Trademark Trial and Appeal Board
Patent and Trademark Office (P.T.O.)
*1 WALDEN BOOK COMPANY, INC.
v.
B. DALTON COMPANY, D.B.A. B. DALTON BOOKSELLER
Opposition No. 75,171
September 15, 1987
Mark J. Liss for Walden Book Company, Inc.
Burd, Bartz & Gutenkauf for B. Dalton Company
G.D. Krugman, E.J. Seeherman and E.W. Hanak
Members
An application has been filed by B. Dalton Company, d.b.a. B. Dalton, Bookseller to register AMERICA'S FAVORITE BOOK SELLER for retail book store services, use since October 27, 1977 being asserted. [FN1] Exclusive rights in the words 'BOOK SELLER' have been disclaimed, and the mark has been published pursuant to the provisions of Section 2(f) of the Trademark Act, 15 U.S.C. 1052(f).
Registration has been opposed by Walden Book Company, Inc. on the grounds that opposer and applicant are in direct competition; that opposer operates more book stores and has greater gross sales than applicant, and therefore the mark is deceptively misdescriptive of applicant's services within the meaning of 15 U.S.C. 1052(e)(1); that the mark is a merely descriptive laudatory term within the meaning of 15 U.S.C. 1052(e)(1) and no secondary meaning has been attained; [FN2] and that opposer should be able to describe itself as America's Favorite Bookseller without the hindrance of a registration issued to applicant. Accordingly, opposer alleges that it will be damaged if applicant's mark is registered.
Applicant did not file an answer, but instead filed the instant motion for summary judgment. [FN3] Applicant asserts that as a matter of law opposer cannot be damaged by the registration of the subject mark because applicant already has an existing registration for the same mark for the same services. In support of its motion, applicant has submitted a status and title copy of its registration on the Supplemental Register for AMERICA'S FAVORITE BOOKSELLER for retail book store services.
Opposer has opposed the motion, arguing that applicant is not entitled to summary judgment as a matter of law, and that the cases cited by applicant do not support its contention that opposer cannot be damaged by registration of AMERICA'S FAVORITE BOOKSELLER on the Principal Register because of applicant's previous registration on the Supplemental Register for the same mark for the same goods.
Summary judgment is appropriate where there is no genuine issue material fact and the moving party is entitled to judgment as a matter of law. Bongrain International v. Moquet Ltd., 230 USPQ 626 (TTAB 1986) aff'd unpub. opin. App. No. 86-1487 (Fed. Cir. Jan. 16, 1987); Block Drug Co., Inc. v. Morton-Norwich Products, Inc., 202 USPQ 157 (TTAB 1979).
In the present case, there are no genuine issues of material fact with respect to the issue applicant has raised. Applicant has made of record a status and title copy of its Supplemental Registration No. 1,161,514 for AMERICA'S FAVORITE BOOKSELLER, and opposer has not contested the ownership of this registration. [FN4]
*2 The sole issue presented for our determination, then, is whether the existence of applicant's prior registration precludes opposer from being damaged by the registration of the instant mark and, accordingly, whether applicant is entitled to summary judgment as a matter of law.
As opposer has correctly pointed out, when an opposition is grounded on the asserted mere descriptiveness of a mark, the applicant cannot rely on a preexisting registration for the same mark as a basis for contesting the attack upon its application. Such a defense is essentially a form of the equitable defense of laches or acquiescence, which is inapplicable to a proceeding based on this ground. See Care Corp. v. Nursecare International, Inc., 216 USPQ 993 (TTAB 1982).
Moreover, a Supplemental Registration may not be relied on to contest an attack on an application on the Principal Register. Supplemental Registrations do not enjoy many of the advantages gained by registration on the Principal Register, as enumerated in Section 26 of the Act, 15 U.S.C. 1094, including the presumptions afforded under Section 7(b) to a certificate of registration on the Principal Register. Thus, it cannot be said that opposer would not suffer added damage by reason of the granting of the registration upon the Principal Register sought by applicant herein.
Accordingly, the motion for summary judgment is denied.
Applicant's answer is due within thirty days of the mailing date of this decision.
G. D. Krugman
E. J. Seeherman
E. W. Hanak
Members, Trademark Trial and Appeal Board
FN1. Application Serial No. 588, 302, filed March 17, 1986.
FN2. Opposer amended its notice of opposition to add this ground on February 24, 1987, after applicant had filed a motion for summary judgment. The amended notice of opposition was accepted by the Board as a matter of right on March 23, 1987.
FN3. Applicant has variously characterized this motion as one for summary judgment made pursuant to Rule 56 of the Federal Rules of Civil Procedure, and as a motion to dismiss under Rule 12(b)(6), FRCP, for failure to state a claim upon which relief may be granted. Since applicant is relying in its motion on a prior registration, which is a matter outside the pleading, the motion is being treated as a motion for summary judgment.
FN4. Registration No. 1,161,514, issued on the Supplemental Register July 14, 1981. An affidavit pursuant to Section 8 of the Trademark Act was required to be filed by July 14, 1987, but to date there is no indication in the Office records that the affidavit was received. We note that if the registration were eventually cancelled for failure to file a Section 8 affidavit, the instant motion would be subject to denial on that basis.