Trademark Trial and Appeal Board
Patent and Trademark Office (P.T.O.)
*1 THOMAS FLATLEY DBA FLATLEY COMPANY
v.
DONALD J. TRUMP
Cancellation Nos. 16,955; 16,956
April 10, 1989
J. David Dainow
Rosen Dainow & Jacobs
489 Fifth Avenue
New York, NY 10017
Richard P. Crowley
Wianno Place
901 Main Street
Osterville, MA 02655
Members
Opinion by Rice
Member
Petitions were filed by Thomas Flatley, d.b.a. Flatley Co., to cancel two registrations issued to Donald J. Trump, namely, a registration of the mark 'CASTLE' for casino services, [FN1] and a registration of the castle design mark shown below (in reduced size)
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for casino services for hotel and restaurant services. [FN2]
As grounds for cancellation, petitioner asserted, in each case, prior use of the theme and motif of a castle, including a castle design, and of the marks 'THE CASTLE' and 'TARA' and castle design (both separately and in combination), in connection with hotels, motels, and associated services; ownership of a registration of the mark 'TARA' and castle design; [FN3] and a likelihood of confusion. Petitioner also asserted that on June 3, 1987, respondent sent one of petitioner's hotels a letter demanding (according to petitioner) that petitioner's hotel 'cease advertisements utilizing the marks 'THE CASTLE' and 'TARA AND CASTLE DESIGN' due to the existence of Trump's trademarks, 'CASTLE' and 'CASTLE DESIGN." [FN4]
Respondent, in his answers to the petitions to cancel, admitted that on or about June 3, 1987, he sent a letter to the general manager of one of petitioner's hotels requesting that he 'cease use of the name 'castle' and the adjective 'royal' in all advertisements for the facility.' However, respondent otherwise denied the salient allegations of the petitions to cancel. In addition, respondent asserted the affirmative defenses of laches and acquiescence.
Thereafter, the two proceedings were consolidated by stipulation of the parties approved by the Board.
These cases now come up on respondent's motion for summary judgment, and petitioner's motion for leave to amend the petitions for cancellation. Each party has opposed the motion of the other.
Turning first to petitioner's motion for leave to amend its pleadings, petitioner seeks thereby to add to the petitions an allegation of prior use of the designation 'THE CASTLE' 'as a trade name in a manner analogous to trademark use in connection with hotels, motels and associated services.' Petitioner asserts that allowance of the amendment will not unduly prejudice respondent, and will clarify the issues and prevent possible confusion regarding the basis for the petitions. Respondent, in its brief in opposition to the motion, asserts only that the motion should be denied because '[n]othing in Flatley's documents produced in response to Trump's discovery requests or in Flatley's opposition papers shows use of the phrase 'THE CASTLE' as a trade name or use of the phrase in a manner analogous to service mark use.' Thus, in effect, respondent argues that the motion for leave to amend should not be granted because, in respondent's opinion, petitioner cannot prove the allegation sought to be added.
*2 Rule 15(a) of the Federal Rules of Civil Procedure specifies that leave to amend pleadings shall be freely given when justice so requires, and in view thereof, the Board liberally grants leave to amend pleadings where the other party will not be prejudiced thereby. See: Buffett v. Chi-Chi's, Inc., 226 USPQ 428 (TTAB 1985), and Cool-Ray, Inc. v. Eye Care, Inc., 183 USPQ 618 (TTAB 1974). Inasmuch as these cases are still in the discovery stage, respondent would not be prejudiced by allowance of the proposed amendment. Moreover, whether or not petitioner can prove the allegation sought to be added is a matter to be determined after the introduction of evidence at trial (or in connection with a proper motion for summary judgment). See: Caron Corp. v. Helena Rubinstein, Inc., 193 USPQ 113 (TTAB 1976), and Syndicat de la Parfumerie Francaise v. Scaglia, 173 USPQ 383 (TTAB 1972). Accordingly, petitioner's motion for leave to amend the petitions for cancellation is granted.
We turn then to respondent's motion for summary judgment. [FN5] As grounds therefor, respondent asserts essentially that petitioner has no common law rights in the designation 'THE CASTLE' because petitioner has not used the designation in a service mark sense to identify petitioner's services. Respondent also asserts that his registered castle design is sufficiently different from the castle design in petitioner's registration so as to be unlikely to cause confusion as to the source of the services provided thereunder. In support of his motion, respondent has submitted copies of petitioner's and respondent's pertinent registrations; copies of promotional materials produced by petitioner in response to respondent's discovery requests; and certain pages from a book entitled The Architecture of Castles.
Petitioner, in turn, maintains that respondent's arguments are based on erroneous statements of the law and would require resolution of disputed issues of fact in favor of respondent, the moving party; that prior use as a trade name or in a manner analogous to trademark use is a sufficient basis for cancellation; and that there are a multitude of factual considerations which bear upon the issue of likelihood of confusion, none of which were addressed by respondent. Petitioner's brief in opposition to the motion for summary judgment is supported by four affidavits and certain exhibits attached thereto.
