Pennington Enterprises, Inc.v.Monsanto Co.

Trademark Trial and Appeal Board

Aug 5, 1997

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

THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB AUG 5, 97
Hearing: Paper No. 39
September 25, 1996 EWH/TAF
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
_____
Trademark Trial and Appeal Board
_____
Pennington Enterprises, Inc.
v.
Monsanto Company, substituted for White Swan, Ltd.
_____
Cancellation No. 21,800
_____
James F. Vaughan of Hopkins & Thomas for Pennington
Enterprises, Inc.
Mark I. Feldman of Rudnick & Wolfe for Monsanto Company,
substituted for White Swan, Ltd.
_____
Before Cissel, Hanak and Hairston, Administrative
Trademark Judges.
Opinion by Hanak, Administrative Trademark Judge:
In May 1993 Pennington Enterprises, Inc. (petitioner)
filed a petition for cancellation of Registration No.
Cancellation No. 21,800
2
1,763,148 then owned by White Swan, Ltd. (registrant).1
This registration issued on April 6, 1993 with a claimed
first use date of August 1990. The mark of the registration
is COLOR YOUR GARDEN depicted in typed capital letters, and
the goods of the registration are "flower seeds."
Petitioner alleged in its cancellation petition that
continuously since at least as early as March 22, 1990,
petitioner had used the identical mark COLOR YOUR GARDEN in
connection with the sale of flower seeds, and that
registrant's use of the same mark for the same goods is
likely to cause confusion, mistake or deception.
In its answer, registrant admitted that the use by
registrant and petitioner of the identical mark for
identical goods is likely to cause confusion, mistake or
deception. However, registrant alleged that it, and not
petitioner, was the first to use the mark COLOR YOUR GARDEN
in connection with flower seeds. Registrant stated that the
August 1990 first use date set forth in its Registration No.

1 Long after the conclusion of the trial in this case, and
indeed long after all of the briefs were filed, Monsanto Company
filed a motion to susbstitute itself for White Swan, Ltd. In
its September 6, 1996 paper, Monsanto explained that on April
15, 1996, White Swan, Ltd. assigned to Monsanto Registration No.
1,763,148 which is the subject of this cancellation proceeding.
Also in September 1996, Monsanto submitted a paper revoking "all
previous powers of attorney with respect to U.S. Reg. No.
1,763,148," and Monsanto appointed Mark I. Feldman "to defend
said registration." In a order dated September 17, 1996, this
Board granted Monsanto's motion to substitute itself "as the
party defendant in this case." Because all of the trial and
briefing in this case took place while White Swan was the owner
of Registration No. 1,763,148, we will, for ease of reference,
use the term "registrant" to refer collectively to Monsanto and
White Swan.
Cancellation No. 21,800
3
1,763,148 was incorrect, and that the correct date of first
use should have been "on or about January 29, 1989."
The record in this case includes the depositions, with
exhibits, of Richard Best (Senior Vice President of
petitioner), Douglas Harper (Manager of Seed Production for
petitioner), Harold Saltzman (Co-Chairman of White Swan),
Ruth Saltzman (Co-Chairman of White Swan), Deborah Saltzman
(President of White Swan) and Heidi Rickabaugh (an owner of
a graphic design firm which did work for White Swan).
Both parties filed briefs. Petitioner requested an
oral hearing which was held before this Board on September
25, 1996. Present at the hearing were counsel for
petitioner Pennington Enterprises as well as counsel for now
registrant Monsanto.
Before getting into the merits of this matter, one
preliminary matter should be clarified. In its trial brief,
then registrant White Swan requested that this Board
reconsider its decision of April 4, 1994 denying
registrant's motion for summary judgment. Registrant's
summary judgment motion was based upon the Morehouse
defense. Morehouse Mfg. Corp. v. J. Strickland & Co., 407
F.2d 881, 160 USPQ 715 (CCPA 1969). As the Board explained
at page 2 of its April 4, 1994 decision, the essence of
registrant's Morehouse defense was "that petitioner cannot
be damaged by registrant's involved registration
[Registration No. 1,763,148] because registrant owns
[unchallenged] Registration No. 1,735,781 for the mark COLOR
Cancellation No. 21,800
4
SCHEME GARDENING for flower seeds." The Board then rejected
registrant's Morehouse defense by stating as follows at page
5 of its opinion: "The mark involved in registrant's
challenged registration is not 'substantially identical' to
that in registrant's unchallenged registration. That is,
registrant's [unchallenged] mark, COLOR SCHEME GARDENING,
obviously differs from registrant's [challenged] mark, COLOR
YOUR GARDEN, in sound, appearance, meaning and commercial
impression."
