Commissioner of Patents and Trademarks
Patent and Trademark Office (P.T.O.)
JIMLAR CORPORATION
v.
THE ARMY AND AIR FORCE EXCHANGE SERVICE
August 6, 1992
*1 Issued: July 23, 1992
Opposition No. 83,984 to
application Serial No. 74/031,110, filed February 21, 1990
Robert L. Epstein, Harold James, and the firm of James and
Franklin for Jimlar Corporation.
Anthony T. Lane, Department of the Army, Office of the Judge
Advocate General for The Army and Air Force Exchange Service.
Before Simms, Seeherman and Hohein
Commissioners
Opinion by Hohein
Member
Applicant, The Army and
Air Force Exchange Service, has filed an application to register the mark
"A CLUB" and design, in the form reproduced below, for "athletic
shoes". [FN1]
Opposer, Jimlar Corporation,
has opposed registration on the basis that it is the owner of a pending
application to register "the mark A-CLUB for footwear"; [FN2] that
action on the application "was suspended on September 20, 1990 pending
disposition of applicant's application, with an indication that if applicant's
application matures into a registration, [the] same will be cited against
opposer's application"; that since prior to the June 1, 1988 dates of
first use alleged in applicant's application, "opposer has used a composite
trademark including A-CLUB in commerce on footwear"; that, "through
such use, the public and trade have come to associate opposer's composite mark
including A-CLUB, and opposer's trademark A-CLUB which forms a prominent
portion thereof [,] with opposer and opposer has become the owner of the
composite mark including A-CLUB and the trademark A-CLUB for use on
footwear"; and that "[t]he mark
which applicant seeks to register, on one hand, and opposer's composite mark
including A-CLUB, on the other hand, and trademark A-CLUB are so similar in
appearance and in commercial impression that, when applied to applicant's
athletic shoes, applicant's mark is likely to cause confusion or to cause
mistake or to deceive the purchasing public".
Applicant, in its answer,
has admitted that opposer submitted an application to register the mark
"A-CLUB" for footwear and that action thereon has been suspended as
alleged by opposer, but the remaining allegations set forth in the notice of
opposition have been denied.
The record consists of
the pleadings; the file of
applicant's involved application; the testimony, on behalf of opposer, of its
executive vice president and secretary, Laurence Tarica; [FN3] and the
testimony, on behalf of applicant, of the senior buyer for its footwear
division, Claude Mikulecky, and that of the retail manager for applicant's post
exchange at Fort Dix, New Jersey, Sabine Ellis-Brown. The parties have filed
briefs, but an oral hearing was not requested. [FN4]
In view of the facts that
the literal portions of the parties' marks are the same and create identical
commercial impressions, applicant concedes in its brief that contemporaneous
use of such marks is likely to cause confusion, mistake or deception since
"the goods are similar" and "the trade channels are not mutually
exclusive". The principal issue to be decided, therefore, is which party has priority of use. [FN5]
*2 According to
the record, opposer "is engaged in the business of styling and sourcing
footwear from around the world and distributing it" in the United States
and other countries. Such footwear includes casual, dress and athletic shoes
for men, women and children. Opposer, which was founded in 1958 as a footwear
importing company, is headquartered in Great Neck, New York. The headquarters,
which is its only United States facility, consists of a showroom and
administrative offices. Opposer's overseas facilities consist of a wholly-
owned subsidiary in Hong Kong and liaison representative offices in Pusan, Korea
and Taichung, Taiwan.
In developing its
footwear, opposer's teams of designers first do market research in styling.
After translating the results thereof into specifications, opposer's design
teams visit opposer's overseas facilities to determine the subcontracting
factories from which opposer will purchase its products. Sample products are
created, usually in the factories opposer purchases its goods from, and are
then revised by the design teams. Once the final samples are produced, they are
sent to opposer's salespeople, who present the samples to prospective
purchasers to obtain orders which opposer then fills. Between one and 101
samples of each particular style are made, with the sample styles being shown
by opposer's salespeople to prospective clients at trade fairs, in the showroom
of opposer's headquarters facility or at opposer's overseas offices. [FN6] When an order is taken, a purchase order
is generated for production of the goods. After the goods are manufactured, an
invoice is sent to the customer at the time the goods are shipped.
