First Financial Management Corp.v.Postal Buddy Corp.

Trademark Trial and Appeal Board

Sep 22, 1998

No. 91100233 (T.T.A.B. Sep. 22, 1998)

Hearing: Paper No. 33
November 4, 1997 SIMMS/md
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE
TTAB SEPT 22, 98
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
_____
Trademark Trial and Appeal Board
______
First Financial Management Corporation
v.
Postal Buddy Corporation
_____
Opposition No. 100,233
to application Serial No. 74/114,029
filed on November 9, 1990
_____
Glenn Mitchell of Weiss, Dawid, Fross, Zelnick & Lehrman,
P.C. for First Financial Management Corporation.
Bernard L. Kleinke of Higgs, Fletcher & Mack LLP for Postal
Buddy Corporation.
______
Before Simms, Seeherman and Hairston, Administrative
Trademark Judges.
Opinion by Simms, Administrative Trademark Judge:
First Financial Management Corporation (opposer), a
Georgia corporation, has opposed the application of Postal
Buddy Corporation (applicant), a California corporation, to
register the mark OPINIONGRAM for providing computer
terminals for use by the public to create interactively
Opposition No. 100,233
2
recommended opinion correspondence and to recommend selected
policy and decision makers to receive such correspondence.1
In the notice of opposition, opposer asserts ownership of
the mark OPINIONGRAM for telegraph transmission and
communication services, by assignment from Western Union
Data Services Company, Inc.; that opposer and its
predecessors have used this mark since 1982 for transmission
and communication services including the sending of messages
by customers to public officials; that this mark has become
distinctive of opposer’s services; that opposer owns an
application (application Serial No. 74/398,330, filed June
3, 1993) to register this mark for the recited services; and
that applicant’s mark so resembles opposer’s previously used
mark as to be likely to cause confusion, to cause mistake or
to deceive.
In its answer, applicant has denied the essential
allegations of the opposition. In addition, applicant
asserts that the mark has not been used by opposer or its
predecessors for a substantial period of time prior to
August 14, 1990, resulting in the abandonment of trademark
rights; and that no trademark rights were legally assigned
or transferred to opposer, depriving opposer of standing
herein.