At the oral hearing held on September 25, 1996, counsel
for registrant Monsanto stated that registrant Monsanto
would no longer pursue the Morehouse defense. This
concession is well taken because the aforementioned two
marks are clearly not "substantially identical," and hence,
one of the two requirements for the Morehouse defense is
simply not met. See the cases cited in this Board's opinion
of April 4, 1994 as well as 3 J. McCarthy, McCarthy on
Trademarks and Unfair Competition Section 20:38 at pages
20-72 to 20-75 (4th ed. 1996).
We will now turn to the merits of this priority of use
dispute. Petitioner has established that it first used the
mark COLOR YOUR GARDEN on wild flower seeds in March 1990.
(Best deposition page 13; Harper deposition page 23).
As previously noted, in its application to register
COLOR YOUR GARDEN for flower seeds, registrant White Swan --
through Ruth Saltzman who was then identified as president
of applicant White Swan -- stated that "the trademark
Cancellation No. 21,800
5
[COLOR YOUR GARDEN] was first used on the goods in August,
1990; was first used on the goods in interstate commerce in
August, 1990; and is now [August 21, 1992] in use in such
commerce." Mr. Harold Saltzman testified that sometime in
the fall of 1992, he first learned of petitioner's use of
the trademark COLOR YOUR GARDEN. (Harold Saltzman
deposition page 6). Mr. Saltzman then sent on October 14,
1992 a letter via fax transmission to petitioner which
reads, in its entirety, as follows:
It has recently come to my attention that you are
using the trademark COLOR YOUR GARDEN in
connection with flower seeds. White Swan has used
the identical trademark COLOR YOUR GARDEN since
August 1990 with seeds. There is enclosed a copy
of a label showing our use of that trademark.
I trust that you wish to settle this matter on an
amicable basis and would promptly agree to stop
using COLOR YOUR GARDEN.
Please advise within 7 days how soon you will be
able to stop using COLOR YOUR GARDEN.
Subsequently, Mr. Harold Saltzman received from
petitioner a letter dated October 15, 1992 advising Mr.
Saltzman that petitioner first used COLOR YOUR GARDEN for
wild flower seeds prior to August 1990. There is nothing in
the record to indicate that White Swan thereafter either
challenged petitioner's earlier claimed date of first use,
or asserted that White Swan itself had used COLOR YOUR
GARDEN prior to August 1990.
As previously noted, Registration No. 1,763,148 issued
on April 6, 1993. In May 1993 petitioner filed its petition
Cancellation No. 21,800
6
for cancellation of this registration. In August 1993, then
registrant White Swan filed its answer to the petition for
cancellation. In paragraph 6 of its answer, then registrant
White Swan asserted for the very first time that it used
COLOR YOUR GARDEN prior to the August 1990 first use date
set forth in its application, and set forth again in its
October 14, 1992 cease and desist letter to petitioner.
Paragraph 6 of White Swan's answer reads as follows:
Registrant [White Swan] first used the mark
COLOR YOUR GARDEN on flower seeds in interstate
commerce on or about January 29, 1989. Commencing
on or about January 29, 1989 at the New York Gift
Show in New York City, registrant [White Swan] had
a booth at which the trademark COLOR YOUR GARDEN
was used in connection with a display of its
flower seeds. This use has been valid and
continuous since the date of first use in the
United States, and has not been abandoned.
Thus, it was not until after petitioner brought its
cancellation petition that then registrant White Swan first
asserted a date of first use earlier than August 1990, the
date of first use set forth not only in White Swan's
application, but also in White Swan's cease and desist
letter to petitioner.
When an applicant or registrant attempts to claim an
earlier date of first use than set forth in its application,
the law is well settled that the "applicant [or registrant]
is under a heavy burden and his proof [of an earlier first
use date] must be clear and convincing and must not be
characterized but contradiction, inconsistencies and
indefiniteness." George Putnam & Co., Inc. v. Hyro-
Cancellation No. 21,800
7
Dynamics, Inc., 228 USPQ 951, 952 (TTAB 1986), aff'd 1
USPQ2d 1772 (Fed. Cir. 1987). Our primary reviewing court
has cogently explained the reason for this "heavy
[evidentiary] burden" in the following manner: "The reason
for such an increased evidentiary burden, supported by
common sense, is that a change of position from one
'considered to have been made against interest at the time
of filing of the application' ... requires enhanced
substantiation." Hydro-Dynamics, 1 USPQ2d 1773-74.
In this case, there is an additional reason for placing
on registrant a heavier burden of proving by clear and
convincing evidence that it actually used COLOR YOUR GARDEN
prior to August 1990. This additional reason is Mr.
Saltzman's October 14, 1992 letter to petitioner where Mr.