Opposer sells its
products to independent footwear retailers, chain store footwear retailers,
department stores and catalog houses as well as to wholesalers. Retailers of
opposer's goods are located in all of the states of the United States.
Advertising for opposer's goods is conducted in both trade and consumer
publications.
In the case of its
"A CLUB" mark, one of opposer's design teams came up with the idea of
the "A CLUB" concept in the fall of 1987. The notion was to take a
group of products from opposer's American Eagle division and create therefrom a
line of casual and rustic footwear to be marketed under the term "A
CLUB". A logo was designed in the fall of 1987; the design was presented
to the product development people in opposer's Korean office; labels and
patches bearing the logo were created; and products displaying the logo made
their debut in the United States by December 1987. In particular, patches
showing the following logo were created and prominently affixed to the outside
shaft of a style of boot known as the Highland:
TABULAR OR GRAPHIC MATERIAL SET FORTH AT THIS POINT IS NOT
DISPLAYABLE
Six to 12 pairs of such boots were made as samples by one of the
subcontractor factories opposer works with in Korea and were transported to the
United States in November 1987. The samples
were shown to prospective clients of opposer at a trade fair, sponsored by the
Fashion Footwear Association of New York, which was held for several days
beginning on December 1, 1987 at the Omni Park Central Hotel in Manhattan. Such
trade show, which is conducted four times a year, is attended by exhibitors and
their potential clients (retailers) from around the country. Opposer had a
"booth," which consisted of a suite of rooms, at the December 1987
trade fair and had several of its salespeople there to exhibit its goods,
including the Highland-style boot with the "A CLUB" patch.
*3 While opposer
has no records that any orders were taken for the Highland-style boot when it
was first displayed at the trade fair in Manhattan, orders therefor were
subsequently placed and the goods, in due course, were manufactured and
shipped. The earliest documented purchase order and corresponding invoice are
dated, respectively, January 5, 1988 and September 9, 1988, and represent a
sale of 24 pairs of Highland-style boots to 'Heel and Toe' on Staten Island,
New York. Other invoices demonstrate that the earliest shipment of such goods
was to Leroy's Shoes and Clothing in Big Bear Lake, California on June 24,
1988, with the last shipment thereof being made to The Shoe Closet in Chicago,
Illinois on October 30, 1989. Thus, during a period of between 16 and 17
months, shipments of the Highland-style boot bearing the patch with the "A
CLUB" composite mark thereon were continuously made by opposer. In
addition, opposer also ran advertisements for such goods showing the mark in the August 1988 editions of the
nationally distributed magazines Mademoiselle and Seventeen. The goods were
also advertised in the trade publication Footwear News.
Although opposer stopped
selling the Highland-style boot after October 1989, Mr. Tarica testified that
opposer intended to continue the use of the "A CLUB" mark, promoting
it as "a shortened version of American Eagle Club". Specifically,
opposer studied the matter of expanding the mark's use; further refined the
logo through the spring of 1990; and, in the summer of 1990, expanded the
graphics associated with the "A CLUB" name and concept. Opposer,
through a licensee, again started to use the mark "A CLUB" on a style
of sneaker known as the Playful in June 1990. Such item had the mark molded
into the rubber back piece of the outside of the shoe. A cloth label, as
depicted on the left below, was affixed to the sock lining of the sneaker
beginning about August 1990 and shoeboxes featuring the mark, as depicted on
the right below, have always been used to ship the goods.
TABULAR OR GRAPHIC MATERIAL SET FORTH AT THIS POINT IS NOT
DISPLAYABLE
Opposer received its earliest order for sneakers of the Playful
style from its licensee, Pic 'N Pay Stores Inc. of Charlotte, North Carolina,
in late August or early September 1990. Shipments of the Playful-style sneaker
to such customer, as shown by the invoices introduced by opposer, first
occurred on January 31, 1991 and the goods are still being sold. [FN7] In
addition, the shoebox graphics incorporating
the "A CLUB" mark have been used on a poster as a point-of-sale
display for opposer's footwear products.
