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Archived updates for Wednesday, January 24, 2007

Prior Analogous Use Leads to Trademark Cancellation

In L. & J.G. Stickley, Inc. v. Cosser, Cancellation No. 92040202 (January 11, 2007), the U.S. Trademark Trial and Appeal Board granted the petition to cancel Registration Nos. 2,028,089 and 2,182,183 (below) for furniture polish and furniture on the ground of likelihood of confusion over Stickley's use "analogous to trademark use" of ALS IK KAN for the same goods.

According to the opinion by Administrative Trademark Judge Drost:

The question then becomes whether these uses amount to trade name use or use analogous to trademark use. Certainly, "a trade name lacking any independent trademark or service mark significance may bar registration of a trademark or service mark that is confusingly similar to that trade name." Martahus, 27 USPQ2d at 1850. Furthermore, it "is well settled that one may ground opposition to an application on the prior use of a term in a manner analogous to service mark or trademark use. T.A.B. Systems v. PacTel Teletrac, 77 F.3d 1372, 37 USPQ2d 1879, 1991 (Fed. Cir. 1996).

The cases on analogous use have not required that the opposer proffer survey evidence or other direct evidence of the consuming public's identification of the target word or phrase with the opposer as the source of a given product or service. Instead, the fact finder may infer the fact of identification on the basis of indirect evidence regarding the opposer's use of the word or phrase in advertising brochures, catalogs, newspaper ads, and articles in newspapers and trade publications.

T.A.B. Systems, 37 USPQ2d at 1881.

The evidence concerning analogous use includes petitioner's use of the mark on a display in its showroom and its use of the phrase ALS IK KAN in its 1977 catalog. The . . . mark [also] appeared in its showroom display along with three other marks under the caption "The Pride of Craftsmanship." While the actual display was not available, petitioner's principal described the display as follows: "Well, there was a framed copy of the back page of this book showing the four brands, the Stickley of Fayetteville, the paper label, the Leopold Stickley original, the hand clamp showing Stickley of Fayetteville, and the Gustav mark Als ik kan, which is the joiner's compass with the Als ik kan in the center." Audi dep. at 69. Mr. Cathers, petitioner's historian, and Mr. Noreault, respondent's partner, all were aware of the display. As indicated, the display was in petitioner's showroom. Before the 1980's, there was only one Stickley showroom. Audi dep. at 71. Therefore, the mark would have been visible to all the consumers seeking to buy petitioner's furniture and furniture polish who visited petitioner's only showroom in the 1970's. The CCPA "has recognized that a party may rely upon advertising and promotional use of a term or expression to defeat a right of registration asserted by another who has made subsequent trademark use of that term or expression on the same or similar goods." Miller Brewing v. Oland's Breweries, 192 USPQ at 268 n.7. The public upon seeing the mark would have understood that the term ALS IK KAN and the woodworker's compass were associated with petitioner.

By 1977, petitioner's catalog included the term ALS IK KAN prominently identified as one of its trademarks. Similar uses of the phrase ALS IK KAN also appeared in the 1980 and 1983 catalogs. Stipulated Exhibits 13 and 14. The catalogs show petitioner's prominent use of the phrase ALS IK KAN in a manner that associates the term with petitioner's furniture and furniture polish. This use reinforces the association that members of the public would have drawn between petitioner and the phrase ALS IK KAN.

Thus, we find that petitioner has established by a preponderance of the evidence that it made use analogous to trademark use of the phrase ALS IK KAN and the woodworker's compass in association with its furniture and furniture polish and that this use was established at least by the end of 1977 when its 1977 catalog was issued. . . .

Although we have found that petitioner has priority, which is the first requirement for the ground of likelihood of confusion, before we go on to the second prong of this ground, the issue of likelihood of confusion, we will address other grounds that relate to respondent's use of his mark, namely, the grounds of fraud and abandonment. . . .

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