Saltzman again stated that registrant's first use date was
August 1990. In essence, this October 14, 1992 letter is
yet another admission against interest, an admission very
similar to that found in the application itself. See Lasek
& Miller Associates v. Rubin, 201 USPQ2d 831, 838 (TTAB
1978)("The only credible explanation for Mr. Rubin's 180
degree change of direction is that he suddenly found himself
confronted by a situation where his presumed prior rights
had evaporated. ... However, the factual statements made
in the letter may be taken as admissions and respondents'
earlier opinion may be received in evidence..."). See also
4 J. McCarthy, McCarthy on Trademarks and Unfair Competition
Section 32:109 at page 32-132 (4th ed. 1996).
Cancellation No. 21,800
8
It is against this body of law that we review
registrant's evidence to see if it is clear and convincing,
or if it is characterized by indefiniteness and the like.
To cut to the point, we find that not only is registrant's
evidence not clear and convincing, but rather it is quite
vague. Moreover, we note that registrant has absolutely no
written documentation to support any date of first use prior
to August 1990. While written documentation is not an
absolute requirement, by the same token, as registrant White
Swan itself has noted, "oral testimony is strengthened by
corroborative documentary evidence." (Respondent's brief
page 7).
Respondent's testimony was taken on September 27, 1995
in the following order: Heidi Rickabaugh; Harold Saltzman;
Ruth Saltzman; and Deborah Saltzman. We will review the
salient points of these depositions in the foregoing order.
As previously noted, Heidi Rickabaugh is the owner of a
graphic design firm which designed projects for then
registrant White Swan. When asked how long her firm had
done work for White Swan, she replied that "it's probably
1986 or '84, '85." (Rickabaugh deposition page 12).
Moreover, when asked when she had designed an earlier
trademark label for White Swan, Ms. Rickabaugh stated that
"it was probably in the eighties, '80 -- '85." (Rickabaugh
deposition page 7). When Ms. Rickabaugh was asked about the
circumstances under which she designed the rough strip of
paper featuring the words COLOR YOUR GARDEN which White Swan
Cancellation No. 21,800
9
then purportedly used at the January 1989 New York Gift
Show, she not only could not remember the firm that did the
typesetting (Rickabaugh deposition page 18), but in
addition, she could not remember how much she charged White
Swan for designing this rough label, other than to speculate
that it was "probably nothing." (Rickabaugh deposition page
14). Moreover, Ms. Rickabaugh acknowledged that she had
absolutely no written documentation pertaining to the design
of this rough label featuring the words COLOR YOUR GARDEN
which White Swan then purportedly used at the January 1989
New York Gift Show. (Rickabaugh deposition page 15).
Turning to the deposition testimony of Mr. Saltzman, we
note that he testified that when he wrote his cease and
desist letter of October 14, 1992 to petitioner, he stated
that he did not personally know when then registrant White
Swan first used the trademark COLOR YOUR GARDEN. (Harold
Saltzman deposition page 7). According to Mr. Saltzman, in
setting the August 1990 first use date in the aforementioned
cease and desist letter, he simply relied upon "the date
that had been shown in the registration of White Swan for
COLOR YOUR GARDEN." (Harold Saltzman deposition page 7).
This is a somewhat interesting answer inasmuch as the letter
was sent on October 14, 1992, and yet the registration did
not issue to White Swan until April 6, 1993. Presumably,
Mr. Saltzman was relying upon White Swan's application, and
not upon its registration, which, of course, had not issued.
Finally, we note that Mr. Saltzman stated that it was not
Cancellation No. 21,800
10
his responsibility to oversee trademark matters on behalf of
White Swan. Rather, these responsibilities were handled by
his wife Ruth Saltzman. (Harold Saltzman deposition page
8).
Considering next the deposition testimony of Ruth
Saltzman, we note that she too was quite vague as to when
White Swan took various actions. For example, prior to any
use by White Swan of the mark COLOR YOUR GARDEN, White Swan
used the mark PAINT WITH FLOWERS for its flower seeds. When
Mrs. Ruth Saltzman, the person at White Swan responsible for
trademark matters, was asked when she came up with the name
PAINT WITH FLOWERS, she at first said that "it would have
been around 1985," but later said that it "was probably
earlier than that." (Ruth Saltzman deposition pages 6 and
7). When questioned about the first rough draft "label"
bearing the purported mark COLOR YOUR GARDEN, Mrs. Ruth
Saltzman was unable to specify the date on which it was
created, and moreover, she was unable to identify who
actually prepared this very rough draft "label." (Ruth
Saltzman deposition page 9). Finally, when questioned about
the actual canisters bearing White Swan's mark COLOR YOUR
GARDEN, Mrs. Ruth Saltzman was unable to state when these
canisters were actually prepared, although she was able to
state that they were first "used" in August 1990. (Saltzman
deposition page 11). The vagueness characterizing the
testimony of Mrs. Saltzman is particularly troubling
inasmuch as she is by no means a novice when it comes to
Cancellation No. 21,800
11
trademark matters. Both she and her husband Harold Saltzman
testified that she was responsible for trademark matters for
White Swan, and that she had helped in preparing
approximately 80 trademark applications on behalf of White
Swan. (Ruth Saltzman deposition pages 19 and 20).