The affidavits (two) of Robert Morse, Senior Vice President of petitioner's Tara Hotels, state, inter alia, that petitioner's hotels, motels, and associated services have been advertised and promoted under the designation 'THE CASTLE' continuously since December, 1971; that the amounts spent by petitioner for advertising and promoting its services identified by the designation 'THE CASTLE' have grown from $10,000 in December 1971 to $90,000 in 1972 to $239,000 in 1980 to $795,000 in 1985 to $2,243,000 in 1987, with total expenditures for the years 1971-1987 in excess of $8,000,000; and that consumers of hotels, motels, and associated services often make decisions concerning the hotel or motel they will use on the basis of word of mouth, in which case they are likely to be directed to a hotel or motel called 'the castle' or having a castle design, not be directed to a hotel having the design of a particular type of castle. The affidavit of Howard Toy, Assistant General Manager of a Parsippany, New Jersey hotel operated by petitioner, states that in Atlantic City casino services are offered at the same facilities that offer hotel, motel, and associated services; and that petitioner's Parsippany, New Jersey hotel has advertised its hotel, motel, and associated services using the designation 'THE CASTLE' in numerous periodicals, as shown by an accompanying list of 18 such periodicals. Finally, the affidavit of Richard L. Binder, counsel to petitioner, states that attached to the affidavit as Exhibit A is a copy of the cease and desist letter sent by respondent to petitioner's Parsippany hotel, and that the attached Exhibit B is a copy of a document produced by respondent apparently in response to petitioner's for production of 'records and things identifying the publications in which registrant has advertised, is advertising, and has planned to advertise' the services designated by respondent's involved marks. The document is a long list of publications, including each of the 18 periodicals from the list of periodicals in which petitioner has assertedly used the designation 'THE CASTLE' in advertising petitioner's hotel, motel, and associated services.
*3 The summary judgment procedure is a pre-trial device to dispose of cases in which there is no genuine issue as to any material fact, and the moving party is entitled to judgment as a matter of law. See: Bongrain International v. Moquet Ltd., 230 USPQ 626 (TTAB 1986), affirmed in unpublished opinion, Appeal No. 86-1487 (Jan. 16, 1987 CAFC), and Giant Food, Inc. v. Standard Terry Mills, Inc., 229 USPQ 955 (TTAB 1986). On motion for summary judgment, a court may not resolve an issue of fact, but rather must determine whether there is any genuine issue of material fact in dispute, and, if not, render judgment in accordance with the law as applied to the established facts, or, if so, deny the motion and allow the case to proceed to a trial of the disputed facts. See: 6 Moore's Federal Practice Par. 56.11 [1.-0], at 56-197 (2d ed. 1984); Wright, Miller & Kane, Federal Practice and Procedure: Civil 2d Section 2712 at 574-578 (1983); Scharf v. United States Attorney General, 27 FR Serv2d 1127 (CA 9 1979); Buzzelli v. Minnesota Mining & Mfg. Co., 480 F.2d 541, 178 USPQ 260 (CA 6 1973); and Giant Food, Inc. v. Standard Terry Mills, Inc., supra. The moving party has the burden of establishing initially the absence of any genuine issue of material fact; only when this initial burden has been met does the burden then shift to the nonmoving party to produce sufficient evidence to support the claim that a genuine factual issue exists. See: Gutwein v. Roche Laboratories, 30 FR Serv2d 642 (CA 2 1984), and Bernard v. Gulf Oil Co., 27 FR Serv2d 760 (CA 5 1979). All doubts as to whether or not particular factual issues are genuinely in dispute must be resolved against the moving party. See: United States Jaycees v. San Francisco Junior Chamber of Commerce, 175 USPQ 525 (ND Calif 1972), affirmed 513 F.2d 1226, 185 USPQ 257 (CA 9 1975). Similarly, all inferences to be drawn from the undisputed facts must be viewed in the light most favorable to the nonmoving party. See: Cedillo v. International Association of Bridge and Structural Iron Workers, Local Union No. 1, 27 FR Serv2d 1116 (CA 7 1979); Saxony Products, Inc. v. Guerlain, Inc., 513 F.2d 716, 185 USPQ 474 (CA 9 1975); and Brass Craft Mfg. Co. v. Teledyne Corp., 180 USPQ 486 (DC Conn 1973).
