Trademark Trial and Appeal Board
Patent and Trademark Office (P.T.O.)
*1 MOORE BUSINESS FORMS, INC.
v.
CONTINU-FORMS, INC.
Cancellation No. 16,361
December 8, 1988
Robert A. Vanderhye, Robert W. Adams and Nixon & Vanderhye
Robert G. McMorrow for Continu-Forms, Inc.
Before Rooney, Simms and Hanak
Members
Opinion by Hanak
Member
Moore Business Forms, Inc. has petitioned to cancel a registration owned by Continu-Forms, Inc. of the mark CLEAN EDGE for "continuous form paper used for word processing machines and other typewriters." [FN1] The registration issued on the Supplemental Register, and it depicts the mark CLEAN EDGE in typed, capital letters.
Petitioner sets forth two grounds for cancellation. First, petitioner alleges that CLEAN EDGE is a generic or apt descriptive term for a type of continuous form paper used in word processors and typewriters, and therefore is incapable of distinguishing respondent's goods from the goods of others. [FN2] Second, petitioner argues that respondent, Continu-Forms, Inc., failed to meet one of the requirements for obtaining a Supplemental Register registration in that respondent was not making exclusive use of the term CLEAN EDGE for the one year preceding March 30, 1983, the date on which respondent amended its application for CLEAN EDGE from one seeking registration on the Principal Register to one seeking registration on the Supplemental Register. Petitioner cites Section 23 of the Lanham Trademark Act of 1946 (15 U.S.C. § 1091). [FN3]
Respondent Continu-Forms, Inc. denies that CLEAN EDGE is a generic or apt descriptive term for a type of continuous form paper for use in word processors and typewriters. As for the one year period of exclusive use required by Section 23 of the Lanham Act, it is respondent's position that petitioner itself did not make use of the term CLEAN EDGE as a trademark in the year preceding March 30, 1983, and therefore petitioner cannot claim that respondent's use during this period was non-exclusive. [FN4]
Both parties filed exhaustive briefs and attended a hearing held before this Board on October 18, 1988. We will consider first whether respondent made exclusive use of the term CLEAN EDGE in the one year preceding May 2, 1983, respondent's effective filing date on the Supplemental Register. At the outset, we note that on its face, Section 23 of the Lanham Act speaks in terms of "lawful use in commerce ... for the year preceding the filing of the application," and not in terms of "exclusive use." However, the term "lawful" in Section 23 has been interpreted to mean "exclusive" for the reasons set forth in Kwik-Kopy Franchise Corp. v. Dimensional Lithographers, 173 USPQ at 381:
Prior to the Act of 1946, provision was made under the Act of March 19, 1920 for the registration of descriptive marks. That statute required 'bona fide' use for not less that one year preceding an application for registration. The requirement of that statute as to bona fide use has been uniformly interpreted to mean use to the exclusion of others for at least one year preceding the date of the filing of the application....
*2 The Supplemental Register was established by Section 23 of the [Lanham] Act of 1946 as a continuation of the register provided for in Section 1(b) of the Act of 1920 ... Hence, the corresponding provisions of the two statutes must be similarly construed. Since 'bona fide' has been consistently interpreted to mean 'exclusive,' the term 'lawful' in Section 23 of the Act of 1946 must be similarly construed, as was done Metalworking Publishing Company, Inc. v. Jenkins Publishing Company, 130 USPQ 371 (TTAB 1960), aff'd, 137 USPQ 358 (CCPA 1963).
See also Bruce Foods Corp. v. B.F. Trappey's Sons, Inc., 192 USPQ 725, 727- 728 (TTAB 1976); Szyferblatt Optical v. Universal Shellac & Supplies, 198 USPQ 115, 119 (TTAB 1978).
Respondent acknowledges that during the one year "incubation" period, petitioner used the term CLEAN EDGE in the text of its catalogues to describe petitioner's continuous form paper. However, it is respondent's position that such ordinary, descriptive use by petitioner of this term in sentences during the one year incubation period does not render respondent's use during the incubation period non-exclusive. Respondent alleges that its use would be non-exclusive only if petitioner during the one year incubation period had made use of CLEAN EDGE as a trademark or as a trade name. [FN5]
There are two flaws in the position taken by respondent. First, in its Amended Petition for Cancellation and in its briefs, petitioner makes it clear that it is relying not only upon its own use of CLEAN EDGE during the one year incubation period, but also upon the uses by various third parties of CLEAN EDGE in connection with continuous paper during the one year incubation period. In seeking to cancel a Supplemental Register registration on the basis that the registrant (respondent) did not made exclusive use of the mark during the one year incubation period, a petitioner need not necessarily show that it used the term during the one year period. A showing that the term was used by a third party in connection with the relevant goods or services during the one year period may be sufficient. See Automatic Washer Co. v. Easy Washing Machine Corp., 98 F.Supp. 445, 89 USPQ 524, 529 (N.D.N.Y.1951) ("The continuous use of the word 'Spin-dry' by [a third party] would seem also to contradict [registrant's] statement as to its exclusive or bona fide use.").
