Trademark Trial and Appeal Board
Patent and Trademark Office (P.T.O.)
*1 WEAR-GUARD CORPORATION
VAN DYNE-CROTTY, INC.
Cancellation No. 16,340
January 24, 1990
Hearing: December 13, 1989
Blum, Gersen & Stream and Amster, Rothstein & Ebenstein for Wear-Guard Corporation
Frost & Jacobs for Van Dyne-Crotty, Inc.
Before Rooney, Seeherman and Hanak
Wear-Guard Corporation (petitioner) has petitioned to cancel Registration No. 1,396,746 for the block letter mark CLOTHES THAT WORK owned by Van Dyne-Crotty, Inc. (registrant). The goods listed in the registration are "printed publications, namely, catalogs" in Class 16 and "wearing apparel, namely, aprons, belts, caps, coats, coveralls, hats, jackets, jeans, jerseys, jumpsuits, overalls, pants, rainwear, shirts, sweatshirts, ties, T-shirts, uniforms and vests" in Class 25. The registration issued on June 10, 1986 with claimed first use dates of July 8, 1985 (printed publications) and September 3, 1985 (wearing apparel). Registrant disclaimed the exclusive right to use CLOTHES apart from the mark in its entirety.
In its cancellation petition, petitioner alleges that "commencing at least as early as 1983, petitioner adopted one or more of petitioner's marks [CLOTHING THAT WORKS, CLOTHES THAT WORK HARD and CLOTHES THAT WORK OVERTIME] for diverse articles of wearing apparel and related accessories." (Cancellation petition paragraph 2). Petitioner alleges that registrant's subsequent use of its mark CLOTHES THAT WORK will cause potential purchasers to erroneously believe that registrant's goods "originated with petitioner, or are authorized by petitioner, or are sponsored by petitioner, when, in fact, they are not." (Cancellation petition paragraph 7).
In its answer, registrant denies that priority of use rests in petitioner's favor. On the issue of likelihood of confusion, registrant states that it is "without knowledge or information sufficient to form a belief." (Answer paragraphs 6-9). In addition, registrant alleges that petitioner is barred from seeking cancellation of Registration 1,396,746 by reasons of acquiescence, estoppel and laches.
Both parties filed briefs with this Board and were represented by counsel at a hearing on December 13, 1989.
We will first dispose of the issue of likelihood of confusion. In its brief, registrant now states that it "agrees with petitioner that there is likelihood of confusion between [registrant's] marks CLOTHES THAT WORK [and] CLOTHES THAT WORK. FOR THE WORK YOU DO and the alleged marks of petitioner, CLOTHING THAT WORKS, CLOTHES THAT WORK OVERTIME and CLOTHES THAT WORK HARD." (Registrant's brief page 17). We agree with the parties that at the very least, the contemporaneous use by registrant of CLOTHES THAT WORK and by petitioner of any of its three marks would result in confusion, mistake or deception.
The real issue in this proceeding is priority of use. Petitioner concedes that the record in this case establishes that registrant first used its mark CLOTHES THAT WORK in the summer of 1985, as alleged in Registration No. 1,396,746. (Petitioner's brief page 11).
*2 As for petitioner's mark CLOTHES THAT WORK OVERTIME, petitioner concedes that it made no use of this mark prior to 1987. (Petitioner's brief page 10). Obviously, petitioner does not have priority of use over registrant based upon petitioner's later use of CLOTHES THAT WORK OVERTIME.
As for petitioner's mark CLOTHES THAT WORK HARD, petitioner demonstrated that it began use of this mark for clothing in 1983. However, it appears from the deposition testimony of George MacNaughton (Senior Vice President of petitioner) that petitioner stopped using CLOTHES THAT WORK HARD sometime in 1986 or perhaps early 1987. According to Mr. MacNaughton, petitioner stopped using the mark CLOTHES THAT WORK HARD because it preferred to use in its place the mark CLOTHES THAT WORK OVERTIME. (February 26, 1988 MacNaughton deposition pages 15-16). There is nothing in the testimony of Mr. MacNaughton to suggest that petitioner's non-use of CLOTHES THAT WORK HARD is temporary. Moreover, Mr. MacNaughton's speculation that "there are probably garments in some of the [petitioner's] retail stores that contain that [CLOTHES THAT WORK HARD] label" does little to convince us that petitioner is still using the mark CLOTHES THAT WORK HARD. However, for reasons that will become apparent in a moment, we need not decide whether petitioner has abandoned its mark CLOTHES THAT WORK HARD, nor need we decide whether the marks CLOTHES THAT WORK HARD and CLOTHES THAT WORK OVERTIME are "legal equivalents" such that petitioner's earlier use of CLOTHES THAT WORK HARD can be "tacked" onto its later use of CLOTHES THAT WORK OVERTIME for the purposes of determining priority vis-a-vis registrant's mark CLOTHES THAT WORK.
The reason we need not decide the foregoing issues is because the record in this case clearly establishes that petitioner has made continuous trademark use of the mark CLOTHING THAT WORKS since the fall of 1984, which is nearly one year before registrant commenced use of the extremely similar mark CLOTHES THAT WORK. Petitioner used the trademark CLOTHING THAT WORKS not only on signs displayed in association with various items of apparel, but also on trucks, bags provided to customers and in its Yellow Pages advertising. [FN1]
In its brief, registrant does not seriously dispute the fact that petitioner has made continuous use since 1984 of the term CLOTHING THAT WORKS. However, registrant contends that such use by petitioner was merely as a "descriptive phrase" which afforded petitioner no trademark rights in CLOTHING THAT WORKS. (Registrant's brief page 10). We find registrant's argument to be unconvincing. Petitioner has used the phrase CLOTHING THAT WORKS in very prominent fashion. Such prominent use of CLOTHING THAT WORKS would cause purchasers to associate that phrase with petitioner and its various items of apparel. In short, petitioner has clearly established that it has made use of CLOTHING THAT WORKS as a trademark continuously since 1984. Accordingly, petitioner's trademark rights in CLOTHING THAT WORKS (dating to 1984) are clearly superior to registrant's trademark rights in CLOTHES THAT WORK (dating to 1985).
