Claude Jeanv.Limited Express, Inc. and Structureco, Inc.

Trademark Trial and Appeal Board

Dec 5, 1997

CANC (T.T.A.B. Dec. 5, 1997)

THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB DEC 5, 97
Paper No. 114
EWH/TW
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
_____
Trademark Trial and Appeal Board
_____
Claude Jean
v.
Limited Express, Inc. and Structureco, Inc.
_____
Cancellation Nos. 20,428 and 20,511
Opposition No. 87,066
_____
Pierre Phillippe Barkats of Barkats & Associates, Chartered
for Claude Jean.
Frank J. Colucci of Colucci & Umans for Limited Express,
Inc. and Structureco, Inc.
_____
Before Simms, Hanak and Hohein, Administrative Trademark
Judges.
Opinion by Hanak, Administrative Trademark Judge:
In these consolidated proceedings, Claude Jean seeks to
cancel Registration Nos. 1,567,276 and 1,673,086 now owned
by Structureco, Inc. and opposes Application Serial No.
74/123,596 also now owned by Structureco, Inc. The two
registrations and application were originally in the name of
Limited Express, Inc. which subsequently assigned all three
to Structureco, Inc. For ease of reference, Limited
Cancellation No. 20,428 and 20,511; and Opposition No. 87,066
2
Express, Inc. and Structureco, Inc. will be referred to
collectively as “Structureco.”
Registration No. 1,567,276 is for the word mark
STRUCTURE for women’s pants and tops and men’s shorts, pants
and tops. Registration No. 1,673,086 is for the word mark
STRUCTURE for retail clothing store services. Finally,
Application Serial no. 74/123,596 is for the mark STRUCTURE
and design for clothing, namely, shirts, sweaters, sweat
pants, sweat shirts, pants, shorts, swimwear, jackets,
coats, cloth belts, socks and ties and retail clothing store
services.
In its petitions for cancellation and notice of
opposition, Claude Jean set forth two grounds. First,
Claude Jean alleged that long prior to Structureco’s alleged
first use dates, Claude Jean was “exporting clothing from
France to the United States and selling said clothing
bearing the mark STRUCTURE in the United States in
interstate commerce through a licensee.” (Petitions for
cancellation and notice of opposition paragraph 1). Claude
Jean further alleged that Structureco’s marks were either
identical to or extremely similar to Claude Jean’s mark such
that the contemporaneous use of the various marks is likely
to result in confusion. Second, Claude Jean alleged that
“on information and belief [Structureco], prior to and at
the time of filing the [the three] application[s] … had
Cancellation No. 20,428 and 20,511; and Opposition No. 87,066
3
knowledge of [Claude Jean’s] prior use and [Claude Jean’s]
right to use the mark STRUCTURE in commerce and,
accordingly, the registration[s] was obtained fraudulently…
[and the application was made fraudulenty.]”
In response, Structureco denied the pertinent
allegations of the petitions for cancellation and notice of
opposition and set forth the affirmative defense of
abandonment of the mark STRUCTURE by Claude Jean.
These proceedings were initiated in January and
February of 1992. To say the least, the file history of
these consolidated proceedings is quite large and complex.
There have been amendments to the pleadings; numerous
discovery disputes; and multiple motions for summary
judgment filed by both Claude Jean and Structureco. In view
of the complex history of these proceedings, it should be
made clear that there are two matters which are not
presently before this Board. First, in 1992 Claude Jean
filed a motion for summary judgment in Cancellation No.
20,428 seeking cancellation of Registration No. 1,567,276 on
the basis that Structureco committed fraud on the PTO by
representing to the PTO that it was using the trademark
STRUCTURE on women’s apparel when in fact Structureco knew
that this was a false representation. In an order dated
December 29, 1992, this Board denied Claude Jean’s motion
for summary judgment in Cancellation No. 20,428 because,
Cancellation No. 20,428 and 20,511; and Opposition No. 87,066
4
among other reasons, Claude Jean’s petition for cancellation
did “not plead the type of fraud which forms the basis for
Claude Jean’s motion for summary judgment.” The Board
allowed Claude Jean time to amend its petition in
Cancellation No. 20,428 to plead with particularly the type
of fraud set forth in Claude Jean’s motion for summary
judgment. As Claude Jean has acknowledged, “Claude Jean is
no longer pursing such a claim” for this particular type of
fraud. (Claude Jean’s brief page 6, footnote 1).
