Jackson/ Charvel Manufacturing, Inc.v.Lloyd A. Prins

Trademark Trial and Appeal Board

Nov 29, 2007

No. 92042614 (T.T.A.B. Nov. 29, 2007)

Mailed: November 29, 2007

UNITED STATES PATENT AND TRADEMARK OFFICE
_______

Trademark Trial and Appeal Board
_______

Jackson/Charvel Manufacturing, Inc.
v.
Lloyd A. Prins
_______

Cancellation No. 92042614
to Registration No. 2772766
issued on October 7, 2003
_______

Oscar Alcantara and Mary E. Anderson of Goldberg, Kohn,
Bell, Black, Rosenbloom, Moritz for Jackson/Charvel
Manufacturing, Inc.

Lloyd A. Prins, Pro Se.
_______

Before Quinn, Walters and Walsh, Administrative Trademark
Judges.

Opinion by Walters, Administrative Trademark Judge:

Jackson/Charvel Manufacturing, Inc. filed its petition
to cancel the Supplemental Register registration of Lloyd A.
Prins for the mark shown below for “musical instruments,
namely, electric guitars and electric basses,” in
International Class 15.1 The registration includes a

1 Registration No. 2772766, issued October 7, 2003, from an application
filed December 3, 2002.

THIS OPINION
IS NOT A PRECEDENT OF
THE TTAB
Cancellation No. 92042614
2
disclaimer of “GUITARS” and “GUITAR COMPANY” apart from the
mark as a whole.

As grounds for the petition, petitioner asserts that
respondent’s mark, when applied to respondent’s goods, so
resembles petitioner’s previously used mark SAN DIMAS for
electric guitars and electric guitar products as to be
likely to cause confusion, under Section 2(d) of the
Trademark Act.
Respondent, in his answer, denied the salient
allegations of the claim and asserted abandonment as an
affirmative defense.2
The Record
The record consists of the pleadings; the file of the
involved registration; copies of letters, submitted by
stipulation of the parties; the affidavit of respondent,
submitted by stipulation of the parties; and various
publications made of record by respondent’s notice of
reliance. Petitioner made of record its testimony

2 Respondent also asserted as affirmative defenses laches, waiver, and
estoppel; and that petitioner’s use of its mark for at least the prior
six years was mere token use. However, these claims were not raised
again and we consider them to have been abandoned.