*3 During the course of this proceeding, registrant acquired from a third party rights to the apparel trademark CLOTHES THAT WORK. FOR THE WORK YOU DO. The third party had commenced use of the mark CLOTHES THAT WORK. FOR THE WORK YOU DO sometime in the 1970's. Registrant argues that the "prior use of the term CLOTHES THAT WORK. FOR THE WORK YOU DO gives [registrant] prior rights in the term CLOTHES THAT WORK." (Registrant's brief page 14). [FN2] In essence, registrant is attempting to "tack" the earlier use of CLOTHES THAT WORK. FOR THE WORK YOU DO onto the later use of CLOTHES THAT WORK in order to obtain priority over petitioner.
It has been noted that the "tacking" of an earlier use of one mark onto the later use of a very similar mark, for the purposes of priority, has been permitted only in "rare instances." 1 J. Gilson, Trademark Protection and Practice, Section 3.03 at pp. 3-48 (1983). A party seeking to rely on the use of an earlier mark may do so only if the earlier mark is "the legal equivalent of the mark in question or indistinguishable therefrom, and would be considered by purchasers as the same mark." Compania Insular Tabacalera v. Camacho Cigars, Inc., 167 USPQ 299, 303 (TTAB 1970). See also Ilco Corp. v. Ideal Security Hardware Corp., 527 F.2d 1221, 188 USPQ 485, 487 (CCPA 1976). Moreover, it has been made clear that for the purposes of tacking, two marks are not necessarily legal equivalents merely because they would be deemed confusingly similar. Compania Insular Tabacalera, 167 USPQ at 303.
Applying the foregoing standard, we hold that CLOTHES THAT WORK. FOR THE WORK YOU DO is not the legal equivalent of CLOTHES THAT WORK, and therefore tacking cannot be permitted. Purchasers seeing these two marks would clearly differentiate them and would simply not consider them to be the same mark.
Finally, as for registrant's affirmative defenses of laches, estoppel and acquiescence, we find that respondent has failed to prove any of the elements of these defenses. Moreover, even if registrant had established the elements of these defenses (which it has not), we would refuse to apply these defenses given the fact that there is a strong likelihood of confusion resulting from the use of such extremely similar marks (CLOTHING THAT WORKS and CLOTHES THAT WORK) on identical goods. See generally 2 J. McCarthy, Trademarks and Unfair Competition, Section 31:12 at pages 581-582 (2d ed. 1984).
Decision: The petition for cancellation is granted.
L. E. Rooney
E. J. Seeherman
E. W. Hanak
Members, Trademark Trial and Appeal Board
FN1. Registrant objects to petitioner's introduction in evidence of Exhibit 16 which is a plastic bag prominently displaying the mark CLOTHING THAT WORKS because this bag was purportedly not provided to registrant during the course of discovery. Petitioner's counsel states that the bag was provided during discovery. Even assuming arguendo that the bag was not provided during discovery, registrant has failed to demonstrate how it was prejudiced by having this bag identified and introduced during petitioner's testimony period. Accordingly registrant's objection is overruled. Moreover, petitioner has clearly established its prior rights in the mark CLOTHING THAT WORKS by means of testimony and other exhibits which were not objected to. Registrant also objects to petitioner's Exhibits 2 and 3 on the basis that these were not provided during the course of discovery. Petitioner's counsel states that these two exhibits were provided during discovery. Again, we find registrant's objection to be without merit. In any event, inasmuch as these two exhibits are labels bearing the mark CLOTHES THAT WORK HARD and not the mark CLOTHING THAT WORKS, their inclusion or exclusion is of no consequence.
FN2. Petitioner has objected to the introduction into evidence of any testimony or material relating to the mark CLOTHES THAT WORK. FOR THE WORK YOU DO on the basis that registrant never amended its answer to plead its ownership of this mark, and instead belatedly tried to introduce evidence relating to this mark during registrant's testimony period. Petitioner's evidentiary objection is overruled. In its answer, registrant did deny that petitioner had priority of use. Registrant was not required in its answer or in an amended answer to set forth reasons why it, and not petitioner, had priority of use. In other words, even if registrant had owned the mark CLOTHES THAT WORK. FOR THE WORK YOU DO since the very beginning of this proceeding (which obviously is not the case), it would not have been required to inform petitioner via its answer that it was going to rely on its prior rights in this other mark.
On another matter, we also note that petitioner has objected to registrant's moving into evidence the entire transcripts of certain of registrant's witnesses simply because petitioner had introduced into evidence selected portions of these discovery deposition transcripts. In response, registrant cites Trademark Rule of Practice 2.120(j)(4) which permits registrant to submit other parts of the deposition "which should in fairness be considered so as to make not misleading what was offered by the submitting party [petitioner]." On this point, petitioner's objection is well taken. Registrant has not shown how those portions of the discovery depositions of registrant's employees submitted by petitioner are misleading when considered by themselves. Moreover, respondent has not attempted to introduce other parts of the depositions, but rather the entire depositions. Nevertheless, in reaching our decision, we have reviewed and taken into account the entire discovery deposition transcripts of William Crotty, Robert S. Crotty and Robert Ponikvar.