TTAB - Trademark Trial and Appeal Board - *1 SHALOM CHILDREN'S WEAR, INC. v. IN-WEAR A/S Opposition No. 86,459 March 11, 1993

Trademark Trial and Appeal Board

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





Opposition No. 86,459

March 11, 1993


Before Sams, Rooney and Cissel






Opinion by Cissel






 On November 17, 1989 In-Wear A/S, a Danish corporation, applied to register the mark "BODY GEAR" on the Principal Register for what were subsequently identified by amendment as "articles of clothing, namely underwear." The word "GEAR" was disclaimed at the request of the Examining Attorney. The application was based on applicant's assertion that it had a bona fide intention to use the mark in commerce.



 Following publication under Section 12(c) of the Lanham Act, a timely notice of opposition was filed on November 29, 1991 by Shalom Children's Wear, Inc., a New York corporation. As grounds for opposition opposer asserted that applicant did not have a bona fide intention to use the mark; that opposer owns application S.N. 74/011,330, filed December 14, 1989 based on intent to use the mark "BODY GEAR" and design for children's clothing, which application was subsequently amended to claim use since February 26, 1990; that opposer "commenced all steps to effect use" of its mark prior to the date applicant filed its application; that opposer has used its mark since prior to applicant's filing date; that applicant's mark is descriptive of applicant's goods; and that applicant's mark does not and cannot identify applicant's goods and distinguish them from the goods of opposer, nor can it serve as an indication of the origin of such goods. Applicant's answer denied the essential claims of opposer.



 On July 6, 1992 applicant filed a motion for summary judgment. On July 29, 1992 opposer filed a brief opposing applicant's motion and also moved for summary judgment in its own favor. Proceedings were suspended on August 19, 1992 pending resolution of the summary judgment motions. On September 11, 1992 applicant submitted its opposition to opposer's motion and a reply to opposer's opposition to applicant's motion. On September 17, 1992 opposer moved for an extension of time in which to file a reply to applicant's opposition to opposer's motion for summary judgment, asserting that applicant agreed to the extension of time for opposer. Opposer then filed its reply to applicant's opposition to opposer's motion on October 19, 1992, along with the affidavit of Martin Raskin, counsel for opposer, and numerous exhibits. On October 30, 1992 applicant moved to strike opposer's reply brief and the evidence attached thereto.



 Under Fed.R.Civ.P. 56(e), the Board may permit the parties to supplement their summary judgment affidavits or to submit additional affidavits. We exercise our discretion under the rule in favor of considering the additional evidence offered with opposer's reply brief.



 We turn, then, to the merits of both motions for summary judgment.



Opposer's Motion for Summary Judgment


 Opposer's motion for summary judgment, as noted above, is directed to its pleaded claim that applicant's mark is merely descriptive of the clothing (i.e., underwear) with which applicant intends to use the mark. Submitted in support of opposer's motion was a copy of a dictionary definition of the word "body" as "the part of a garment covering the body or trunk."



  *2 Accompanying applicant's response to opposer's motion for summary judgment were the following: the affidavit of Elizabeth Jilly, a paralegal employed by applicant's attorney, along with copies of 168 registrations of marks which include the word "body" without disclaimers of it or claims that it has become distinctive under Section 2(f) of the Act; the declaration of Niels Friis, secretary of applicant, to the effect that he does not consider the word "body" to be descriptive of clothing items; and the affidavit of Elizabeth Kaufman, who apparently claims to be an ordinary consumer, to the effect that she does not consider "Body" to be descriptive of clothing. [FN1]



 We find applicant's submissions sufficient to raise for trial the factual issue of whether "BODY GEAR" is perceived by relevant purchasers as merely descriptive as applied to applicant's clothing items. We are not presented with undisputed facts upon which we can determine as a matter of law that applicant's mark is merely descriptive of its goods.



Applicant's Motion for Summary Judgment


 Applicant's motion is predicated on the contention that no facts material to the issue of priority are disputed and that, based on the undisputed facts, applicant is entitled to judgment in its favor on this issue as a matter of law. Submitted in support of applicant's motion were some of opposer's answers to applicant's first set of interrogatories and answers to applicant's first requests for admissions.