Cancellation No. 92042614
3
depositions of Mark D. Van Vleet, petitioner’s general
counsel and corporate secretary; John Walker, petitioner’s
marketing manager; and Donald Wade, petitioner’s former
marketing manager. Respondent also made of record his
testimony deposition of Donald Wade, petitioner’s former
marketing manager. All depositions were submitted with
accompanying exhibits. Both parties filed briefs on the
case.
Factual Findings
Petitioner’s predecessors-in-interest include
Jackson/Charvel Company, which sold all of its assets and
trademarks to Akai Musical Instrument Corporation (AMIC) in
1997. AMIC maintained a division called Jackson/Charvel
Guitars, which it sold, along with all assets and
trademarks, to Fender Musical Instruments Corporation (FMIC)
in October 2002. FMIC created a wholly owned subsidiary,
Jackson/Charvel Manufacturing, Inc., the petitioner herein.
San Dimas is a location in California where at least one of
petitioner’s predecessors-in-interest was located, although
the SAN DIMAS guitars have been manufactured in Ontario,
California. (See Walker Dep.)
The record establishes that, through its predecessors-
in-interest, petitioner began manufacturing and selling SAN
DIMAS electric guitars and electric guitar necks at least as
early as 1993 (Wade, May 2006 Dep., p. 12); that the mark
Cancellation No. 92042614
4
CHARVEL has also been used in connection with all SAN DIMAS
model electric guitars and custom shop guitars; and that SAN
DIMAS has been used in connection with electric guitars
and/or, through its custom model shop, electric guitar necks
continuously by petitioner from 1993 to the time of trial
(id., p. 13, 39).
Petitioner’s advertising in connection with the
original rollout of its SAN DIMAS production model electric
guitar was between $20,000 and $25,000 each year in 1994
through 1996. The product was released at NAMM, the
industry trade show put on by manufacturers and attended by
dealers and customers. Petitioner sells its guitars through
dealers and advertises its guitars in catalogs, industry and
consumer guitar magazines, point of purchase displays for
dealers, and gifts to celebrities, who use the guitars in
concert (e.g., both Phil Collen of Def Leapard and Mitch
Watkins, guitarist for Lyle Lovett, have used SAN DIMAS
guitars).
Each year, petitioner distributes between 8,000 and
10,000 catalogs and between 16,000 and 20,000 price lists.
During the years of their production, petitioner’s SAN DIMAS
production guitars have been included in these catalogs or
on cut sheets providing information about, and price sheets
referring to, the SAN DIMAS guitar. SAN DIMAS guitar necks
have continuously been listed on petitioner’s custom shop
Cancellation No. 92042614
5
model order forms and price sheets. Sales of SAN DIMAS
guitars, both custom shop models and production models,
totaled approximately $750,000 during the 1990’s.
Petitioner is not a large production shop and even its
production guitars are made to dealers’ orders rather than
kept in inventory. (Wade, May 2006 Dep., p. 39.)
Mr. Wade described the guitar manufacturing business as
“a fashion industry,” noting that different styles have
peaks and valleys and, as a company, petitioner regularly
changes its marketing strategy to stay sufficiently
diversified for level sales over time. (Wade, May 2006
Dep., p. 91.) For example, in 1997 petitioner’s marketing
strategy focused on through-body guitar necks and imported
product and, therefore, advertising for the SAN DIMAS
production guitar did not appear on catalog pages and could
not be broken out from all advertising expenses. (Wade, May
2006 Dep., p. 90.)
In late 1998 or early 1999, petitioner ceased
manufacturing a production formatted Jackson/Charvel SAN
DIMAS guitar. Small numbers of remaining SAN DIMAS
production guitars were sold in 1999 and 2000; however, by
2000, petitioner had begun using SAN DIMAS solely to
identify the distinctive neck of the guitar, which could be
chosen by a customer designing and ordering a custom guitar
from petitioner through a dealer. (Wade, August 2006 Dep.,
Cancellation No. 92042614
6
p. 59.) Mr. Wade described the SAN DIMAS guitar and neck as
follows:
Charvel and Jackson guitars are the original hot
rod guitar made in the United States in that we’re
the longest continuous operating custom shop. So
as with the SAN DIMAS, you had your choice of body
materials, colors, pick-ups, yet the common thread
was the SAN DIMAS neck shape.

This is a bolt-on neck that is similar to other
bolt-on necks available in the market yet is the
first company to have an extra fret added, a
compound radius finger board, rolled-over edges,
and a very particular back shape.
(Wade, May 2006 Dep., p. 13.)

Mr. Wade stated that customers and dealers know the SAN
DIMAS guitar neck, noting that it is how they identify
Charvel guitars and that customers and dealers ask for the
SAN DIMAS neck by name. (Wade, May 2006 Dep., pp. 34-35,
42.)
In 2002, petitioner conceived and developed a limited
edition 25th anniversary SAN DIMAS production guitar, which
it began selling in 2003, in addition to offering the SAN
DIMAS neck through its custom model shop. Mr. Walker stated
that Charvel has long been associated with custom shop
instruments; that SAN DIMAS has always been associated with
a custom shop type of instrument; that this association
enhanced the introduction of the 25th anniversary production
model; that this model’s dealer price runs between $1,000
and $2,000, with a retail price between $1,700 and $4,000;
and that this model’s sales totaled $250,000 in the first
Cancellation No. 92042614
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eighteen months, which made it petitioner’s most successful
model to date. (Walker Dep., pp. 8-10.) Petitioner’s use
of SAN DIMAS in connection with electric guitars and/or
electric guitar necks has been continuous from 1994 to the
time of trial.
Prior to October 2002, respondent, Llyod Prins, was a
guitar dealer for petitioner’s predecessor-in-interest,
AMIC. In fact, in October 2002, respondent was in
discussions with AMIC about purchasing the Jackson/Charvel
business, which was purchased ultimately by FMIC,
petitioner’s parent. (Wade, May 2006 Dep., pp. 46-47.)
Mr. Prins testified that, on October 19, 2002, he had a
telephone conversation with a potential customer and offered
for sale a guitar; that, on October 24, 2002, the customer
agreed to purchase a guitar from Mr. Prins; and that, on
November 9, 2002, Mr. Prins received payment and shipped a
guitar to the customer in North Dakota. Mr. Prins stated
that SAN DIMAS GUITARS and design was affixed to the
headstock of the guitar and to the shipping box. Mr. Prins’
Supplemental Registration for SAN DIMAS GUITARS and design
issued on October 7, 2003.3 Other than the specimen
submitted in connection with the application, the record