Applicant, as early as
1986, started development of its "A CLUB" mark. Needing a short name
to go in a small space on the back of an athletic shoe, the mark "A
CLUB" was selected as a shortened version of applicant's "Athletic
Club" mark. Applicant obtains the shoes upon which its "A CLUB"
mark is placed by having the senior buyer for its footwear division travel to
Korea or the Far East at least twice a year. While there, Mr. Mikulecky visits
several factories; works with the factories and importers to develop the products;
decides what styles to buy; and executes purchase orders for those items. The
importers then import the shoes for applicant, bringing the goods to
applicant's primary warehouse outside of Atlanta, Georgia, and from there the
shoes are distributed to applicant's outlets throughout the world. In the
present case, the goods bearing the mark applicant seeks to register were
imported for applicant by itsagent, the Envoys division of Kangaroos USA.
Various purchase orders for different styles of athletic shoes were placed by
applicant with its agent on September 9, 1987 and the shoes, bearing the
version of the "A CLUB" mark shown below, were first received by
applicant at its Fashion Distribution Center at Fort Gillen in Forest Park,
Georgia on January 4, 1988, with other styles arriving on January 13, 1988 and
February 29, 1988.
TABULAR OR GRAPHIC MATERIAL SET FORTH
AT THIS POINT IS NOT DISPLAYABLE
*4 From its
Fashion Distribution Center facility, which is located near Atlanta, applicant
ships its athletic shoes, as is the case with other goods it buys, to the
stores where it sells its merchandise. Such stores, when located on an Army
post, are known as post exchanges ("PXs"), while those situated at an
Air Force base are referred to as base exchanges ("BXs"). Applicant,
according to Mr. Mikulecky, moves the goods it receives out of its Fashion
Distribution Center to its stores within less than a week, in most cases, with
its PXs and BXs placing its shoes in racks for sale within two or three days after
receiving them.
Customers for applicant's
goods include active-duty military personnel, their dependents, military
reserves and retirees, and National Guard members. Although PXs and BXs are not
open to the general public, their customers nevertheless shop the same retail
outlets where civilians purchase consumer goods. Applicant advertises its
"A CLUB" shoes in its in-house tabloid, which is distributed to its
customers as a handout at the checkout stands in its post and base exchanges.
Although testifying that
he provided the June 1, 1988 dates of first use stated in the involved
application, Mr. Mikulecky also attested that such dates are in error and that
"[t]he actual date of use of the mark by AAFES is in '87 and ... from
these documents the actual sales of the product would be '88, early '88". The documents referred to,
however, evidence only internal shipments of the goods to applicant by its
agent. The earliest sale to applicant's customers, as indicated by applicant's
other witness, Ms. Ellis- Brown, occurred by March 10, 1988. Specifically, with
respect to a document indicating a shipment of applicant's "A CLUB"
athletic shoes from a distribution warehouse to the PX at Fort Dix, New Jersey,
she testified that the shipment left the warehouse on February 10, 1988 and was
received at Fort Dix on March 7, 1988. Inasmuch as athletic footwear would be
put on the selling floor within two to three days of its receipt, applicant
maintains that its "A CLUB" athletic shoes were on sale by at least
as early as March 10, 1988. [FN8] Sales of such goods by applicant's retailers
have been continuous and, for the most part, have steadily increased. [FN9]
Opposer, as a preliminary
matter, argues that applicant "has made no use of its mark in commerce
which is legally sufficient to support an application for registration".
Specifically, opposer contends that applicant is not the manufacturer or
importer of the shoes its sells under its "A CLUB" mark; that it did
not contract with the manufacturer of the shoes; and that it failed to exercise
any control over the nature and quality of the goods. Opposer consequently
concludes that applicant "has not established any right of ownership"
in the mark sought to be registered.
