Christine D. Funcikv.B. Dazzle, Inc.

Trademark Trial and Appeal Board

Jun 4, 1998

No. 92024983 (T.T.A.B. Jun. 4, 1998)

Not citable as precedent
Paper No. 16
EWH/HLJ
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
_____
Trademark Trial and Appeal Board
_____
Christine D. Funcik
v.
B. Dazzle, Inc.
_____
Cancellation No. 24,983
_____
Christine D. Funcik, pro se.
Carole F. Barrett of Severson & Werson for B. Dazzle, Inc.
_____
Before Simms, Hanak and Hohein, Administrative Trademark
Judges.
Opinion by Hanak, Administrative Trademark Judge:
On April 8, 1996 Christine D. Funcik (petitioner) filed
a petition to cancel Registration No. 1,926,429 owned by B.
Dazzle, Inc. (respondent). This registration -- which
issued on October 10, 1995 -– is for the mark KIDS ON THE GO
“for children’s activity books.” The registration was based
on an intent-to-use application which was filed on December
13, 1993. At the request of the Examining Attorney,
respondent disclaimed the exclusive right to use KIDS apart
from the mark in its entirety.
Cancellation No. 24983
2
The sole ground for the petition is petitioner’s
contention that in 1991 she began using the identical mark
KIDS ON THE GO for books, and that the “use of the trademark
KIDS ON THE GO by two similar companies [petitioner and
respondent] is likely to cause confusion, to cause mistake,
or to deceive.” (Petition paragraphs 1d and 2a).
Respondent filed an answer which, among other things,
denied the allegations of paragraphs 1d and 2a of the
petition for cancellation. In addition, the answer set
forth the affirmative defense of laches.
Both parties filed briefs. Neither party requested an
oral hearing.
The record in this case consists of the notarized
statements of petitioner Christine D. Funcik (dated December
5, 1996); petitioner’s former partner Diane Owens (dated
December 5, 1996); (and respondent’s executive vice-
president, Marshall P. Gavin (two statements, one dated
January 31, 1997 and a second dated dated March 14, 1997).
In their briefs, both parties have treated these notarized
statements (and their accompanying exhibits) as constituting
the evidentiary record in this case. While these notarized
statements are not the same as affidavits (see Trademark
Rule 2.123b), because the parties have considered said
notarized statements and accompanying exhibits as
Cancellation No. 24983
3
constituting the evidentiary record in this case, we will do
likewise.
At the outset, one issue should be clarified. In its
answer, respondent denied the following allegation contained
in paragraph ld of the petition for cancellation: “Use of
the trademark KIDS ON THE GO by two similar companies
[petitioner and respondent] is likely to cause confusion, to
cause mistake, or to deceive.” However, in its brief
respondent never argued that the contemporaneous use of the
phrase KIDS ON THE GO by both parties for children’s books
is not likely to cause confusion. Instead, respondent in
its brief argued that (1) petitioner failed to establish
prior rights to the mark KIDS ON THE GO, and that (2)
petitioner’s “claim is barred by the doctrine of laches.”
(Respondent’s brief pages 3-4). Thus, it appears that the
parties are now in agreement that the contemptoraneous use
of the identical mark KIDS ON THE GO in connection with
legally identical children’s books would result in a
likelihood of confusion. We use the term “legally
identical” because the identification of goods in
respondent’s registration (children’s activity books) is
broad enough to include the types of books sold by
petitioner under the identical mark. In any event, we find
that use of the identical mark KIDS ON THE GO for legally
identical children’s books is likely to result in confusion.
Cancellation No. 24983
4
We now turn to the real issue in this case, namely,
priority of use. Respondent’s constructive first use date
is December 13, 1993, the filing date of its intent-to-use
application which matured into Registration No. 1,926,429.
Through her notarized statement, Ms. Funcik established that
she first published a children’s book under the mark KIDS ON
THE GO in June 1991, and that the first interstate sale of a
copy of said book occurred on July 21, 1991. The full title
of said first book is “KIDS ON THE GO in the Charleston
area.” A complete copy of this first book was attached as
exhibit 1 to Ms. Funcik’s notarized statement. The first
paragraph of the preface to this work accurately describes
it as follows: “Whether you are in Charleston [South
Carolina] for a day or a lifetime, this book will tell you
about places to take your children. This is not a sales
tool for businesses nor is it a comprehensive list of all
places you can take children. It is an honest, objective
description of selected parks, attractions and businesses
which we (and our children!) have personally experienced and
feel are worthwhile.” Ms. Funcik attached to her notarized
statement as exhibit 4 a copy of Certificate of Copyright
Registration issued by the Copyright Office for the work
entitled “KIDS ON THE GO in the Charleston area.” The
Certificate of Copyright Registration has an effective date
of registration of June 30, 1991.