Second, again with regard to Cancellation No. 20,428,
this Board in an order dated August 18, 1994 noted that “to
the extent that Claude Jean intends … to state a separate
ground of cancellation, i.e., that Structureco had not used
its mark in commerce as of the application filing date …
Claude Jean must plead facts sufficient to support that
claim.” (Board order page 2, footnote 2). At page 39 of
its brief, Structureco has correctly noted that “Claude Jean
never amended its pleadings to state a separate ground of
cancellation based on nonuse.” In his reply brief, Claude
Jean has clarified his position by noting that he “is not
arguing non-use by Structureco as a basis for cancellation.
Instead, Claude Jean is asserting Claude Jean’s own prior
use as a basis for cancellation.” (Claude Jean’s reply
brief page 14, footnote 8). Thus, with regard to
Structurerco’s Registration No. 1,567,276, the question of
Cancellation No. 20,428 and 20,511; and Opposition No. 87,066
5
whether Structureco used the mark STRUCTURE as of the
application filing date (February 1, 1989) is an unpleaded
issue which is not before this Board. Structureco’s dates
of first use of STRUCTURE are relevant only in connection
with Claude Jean’s Section 2(d) claim (i.e. priority of use
and likelihood of confusion).
Finally, because this matter was raised at pages 9 and
10 of Structureco’s brief, this Board needs to correct an
error made in its order of August 18, 1994. In footnote 2
of that order, the Board incorrectly stated, in part, that
“if Claude Jean intends to rely on a theory of bad faith
adoption [of the mark STRUCTURE by Structureco], he must
plead, as a separate ground for cancellation, facts
sufficient to support that claim.” In point of fact, as
previously noted, Claude Jean from the very beginning
pleaded with specificity in all three proceedings the
allegations that Structureco adopted the mark STRUCTURE with
full knowledge of Claude Jean’s purported prior rights in
the mark and thus Structureco purportedly committed fraud.
Structureco has wisely chosen to address at pages 10-20 of
its brief the merits of Claude Jean’s bad faith/fraud claim,
as opposed to merely relying upon the fact that “Claude Jean
did not amend his pleadings subsequent to the Board’s
[partially erroneous] order of August 18, 1994.”
(Structureco’s brief page 9).
Cancellation No. 20,428 and 20,511; and Opposition No. 87,066
6
The large record in this case includes, among other
things, the testimony depositions of Mark Lavine (a former
vice-president of “an affiliated company” of Structureco)
and Lynda Liuzzo taken by Claude Jean, and the testimony
depositions of Michael Weiss (former president of
Structureco’s predecessor), John Kyees (executive vice-
president of Structureco’s predecessor) and Phillip Mallott
(a former executive vice-president of Structureco) taken by
Structureco.1
Turning to the merits of this proceeding, Structureco
has established through the testimony of Mr. Weiss and Mr.
Kyees that Structureco first sold apparel with the STRUCTURE
trademark affixed thereto in the United States in early
1989. Moreover, Structureco has also established that it
first used STRUCTURE as a service mark for retail clothing
store services in the United States in the fall of 1989. By

1 Structureco has moved to strike the deposition testimony of
Mark Lavine. Structureco notes that the one exhibit to Mr.
Levine’s deposition (a Diners Club receipt) was not produced
during the discovery period but instead was attached “as an
exhibit to Claude Jean’s motion for summary judgment dated March
9, 1994.” (Structureco’s brief page 52). However, Mr. Lavine’s
deposition was not taken until July 25, 1995, over 1 year and 4
months after the Diners Club receipt was provided to Structureco.