While such an issue has
not been pleaded, we believe that even if the pleadings
could be deemed to be amended under Fed.R.Civ.P. 15(b) to raise the issue,
[FN10] there is nothing in the evidentiary record to indicate that applicant is
not the owner of the mark it seeks to register because it has not used such
mark as its mark in commerce. It is clear, instead, that applicant selected its
"A CLUB" mark; participated in the development of the styles of the
athletic shoes to which the mark would be applied; and contracted with its agent,
the Envoys division of Kangaroos USA, to import the goods, which Envoys had
produced for applicant abroad. In view thereof, and since there is nothing to
indicate that applicant fails to control the nature and quality of the athletic
shoes it sells under its "A CLUB" mark, opposer's contentions to the
contrary are without merit.
*5 Turning now to
the principal issue of which party has priority of use, we observe that the
earliest date upon which applicant seeks to rely is March 10, 1988, when
athletic shoes bearing its "A CLUB" mark were placed on display for
sale in the PX it operates at Fort Dix. [FN11] Assuming, without presently
deciding, that applicant's March 10, 1988 date of first use has been
established by clear and convincing evidence, [FN12] opposer may nevertheless
prevail in this proceeding, even though its technical trademark use of its
"A CLUB" mark on any of the shipments of its casual footwear to its
customers would be subsequent to that of applicant, [FN13] if it establishes,
as argued in its brief, prior use analogous to trademark use which may be
tacked to the technical trademark use it
made when shipments of its "A CLUB" footwear were later resumed. We
believe that opposer, upon the law and facts, has demonstrated that it is
entitled to do so and that opposer accordingly has priority of use.
The Board, in this
regard, stated in Flatly v. Trump, 11 USPQ2d 1284, 1287-90 (TTAB 1989) that:
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 UPSQ 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
UPSQ 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 Malcolm Nicol & Co. Inc. v. Witco Corp., 881 F.2d
1063, 11 USPQ2d 1638, 1639 (Fed.Cir.1989); and Caesars World, Inc. v. On-Line
Systems Inc., 209 USPQ 334, 336 (TTAB 1980).
*6 In the present
case, we concur with opposer that the display of a sample of its Highland-style
boot, which had affixed thereto a patch prominently featuring the term "A
CLUB," at an industry trade fair or show in Manhattan beginning on
December 1, 1987 constitutes use analogous to trademark use upon which opposer
can rely. Such use, which in essence is a form of advertising for the product,
is plainly an open and public use of the "A CLUB" designation. The
trade show display of the Highland-style boot, with the patch illustrating the
"A CLUB" mark conspicuously appearing on the product, would be
expected to have had a significant impact on prospective customers for
opposer's boots. Notably, it was of a sufficient nature and extent as to
create, in the mind of the potential purchasers of opposer's goods who attended
the several-day affair, an association of the "A CLUB" designation
with opposer's goods, especially in light of the fact that orders for the goods
followed relatively shortly thereafter.
See, e.g., Novel ID v. Hyman Products Inc., 768 F.Supp. 717, 11 USPQ2d 1138,
1141 (C.D.Calif.1989) [exhibition of mark in conjunction with product at trade
show, along with attendant publicity, created prior protectible trademark right];
Geo. Washington Mint, Inc. v. Washington Mint, Inc., 349 F.Supp. 255, 176 USPQ
251, 253-55 (S.D.N.Y.1972) [sample products bearing mark and advertising
thereof, used in taking orders for goods, sufficient to establish priority];
and Duramold Aircraft Corp. v. Timm Aircraft Corp., 62 UPSQ 387, 388 (Comm'r
Pats.1944) [use of mark on demonstrator model of goods and for publicity
purposes results in acquisition of priority].