In the present case, respondent, in moving for summary judgment with respect to the issue of whether petitioner has prior common law rights in the designation 'THE CASTLE' for hotel, motel, and associated services, has submitted only copies of promotional materials (produced by petitioner in response to respondent's discovery requests) wherein petitioner has used the term 'THE CASTLE' (or 'CASTLE') in promoting its said services. Several of these documents are reproduced below (in reduced size):
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*4 Respondent, by relying solely on these documents to support its motion for summary judgment as to this issue, is asking us, in effect, to hold as a matter of law that petitioner's use of the designation 'THE CASTLE' (or 'CASTLE') in these promotional materials is not of such nature as to result in the creation in petitioner of protectible rights in the designation. We cannot agree.
As noted by petitioner, it is well established that a plaintiff in a proceeding such as this need not establish prior use of a designation in a technical trademark or service mark manner in order to prevail when the proceeding is based on the ground of likelihood of confusion, mistake, or deception under Section 2(d) of the Act, it being sufficient for the purpose that plaintiff establish priority of use of the designation in connection with a product or service in interstate or intrastate commerce in a manner analogous to trademark or service mark use, i.e. use as a grade mark, use in advertising, use as the salient feature of a trade name, or any other manner of public use, provided that the use has resulted in the development of a trade identity, i.e., is an open and public use of such nature and extent as to create, in the mind of the relevant purchasing public, an association of the designation with the plaintiff's goods or services. See: Otto Roth & Co. v. Universal Foods Corp., 640 F.2d 1317, 209 USPQ 40 (CCPA 1981); Jim Dandy Co. v. Martha White Foods, Inc., 458 F.2d 1397, 173 USPQ 673 (CCPA 1972); Lever Brothers Co. v. Nobio Products, Inc., 103 F.2d 917, 41 USPQ 677 (CCPA 1939); Beebe v. Bangor Punta Operations, Inc., 190 USPQ 297 (TTAB 1976); Philip Morris Inc. v. Rembrandt Tobacco Corporation (Overseas) Ltd., 185 USPQ 823 (TTAB 1975); La Maur, Inc. v. Wella Corp., 177 USPQ 271 (TTAB 1973); and Maidenform, Inc. v. Bestform Foundations, Inc., 161 USPQ 805 (TTAB 1969). See also In re Holiday Inns, Inc., 223 USPQ 149 (TTAB 1984). As stated in the La Maur case, supra, at page 273:
. . . . While prior use of a term or slogan in the advertising and promotion of a product may be sufficient to preclude the registration by a subsequent user of the same or a similar designation for like or related goods notwithstanding such subsequent user may have been the first to use said term as a trademark, the prior use must have been of such a nature and extent that the term or slogan has become popularized in the public mind as identifying the product of the user thereof. That is, as a consequence of utilizing this slogan ina prominent and distinctive manner over a reasonable period of time, the purchasing public has become so exposed thereto that they have come to recognize the slogan, if not as a trademark, as a phrase or slogan that has been used in connection with a product emanating exclusively from that party asserting rights therein.
*5 In the present case, the copies of promotional matter submitted by respondent are not accompanied by any evidence as to whether each document is part of a brochure or is an advertisement from a publication, or as to its date, or as to the extent of its circulation, etc. Thus, there are genuine issues of material fact relating to the issue of whether petitioner's use of the designation 'THE CASTLE' (or 'CASTLE') has been an open and public use of such nature and extent as to create in the public mind an association of the designation with petitioner's services, and hence protectible rights in petitioner. The existence of these genuine issues of material fact preclude the entry of summary judgment in respondent's favor on this issue. Indeed, the cease and desist letter sent by respondent to one of petitioner's hotels would seem to indicate that respondent itself feared that petitioner's use was of such nature as to create protectible rights in petitioner. [FN6]
Respondent also asks for summary judgment in its favor with respect to the issue of whether respondent's registered marks so resemble petitioner's registered mark 'TARA HOTELS' with a castle design as to be likely to cause confusion, mistake, or deception. In support of this phase of its motion, respondent has submitted copies of the three registrations and certain pages from a book entitled The Architecture of Castles (by R. Allen Brown, 1984). Respondent argues that petitioner's castle design resembles the eleventh century English or Celtic castles shown on two pages of the book, while respondent's castle design resembles a fifteenth century French Rennaisance castle shown on another page; and that there is no likelihood of confusion because of the differences in the respective castle designs of the parties, and because of the inclusion in petitioner's registered mark of the word 'TARA'.
This showing falls far short of establishing initially the absence of any genuine issue of material fact pertaining to the issue of likelihood of confusion insofar as the registered marks are concerned. [FN7] As petitioner notes in its brief in opposition to the motion for summary judgment, it is well settled that the test to be applied in determining likelihood of confusion is not whether marks are distinguishable on the basis of a side-by-side comparison but rather whether they so resemble one another as to be likely to cause confusion, a test which requires us to consider the fallibility of memory over a period of time [see: In re Schnuck Markets, Inc., 202 USPQ 154 (TTAB 1979); Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106 (TTAB 1975); and cases cited therein]; and the similarity or dissimilarity in the marks is but one of a myriad of factors to be considered in determining the issue of likelihood of confusion. Examples of some other relevant factors are listed in In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). Respondent's motion makes no effort to show the lack of a genuine issue of material fact as to any of these other factors, a good number of which are relevant in this case.