3 A Supplemental Register registration is not entitled to constructive
use as of the filing date, which is available to marks registered on the
Principal Register. 15 U.S.C. 1057.

Cancellation No. 92042614
8
contains no other evidence of use of SAN DIMAS GUITARS and
design by respondent in connection with guitars.
Analysis
1. Standing.
Because petitioner has properly submitted evidence of
its use of the mark SAN DIMAS in connection with guitars and
guitar necks, and because petitioner’s likelihood of
confusion claim is not frivolous, we find that petitioner
has established its standing in this cancellation
proceeding. See Cunningham v. Laser Golf Corp., 222 F.3d
943, 55 USPQ2d 1842 (Fed. Cir. 2000); Lipton Industries,
Inc. v. Ralston Purina Co., 670 F.2d 1024, 213 USPQ 185
(CCPA 1982).
2. Priority.
We turn, next, to the question of whether petitioner
has established its priority of use and we consider
respondent’s affirmative defense of abandonment in this
context.
Petitioner states that it has established its use of
SAN DIMAS in connection with guitars and guitar parts by
itself and by its predecessors-in-interest from at least
1993 continuously to the time of trial; and contends that it
is not required to establish the distinctiveness of its mark
to cancel a Supplemental Register registration, citing in
support thereof Books on Tape Inc. v. The Booktape Corp.,
Cancellation No. 92042614
9
836 F.2d 519, 5 USPQ2d 1301 (Fed. Cir. 1987). Petitioner’s
argument that it is not required to establish
distinctiveness is not well taken. In Towers v. Advent
Software Inc., 913 F.2d 942, 16 USPQ2d 1039 (1990), aff’g 17
USPQ2d 1471 (TTAB 1989), the Court concluded that,
notwithstanding the seemingly contradictory holdings in
Books on Tape, supra, and In re Clorox Co., 578 F.2d 305,
198 USPQ 337 (CCPA 1978),4 the clear rule in this regard is
enunciated in Otto Roth & Co. v. Universal Foods Corp., 640
F.2d 1317, 209 USPQ 40 (CCPA 1981). The Court in Towers,
supra, made the following statement:
Otto Roth is clear in its holding. Section 2(d)
bars registration, or serves as a basis for
cancellation, if there is a likelihood of
confusion as to source. As to an unregistered
term, such a likelihood of confusion results when
there are trade identity rights in the prior
user's term. Those trade identity rights arise
when the term is distinctive, either inherently or
through the acquisition of secondary meaning.
. . .
The Board did not err in requiring Towers to show
that his descriptive term had acquired secondary
meaning before Advent adopted its mark.
[16 USPQ2d at 1042]
See also Cicena Ltd. v. Columbia Telecommunications Group,
900 F.2d 1546, 14 USPQ2d 1401 (Fed. Cir. 1990); and Perma
Ceram Enterprises, Inc. v. Preco Industries Ltd., 23 USPQ2d
1134 (TTAB 1992).