Moreover, there is no indication that Claude Jean had knowledge
of this Diners Club receipt during the discovery phase. In any
event, Structureco has failed to demonstrate any prejudice in the
taking of Mr. Lavine’s testimony. Finally, it must be remembered
that Mr. Lavine was in no way affiliated with Claude Jean, but
rather was, as acknowledged by Structureco, “a former merchandise
vice president of an affiliated company of Structureco.”
(Structureco’s brief page 5). Accordingly, in reaching our
decision, we have considered the deposition testimony of Mr.
Lavine.
Cancellation No. 20,428 and 20,511; and Opposition No. 87,066
7
December 1995, Structureco had opened over 500 STRUCTURE
retail stores and had sold over $2 billion worth of
STRUCTURE apparel in the United States.
In contrast, Claude Jean has conceded that there were
no sales in the United States of apparel bearing Claude
Jean’s STRUCTURE trademark in 1987, 1988 or 1989. (Liuzzo
deposition pages 85-86, 105). The first sales of apparel
bearing Claude Jean’s STRUCTURE trademark in the United
States did not occur until 1990. Claude Jean’s total sales
in the United States of the STRUCTURE apparel in 1990
amounted to approximately $500. (Liuzzo deposition 105).
In early 1991 there were additional sales in the United
States bearing Claude Jean’s STRUCTURE trademark which again
totaled approximately $500. (Liuzzo deposition 106). After
early 1991, Claude Jean has conceded that its marketing
efforts in the United States were suspended. (Claude Jean’s
brief page 31).
While these very minimal sales in the United States of
apparel bearing Claude Jean’s STRUCTURE trademark occurred
long after Structureco’s first use of STRUCTURE as both a
trademark and as a service mark, nevertheless, Claude Jean
argues that “actual sales are not necessarily the only way
to establish first use for the purposes of priority.”
(Claude Jean’s brief page 28). Claude Jean contends that
its “priority begins at least as early as the shipment of
Cancellation No. 20,428 and 20,511; and Opposition No. 87,066
8
samples [of Claude Jean’s STRUCTURE shirts] to his
licensee’s marketing representative in the United States,
Lynda Liuzzo, which occurred shortly after September 8,
1987, the date on which Ms. Liuzzo signed the marketing
agreement.” (Claude Jean’s brief page 25).
However, Claude Jean does acknowledge that “the qualifying
first shipment [for priority purposes] must be, of course,
followed by ‘activity or circumstances that would tend to
establish a continuing effort or intent to place the
products so shipped on the market on a commercial scale.’”
[Claude Jean’s brief page 29 citing Weight Watchers
International v. Rokeach, 211 USPQ 700, 710 (TTAB 1981)].
We find that Ms. Liuzzo’s activities were, at all times,
insufficient to establish in the United States priority for
Claude Jean in the mark STRUCTURE.
During the 1980’s and early 1990, Ms. Liuzzo worked as
a waitress and later as a manager of various restaurants.
During approximately 1985 or 1986, Ms. Liuzzo and a friend
sold unspecified types of apparel to “appointment clientele”
in an apartment building in Chicago. Most of the sales of
this unspecified apparel were made by “word of mouth” to
acquaintances of Ms. Liuzzo and her friend. This business
lasted approximately a year or a year and a half. (Liuzzo
deposition pages 8-10).
Cancellation No. 20,428 and 20,511; and Opposition No. 87,066
9
During a trip to Paris, Ms. Liuzzo attended a clothing
show and met her uncle, who was “involved with a company
called Jacques Lauran International.” (Luizzo deposition
page 12). Thereafter, Ms. Liuzzo entered into a “Marketing
Representative Contract” with Jacques Lauran International.
In the contract, Jacques Lauran is described as the
“worldwide license-holder for the STRUCTURE trademark.” The
contract was issued in France on September 8, 1987, and
shortly thereafter Ms. Liuzzo signed the contract.
