LAF Enterprises, Inc.v.Lauren Enterprises

Trademark Trial and Appeal Board

May 18, 1998

No. 92022554 (T.T.A.B. May. 18, 1998)

Paper No. 30
HANAK/MD
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
_____
Trademark Trial and Appeal Board
_____
LAF Enterprises, Inc.
v.
Lauren Enterprises
_____
Cancellation No. 22,554
_____
Norman E. Lehrer for LAF Enterprises, Inc.
Paul F. Prestia of Ratner & Prestia for Lauren Enterprises.
_____
Before Hanak, Hohein and Hairston, Administrative Trademark
Judges.
Opinion by Hanak, Administrative Trademark Judge:
On January 24, 1994 LAF Enterprises, Inc. (petitioner)
filed a petition to cancel Registration No. 1,047,312 owned
by Lauren Enterprises (respondent). This registration –-
which issued on August 31, 1976 –- is for the mark FRANCHISE
for “equipment sold as a unit for playing a board game.”
The sole ground for the petition for cancellation was
petitioner’s contention that respondent “has abandoned the
registered mark FRANCHISE by discontinuing use of said mark
for a period of at least two years with no intent to resume
said use.” (Petition paragraph 3). Furthermore, petitioner
Cancellation No. 22554
2
alleged that it “is likely to be damaged by continuance of
said registration in that petitioner intends to use the
trademark FRANCHI$IT for games and petitioner’s legal use of
said mark will be impaired by the continued registration of
said abandoned mark of respondent.” (Petition paragraph 4).
Respondent filed an answer which, among other things,
denied the allegations of paragraphs 3 and 4 of the petition
of cancellation.
Both parties filed trial briefs. Neither party
requested an oral hearing. At the outset, three matters
deserve clarification.
First, in 1996 respondent failed to renew its
Registration No. 1,047,312. However, as explained in orders
of this Board dated October 2, 1997 and December 3, 1997,
both parties elected to have the Board issue a decision in
this cancellation proceeding.
Second, both parties have objected to much of the
evidence submitted by the other party. We find these
objections to be lacking in merit. In this regard, we note
that in their briefs, both parties have wisely waived most
of their objections. (Petitioner’s brief page 6;
Respondent’s brief page 15). To be perfectly clear, we find
that contrary to respondent’s objection, the deposition of
Loren Fossie (president of petitioner) was properly noticed
and taken by petitioner. Moreover, the sole purpose of Ms.
Cancellation No. 22554
3
Fossie’s deposition was to prove opposer’s standing, which
standing has otherwise been established. Likewise, we find
that respondent has, pursuant to Trademark Rule 2.120(j)(4),
properly introduced into evidence other pages from the
discovery deposition of respondent’s principal (Edward Uva)
which should in fairness be considered so as to not make
misleading those pages of Mr. Uva’s discovery deposition
which were offered into evidence by petitioner. This ruling
specifically allows the introduction into evidence of page
105 of the Uva discovery deposition, the sole page to which
petitioner still maintains an objection. (Petitioner’s
brief page 6). With regard to page 105, it is petitioner’s
position that “neither [respondent’s] game board nor the box
… are part of the record,” and thus respondent “should not
be allowed to testify as to them.” (Petitioner’s brief page
7). To cut to the quick, petitioner elected to put into
evidence selected pages from the Uva discovery deposition.
Some of these pages dealt with how respondent did (or did
not) use its FRANCHISE mark. In fairness, respondent is
entitled to submit additional pages from its discovery
deposition which afford this Board a more complete
understanding of respondent’s use of its FRANCHISE mark.
Moreover, while it is true, as petitioner alleges, that
respondent did not put into evidence its FRANCHISE game
board and box, what petitioner fails to note is that
Cancellation No. 22554
4
petitioner itself attached photocopies of various sides of
respondent’s FRANCHISE box to petitioner’s motion for
summary judgment. In its summary judgment decision of April
6, 1996, this Board reproduced at page 3 a portion of the
bottom side of respondent’s box. This reproduction was
taken from materials submitted by petitioner in support of
petitioner’s motion for summary judgment. This reproduction
(shown again below) in the Board’s summary judgment decision
of April 5, 1996 is an important part of said decision. The
entire decision, including the reproduction, forms part of
the record in this case. See 1B J. Moore, J. Lucas and T.
Currier, Moore’s Federal Practice Section 0.404[1] (2d ed.
1984).