Moreover, we find that as
featured on the patch attached to the Highland- style boot, the designation
"A CLUB" was so conspicuously used as to create a separate and
distinct commercial impression. As such, the term "A CLUB" functioned
per se as a mark for the goods to which it was affixed. While applicant asserts
that the design elements in the composite "A CLUB" mark, including
the words "BY AMERICAN EAGLE," preclude opposer from tacking its
subsequently discontinued use of such mark to its later use of the "A
CLUB" mark for sneakers, we think that because the term "A CLUB"
in the composite mark separately functioned as a mark for boots, and inasmuch
as such goods are substantially identical products to sneakers, tacking of the
earlier use of the "A CLUB" mark for boots to the later use thereof
for sneakers is permissible.
Specifically, the
separate and distinct commercial impression created by the manner in which the
term "A CLUB" was used in the composite mark for boots functioned as
a mark which is the legal equivalent of, or indistinguishable from, the "A
CLUB" mark opposer uses in connection with sneakers. See Van Dyne- Crotty
Inc. v. Wear-Guard Corp., 926 F.2d 1156, 17 USPQ2d 1866, 1868 (Fed.Cir.1991).
Buyers of opposer's footwear would consider the "A CLUB" designations
to be the same mark since, in each case, the word "CLUB" is
superimposed over a capital letter "A" in a virtually identical
manner, thereby creating the same continuing commercial impression. Similarly,
the types of goods on which the designations "A CLUB" have been used
by opposer are substantially identical. See Big Blue Products Inc. v.
International Business Machines Corp., 19 UPSQ2d 1072, 1075 (TTAB 1991). Here,
the record shows, and applicant in its brief does not contend otherwise, that
the boots and sneakers sold by opposer are both items of casual footwear which
have been marketed to the same types of retailers. Such goods consequently
would be sold through the same channels of trade to the same classes of
purchasers, including the military personnel, dependents and retirees who would
purchase applicant's athletic shoes.
*7 Accordingly,
since contemporaneous use of the mark "A CLUB" by opposer on casual
footwear and the mark "A CLUB" and design by applicant on athletic shoes would be likely to cause confusion,
mistake or deception, as admitted by applicant, and inasmuch as opposer has
demonstrated that it has priority in view of a prior use analogous to trademark
use which it can permissibly tack to its subsequent technical trademark use,
applicant is not entitled to registration.
Decision: The opposition
is sustained and registration to applicant is refused.
R.L. Simms
E.J. Seeherman
G.D. Hohein
Members, Trademark Trial and Appeal Board
FN1. Ser. No. 74/031,110, filed on February 21, 1990, which
alleges dates of first use of June 1, 1988.
FN2. Ser. No. 74/062,037, filed on May 17, 1990, which is
"based on a bona fide intention to use A-CLUB in commerce and setting
forth ... use of a composite trademark including A-CLUB in commerce".
FN3. Applicant, on November 14, 1991, filed a motion to strike
certain portions of Mr. Tarica's oral
deposition, which was taken on August 28, 1991, on the ground that the
testimony is hearsay and thus violates Fed.R.Evid. 802. The Board, in an order
issued on February 6, 1992, indicated that consideration of the motion would be
deferred until final hearing and applicant, in its brief on the case, has
renewed its hearsay objections. Since, however, the objections raised by
applicant are not well taken for the reasons set forth by opposer in the timely
response received on November 29, 1991, the motion to strike is denied.
Nevertheless, even if the testimony sought to be stricken by applicant were
excluded as violative of Fed.R.Evid. 802, the exclusion thereof would make no
difference in the outcome of this proceeding.
FN4. Although the parties, in their pleadings and briefs, have
referred to the marks which they have actually used and/or are using by the
designation "A- CLUB," we note that the evidentiary record, as
detailed in the discussion thereof which follows in this opinion, discloses
that neither party has made use of a mark which includes a hyphen.
Consequently, we have considered opposer's reference to its use of its
"A-CLUB" mark to signify a mark which superimposes the word
"CLUB" over a capital letter "A" and have treated
applicant's utilization of the term "A-CLUB" as a shortened
designation for the "A CLUB" and design mark it seeks to register.
The pleadings, in pertinent part, have accordingly been deemed to be so amended
pursuant to Fed.R.Civ.P. 15(b).
