Packaging Service Co., Inc.v.Picnic Brand, Inc.

Trademark Trial and Appeal Board

Feb 20, 2002

No. 92029508 (T.T.A.B. Feb. 20, 2002)

2/20/02 Paper No.
11

GDH/gdh

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

Packaging Service Company, Inc.
v.
Picnic Brand, Inc.
_____

Cancellation No. 29,508
_____

Tim Cook of Bracewell & Patterson, L.L.P. for Packaging
Service Company, Inc.

Steven J. Wadyka, Jr. of Greenberg Traurig, LLP for Picnic
Brand, Inc.
_____

Before Simms, Hohein and Bucher, Administrative Trademark
Judges.

Opinion by Hohein, Administrative Trademark Judge:

Packaging Service Company, Inc. has petitioned to
cancel the registration owned by Picnic Brand, Inc. for the
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Cancellation No. 29,508
2
mark "HAGMANN'S PICNIC BRAND" and design, as reproduced below,

for "firewood; lump charcoal; [and] lighter fluid" in
International Class 4.1 As its ground for cancellation,
petitioner alleges among other things that respondent's mark,
when used in connection with respondent's goods, so resembles
the mark "PICNIC, which petitioner has previously used and
registered for "charcoal lighter fluid,"2 as to be likely to
cause confusion, mistake or deception.
Respondent, in its answer, has denied the salient
allegations of the petition to cancel, including the assertion
by petitioner that the marks at issue "so resemble each other
as to be likely, when used in connection with the respective
goods of the parties, to cause confusion ...." In its
counterclaim for cancellation of petitioner's pleaded
registration,3 respondent alleges, however, that it "first

1 Reg. No. 1,952,390, issued on January 30, 1996 from an application
filed on June 13, 1994, which disclaims the word "BRAND" and sets
forth a date of first use anywhere and in commerce of August 1991.
Although such registration also covers a "chemical preparation used
to melt ice; [and] bagged rock salt" in International Class 1, the
petition to cancel is directed only against the goods in
International Class 4 of the registration.

2 Reg. No. 977,599, issued on January 29, 1974 from an application
filed on March 19, 1973, which sets forth a date of first use
anywhere and in commerce of April 27, 1967; renewed.

3 For the reasons explained elsewhere in this opinion, the Board is
without jurisdiction to entertain such a counterclaim and the
allowance thereof was an error which will be rectified.
Cancellation No. 29,508
3
began commercial use of [its registered mark] HAGMANN'S PICNIC
BRAND ... in the 1940s" and has continuously used such mark;
that respondent thus has priority of use of its mark inasmuch
as petitioner's registration alleges a date of first use for
petitioner's "PICNIC" mark of April 4, 1967; and that, "[i]n
view of the listing of ... 'charcoal lighter fluid' in both
registrations, confusion is likely in the marketplace as to
'charcoal lighter fluid.'"
Petitioner, in its answer to the counterclaim, has
admitted, among other things, that confusion is likely, but
has denied respondent's allegation of priority of use of the
mark "HAGMANN'S PICNIC BRAND."
Neither petitioner nor respondent took any testimony
or otherwise introduced any evidence. Only petitioner filed a
brief and neither party requested an oral hearing.
Turning first to the counterclaim, we note that
while petitioner is correct in its observation that respondent
cannot prevail therein since the allegation that respondent
has priority of use of the mark "HAGMANN'S PICNIC BRAND" is
"not supported by any evidence" (brief at 7), it is also the
case that, more fundamentally, the counterclaim must be
dismissed as a nullity because the Board is without
jurisdiction to cancel a registration which is over five years