1 Application Serial No. 74/114,029, filed November 9, 1990,
based upon applicant’s bona fide intention to use the mark in
commerce.
Opposition No. 100,233
3
The record of this case consists of testimony and
exhibits submitted by each party, and opposer’s notice of
reliance upon its pleaded application, on various articles
and advertisements from printed publications, and on
applicant’s responses to opposer’s discovery requests. The
parties have submitted briefs and an oral argument was held.
The Record
Opposer took the testimony of David Shapiro, the
director of marketing for its “message products” such as
CABLEGRAM, MAILGRAM and OPINIONGRAM messages. According to
Mr. Shapiro, the mark OPINIONGRAM identifies messages sent
by consumers to elected officials; in other words, this mark
identifies a particular type of telegram.
Concerning the corporate structure of, and the use of
the mark by, Western Union Corporation, Mr. Shapiro
testified that Western Union Financial Services, Inc.,
created in 1990, was a subsidiary of the Western Union
Corporation, the latter company having been renamed New
Valley Corporation in April 1991. In 1994, Western Union
Financial Services, Inc. was sold to First Financial
Management Corporation (opposer). Shapiro dep., 11.
However, the message products remained with the parent
company (New Valley Corporation), with Western Union Data
Services Company, Inc. performing services under the mark,
until 1995. At that time, these products and the marks
Opposition No. 100,233
4
under which they were sold were acquired by First Financial
Management Corporation and First Data Corporation, the
latter two of which were merged in 1995. During the time
the mark was used by the subsidiary of the Western Union
Corporation, the trade name Western Union was also used in
connection with this mark. Shapiro dep., 8,11.
Mr. Shapiro also testified that the OPINIONGRAM product
(or service) was available to consumers in 1990 as well as
prior to that time. Mr. Shapiro testified, at 27:
The records show no interruption of
sales of the product from 1989 to the
present.
Opposer’s records show monthly transactions and revenue from
the years 1989 through 1996, although, according to Mr.
Shapiro, the figures vary from month to month.
According to the testimony of Sidney Goodman,
applicant’s president and chief executive officer, applicant
entered into a contract with the U. S. Postal Service to
provide an electronic kiosk called “Postal Buddy,” to be
placed in post offices and other locations. These kiosks
were to provide various printed products such as address
labels and postcards as well as the OPINIONGRAM service.
This service was intended to produce postcards addressed to
elected and non-elected officials on a variety of issues.
Goodman dep., 10.
Opposition No. 100,233
5
Through this witness, applicant attempted to introduce
various documents including press reports about opposer’s
use (or alleged lack of use) of its pleaded mark, including
press reports about a strike at Western Union which
allegedly interfered with the offering of opposer’s
services, such as the OPINIONGRAM service. Opposer has
objected to many of these documents on the basis of hearsay
and relevance. Suffice it to say that, as explained below,
we do not believe that this evidence proves applicant’s
claim that opposer’s mark has been abandoned.
Applicant also attempted to introduce, through this
witness, an investigative report prepared by another, which
purports to show that there were periods of nonuse of
opposer’s mark. In particular, applicant has attempted to
again demonstrate that the strike in 1990 caused or
contributed to an abandonment of opposer’s mark.
Arguments of the Parties
Opposer, in its main brief, argues that its record
establishes prior and continuous use of the mark OPINIONGRAM
by predecessors in interest as well as likelihood of
confusion because the parties’ services are very similar.
It is applicant’s position that the record does not
support opposer’s position that opposer and its predecessors
continuously used the mark OPINIONGRAM prior to the November
9, 1990 filing date of applicant’s application.
Opposition No. 100,233
6
Essentially, applicant argues that the facts in this case do
not clearly indicate the source of the transmission and
communication services. While opposer alleges that rights
to the mark were assigned to it in October 1995, according
to applicant the evidence shows that opposer’s witness
believed that Western Union was providing these services as
of December 1996, the date of the deposition. Applicant
argues that there is no evidence demonstrating a
relationship between opposer and Western Union which would
enable the use of the mark by Western Union to inure to the
benefit of opposer. Applicant also points to an article,
dated September 9, 1996, after the alleged assignment from
Western Union Data Services to opposer, indicating that a
person may send an OPINIONGRAM letter “[s]imply by calling
Western Union.” Applicant does acknowledge that some time
in 1994, Western Union Financial Services (WUFS) was sold to
the opposer and that ownership of the messaging services was
retained by Western Union Data Services (WUDS).
Subsequent to the sale of WUFS to the
Opposer, WUDS was responsible for
messaging services, including
“OPINIONGRAM” services… However, the
sale and marketing of the messaging
products was performed by WUFS pursuant
to a contract with WUDS…
Although it is claimed that the rights
to the mark “OPINIONGRAM” were retained
by New Valley when WUFS was sold…there
is no evidence of record showing the
rights to the mark and Opposer’s
application were properly transferred to
Opposition No. 100,233
7
New Valley. There is no evidence that
New Valley transferred the rights to the
mark and Opposer’s application to WUDS.
Furthermore, there is no evidence or
record indicating that the contractual
arrangement between WUDS and WUFS was
not merely a naked license. Without
such evidence, the Opposer cannot
demonstrate that the use of the mark by
the named applicant WUFS inures to the
benefit of the Opposer.
Applicant’s brief, 11-12.
Applicant also argues that opposer is not entitled to
priority because it and its predecessors abandoned the use
of the mark.
The evidence of record demonstrates a
significant gap of non-use of the mark
“OPINIONGRAM” by the Opposer or its
predecessors between about May of 1989…
and about the summer of 1993… In this
regard, there is no demonstrative
evidence of record indicating that
Western Union advertised the
“OPINIONGRAM” services between about May
of 1989 and about the summer of 1993, a
gap of about four (4) years.
Furthermore, the evidence shows that
Western Union ceased offering the
“OPINIONGRAM” services in about August
of 1990… There is also evidence that
Western Union was providing opinion
telegram services as Personal Opinion
Telegrams in January of 1991… This
evidence implies that Western Union
intended to abandon the use of the mark,
and that Western Union did not intend to
resume use of the mark.
Applicant’s brief, 13-14. Accordingly, applicant maintains
that the evidence presented by opposer is not sufficient to
rebut the presumption of abandonment. Rather, according to
Opposition No. 100,233
8
applicant, there is no evidence corroborating the use of the
mark between May 1989 and the summer of 1993.
Opposer, on the other hand, argues in its reply brief
that applicant has seized upon a somewhat complicated
corporate history to confuse the record. Opposer maintains
that this record demonstrates that it is the owner of the
mark and that applicant has failed to make out a prima facia
case of abandonment. Opposer reiterates the fact that
Western Union Corporation offered the OPINIONGRAM service
beginning in 1982. When Western Union Financial Services,
Inc. was acquired by opposer in 1994, New Valley Corporation
retained ownership of the messaging products through Western
Union Data Services Company, Inc., a wholly owned
subsidiary. The application as well as the mark was
assigned to Western Union Data Services Company, Inc. That
company assigned its rights in various marks to opposer in
1995.
With respect to the issue of abandonment, opposer
argues that the evidence reflected in advertisements and
newspaper articles referring to the OPINIONGRAM service as
well as testimony shows that opposer’s mark has not been
abandoned. Also, according to opposer, unreliable and
hearsay statements made in newspaper reports fail to make
out a prima facia case of abandonment.
Discussion and Opinion
Opposition No. 100,233
9
First, it should be pointed out that applicant in its
brief has not disputed opposer’s argument that confusion is
likely if both parties use the identical mark OPINIONGRAM in
connection with their closely related services.
Although the record concerning ownership is somewhat
complicated, we agree with opposer that it is sufficiently
clear to show a chain of title from Western Union
Corporation, through use by Western Union Financial Services
and then by Western Union Data Services, after the former
was sold to opposer, and then to opposer by assignment from
Western Union Data Services in 1995.
With respect to the issue of abandonment, assuming that
the three-year period is applicable to this case as the
result of the amendment to Section 45 of the Lanham Act
(definition of “Abandonment”), 15 USC §1127, effective
January 1, 1996,2 we agree with opposer that applicant has
not made out a prima facia case of abandonment and that the
documents and testimony of record establish opposer’s
relatively continuous use of the mark before applicant’s
1990 filing date.