4 The Court stated that these cases are procedurally distinguishable.

Cancellation No. 92042614
10
Therefore, in order to establish its priority,
petitioner must first establish that its mark is inherently
distinctive or that it has acquired distinctiveness. If the
latter, our determination of priority is based on the date
petitioner’s pleaded mark acquired distinctiveness.
Petitioner must establish its priority by a preponderance of
the evidence. See Otto Roth & Co. v. Universal Foods
Corp., supra.
Petitioner does not contend that SAN DIMAS is
inherently distinctive and, because it denotes the
historical place of origin of the SAN DIMAS guitar by
petitioner’s predecessor-in-interest, we agree. Petitioner
states that, should it be required to prove distinctiveness,
it has established that SAN DIMAS has acquired
distinctiveness as petitioner’s mark in connection with
electric guitars and guitar necks through evidence of its
long use, revenues, advertising and promotional
expenditures, and consumer and industry recognition. The
evidence establishes that petitioner has been using SAN
DIMAS in connection with electric guitars and/or guitar
necks for over a decade; that its sales have been
substantial; that its promotional expenditures and the
breadth of its advertising have been significant; and that
its SAN DIMAS guitars have been promoted widely through use
by celebrity musicians. We find this evidence sufficient to
Cancellation No. 92042614
11
conclude that petitioner has demonstrated acquired
distinctiveness of SAN DIMAS in connection with electric
guitars and guitar necks. While it is not possible on this
record to point to a specific date that SAN DIMAS acquired
distinctiveness as petitioner’s mark, we find that it
certainly had done so by the five-year anniversary of its
first use in 1993, if not earlier.
Respondent seeks to defend his registration by
affirmatively asserting that petitioner has abandoned its
mark because it cannot establish continuous use of its mark
on guitars. Respondent alleges that the record fails to
establish use of the mark by petitioner on guitars for a
period of more than three years, between 1997 and 2003,
which is when petitioner recommenced use of the mark in
connection with the 25th anniversary production guitars.
Respondent also contends that the record shows that during
the alleged period of non-use, petitioner did not have an
intent to resume use. Finally, respondent contends that
petitioner did not resume use of its mark until after
respondent’s date of registration, October 7, 2003, and
that, therefore, respondent has priority herein.
Under Section 1127 of the Trademark Act, a mark is
considered abandoned when “its use has been discontinued
with intent not to resume such use”; “intent not to resume
may be inferred from circumstances”; and “nonuse for 3
Cancellation No. 92042614
12
consecutive years shall be prima facie evidence of
abandonment.” See 15 U.S.C. Section 1127. The party
seeking to establish abandonment bears the burden of proof
to establish the case by a preponderance of the evidence.
See Cerveceria Centroamericana S.A. v. Cerveceria India
Inc., 892 F.2d 1021, 13 USPQ2d 1307 (Fed. Cir. 1989).5
A party claiming that a mark has been abandoned must
show “non-use of the name by the legal owner and no intent
by that person or entity to resume use in the reasonably
foreseeable future.” See Stetson v. Howard D. Wolf &
Associates, 955 F.2d 847, 850, 21 USPQ2d 1783 (2d Cir 1992).
Non-use for three consecutive years alone, however,
constitutes prima facie evidence of abandonment. See supra,
15 U.S.C. Section 1127. See also Emergency One, Inc. v.
American FireEagle, Ltd., 228 F.3d 531, 56 USPQ2d 1343 (4th
Cir. 2000). Such a showing may be rebutted by petitioner
herein by establishing that its mark was in use during the
years challenged or by providing evidence of an intent to
resume use to disprove the presumed fact of no intent to
resume use.
First, petitioner has established that it and its
predecessors-in-interest used SAN DIMAS in connection with

5 While the cited case pertains to cancellation of a registration, its
rule regarding burden of proof is equally applicable in this case
involving respondent’s allegation that petitioner abandoned its common
law mark through non-use with no intention to resume use.

