claimed, on behalf of itself or its members, ownership of a mark in the United States to identify a particular source of goods or services over which opposer or its members control the nature and quality. Applicant's position is that opposer's motion must fail where, as here, it is attempting to assert and protect alleged trademark and trade name rights of a third party who is not even a member of opposer's organization.
In order for opposer to prevail under either of its claims, Section 2(a) (falsely suggests a connection) or 2(d), (likely to cause confusion), it would be necessary for opposer to allege and prove a proprietary right in the mark at issue. See Uziel Gal v. Israel Military Industries of the Ministry of Defense of the State of Israel, 230 UPSQ 669 (TTAB 1986), affd unpublished, No. 87-1076 (Fed.Cir. June 24, 1987) and Johnson Controls, Inc. v. Concorde Battery Corporation, 228 USPQ 39 (TTAB 1985).
Opposer has pleaded, in relevant part, as follows.
12. Applicant's mark, insofar as it prominently features the DeBeers name in connection with diamond jewelry, is on information and belief intended to and does consist of or comprise matter which falsely suggests a connection with DeBeers.
13. Applicant's mark contains or comprises matter which is on information and belief intended to and does so resemble the DeBeers name that Applicant's mark, when applied to Applicant's goods, will cause confusion, mistake and/or deception.
14. Persons familiar with the DeBeers name, on seeing goods sold under Applicant's mark, would be likely to believe that Applicant was associated with DeBeers, or that said goods were sponsored by DeBeers, or both.
15. The Federal Trade Commission has held that a misrepresentation as to a relationship with DeBeers is a deception that should be enjoined....
17. If Applicant is permitted to register the mark for its goods as set forth in the application herein opposed, confusion of the trade and public, resulting in damage and injury to Opposer and its members, would be caused by reason of the confusing similarity between Applicant's mark and the DeBeers name and the false suggestion of affiliation or association between Applicant and DeBeers....
It is clear from the foregoing that opposer has alleged no proprietary right in itself or any of its members. Thus, though applicant concedes that the material facts are not in dispute, opposer is not entitled to judgment as a matter of law because it has failed to plead a ground upon which, if it were proved, relief could be granted. While it may well be that opposer has a cause of action, it does not appear to be an opposition to registration on the grounds pleaded here by opposer under Sections 2(a) or 2(d) of the Lanham Act.
*3 In view thereof and since there are no genuine issues of fact in dispute, judgment is hereby entered against opposer and the opposition is dismissed with prejudice.
L. E. Rooney
R. L. Simms
R. F. Cissel
Members, Trademark Trial and Appeal Board
FN1. Part of applicant's argument in opposition to the motion concerns opposer's alleged lack of standing to bring this opposition. However, the Court of Appeals for the Federal Circuit has determined that opposer has such standing. Therefore, that question is not before us.