Cancellation No. 24983
5
The record reflects that petitioner’s Charleston
version of her KIDS ON THE GO books were published in three
editions with a total of seven printings. The first edition
had printings in June 1991, July 1991 and August l991. The
second edition had printings in March 1993 and June 1993.
Finally, the third edition had printings in April 1995 and
March 1996. Petitioner made of record as exhibits 1-3
complete copies of the following versions of her KIDS ON THE
GO children’s books for the Charleston area: (1) first
edition, first printing (June 1991) entitled “KIDS ON THE GO
in the Charleston area”; (2) first edition, second printing
(August 1991) entitled “KIDS ON THE GO The Charleston area
guide to Great Places to Take Kids”; and (3) third edition,
second printing (March 1996) entitled “KIDS ON THE GO The
Charleston area guide to Great Places to take Kids.”
Photocopies of the covers of these three versions are
attached to this opinion as exhibits 1-3. As is readily
apparent, the covers of these different printings and
editions are varied. However, each displays the mark KIDS
ON THE GO. Not only are the covers different, but more
importantly, the contents are different. As might be
expected, the differences between the first edition printed
in June 1991 (exhibit 1) and the first edition printed in
August 1991 (exhibit 2) are minimal given the fact that the
two printings were only two months apart. Obliviously, one
Cancellation No. 24983
6
would not expect significant changes occurring in children’s
activities during this short time span. Nevertheless, even
in these two printings, we note that there are a number of
differences in the discount coupons appearing at the end of
both printings. For example, the June 1991 printing
includes a coupon for a free sundae from the MCDONALD’S
restaurant chain. The August 1991 printing does not contain
this coupon but rather contains a coupon for a free dessert
from the BURGER KING restaurant chain. Moreover, the final
page of the August 1991 printing is an order form “to order
more copies of KIDS ON THE GO.” The June 1991 printing of
KIDS ON THE GO lacks this order form.
When one compares the March 1996 printing of the third
edition (exhibit 3) with the June 1991 and August 1991
printings of the first edition, there are very significant
differences. Numerous activities have been deleted and
numerous others have been added.
In 1994, petitioner entered into licensing agreements
with different entities in Houston, Texas and Denver,
Colorado to publish a series of KIDS ON THE GO activity
books for those respective geographic areas. There were
three printings of the Houston version of KIDS ON THE GO in
July 1995, November 1995 and June 1996. As of the close of
the trial in this case, there was one printing of the Denver
version of KIDS ON THE GO in August 1996. Attached to this
Cancellation No. 24983
7
opinion are photocopies of the covers of the November 1995
printing of the Houston edition of KIDS ON THE GO and the
August 1996 printing of the Denver version of KIDS ON THE
GO.
As previously noted, respondent’s constructive first
use date of the mark KIDS ON THE GO is December 13, 1993,
the date respondent filed its intent-to-use application
which matured into Registration No. 1,926,429. It is
respondent’s position that petitioner “cannot establish
priority of use for her book title [KIDS ON THE GO] unless
she can show use as part of a series [of books] or secondary
meaning, prior to [respondent’s] first use date of December
13, 1993.” (Respondent’s brief page 2, emphasis added).
We find that prior to December 13, 1993, petitioner had
published and sold in interstate commerce a series of
children’s activity books for the Charleston, South Carolina
area under the mark KIDS ON THE GO. That is to say, prior
to December 1993, petitioner had published not only the
first edition of KIDS ON THE GO with printings in June 1991,
July 1991 and August 1991, but also the second edition of
KIDS ON THE GO with printings in March 1993 and June 1993.