2 Here, the notice of opposition was filed four days before the
effective date of the revision but applicant’s affirmative
defense was not asserted until its June 3, 1996 answer, five
months after the effective date of the revision. See Linville v.
Rivard, 41 USPQ2d 1731, 1735 n.9 (TTAB 1996) (applying the two-
year provision because the case was commenced and tried prior to
the effective date of the amendment). At the oral hearing,
applicant agreed that the appropriate period of nonuse for a
prima facie case is three years’ nonuse.
Opposition No. 100,233
10
First, it is well established that abandonment is in
the nature of a forfeiture of rights and carries a strict
burden of proof. P.A.B. Produits et Appareils de Beaute v.
Santinine Societa, 670 F.2d 1031, 196 USPQ 801 (CCPA 1978)
and Nestle Co. v. Nash-Finch Co., 4 USPQ2d 1085, 1089 (TTAB
1987), and authority cited therein.
As noted by opposer, Mr. Shapiro testified that this
service has been available continuously from 1989 through
1996, although the revenue figures fluctuate.
Also, aside from the hearsay problem of the news
reports and the investigator’s report being offered to prove
the truth of the matter asserted, applicant’s attempts to
prove abandonment must fail. First, in its answer,
applicant pleaded that opposer had not used its mark for a
“substantial period of time” prior to August 14, 1990.
Opposer was thus on notice that the relevant period of
nonuse resulting in abandonment immediately preceded August
1990. Any attempt to prove a period of nonuse extending
beyond August 1990 would, unless tried without objection by
opposer, be unfair and prejudicial. See P.A.B. Produits et
Appareils de Beaute v. Santinine Societa, supra, 196 USPQ at
804.
Further, the press report applicant relies on appears
to suggest that the OPINIONGRAM service was being offered
immediately prior to the strike. Even if the service was
Opposition No. 100,233
11
discontinued at the time of the strike, the requisite period
of nonuse for a prima facie case (whether considered two or
three years’ nonuse), as pleaded in the notice of
opposition, has not been established.
As indicated, applicant also sought to introduce the
report of an investigative agency located in California,
attempting to show that opposer’s mark has been abandoned.
Opposer properly objected to this testimony and exhibit on
the basis of hearsay and lack of foundation, because the
investigator or person who prepared the report was not
called as a witness. Moreover, this report itself indicates
that the mark was used as recently as August 1989, just one
year before the August 1990 date set forth in the answer.
…[W]e located references of Opiniongram being
used until August 1989, the next reference to
that type of service is January 1991, under the
name Personal Opinion Telegram. After that date,
we find no reference until August 1993, for
Opiniongram.
In sum, applicant has simply failed to demonstrate a
prima facie case of even two years’ nonuse.
Even if there had been some period of nonuse as a
result of the strike against Western Union in 1990, and even
if this issue had been tried by the parties, as opposer has
argued nonuse caused by such an involuntary act such as a
strike does not support a finding of abandonment. See
Sterling Brewers, Inc. v. Schenley Industries, Inc., 441
Opposition No. 100,233
12
F.2d 675, 169 USPQ 590, 593-94 (CCPA 1971). Suffice it to
say that the inferences of abandonment which applicant seeks
us to draw from the testimony, newspaper articles and other
evidence of record is unwarranted. Accordingly, applicant
has not made out a prima facia case of abandonment.
Because opposer has shown ownership of the mark and
priority of use, as well as likelihood of confusion, the
opposition is sustained and registration to applicant is
refused.
R. L. Simms
E. J. Seeherman
P. T. Hairston
Administrative Trademark
Judges, Trademark Trial and
Appeal Board