At this point three things should be clarified. First,
the Marketing Representative Contract makes no mention
whatsoever of Claude Jean. Second, there is nothing in the
record to indicate that Jacques Lauran International is a
licensee of or has any other relationship with Claude Jean.
Finally, Ms. Luizzo acknowledged that she never had an
agreement with Claude Jean. (Luizzo deposition page 84).
Thus, as a preliminary matter, there is an evidentiary gap
which precludes us from find that the activities of Ms.
Luizzo in attempting to sell STRUCTURE shirts in the United
States inured to the benefit of Claude Jean. While Ms.
Luizzo’s activities may have inured to the benefit of Jaques
Lauran International, there is simply nothing in the record
to demonstrate these activities in turn inured to the
benefit of Claude Jean.
Cancellation No. 20,428 and 20,511; and Opposition No. 87,066
10
However, even assuming for the sake of argument that
Ms. Luizzo’s activities in the United States in attempting
to sell STRUCTURE shirts inured to the benefit of Claude
Jean, we find that her activities were, in their totality,
simply insufficient to establish priority on behalf of
Claude Jean over Structureco. At the outset, we note that
until the 1990 sales, there is no written material
documenting any of Ms. Luizzo’s purported activities during
1987, 1988 or 1989 (other than, of course, the
aforementioned Marketing Representative Contract).
Moreover, we note that Ms. Luizzo’s testimony has, for the
most part, been quite vague as to dates and the specifics of
her activities. For example, Ms. Luizzo was unable to
recall when she received her first “samples” of STRUCTURE
shirts other than to note that “it had to be within a year’s
period” of the September 8, 1987 date appearing on the
Marketing Representative Contract. (Luizzo deposition pages
15-16). If Ms. Luizzo’s very vague recollection was off by
even a few months, then it could well have had been that she
did not even receive “samples” of STRUCTURE shirts from
Jacques Lauran International until after Structureco
commenced use of STRUCTURE on apparel in early 1989.
However, if we again give Ms. Luizzo’s vague
recollection the benefit of the doubt and assume that she
received the “samples” of STRUCTURE shirts prior to 1989,
Cancellation No. 20,428 and 20,511; and Opposition No. 87,066
11
her activities in attempting to promote their sale were, to
say the least, extremely limited and quite ineffective
inasmuch as the first sales did not occur until 1990, and
indeed when they did occur, these sales were, in commercial
terms, minimal (i.e. about $1000). Ms. Luizzo testified
that in the late 1980’s, while working full time at a
restaurant, she would “three, four times a week … spend
sometime” on the STRUCTURE shirts. (Luizzo deposition page
24). This does not mean that on three or four occasions per
week she actually visited a potential customer for STRUCTURE
shirts. Rather, it simply means that three or four times
per week she would attempt “to find somebody” or “try to
follow up to make plans.” (Luizzo deposition page 24).
Again, there is no documentation whatsoever showing that Ms.
Luizzo spent any time promoting STRUCTURE shirts during
1987, 1988 or 1989. Ms. Luizzo further testified that she
showed STRUCTIRE shirts at the Chicago Merchandise Mart and
that this showing she thought “had to be ’89,” although she
did not “really remember.” Indeed, she could not even
remember the season when this first show purportedly
occurred or what the weather was like when this show
purportedly occurred. (Luizzo deposition page 26). What is
clear is that Ms. Luizzo acknowledged that at this show and
at two subsequent shows she did not take any orders for
STRUCTURE shirts. (Luizzo deposition page 87). Moreover,
Cancellation No. 20,428 and 20,511; and Opposition No. 87,066
12
Ms. Luizzo also stated that when she attended these three
shows, the listing for her booth was under the name of
Jacques Lauran International and not under the STRUCTURE
trademark. (Luizzo deposition page 89). Indeed, there is
nothing in the record to indicate that the name Claude Jean
appeared in connection with any of Ms. Luizzo’s activities
from 1987 to the present. Ms. Luizzo was clear that at no
time did she engage in advertising in newspapers or
magazines or on TV or radio for STRUCTURE shirts. (Luizzo
deposition page 107). Finally, Ms. Luizzo conceded that at
no time did she make any profit in connection with the very
limited sales of STUCTURE shirts which occurred in 1990 and
1991. (Luizzo deposition page 119).