As previously noted, not only did the covers of the various
editions and printings vary, but in addition, the contents
varied. This constitutes a series of books. Obviously, the
two editions and various printings of petitioner’s KIDS ON
Cancellation No. 24983
8
THE GO activity books which appeared prior to December 1993
share a number of similarities. However, by definition,
this is what a series is. A “series” as it pertains to
books is defined as “a number of things produced as a
related group; set, as of books or television programs,
related in subject, format, etc.” Webster’s New World
Dictionary (2d ed. 19970). Moreover, we note that
respondent appears to concede that petitioner had
established a series of KIDS ON THE GO activity books once
her licensees commenced using the mark in connection with
the Houston and Denver versions of KIDS ON THE GO. See
respondent’s brief page 3, footnote 3. However, respondent
notes in footnote 3 that the license agreements for the
Houston and Denver versions of KIDS ON THE GO were not
executed until 1994 and that “accordingly, [petitioner] has
offered no evidence that [her] KIDS ON THE GO was used on a
series of books prior to [respondent’s] first use date” of
December 13, 1993. In order to constitute a series,
petitioner’s books pre-dating December 13, 1993 need not
feature different geographic locations. Prior to December
13, 1993, petitioner had produced five different books (with
different covers and different contents) describing
children’s activities in the Charleston area. This series
of five different books were published and sold under the
mark KIDS ON THE GO. Thus, prior to respondent’s
Cancellation No. 24983
9
constructive first use date of December 13, 1993, petitioner
had established trademark rights in KIDS ON THE GO for a
series of books featuring children’s activities in the
Charleston, South Carolina area. Accordingly, priority of
use rests in favor of petitioner.
Moreover, it should be made clear that respondent has
never contended that the mark KIDS ON THE GO is descriptive
of children’s activity books. Indeed, respondent obtained a
registration of this identical mark for children’s activity
books without any objection by the Examining Attorney that
the mark was descriptive of said books. As previously
noted, Examining Attorney merely required that respondent
disclaim the exclusive right to the term KIDS. In this
regard, we note that at page 2 of its brief, respondent
quotes the following language from Professor McCarthy’s
treatise: “Thus, unlike ordinary marks, literary titles of
single works which are inherently distinctive are not
accorded immediate protection, absent proof of secondary
meaning and consumer recognition.” 1 J. McCarthy, McCarthy
on Trademarks and Unfair Competition Section 10:2 at page
10-5 (4th ed. 1998) (emphasis added). In this case,
petitioner need not establish that her mark KIDS ON THE GO
acquired consumer recognition prior to respondent’s
constructive first use date of December 13, 1993, because
petitioner has proven that prior to December 13 1993 she
Cancellation No. 24983
10
used the inherently distinctive mark KIDS ON THE GO not
simply in connection with a single book, but rather in
connection with a series of books.
Finally, we turn to a consideration of respondent’s
argument that petitioner’s “claim is barred by the doctrine
laches.” (Respondent’s brief page 3). We note that it is
respondent’s contention that petitioner “has had actual or
constructive knowledge of defendant’s use and registration
since at least December 13, 1993.” (Respondent’s brief page
3). With regard to constructive notice, the critical date
is not the application filing date, but rather the date the
“application for registration was published for opposition.”
NCTA v. American Cinema Editors, 937 F.2d 1572, 19 USPQ2d
1424, 1432 (Fed. Cir. 1991). Thus, in this case,
constructive notice runs not from December 13, 1993 but
rather from the publication date of November 8, 1994. The
notarized statement of petitioner establishes that she did
not have actual knowledge of respondent’s then pending
application until December 1994, and that promptly
thereafter she repeatedly telephoned respondent regarding
respondent’s infringement and wrote to respondent in a
letter dated December 22, 1994 in an effort to work with
respondent “in finding a win/win solution to our name
conflict.” (Petitioner’s statement paragraph 9 and exhibit
10). Indeed, respondent even acknowledges at page 3 of its
Cancellation No. 24983
11
brief that petitioner contacted respondent in December 1994,
as shown by the following sentence taken from respondent’s
brief: “Plaintiff [petitioner] has had actual or
constructive knowledge of defendant’s [respondent’s] use and
registration since at least December 13, 1993, yet waited an
entire year [December 1994] before contacting defendant
[respondent].” As previously noted, there is absolutely no
evidence that petitioner had actual knowledge of
respondent’s filing of its application in December 1993. To
the contrary, petitioner has stated that she had no actual
knowledge until December 1994. Moreover, as noted,
constructive notice runs not from the application filing
date of December 13, 1993 but rather from the publication
dated of November 8, 1994.
In light of the forgoing, there was no delay whatsoever
on the part of petitioner in making protest to respondent
regarding respondent’s infringement of petitioner’s mark
KIDS ON THE GO. Respondent’s use of the mark KIDS ON THE GO
subsequent to December 1994 was at respondent’s own peril.
Accordingly, respondent’s laches defense is without merit.
Decision: The petition for cancellation is granted,
Cancellation No. 24983
12
and Registration No. 1,926,429 will be cancelled in due
course.
R. L. Simms
E. W. Hanak
G. D. Hohein
Administrative Trademark
Judges, Trademark Trial and
Appeal Board