FN5. Preliminarily, we note in this regard that, under Section
7(c) of the Trademark Act, the filing date of opposer's intent-to-use
application for the mark "A-CLUB" for footwear provides opposer with
a constructive use date, upon which it presently can rely, of May 17, 1990. See
Zirco Corp. v. American Tel. & Tel. Co., 21 USPQ2d 1542, 1544 (TTAB 1991).
However, while applicant has admitted the filing of such application, the date
of constructive use provided thereby is subsequent to any of the dates of first
use upon which applicant may possibly rely including, at the latest, the
February 21, 1990 filing date of its involved application. Opposer, therefore,
cannot prevail in this proceeding on the basis of its ownership of its
intent-to-use application. It is entitled, instead, to have the opposition
sustained only if it proves an actual date of first use or use analogous to
trademark use which is earlier than any date of first use which may be proven
or relied upon by applicant.
FN6. For example, opposer created samples of approximately 2,000
styles of footwear in 1988, but took orders for and produced only 250 styles.
FN7. On cross-examination, Mr. Tarica explained that opposer
transacts business as both a principal and as an agent. In the case of the
orders and shipments of the Highland-style
boot, opposer acted as a principal, selling the goods manufactured and imported
for it by the subcontractor it owns, to third parties who had ordered the goods
from opposer's American Eagle division. With respect to the Playful-style
sneaker, however, opposer acts as an agent for its licensee, who actually
purchases the goods and takes title thereto directly from opposer's
subcontractors rather than from opposer itself. Opposer charges certain
commissions for facilitating the transactions and also charges its licensee a
royalty for use of the "A CLUB" mark, which is separately noted on
the invoices it sends to its licensee. On redirect, Mr. Tarica further
testified that when opposer acts as a agent, it monitors and controls both the
manner in which its mark is used on the goods and the nature and quality of
those products.
FN8. The witness, however, did not actually testify to such date
since she was not stationed at Fort Dix until July 1990. Instead, she based her
testimony on her review of the shipping document, her personal knowledge of the
filing system used to keep the PX's records and the seasonal nature of the
particular goods involved.
FN9. According to applicant's Exhibit E, sales of its goods to its
retailers have been as follows:
Period Pairs Amount
-------------------
------- ----------
January--June 1988
5,732 $103,119
July--December 1988
18,640 $335,334
January--June 1989
18,782 $337,888
July--December 1989
1,560 $28,065
January--June 1990
109,870 $2,347,840
July--December 1990
136,361 $2,491,166
FN10. Although applicant, in its brief, responded to the merits of
opposer's argument, the lines of questioning pursued by counsel for the parties
at the depositions of the witnesses indicate that the issue now sought to be
raised by opposer plainly was not tried by the express or implied consent of
the parties.
FN11. Applicant's earlier activities, such as the execution of
purchase orders for the goods through its agent and the agent's subsequent
importation of the goods for applicant, are simply internal transactions which,
not being sufficiently public in character, would not suffice to establish any
earlier dates of first use. See, e.g., Sears, Roebuck & Co. v. Mannington
Mills, Inc., 138 UPSQ 261, 262 (TTAB 1963)
[shipment of goods bearing mark from manufacturer to retailer does not
constitute trademark use by retailer or create any rights in the mark in the
retailer, even though goods are manufactured to retailer's specifications and
mark is applied to goods by manufacturer pursuant to retailer's instructions].
FN12. See Hydro-Dynamics Inc. v. George Putnam & Co. Inc., 811
F.2d 1470, 1 UPSQ2d 1772, 1773-74 (Fed.Cir.1987).
FN13. As mentioned earlier, opposer's first shipment to a customer
of the Highland-style boot, with its "A CLUB" patch affixed thereto
on the outside shaft of the product, took place on June 24, 1988, with the last
such shipment occurring on October 30, 1989. After a hiatus of approximately 15
months, a shipment to its licensee of the Playful-style sneaker, which featured
the mark on both the sock label of the goods and the boxes therefor, commenced
on January 31, 1991 and have continued since then.
24 U.S.P.Q.2d 1216
END OF DOCUMENT