In considering Ms. Luizzo’s activities, it must be
remembered that Claude Jean has consistently alleged that
its mark STRUCTURE was and is famous in the United States.
(Claude Jean’s brief page 36). If Claude Jean’s mark
STRUCTURE was indeed famous in the United States, we
seriously doubt that Claude Jean would have allowed its
purported licensee Jacques Lauran International to appoint
as its marketing representative for the largest market in
the world (the United States) a person who had very minimal
prior experience in the apparel industry and a person who
was working full time in the restaurant business. Moreover,
if Claude Jean’s STRUCTURE mark was indeed famous in the
Cancellation No. 20,428 and 20,511; and Opposition No. 87,066
13
United States for apparel, then it is hard to explain why
Ms. Luizzo could not make any sales of apparel bearing this
famous mark during 1987, 1988 and 1989, and that thereafter
in 1990 and 1991, she could make only minimal sales of about
$1000. Finally, it should be noted that Claude Jean
previously owned Registration No. 1,189,990 for the mark
STRUCTURE and design for, among other goods, shirts. This
United States registration issued on February 16, 1982.
However, Claude Jean has put in no testimony or other
evidence explaining why he failed to file a section 8
affidavit by February 1988 to maintain this registration if
indeed Claude Jean’s mark was in use in the United States
through the activities of Ms. Luizzo.
Before concluding our discussion of Ms. Luizzo’s
activities, we note that in his reply brief Claude Jean
raises the supplemental argument that “in addition, the
activities of Lynda Luizzo constitute a ‘use analogous to
trademark use.’” (Claude Jean’s reply brief page 12). It
is clear “that activities claimed to constitute analogous
[trademark] use must have substantial impact on the
purchasing public.” T.A.B. Systems v. PacTel Teletrac, 77
F.3d 1372, 37 USPQ2d 1879, 1882 (Fed. Cir. 1996). Moreover,
Ms. Luizzo’s activities not only “must have reached a
substantial portion of the public that might be expected to
purchase the [goods],” but in addition, her activities must
Cancellation No. 20,428 and 20,511; and Opposition No. 87,066
14
be “of sufficient clarity and repetition to create the
required identification” of a single source with the mark
STRUCTURE. PacTel Teletrac, 37 USPQ2d at 1883. We find
that Ms. Luizzo’s very minimal activities fall far short of
meeting the “analogous use” test as set forth in PacTel
Teletrac.
Having determined that Ms. Luizzo’s activities in the
United States were not sufficient to give Claude Jean
priority over Structureco vis-a-vis the mark STRUCTURE, we
turn to a consideration of whether Claude Jean has
established that prior to Structureco’s first use of
STRUCTURE in early 1989, Claude Jean’s mark STRUCTURE was
famous in the United States based upon his use of that mark
in France. Claude Jean’s claim that his mark was famous in
the United States based upon its use in France not only
forms the second prong of Claude Jean’s priority claim, but
also constitutes the basis for Claude Jean’s claim that
Structureco committed fraud on the PTO. Claude Jean has
articulated his two claims in the following manner: (1)
“Since Claude Jean’s use of STRUCTURE in France was famous
in the United States, he is entitled to priority based on
his use of the mark in France”. (Claude Jean’s brief page
35); and (2) “Structureco fraudulently procured the two
registrations [and presumably fraudulently filed the
application] for STRUCTURE by failing to disclose in its
Cancellation No. 20,428 and 20,511; and Opposition No. 87,066
15
applications that the mark was a French mark well-known in
the United States”. (Claude Jean’s brief page 39). To be
perfectly clear, Claude Jean has acknowledged that “in
general, foreign uses of a mark are insufficient to
establish priority over a later domestic use of the mark. …
However, there is an exception to this rule in the case of
marks that are famous and thus are known to the American
public,” citing Person’s Co. Ltd. v. Christman, 900 F.2d
1565, 14 USPQ2d 1477 (Fed. Cir. 1990). (Claude Jean’s brief
page 35). In Person’s, the Court noted that “knowledge of a
foreign use does not preclude good faith adoption and use in
the United States,” with two possible exceptions, one of
which is relied upon by Claude Jean, namely, where “the
foreign mark is famous here [in the United States].”
