Trademark Trial and Appeal Board
Patent and Trademark Office (P.T.O.)
*1 WOMAN'S WORLD SHOPS, INC.
LANE BRYANT, INC.
GILBERT'S FASHIONS, INC.
MANZER SAND ROWE
PHAZE I, WOMEN'S APPAREL, INC.
Concurrent Use No. 724
January 4, 1988
By the Board:
On October 14, 1987, the Board issued a ruling in Opposition No. 71,581 entering judgment against applicant Woman's World Shops, Inc. (Woman's World) in connection with its right to a geographically unrestricted registration for the mark XXTRA SPECIAL for retail clothing store services. The opposition, which was brought by Lane Bryant, Inc. (Lane Bryant), was sustained and registration to applicant was refused. The Board, in the October 14, 1987 ruling, granted Woman's World's amendment converting its application (Serial No. 489,409) to one seeking a concurrent use registration. By this amendment, Woman's World seeks registration of the mark XXTRA SPECIAL for retail clothing store services for the entire United States with the exception of the States of Illinois, New York, New Jersey, North Carolina, Minnesota, Wisconsin, a 100 mile radius around the city of Chicago, Illinois and portions of King County, located in the State of Washington. Woman's World named five exceptions to its exclusive right to use the mark with Lane Bryant named as one of these exceptions. The Board then instituted this Concurrent Use proceeding and indicated that proceedings were suspended pending disposition of Lane Bryant's motion for summary judgment as to Woman's World's right to the geographically restricted registration sought herein. Woman's World has filed a brief in opposition to the motion for summary judgment.
It is Lane Bryant's position, in its motion for summary judgment, that Woman's World adopted, began using and applied to register the mark XXTRA SPECIAL for the recited services with knowledge of Lane Bryant's prior use of the mark EXTRA SPECIAL for retail store services in the field of women's apparel; that Woman's World and Lane Bryant use their substantially identical marks in connection with substantially identical services, namely, retail women's clothing store services specializing in large sizes and that since Woman's World's adoption and use of the XXTRA SPECIAL mark was with full knowledge of LANE BRYANT's prior use of EXTRA SPECIAL for substantially identical services, Woman's World's adoption was not in good faith and Woman's World cannot be considered a lawful concurrent user.
In support of its motion, Lane Bryant has submitted Woman's World's responses to a number of Lane Bryant's discovery requests and portions of a discovery deposition taken by Lane Bryant of Mr. Thomas D. Najour, Executive Vice President and General Manager of the XXTRA SPECIAL Division of Woman's World. [FN1]
In opposing the motion for summary judgment, Woman's World contends that it is a lawful concurrent user; that while Woman's World knew of Lane Bryant's use of the mark EXTRA SPECIAL in the Chicago, Illinois area at the time it adopted the XXTRA SPECIAL mark, mere knowledge by a junior user of a senior user's use of the same or similar mark for the same or similar goods in a geographically remote area of the country is insufficient, in and of itself, to defeat a claim of good faith adoption and use and thereby make the junior user an unlawful concurrent user. Woman's World notes that in the present case, it conducted an investigation of Lane Bryant's use of the EXTRA SPECIAL mark once it learned of said use by virtue of a search report; that this investigation revealed that Lane Bryant operated only one store under the EXTRA SPECIAL mark in Ford City, Illinois and further revealed that Lane Bryant had been operating that store since 1976 and had not expanded under the EXTRA SPECIAL mark since 1976. Woman's World urges that its subsequent adoption of the XXTRA SPECIAL mark was in good faith, in that said mark was used in an area geographically remote from Lane Bryant's territory and remote from any areas where Lane Bryant's reputation under the mark extended and that Woman's World's adoption and use of the mark was in no way intended to trade on Lane Bryant's goodwill and was in no way inimical to any interests of Lane Bryant. Woman's World further maintains that genuine issues of material fact exist herein regarding the geographical scope of use of the parties' marks which preclude summary disposition of this case.