It is true that during the one year incubation period, petitioner used CLEAN EDGE solely in a subordinate, descriptive fashion within the text of its catalogues. However, during this one year period a number of third parties used this term in a very prominent fashion in conjunction with continuous form paper. Examples of the usage of the term CLEAN EDGE by three different companies during this one year period are reproduced below:
TABULAR OR GRAPHIC MATERIAL SET FORTH AT THIS POINT IS NOT DISPLAYABLE
*3 Arguments can be made that some of the foregoing third-party uses of CLEAN EDGE constitute trademark usage, or something approaching trademark usage. Likewise, arguments can be made that the foregoing third-party uses of CLEAN EDGE are simply uses of this term in a very prominent, descriptive manner. Whatever the case may be, respondent itself categorizes the foregoing third-party uses of CLEAN EDGE as uses in "a trademark sense." Therefore, even assuming arguendo that respondent was correct in its position that only trademark or trade name usage (and not descriptive usage) during the one year incubation period would defeat respondent's claim of exclusivity, we find that respondent's own characterization of these prominent, third-party uses of CLEAN EDGE as trademark uses defeats respondent's claim of exclusivity. On this basis alone, we would grant petitioner's cancellation petition.
However, respondent's position on the issue of exclusivity during the one year incubation period suffers a second flaw, and that is respondent's contention that it is only trademark or trade name usage--and not descriptive usage--which will defeat its claim of exclusivity. Respondent cites no case law to support its theory that only trademark or trade name usage defeats a claim of exclusivity. In point of fact, the limited authority on this issue indicates that at the very least, usage by the petitioner or a third party of the term in a prominent, descriptive manner in connection with the relevant goods or services during the one year incubation period would defeat the exclusive use requirement for a registration on the Supplemental Register. See Automatic Washer Co. v. Easy Washing Machine Corp., 89 USPQ at 529 ("[Registrant] claims that the words as used by [the third party] were descriptive or as a slogan. The Court is inclined to agree with that contention.... [I]t may well be that [the third party's] use of the word 'Spin-dry' was at all times a functional or descriptive use and never reached the dignity of a trade mark use. In any event the use [by others] of the terms ... forecloses a finding that [registrant] had the exclusive use of the word "Spin-dry" as required by the 1920 Act."); Kwik-Kopy Franchise Corp. v. Dimensional Lithographers, 173 USPQ at 381 ("It would seem to be contrary to law to grant an owner of a Supplemental Register registration the right to sue a person for infringement when the person had a lawful right to use the merely descriptive term at the time the application for such registration was filed."); and 1 J. McCarthy, Trademarks and Unfair Competition, § 20:22 at p. 1077 (2d ed. 1984) ("A Supplemental Registration can be canceled at the behest of a Petitioner who was using the term in a descriptive sense during the one-year period of use claimed by registrant."). [FN6]
Having determined that respondent failed to meet the one year exclusive use requirement of Section 23 of the Lanham Trademark Act, we need not decide whether CLEAN EDGE is a generic or apt descriptive term for a type of continuous form paper used in word processors and typewriters.
*4 Decision: The cancellation petition is granted.
L. E. Rooney
R. L. Simms
Members, Trademark Trial and Appeal Board
FN1. Registration No. 1,253,386 which issued on the Supplemental Register on October 4, 1983.
FN2. Throughout its briefs, petitioner depicts "clean edge" in lower case letters surrounded by quotation marks to indicate that it is a generic or apt descriptive term. For the sake of consistency, we will depict this term in solid capital letters, thus, "CLEAN EDGE." However, our depiction of CLEAN EDGE in solid capital letters is not to be interpreted as any indication that this term is or is not generic for a type of continuous form paper used in word processors and typewriters.
FN3. Respondent filed its application seeking registration of CLEAN EDGE on the Principal Register on January 13, 1982. It claimed first use of this term anywhere and in commerce on November 1, 1981. In response to an Office Action refusing registration on the basis that CLEAN EDGE was merely descriptive as applied to respondent's goods, respondent on March 30, 1983 amended its application from one seeking registration on the Principal Register to one seeking registration on the Supplemental Register. Respondent's paper of March 30, 1983 contained a technical defect which was corrected in a telephone conference with the Examining Attorney on May 2, 1983. Thus, respondent's effective filing date became May 2, 1983, and therefore the one year period of exclusive use required by Section 23 of the Lanham Act would be measured from that date. See Kwik-Kopy Franchise Corp. v. Dimensional Lithographers, 173 USPQ 378, 380 (TTAB 1972). Both petitioner and respondent have incorrectly assumed that the one year "incubation" period would be measured from March 30, 1983. However, as will be seen from the facts of this case, it does not matter whether we consider events which transpired in the one year preceding May 2, 1983, or events which transpired in the one year preceding March 30, 1983. Finally, we note that Registration Certificate No. 1,253,386 erroneously lists January 1, 1981 as the date of first use. The correct date is November 1, 1981.
FN4. Again, while it makes no difference on the facts of this case, the correct period is the one year preceding May 2, 1983.
FN5. As an aside, respondent notes that it never even learned of petitioner's descriptive use of CLEAN EDGE during the one year incubation period until discovery took place in this cancellation proceeding (December 1987), which was long after respondent obtained its registration for CLEAN EDGE.
FN6. While Professor McCarthy's statement may suggest that the petitioner himself must have utilized the term during the one year period, as stated earlier in our opinion, registrant's claim of exclusive use can also be defeated by a showing that the term was utilized in conjunction with the relevant goods and services by a third party during the one year period.