*6 For the foregoing reasons, we conclude that respondent has failed to meet its burden of establishing initially the absence of any genuine issue of material fact relating to the basic issues to be determined in this case, and that respondent's motion for summary judgment must therefore be denied.
In summary, petitioner's motion for leave to amend the petitions for cancellation is granted; respondent's motion for leave to file a reply brief on his motion for summary judgment is granted; and respondent's motion for summary judgment is denied.
Respondent is allowed until May 8, 1989 in which to file an answer to new paragraph 5 in the amended petitions for cancellation. Trial dates in the consolidated proceedings are reset as indicated in the accompanying trial order.
J. D. Sams
J. E. Rice
G. D. Krugman
Members, Trademark Trial and Appeal Board
FN1. Registration No. 1,432,369, issued March 10, 1987 from an application filed September 23, 1985, claiming first use of the mark on June 9, 1985.
FN2. Registration No. 1,418,671, issued November 25, 1986, from an application filed October 11, 1985, claiming first use of the mark on June 9, 1985.
FN3. Registration No. 1,041,510 issued June 15, 1976 for hotel and motel services. Although petitioner (who did not submit a copy of his pleaded registration with either petition to cancel) described the registered mark in his pleadings as 'TARA AND CASTLE DESIGN,' a copy of the registration subsequently submitted by respondent shows that petitioner's registered mark is actually 'TARA HOTELS' ('HOTELS' disclaimed) with a castle design, as shown below:
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FN4. Notwithstanding petitioner's characterization of the contents of the cease and desist letter in his pleadings, a review of the letter itself (a copy of which was attached to each petition to cancel) reveals that the letter actually complained about use by petitioner's hotel of 'the name 'castle" and 'the adjective 'royal" in advertising; stated that respondent had 'federally registered its service mark 'Castle' for hotel services;' referred to respondent's 'historical use' of the word 'royal;' and asked that petitioner's hotel immediately cease use of these words.
FN5. Respondent filed a reply brief in support of its motion for summary judgment, together with a motion asking that the reply brief be considered by the Board. Petitioner filed a brief in opposition thereto. While there is no provision in the Trademark Rules of Practice for the filing of reply briefs on motions, neither are such briefs prohibited. Thus, the Board considers a reply brief when the filing thereof is warranted under the particular circumstances in a case. In the present cases, the Board believes that the circumstances are such as to warrant consideration of respondent's reply brief, and respondent's motion that the brief be considered is therefore granted. Petitioner's request for leave to file a responding brief to respondent's reply brief if the reply brief is accepted by the Board is denied, since the Board is of the opinion that further briefing is unnecessary.
FN6. Respondent asserts that the advertisement at which the cease and desist letter was aimed was not directed to prospective guests of petitioner's hotel, but was rather a personnel advertisement directed to prospective employees of the hotel. Although it is true that the advertisement attached to the cease and desist letter was a 'help wanted' advertisement directed to potential hotel employees (the advertisement is captioned 'ROYAL OPPORTUNITIES AT THE CASTLE'), the cease and desist letter complains about 'certain advertisements, one of which is attached,' which 'utilize the name 'castle' in referring to your facility and employ the adjective 'royal' when referring to same.' The letter ends by requesting that the hotel 'immediately cease use of these words in all advertisements for your facility.' It is clear therefrom that the cease and desist letter was not concerned solely with the 'help wanted' advertisement.
FN7. Indeed, respondent does not even discuss the issue of whether his registered mark 'CASTLE' for casino services so resembles petitioner's registered mark as to be likely to cause confusion, much less offer any evidence to establish the lack of a genuine issue of material fact with respect to this question, but rather directs his arguments solely to a comparison of petitioner's registered mark with respondent's registered castle design mark.
*7 In accordance with the Trademark Rules of Practice, trial dates are set as indicated below. IN EACH INSTANCE, a copy of the transcript of testimony together with copies of documentary exhibits, must be served on the adverse party WITHIN THIRTY DAYS after completion of the taking of testimony. Rule 2.125.
THE PERIOD FOR DISCOVERY TO CLOSE: June 6, 1989
Testimony period for party in position of plaintiff to close August 7,
(opening thirty days prior thereto) 1989
Testimony period for party in position of defendant to close October 6,
(opening thirty days prior thereto) 1989
Rebuttal testimony period to close (opening fifteen days prior November 20,
thereto) 1989
Briefs shall be filed in accordance with Rule 2.128(a) and (b).
An oral hearing will be set only upon request filed as provided by Rule 2.129.