Cancellation No. 29,508
4
old on the ground of priority of use and likelihood of
confusion. Specifically, at the time this proceeding was
commenced on October 18, 1999, petitioner's pleaded
registration for its "PICNIC" mark was already more than five
years old. As such, it was no longer subject to cancellation
on any ground which could exclusively be brought pursuant to
Section 14(1) of the Trademark Act, which would include a
claim of priority of use and likelihood of confusion.
Instead, because petitioner's registration is one which was
over five years old, the grounds for cancellation thereof are
restricted to one or more of those set forth in Section 14(3)
of the Trademark Act. Inasmuch as a claim of priority of use
and likelihood of confusion is not among such grounds, it was
error for the Board to have allowed the counterclaim.
Accordingly, because the counterclaim is legally insufficient,
it is hereby dismissed as a nullity (and the fee therefor will
be refunded to respondent in due course). See, e.g., Strang
Corp. v. Stouffer Corp., 16 USPQ2d 1309, 1310-11 (TTAB 1990);
and Kemin Industries, Inc. v. Watkins Products, Inc., 192 USPQ
327, 328-29 (TTAB 1976).
With respect to the petition to cancel respondent's
registration, it is obvious from petitioner's brief that the
sole evidence relied upon by petitioner to sustain its burden
of proof by a preponderance of the evidence is the fact that,
Cancellation No. 29,508
5
in light of the counterclaim, petitioner regards its pleaded
registration to be automatically of record by virtue of
Trademark Rule 2.122(b)(1).4 Such rule provides, in pertinent
part, that: "The file ... of each registration against which
a petition or counterclaim for cancellation is filed forms
part of the record of the proceeding without any action by the
parties and reference may be made to the file for any relevant
and competent purpose."
Petitioner argues that proof that its pleaded
registration is subsisting and owned by petitioner is
sufficient to meet its burden of establishing both that it has

4 In particular, under the heading "DESCRIPTION OF THE RECORD,"
petitioner states that:

The record in this case consists of the pleading
[sic] and documents automatically of record pursuant to
the rules governing these proceedings, including petition
to cancel, the answer and the respective registrations and
the [underlying] applications therefore [sic] of the
parties. Thus, the decision in this case may be based
solely on the registrations of the parties and the proper
application of law to the undisputed facts recited
therein."

(Brief at 1.) Further, under the heading "RECITATION OF FACTS,"
petitioner notes among other things that its pleaded registration
issued on January 29, 1974 from an application filed on March 19,
1973; that it filed its petition to cancel respondent's registration
(which issued on January 30, 1996 from an application filed on June
13, 1994) on October 1, 1999 (although, as we pointed out earlier,
such petition was actually received by the Board on October 18,
1999); that respondent filed an answer and counterclaim; that
petitioner timely filed its answer to the counterclaim; and that
"[t]he record consists of the noted pleadings and the respective
registrations of the parties and the [underlying] applications
therefore [sic], by operation of 37 C.F.R. [section] 2.122." (Brief
at 4.)
Cancellation No. 29,508
6
priority of use of its "PICNIC" mark for charcoal lighter
fluid and that contemporaneous use by petitioner of such mark
in connection with its goods and use by respondent of the
"HAGMANN"S PICNIC BRAND" and design mark for firewood, lump
charcoal and lighter fluid is likely to cause confusion. In
particular, petitioner maintains that it "is entitled to
priority" because the "filing date for its registration
predates that of Respondent," citing Columbia Steel Tank Co.
v. Union Tank & Supply Co., 277 F.2d 192, 125 USPQ 406, 407
(CCPA 1960).5 (Brief at 7.)
As to the question of likelihood of confusion,
petitioner asserts that the pertinent factors set forth in In
re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ
563, 567 (CCPA 1973), for determining whether a likelihood of
confusion exists, favor petitioner. Petitioner argues, in
this regard, that "simple inspection shows that the word
'picnic'" in respondent's "HAGMANN'S PICNIC BRAND" and design

5 It is pointed out that the Board, in this regard, has held that in
the absence of testimony or other evidence relating to the dates of
first use of the respective marks of the parties, priority vis-à-vis
such marks lies with the petitioner where the record reveals that the
registration for the petitioner's pleaded mark shows not only that
the registration is subsisting and owned by the petitioner, but that
the filing date of the application which matured into such
registration is earlier than the filing date of the application which
resulted in the respondent's involved registration for its mark.
See, e.g., Hilson Research Inc. v. Society for Human Resource
Management, 27 USPQ2d 1423, 1428-29 (TTAB 1993) at n. 13; and
American Standard Inc. v. AQM Corp., 208 USPQ 840, 841-42 (TTAB
1980).
Cancellation No. 29,508
7
mark "is by far the dominant feature" thereof, given that such
word appears "in letters which are much larger than the words
'Hagmann's Brand,'" and that respondent's mark is therefore
substantially "identical" to petitioner's "PICNIC" mark.
(Brief at 5.) With respect to the parties' goods, petitioner
maintains that the respective registrations "both list lighter
fluid ... and it is also well known that firewood and charcoal
are also typically displayed together for sale, and [thus] are
closely related goods to lighter fluid in the minds of
consumers." (Brief at 6.) Moreover, petitioner contends, "it
must be assumed that the identical goods of the ... parties
travel in the same channels of trade." (Brief at 6.) In view
thereof, and because "the board may take judicial notice that
lighter fluid is an inexpensive item [s]old typically next to
charcoal in grocery stores and similar retail stores and that
consumers of such products do not exhibit careful and
sophisticated study of the products prior to such purchases,"
petitioner concludes that the record demonstrates that there
is a likelihood of confusion. (Brief at 6.)
While Trademark Rule 2.122(b)(1) serves, in the case
of a proper counterclaim, to make the subject registration
automatically of record, in this instance respondent's
counterclaim, as noted above, is legally insufficient and