(image not available)
Cancellation No. 22554
5
Finally, it should be clarified as to which issues are
properly before the Board. As previously noted, the only
ground for cancellation set forth in the petition was that
respondent “abandoned the registered mark FRANCHISE by
discontinuing use of said mark for a period of at least two
years with no intent of said use.” (Petition paragraph 3).
At page 4 of its opening trial brief, petitioner clarified
its position on respondent’s purported nonuse in the
following manner: “The record demonstrates absolutely no
sales activity of any kind from at least as early as
February 26, 1988 when respondent purchased the FRANCHISE
trademark to the end of May 1990 when respondent alleges to
have sold two to four FRANCHISE FRENZY games. This is
clearly more than two years. Nonuse for two years is prima
facie evidence of abandonment, 15 USC 1127 … “ However, in
its reply brief, petitioner argues that commencing in May
1990, respondent’s use of it FRANCHISE trademark “is so
small that it cannot be seen with the naked eye.” (Reply
brief page 8). Moreover, at page 6 of its brief in support
of its motion for summary judgment, petitioner argued that
respondent’s use of its FRANCHISE trademark on the bottom of
its box (see the reproduction above) was use in a mere
“descriptive sense to inform the reader of the nature or
kind of the game within the box.” Finally, we note that at
page 7 of its opening trial brief, petitioner –- in
Cancellation No. 22554
6
discussing the fact that respondent did not make of record
its game board or box –- makes the following, hard to
understand allegation: “There may be an issue as to how the
public sees these words [FRANCHISE FRENZY and FRANHISE?],
what it [?] means to them and whether the word or words are
being used to convey trademark significance.”
To be perfectly clear, we find that the only issue
which is properly before this Board is whether respondent’s
acknowledged nonuse of its FRANCHISE trademark from February
1988 to May 1990 is excusable nonuse or instead is an
abandonment of its mark. Petitioner never alleged in its
petition for cancellation that respondent’s uses of its mark
FRANCHISE from May 1990 to the conclusion of the testimony
period in this case were “defective uses” in that they were
either too small and/or simply descriptive in nature.
Moreover, we find that there is nothing in the record to
indicate that the sufficiency of respondent’s use of its
FRANCHISE trademark from May 1990 to the present was tried
by the explicit or implicit consent of the parties.
Accordingly, we find that the only issue properly before
this Board was whether respondent’s nonuse of its FRANCHISE
mark from February 1988 to May 1990 constituted abandonment
of said mark. However, because the Board –- for reasons
unclear now –- considered in its summary judgment decision
of April 5, 1996 the manners in which respondent used its
Cancellation No. 22554
7
FRANCHISE mark, we will at the conclusion of our opinion
discuss the second possible prong of petitioner’s
abandonment claim, namely, that commencing in May 1990,
respondent’s use of FRANCHISE was “so small that it cannot
be seen with the naked eye” (petitioner’s reply brief page
8), and that said use was not “as a trademark” but rather
was in a “descriptive sense to inform the reader of the
nature or kind of game within the box.” (Petitioner’s brief
in support its motion for summary judgment page 6).
We now turn to the merits of the only issue properly
before us, namely, whether respondent abandoned its rights
in the mark FRANCHISE as the result of its failure to make
sales of board games bearing this mark between February 1988
(when respondent purchased Registration No. 1,047,312) and
May 1990 when it commenced sales of board games bearing both
the marks FRANCHISE FRENZY and FRANCHISE. When the
cancellation petition was filed on January 24, 1994, Section
45 of the Lanham Trademark Act 1946 provided, in part, that
“nonuse for two consecutive years shall be prima facie
evidence of abandonment.” (15 U.S.C. 1127). Effective
January 1, 1996, the nonuse period was increased from two to
three years. However, so as not to give retroactive effect
to this statutory change, the nonuse period to be applied in
this case shall be two years and not three years.
Cancellation No. 22554
8
Both parties acknowledge that respondent Lauren
Enterprises is a sole proprietorship consisting of Edward
Uva. Mr. Uva has worked primarily as a carpenter since he
was 18. In early 1986, Mr. Uva began developing concepts
for a board game. Later that year, he considered two names
for his game: FRANCHISE FRENZY and LUCKY LOTTO. By 1987,
Mr. Uva had rejected the name LUCKY LOTTO, and had
tentatively decided to use the name FRANCHISE FRENZY for his
board game. Later that year, Mr. Uva contacted an attorney
(Tom Lennox) who conducted a trademark search for the mark
FRANCHISE FRENZY. This search revealed Registration No.