Person’s, 14 USPQ2d at 1480-81.
To be blunt, not only has Claude Jean failed to
establish that his mark STRUCTURE was at any time famous in
the United States, but in addition, Claude Jean has failed
to establish that his mark STRUCTURE was at any time famous
in France. Claude Jean has simply not made of record any
evidence showing the extent of sales of his STRUCTRUE
apparel in France. Moreover, Claude Jean has not made of
record any evidence showing the extent of advertising
dollars or francs spent in France promoting Claude Jean’s
STRUCTURE apparel. Thus, not only has Claude failed to
Cancellation No. 20,428 and 20,511; and Opposition No. 87,066
16
prove that his mark STRUCTURE is or was famous in the United
States, Claude Jean has failed to prove that his mark is or
was famous in France.
To be perfectly clear, Claude Jean has referred to a
study showing “that between 1983 and 1990, American citizens
made VAT [value added tax] refund claims from French customs
for STRUCTURE clothing bought in France and valued at more
than $62,000.” (Claude Jean’s brief page 36). In response,
Structureco has noted that this “sales summary is the sole
evidence Claude Jean relies on to argue his use of the mark
STRUCTURE in France was famous in the United States.”
Structureco then goes on to note that “sales of $62,006 over
the course of eight years to 196 United States domiciliaries
does not constitute use of a mark such that it is a famous
mark.” (Structureco’s brief page 48).
We are in agreement with Structureco’s analysis of this
study. Sales of approximately $62,000 of STRUCTURE apparel
in France to fewer than 200 American domiciliaries over an
eight year period not only does not demonstrate that Claude
Jean’s mark STUCTURE is famous in the United States, but
indeed his rather minimal figures suggest just the opposite.
That is to say, if Claude Jean’s STRUCTURE mark was truly
Cancellation No. 20,428 and 20,511; and Opposition No. 87,066
17
famous in France, we would expect that there would be
substantially more sales of STRUCTURE apparel to American
domiciliaries during the course of eight years.2
Having found that Claude Jean has not established
priority in the mark STRUCTURE and has not established that
Structureco committed fraud on the PTO in filing its three
applications, we elect not to consider Structureco’s defense
that Claude Jean abandoned the mark STRUCTURE. See American
Paging Inc. v. American Mobilphone Inc., 13 USPQ2d 2036,
2039 (TTAB 1989), aff’d 17 USPQ2d 1726 (Fed. Cir. 1990) and
cases cited therein.

2 Claude Jean has made the totally unsupported claim that “actual
sales [of STRUCTURE apparel in France to America domiciliaries]
would be even higher since a substantial number of purchasers do
not file a VAT refund claim when they depart France.” (Claude
Jean’s brief page 36). Given the fact that there is no support
in the record for this allegation by Claude Jean, we have given
no weight to it. However, our conclusion regarding that lack of
fame of Claude Jean’s STRUCTURE mark in both France and the
United States would be the same even if Claude Jean’s sales
figures were somewhat times higher then $62,000.
Cancellation No. 20,428 and 20,511; and Opposition No. 87,066
18
Decision: The petitions for cancellation and opposition are
dismissed.
R. L. Simms

E. W. Hanak
G. D. Hohein
Administrative
Trademark Judges,
Trademark trial and
Appeal Board
Cancellation No. 20,428 and 20,511; and Opposition No. 87,066
19