Cancellation No. 29,508
8
hence has been dismissed as a nullity. As a consequence
thereof, petitioner's pleaded registration is not
automatically of record. Nevertheless, it is obvious that
petitioner elected not to take appropriate action to make its
pleaded registration properly of record, such as by filing a
notice of reliance on a copy thereof showing that the
registration is subsisting and owned by petitioner,6 in view
of the Board's allowance of respondent's counterclaim and in
reliance on Trademark Rule 2.122(b)(1).
Accordingly, and since in the absence of the
counterclaim petitioner cannot prevail in this proceeding
unless it introduces sufficient evidence in its behalf to
establish its claim of priority of use and likelihood of
confusion,7 a final decision on such claim is deferred and
testimony periods, commencing with petitioner's initial
testimony period, are reset as indicated below for the limited
purpose of allowing petitioner to make its pleaded

6 For a discussion of the ways in which a plaintiff in an inter
partes proceeding may properly make a pleaded registration of record,
see TBMP Section 703.02(a).

7 Whether reliance by a plaintiff on its pleaded registration alone
is sufficient evidence to meet its burden of proof by a preponderance
of the evidence is, of course, dependent upon the circumstances of
each case. See, e.g., Merritt Foods v. Associated Citrus Packers,
Inc., 222 USPQ 255, 256 (TTAB 1984); Pharmacia Inc. v. Asahi Medical
Co., Ltd., 222 USPQ 84, 86 (TTAB 1984); Herman Miller, Inc. v. Lane
Co., Inc., 221 USPQ 922, 924 (TTAB 1984); and Hyde Park Footwear Co.,
Inc. v. Hampshire-Designers, Inc., 197 USPQ 639, 641-42 (TTAB 1977).

Cancellation No. 29,508
9
registration properly of record,8 failing which the petition
for cancellation will be dismissed with prejudice.
IN EACH INSTANCE, a copy of the transcript of any
testimony, together with copies of documentary exhibits, must
be served on the adverse party WITHIN THIRTY DAYS after
completion of the taking of testimony. Trademark Rule
2.125(a).

Testimony period for petitioner,
for the limited purpose of making
its pleaded registration properly
of record, to close: March 27, 2002
(opening thirty days prior thereto)

Testimony period for respondent
to close: May 28, 2002
(opening thirty days prior thereto)

Rebuttal testimony period for
petitioner to close: July 12, 2002
(opening fifteen days prior thereto)

In the event that evidence is introduced by
respondent in response to petitioner's evidence, supplemental

8 To be clear, it is pointed out that if, instead of making its
pleaded registration properly of record by filing, during its
rescheduled initial testimony period, a notice of reliance thereon
which is accompanied by a certified copy showing both the current
status of and current title to the registration, petitioner elects to
make such registration of record by introducing a copy thereof as an
exhibit to testimony by a witness having knowledge of the current
status of and title to the registration, the testimony is to be
limited to establishing that the registration is subsisting and is
owned by petitioner. See Trademark Rule 2.122(d)(2). Likewise, any
evidence which may be offered by respondent during its reset
testimony period must be restricted to rebutting petitioner's
evidence, just as any further evidence offered by petitioner during
Cancellation No. 29,508
10
briefs shall be filed in accordance with Trademark Rules
2.128(a) and (b).
Decision: The counterclaim is dismissed as a
nullity (with the fee therefor to be refunded in due course)
and further consideration of the petition to cancel is
deferred.

its rescheduled rebuttal testimony period is to be limited to
rebutting respondent's evidence.