1,047,312 for the mark FRACHISE. Mr. Uva proceeded to
purchase the FRANCHISE trademark and its registration, and a
formal assignment of the trademark and registration to Mr.
Uva was executed on February 26, 1988. Mr. Uva acknowledges
that commencing on February 26, 1988, the prior owner of
said mark and registration (American Brokers Exchange
Limited) ceased all use of said mark. While a protective
order precludes us from revealing the amount of money which
Mr. Uva paid to obtain the FRANCHISE mark and registration,
suffice it to say that we deem it to be a substantial sum
for an individual working as a carpenter.
During 1988, Mr. Uva continued working on the
“mechanics” for his board game. In addition, he had outside
printers and artists developing the art work for his game.
Cancellation No. 22554
9
Finally, during 1988 Mr. Uva worked with individuals at the
Wharton School at the University of Pennsylvania in
developing his board game.
The record –- namely, the selected pages of Mr. Uva’s
discovery deposition submitted by both parties –- is silent
as to Mr. Uva’s activities during 1989. However, by early
May 1990, Mr. Uva had in his possession in final form 1,000
boxes for his board game; enough finished materials to
assemble 500 of the board games themselves; and 50 pre-
assembled, boxed board games. In May 1990 Mr. Uva attended
a trade show in Valley Forge, Pennsylvania where he sold
approximately two to four of his board games which bore the
mark FRANCHISE FRENZY in a prominent fashion and which also
bore the mark FRANCHISE in a secondary fashion. The manners
of use by Mr. Uva trading as Lauren Enterprises of the marks
FRANCHISE FRENZY and FRANCHISE will be discussed at greater
length later in this opinion. From May 1990 until his
discovery deposition of December 15, 1994, Mr. Uva had sold
approximately 100 FRANCHISE FRENZY/FRANCHISE board games to
purchasers located in New York, New Jersey , Pennsylvania,
Maryland and Virginia.
The period of nonuse alleged by petitioner spans just
slightly over two years and two months, namely, from the
latter part of February 1988 to early May 1990. While
respondent does not dispute that there were no sales by
Cancellation No. 22554
10
respondent of its FRANCHISE FRENZY/FRANCHISE board game
prior to early May 1990, we find in reviewing the totality
of respondent’s activities during this time period that said
activities are sufficient to demonstrate that respondent’s
“nonuse is excusable” and that, hence, respondent “has
overcome the presumption that its nonuse was coupled with an
‘intent not to resume use,’ or … an ‘intent to abandon.’”
Imperial Tobacco Ltd. v. Philip Morris Inc., 899 F.2d 1575,
14 USPQ2d 1390, 1395 (Fed. Cir. 1990). During the nonuse
period of approximately two years and two months, it must be
remembered that respondent paid a considerable amount of
money to obtain rights to the FRANCHISE mark and
registration; that respondent continued to work on
developing his game; that respondent retained the services
of outside artists and printers; that respondent consulted
with individuals at Wharton School at University of
Pennsylvania; and that respondent incurred the expenses of
preparing 1,000 game boxes, 500 sets of games, and 50 fully
assembled and boxed games. Moreover, respondent was
undertaking all of these activities while working full time
as a carpenter. Viewed in this context, we find that
respondent’s nonuse of the mark FRANCHISE during a period of
just over two years and two months was fully justifiable and
amply demonstrates that respondent had no intent to abandon
Cancellation No. 22554
11
the mark FRANCHISE for which it had paid a substantial
amount of money.
Having found that respondent’s nonuse during the period
from late February 1988 to early May 1990 is justifiable, we
will now consider the second possible prong of petitioner’s
abandonment claim, namely, that commencing in May 1990,
respondent’s use of FRANCHISE was “so small that it cannot
be seen with the naked eye” (petitioner’s reply brief page
8), and that said use was not “as a trademark” but rather
was in a “descriptive sense to inform the reader of the
nature or kind of game within the box.” (Petitioner’s brief
in support of its motion for summary judgment page 6). See
also petitioner’s brief page 7. (“There may be an issue as
to how the public sees these words, what it means to them
and whether the word or words are being used to convey
trademark significance.”). We note that in order to
properly decide the merits of this second prong, we have to
review the photocopies of respondent’s game box which were
attached as exhibits to petitioner’s motion for summary
judgment. If we accepted petitioner’s allegation that
respondent’s game box (and presumably copies of said box)
are not part of the record (petitioner’s brief page 7), then
we would be left with only Mr. Uva’s description of the box.