 As noted above, applicant filed to register its mark on November 17, 1989. Opposer's application to register "BODY GEAR" and design for "children's clothing, namely, sweatshirts, polo shirts, jogging suits, slack sets, short sets, overall outer jackets and knit woven pants" was based on intent to use the mark in commerce and was filed less than a month later, on December 14, 1989. Opposer's application was refused registration under Section 2(d) of the Act based on applicant's prior-filed application. Opposer subsequently filed an amendment alleging use of its mark on February 26, 1990. Applicant's motion is predicated on applicant's conclusion from opposer's interrogatory responses that opposer is attempting to predate its February 26, 1990 claim of first use in order to defeat applicant's priority as established by its filing date of November 17, 1989. Applicant asserts that opposer is trying to rely upon its alleged May 1, 1989 exhibition of a drawing of the goods bearing the mark. In opposer's response to Interrogatory No. 2 opposer states that based upon such drawings, orders for the goods were taken at that time, and then orders for the goods bearing the mark were placed by opposer with the manufacturer, but that when opposer filed its application based on intent to use, it was acting under the assumption that such use of the mark was not an appropriate basis for filing an application based on use. Applicant's position is that if opposer's responses are taken as fact, and there are no disputed facts material to the activities on which opposer bases its claim of first use, as a matter of law opposer cannot claim that this pre-sales activity creates a priority date before the filing date of applicant's intent-to-use application, so that, as a matter of law, opposer cannot establish priority over applicant.



  *3 Opposer's response to applicant's motion included copies of opposer's complete responses to applicant's interrogatories Nos. 2 and 3, and the documents produced in connection with applicant's requests, including photographs of the drawings which were shown when the orders for opposer's goods were taken. These materials are asserted by opposer to show not just that the drawings of clothing bearing the mark were displayed to sales prospects, but, also that opposer had outstanding orders to have the goods manufactured and had taken orders for the sale of the goods prior to applicant's filing date. It is opposer's contention that these submissions establish that opposer engaged in presales activity sufficient to entitle opposer to priority, even though actual goods did not come into existence before applicant's filing date. Additionally, opposer argues that applicant's motion should not be granted because judgment as to priority would not be dispositive of all of the issues in this case, which include opposer's claim that applicant's mark is descriptive of its goods.



 Applicant's reply brief disputes opposer's conclusions and argues that the facts concerning opposer's pre-sales activity are not disputed. Applicant contends that the effect of these facts is a legal issue, rather than a factual one. Applicant asserts that the undisputed facts shown by opposer do not, as a matter of law, entitle opposer to priority over applicant.



 As has often been stated, the purpose of summary judgment is one of judicial economy, namely, to save the time and expense of a useless trial where no genuine issue of material fact remains and more evidence than is already available in connection with the motion for summary judgment could not be reasonably expected to change the result. See, e.g., Pure Gold, Inc. v. Syntex (U.S.A.), Inc. 739 F.2d 624, 222 USPQ 741, 743 (Fed.Cir.1984) and Levi Strauss & Co. v. Genesco, Inc. 742 F.2d 1401, 222 USPQ 939, 941 (Fed.Cir.1984). The burden in a motion for summary judgment is on the moving party to establish prima facie that there is no genuine issue of material fact and that it is entitled to a judgment as a matter of law. Fed.R.Civ.P. 56(c).



 Moreover, on a motion for summary judgment, the function of the Board is not to try issues of fact but to determine, instead, if there are any genuine issues of material fact to be tried. In this regard, all doubts as to whether or not particular factual issues are genuinely in dispute must be resolved against the moving party and, similarly, all inferences to be drawn from the undisputed facts must be viewed in the light most favorable to the nonmoving party. See Flatley v. Trump, 11 USPQ2d 1284, 1287 (TTAB1989) and cases cited therein.



 In the case before us applicant, as the moving party, submitted the aforementioned materials in an effort to establish that no facts are disputed as to the basis for opposer's claim of priority and that, as a matter of law, the established facts do not entitle opposer to claim a priority date based on opposer's pre-sales activity which is earlier than the date on which applicant filed its application based on its intention to use its mark. Applicant's position is that use on the drawings used to solicit orders should not be permitted to defeat constructive use and priority established by an application based on the bona fide intent to use.



  *4 Applicant is mistaken when it argues that opposer may not, as a matter of law, defeat a priority date established by applicant's intent-to-use application with prior use analogous to trademark use. Although opposer's use of the mark in connection with taking orders for goods bearing the mark may not have been a sufficient basis upon which to file a use-based application, that is, may not have constituted a "technical" trademark use, such activities nonetheless can establish opposer's priority as against applicant, irrespective of the basis upon which applicant is entitled to claim its own first use or constructive use.



 The 1988 amendments to the Trademark Act introduced the concept of intent to use as the basis for an application which would create constructive use as of its filing date, contingent on registration of the mark. These changes were not intended to alter the other ways in which priority can be established. The 1987 United States Trademark Association Trademark Review Commission Report and Recommendations, 77 TMR 375 at 398 (1989), the document that set the parameters for many of the changes wrought by the Trademark Law Revision Act, made it very clear that "The filing of an intent-to-use or use-based application would not constitute nationwide constructive use against anyone who used a mark before the filing date ... Questions of priority and territorial rights involving prior users should be decided under current law."