After reviewing the arguments of the parties in support of and in opposition to the motion for summary judgment as well as the supporting documentation therefor, the Board believes that there are no genuine issues of material fact that are in dispute relating to the question of whether Woman's World's adoption and use of the mark XXTRA SPECIAL was as a lawful concurrent user. It is clear from the record that at the time Woman's World adopted and began using the XXTRA SPECIAL mark in 1984 in the State of Washington, Woman's World had actual knowledge of use since 1976 of the mark EXTRA SPECIAL by Lane Bryant in connection with a retail store located in Illinois. It is equally clear that Lane Bryant had not used the EXTRA SPECIAL mark except in connection with the one Illinois store since 1976. While the foregoing facts are not in dispute, what is in dispute and what constitutes the crux of Lane Bryant's motion for summary judgment is the legal significance of these undisputed facts; that is, do the facts relating to Woman's World's adoption and use of the XXTRA SPECIAL mark for a retail clothing store with actual knowledge of Lane Bryant's prior use of the EXTRA SPECIAL mark for a substantially identical store constitute facts which warrant the conclusion that Woman's World's adoption and use of the mark was not a good faith adoption and that, therefore, Woman's World is not a lawful concurrent user within the meaning of Section 2(d) of the Trademark Act? This unresolved issue is, we believe, an issue of law. If we determine that Woman's World is not a lawful concurrent user, summary judgment must be entered against Woman's World and registration refused. If, on the other hand, we conclude that Woman's World is a lawful concurrent user, we will enter partial summary judgment in favor of Woman's World on this issue and the case will proceed to a determination of the remaining factual issues relating to whether there is a likelihood of confusion as a result of the concurrent use, and the geographical scope of any concurrent use registration to which Woman's World may be entitled.
It has frequently been held by this Board that concurrent rights arise where a party, in good faith and without knowledge of a prior party's use in another geographical area, adopts and uses the same or similar mark for the same or like goods or services within its own geographical area with a measure of commercial success and public recognition and without any resulting confusion as to source. See: Gray v. Dan Bargaintown, 229 USPQ 474 (TTAB 1986), aff'd., 823 F.2d 522, 3 USPQ 2d 1306 (Fed.Cir.1987); Pagan-Lewis Motors, Inc. v. Superior Pontiac, Inc., 216 USPQ 897, 899 (TTAB 1982) and cases cited therein. Where a junior user appropriates a mark with knowledge that it is actually being used by another, that use is not believed to be a good faith use although it does not follow that a junior user who has adopted in good faith must forego any further expansion after learning of the senior user. See: Weiner King, Inc. v. Wiener King Corp., 615 F.2d 512, 204 USPQ 820, 829 (C.C.P.A.1980).
*3 In the present case, there is no question that Woman's World adopted a mark virtually identical to a previously used mark for virtually identical services and that this adoption was with full knowledge of the prior use, albeit said use was in a different geographical area. Under these circumstances, it is our view that Woman's World adoption was not a good faith, innocent adoption and that Woman's World's adoption and use of the mark was at its own peril.
Woman's World strenuously urges that the cases of Hanover Star Milling Co. v. Metcalf, 240 U.S. 403 (1916) and United Drug Co. v. Theodore Rectanus Co., 248 U.S. 90 (1918) support its position that it is a lawful concurrent user in that it is a remote user who adopted the mark without an intent to trade upon the goodwill of the senior user's mark. However, the courts have generally held that the remote use defense enunciated in the Hanover and Rectanus cases is unavailable where the junior user adopts a substantially identical mark in a remote geographic area with full knowledge of the senior user's prior use elsewhere. See: Alexander and Coil, Geographic Rights in Trademarks and Service Marks, 68 TMR 101, 103 (March-April, 1978) and cases cited therein. [FN3]
In view of the foregoing, we find Lane Bryant's motion for summary judgment to be well taken and we conclude that Woman's World is not entitled to the concurrent use registration sought. Accordingly, the motion for summary judgment is granted. Woman's World, not being a lawful concurrent user, is not entitled to a concurrent use registration and registration to Woman's World is refused.
J. E. Rice
G. D. Krugman
E. W. Hanak
Members, Trademark Trial and Appeal Board
FN1. This discovery material was obtained during the course of proceedings in Opposition No. 71,581.
FN2. As was the case with the discovery material relied on by Lane Bryant in support of the summary judgment motion, the discovery material relied on by Woman's World in opposition to the summary judgment motion was obtained during the course of proceedings in Opposition No. 71,581.
FN3. We note that in at least one of the appellate court decisions relied on by Woman's World in support of its remote use defense, the marks, while somewhat similar, were not substantially identical as they are in the present case. See: Triumph Hosiery Mills v. Triumph International Corp., 308 F.2d 196, 135 USPQ 45 (2nd Cir.1962). Moreover, the goods in the Triumph case were specifically different, unlike the situation in the present case where the respective services are identical.