(Uva dep. 104-105).
Cancellation No. 22554
12
Considering first the notices appearing on the sides of
respondent’s game board boxes (FRANCHISE and FRANCHISE
FRENZY are registered trademarks USPTO of Lauren
Enterprises), we find that if these notices were the only
uses of FRANCHISE in connection with respondent’s board
game, that such uses, because of the small lettering, would
not inform buyers that FRANCHISE is a trademark of
respondent. However, as previously depicted in this opinion
and in this Board’s decision of April 5, 1996, respondent,
commencing in May 1990, has made a far more prominent use of
its FRANCHISE mark on the box for its board game. This use
depicts the mark FRANCHISE in medium size lettering, and it
reads as follows: Lauren Enterprises Franchise Board Game.
As depicted in this manner, FRANCHISE is arguably being used
as a trademark, and it could be so perceived by buyers of
respondent’s board game. Respondent, by depicting its mark
FRANCHISE with its trade name (Lauren Enterprises) preceding
it, and with the generic term (board game) following it, has
made what could be considered to be trademark use of the
term FRANCHISE. While in an ideal world, it would no doubt
have been helpful if respondent had depicted FRANCHISE in
all capital letters and placed the generic “board game” in
all lower case letters, respondent’s failure to do so does
mean that it did not arguably make trademark use of
FRANCHSIE or that purchasers would not regard such use as
Cancellation No. 22554
13
trademark use. Moreover, while it is true that beneath the
words “Lauren Enterprises Franchise Board Game” there appear
the words “120 franchise cards,” there also appear the words
“6 Franchise fact sheets.” (emphasis added). It must be
remembered that the burden is upon petitioner to demonstrate
abandonment by a preponderance of the evidence and we find,
in light of the above, that petitioner has failed to do so.
Furthermore, with regard to petitioner’s claim that
respondent’s use of FRANCHISE was in a “descriptive sense,”
two additional points need to be made. When the petition
for cancellation was filed, the registration for FRANCHISE
was over five years old, and thus petitioner could not and
did not set forth a legally sufficient claim that FRANCHISE
was merely descriptive. While a cancellation petitioner is
free to argue that a part of a registered mark is
descriptive, it may not argue that the entire mark is
descriptive if the registration is over five years old.
Cf. In re National Data Corp., 753 F.2d 1056, 224 USPQ 749,
752 (Fed. Cir. 1985). Respondent’s registration of
FRANCHISE consists, obviously, of just one word. Because
the registration was over five years old when the
cancellation petition was filed, petitioner could not attack
(and in its cancellation petition did not attack) the
registration on the basis that FRANCHISE is descriptive of a
type of board game because such an attack would be an attack
Cancellation No. 22554
14
on the entirety of the registered mark. Second, even
assuming for the sake of argument that petitioner could have
attacked the registered mark FRANCHISE on the basis that it
was descriptive, petitioner put in absolutely no evidence
demonstrating that the word FRANCHISE is descriptive of a
type of board game.
Both parties have acknowledged that one product, in
this case a board game, may have more than one trademark.
(Respondent’s brief page 9; petitioner’s reply brief page
5). Indeed, it has been noted that “in today’s marketing
environment … the practice of using multiple marks on a
product is probably more the rule than the exception,” and
that “there is nothing in our jurisprudence which obligates
a trademark owner, in order to avoid abandonment of its
registered mark, to use the mark by itself.” General Foods
v. Ito Yokado, 219 USPQ 822, 824 (TTAB 1983).
There can be no dispute that respondent’s primary
trademark for its board game is FRANCHISE FRENZY. However,
by use of the phrase “Lauren Enterprises Franchise Board
Game,” respondent arguably has also made trademark use of
FRANCHISE per se. Moreover, the two trademark registration
notices previously discussed, while not sufficient by
themselves to show trademark use of FRANCHISE, lend some
small additional support to the conclusion that buyers of
Cancellation No. 22554
15
respondent’s board game would view FRANCHISE as secondary
mark.
In summary, we find that respondent’s nonuse of its
FRANCHISE mark from late February 1988 to early May 1990 was
excusable, and that thereafter, respondent made use of
FRANCHISE as a secondary trademark to its primary trademark
FRANCHISE FRENZY. Accordingly, respondent did not abandon
its registered mark FRANCHISE.
Decision: The petition for cancellation is denied.
E. W. Hanak

G. D. Hohein
P. T. Hairston
Administrative Trademark
Judges, Trademark Trial
and Appeal Board.