Cancellation No. 92042614
13
guitar necks as either replacements for the necks of SAN
DIMAS production guitars or as part of a custom model guitar
continuously from 1993 to the time of trial. Therefore, in
the absence of any period of nonuse of SAN DIMAS in
connection with guitar necks, respondent’s defense of
abandonment must fail with respect thereto.
The facts are less straightforward with respect to
petitioner’s use of SAN DIMAS in connection with electric
guitars. However, the result is ultimately the same. While
manufacture of a production formatted Jackson/Charvel SAN
DIMAS guitar ceased in late 1998 or early 1999, petitioner
sold a small number of its remaining SAN DIMAS production
guitars in 1999 and 2000, indicating that SAN DIMAS
production guitars were available to consumers during 1999
and 2000 and were, once again, available to consumers in
2003 with the roll-out of petitioner’s 25th anniversary
edition. It is immaterial that sales of petitioner’s
guitars were minimal during certain years.
Thus, the record does not establish the three-year
period of non-use of the mark in connection with guitars
that would trigger the statutory presumption of no intent to
resume use. Further, even if we had found non-use for a
three-year period, we conclude that the facts established by
petitioner disprove any presumption of no intent to resume
use. Petitioner established that during 2002 its
Cancellation No. 92042614
14
predecessor-in-interest was courting potential buyers for
the business and did in fact sell the business; and that, as
early as 2002, petitioner and its predecessor had an intent
to resume use of the mark on the anniversary edition
production guitar. Moreover, while respondent’s claim of
abandonment focused entirely on petitioner’s use or lack of
use of SAN DIMAS in connection with electric guitars,
respondent fails to account for petitioner’s continuous use
of SAN DIMAS in connection with guitar necks. This use, in
combination with the facts regarding minimal sales of
production guitars during 1999 and 2000, plans to recommence
sales of SAN DIMAS guitars, and the launch of the
anniversary edition guitars, points to a continuing intent
by petitioner to use SAN DIMAS in connection with electric
guitars. Thus, respondent’s claim of abandonment of the
mark with respect to electric guitars also fails.
To summarize, neither party’s mark is inherently
distinctive, although petitioner has established that its
mark acquired distinctiveness prior to any date upon which
respondent can rely; and respondent has not established the
abandonment of petitioner’s mark SAN DIMAS in connection
with either electric guitars or guitar necks. Therefore,
petitioner has established its priority.
3. Likelihood of Confusion.
Cancellation No. 92042614
15
Neither party disagrees that the marks are
substantially similar and that the goods are essentially
identical or closely related. While respondent has not
explicitly conceded likelihood of confusion, he does not
dispute the similarities between the parties’ marks and
goods6; and, further, respondent focuses his entire argument
in his brief on the issue of priority.
Regarding the marks, petitioner’s SAN DIMAS mark is
identical to the dominant portion of the registered subject
matter and substantially similar in overall commercial
impression. In the registration, the apparent geographic
term SAN DIMAS appears larger, in bolder print, and above
the generic and/or geographically descriptive terminology
“GUITARS” and “THE CALIFORNIA GUITAR COMPANY.”
Respondent’s identified electric guitars are identical
to petitioner’s electric guitars and closely related to
petitioner’s guitar necks, a major and defining component of
a guitar. Similarly, respondent’s electric basses are also
closely related to electric guitars, if not subsumed within
the category of electric guitars, and to guitar necks.
Further, neither respondent’s identification of goods in the
subject registration nor petitioner’s established use of SAN

6 Respondent makes statements such as “I intend to show why I have a
superior right in the San Dimas trademark …” (brief, p. 2); “After
registrant had begun using the San Dimas trademark, petitioner attempts
to reintroduce the San Dimas mark” (brief, p. 11); and “The facts in
this case establish that I have a superior [right] to the San Dimas
trademark …” (brief, p. 19).
Cancellation No. 92042614
16
DIMAS is limited to any specific channels of trade;
therefore, we presume an overlap and that the goods would be
offered in all ordinary trade channels for these goods and
to all normal classes of purchasers. See In re Linkvest
S.A., 24 USPQ2d 1716 (TTAB 1992).
Finally, we look at respondent’s intent in registering
its mark and we note that respondent is far from an innocent
user and registrant of a descriptive term in connection with
guitars. Not only was respondent a recognized dealer of
petitioner’s SAN DIMAS guitars, but he competed
unsuccessfully with petitioner’s parent to purchase the
business from AMIC and, immediately thereafter, sold his own
SAN DIMAS guitar and applied to register the subject matter
herein. In determining likelihood of confusion, this factor
weighs against respondent.
Therefore, we conclude that in view of the substantial
similarity in the commercial impressions of petitioner’s
mark, SAN DIMAS, and registrant’s stylized subject matter,
SAN DIMAS GUITARS THE CALIFORNIA GUITAR COMPANY, their
contemporaneous use on the same and closely related goods
involved in this case is likely to cause confusion as to the
source or sponsorship of such goods.
Decision: The petition to cancel is granted.
Registration No. 2772766 will be cancelled in due course.