 Section 7(c) of the Act states that

   Contingent on the registration of a mark on the Principal Register provided by this Act, the filing of the application to register such mark shall constitute constructive use of the mark, conferring a right of priority, nationwide in effect, on or in connection with the goods or services specified in the registration against any person except for a person whose mark has not been abandoned and who, prior to such filing--(1) has used the mark;

No distinction is made concerning whether such use must be use which could be the basis for registration (i.e., "technical" trademark use), constructive use created by filing an intent-to-use application, or the kind of use known as "use analogous to trademark use," which has long been sufficient to establish prior rights in a trademark. On the question of analogous use, see National Cable Television Association Inc. v. American Cinema Editors Inc., 937 F.2d 1572, 19 USPQ2d 1424 (Fed.Cir.1991).



 Applicant's argument that opposer cannot establish priority over applicant's intent-to-use application with use analogous to trademark use confuses the concepts of token use and use analogous to trademark use. Token use is technical trademark use on a small quantity of goods in commerce with the express purpose of providing the basis for an application to register the mark under the Lanham Act. Token use is not necessarily accompanied by the bona fide intention to engage in significant and ongoing commercial activity under the mark. The intent-to-use provisions of the 1988 amendments to the Trademark Act were designed to eliminate the need for token use as the basis for applications to register.



  *5 Use analogous to trademark use, in contrast, is non-technical use of a trademark in connection with the promotion or sale of a product under circumstances which do not provide a basis for an application to register, usually because the statutory requirement for use on or in connection with the sale of goods in commerce has not been met. Although never considered an appropriate basis for an application to register, such use has consistently been held sufficient use to establish priority rights as against subsequent users of the same or similar marks. See: Jim Dandy Co. v. Martha White Foods, Inc., 458 F.2d 1397, 173 USPQ 673 (CCPA1972); National Cable Television Ass'n., Inc. v. American Cinema Editors, Inc., 937 F.2d 1572, 19 USPQ2d 1424 (Fed.Cir.1991).



 While we agree with opposer that use analogous to trademark use, in general, and pre-sales activities of the type in which it engaged, in particular, may serve to establish priority, we are unable to enter summary judgment in opposer's favor at this point in the proceedings. First, we note that priority alone is not a ground for opposition. Opposer neither pleaded nor established that confusion is likely, so this proceeding could not be resolved in opposer's favor simply by granting opposer partial summary judgment on the issue of priority. Opposer is therefore allowed thirty days from the mailing date of this ruling to amend its pleading to include a claim that the marks in question so resemble each other that, as they are applied to the goods of the parties, confusion is likely. This charge is implied, but it should be specifically stated, so that the issue can be joined for trial.



 Moreover, the case for entering even partial summary judgment in opposer's favor--on the issue of priority--is problematic. If there exists a genuine issue as to the descriptiveness of applicant's mark "BODY GEAR" for clothing (and we so found in deciding opposer's motion for summary judgment), there exists also a genuine issue as to whether the "BODY GEAR" portion of opposer's mark is merely descriptive as applied to opposer's items of clothing.



 Opposer has neither pleaded nor demonstrated by means of its evidentiary showing on the motions now before us that "BODY GEAR" is distinctive of its goods in commerce. And, if "BODY GEAR" is merely descriptive of opposer's clothing items, opposer cannot prevail on a Section 2(d) claim of priority and likelihood of confusion. A mark on which a Section 2(d) claim rests must be distinctive. See Otto Roth & Company, Inc. v. Universal Foods Corp., 640 F.2d 1317, 209 USPQ 40 (CCPA1981). Priority for Section 2(d) purposes in such a case lies with the party that was the first to acquire distinctiveness for its mark, through use in commerce. Perma Cream Enterprises, Inc. v. Precco Industries Ltd., 23 USPQ2d 1134, (TTAB1992). Therefore, opposer in this case would not be able to establish its priority, under Section 2(d), by evidence of its use of "BODY GEAR" in a manner "analogous to trademark use," unless the evidence established that such "analogous" use of "BODY GEAR" was perceived by prospective purchasers as proprietary (i.e., source-indicating) rather than descriptive use. About these matters (viz., whether opposer's mark "BODY GEAR" is or has become distinctive of its goods and, if so, when it became distinctive of those goods) there certainly exist genuine issues of fact.



  *6 In summary, both parties' motions for summary judgment are denied. And opposer is allowed thirty days to file an amended pleading alleging likelihood of confusion, after which applicant will be allowed time in which to file its answer.



J.D. Sams



L.E. Rooney



R.F. Cissel



Members, Trademark Trial and Appeal Board



FN1. Although applicant notes the submission and argues the effect of this affidavit, it was not received in the Patent and Trademark Office. Nonetheless, in light of the fact that opposer was apparently served with a copy and the fact that opposer did not argue that the affidavit is not of record, we have treated it as if it had been received and as if it were as applicant has characterized it.


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