Finally we turn to the deposition testimony of Deborah
Saltzman, president of White Swan. Deborah Saltzman is the
person who, on behalf of White Swan, purportedly traveled to
the New York Gift Show held in January 1989. She purportedly
displayed at that gift show canisters of flower seeds
bearing the mark PAINT WITH FLOWERS. On the tray holding
the canisters was allegedly a very rough draft "label"
(really a simple strip of paper) having the words COLOR YOUR
GARDEN on it. At the outset, we note that Deborah Saltzman
was unable to identify even one person not affiliated with
White Swan who could attest that White Swan used a rough
strip of paper bearing the words COLOR YOUR GARDEN at the
January 1989 New York Gift Show (Deborah Saltzman pages 15-
16). Moreover, Deborah Saltzman could not identify by name
even one other exhibitor at this January 1989 show.
(Deborah Saltzman deposition page 15). Furthermore, Deborah
Saltzman acknowledged that White Swan had absolutely no
documentary evidence whatsoever showing any use of the
phrase COLOR YOUR GARDEN at this January 1989 show. Indeed,
White Swan has totally failed to provide any documentary
evidence showing that it made any use whatsoever of COLOR
YOUR GARDEN at either the January 1989 New York Gift Show or
Cancellation No. 21,800
12
the other 1989 trade shows at which White Swan claims that
it displayed the rough label bearing the phrase COLOR YOUR
GARDEN (e.g. the Atlanta Gift Show). As was the case with
the January 1989 New York Gift Show, White Swan did not
identify any individual not affiliated with White Swan who
could attest to any use whatsoever by White Swan of the
phrase COLOR YOUR GARDEN prior to August 1990. Indeed,
White Swan did not even provide documentary evidence of any
type whatsoever showing that any of White Swan's employees
even attended the January 1989 gift show or the other 1989
gift shows discussed by Deborah Saltzman. Such other
documentary evidence could have included, merely by way of
example, airline tickets to New York, hotel receipts while
in New York, receipts evidencing the rental of space at the
New York Gift Show, etc. We note that the New York gift
show purportedly took place in January 1989 and that the
other few gift shows testified to by Deborah Saltzman
purportedly occurred during the remainder of 1989. Mr.
Harold Saltzman's cease and desist letter was sent to
petitioner on October 14, 1992, just over three years after
the January 1989 New York Gift Show. Good business
practices would suggest that White Swan would have saved the
aforementioned receipts for, at a minimum, the purposes of
substantiating tax deductions.
In summary, we find that registrant has simply not
established by clear and convincing evidence that it first
used the mark COLOR YOUR GARDEN prior to August 1990. As
Cancellation No. 21,800
13
discussed above, the testimony put on by then registrant
White Swan is extremely vague, and is at times inconsistent.
Accordingly, we find that priority of use of the mark COLOR
YOUR GARDEN for flower seeds rests with petitioner, who
first used that mark in March 1990.
Even assuming for the sake of argument that then
registrant White Swan did make some use of the phrase COLOR
YOUR GARDEN at the January 1989 New York Gift Show and other
1989 trade shows, we find that this use was not trademark
use or use analogous to trademark use to establish any
rights in COLOR YOUR GARDEN that could be claimed by White
Swan. Reproduced below is White Swan exhibit 3, which
consists of a photograph of four canisters of flower seeds
each of which bears White Swan's mark PAINT WITH FLOWERS.
The four canisters are in a tray, and across the tray is a
strip of paper bearing in plain block letters the words
COLOR YOUR GARDEN. Purportedly, what is shown in White Swan
exhibit 3 was displayed at the January 1989 New York Gift
Show and a few other gift shows held during the remainder of
1989.
Cancellation No. 21,800
14

Heidi Rickabaugh, who purportedly supervised the
preparation of this strip of paper bearing the words COLOR
YOUR GARDEN, testified that the strip "was a rough," and it
was just a "view of a concept." (Rickabaugh deposition
pages 8 and 11). Indeed, Ms. Rickabaugh repeatedly stated
that Exhibit 3 was "definitely a rough," and that its
purpose was "just [to give] an idea if this would work."
(Rickabaugh deposition pages 14 and 15).
Mrs. Ruth Saltzman testified that in January 1989, any
display of the words COLOR YOUR GARDEN by White Swan was
"just a rough concept." (Ruth Saltzman depositions pages 26
and 27). More telling, Mrs. Ruth Saltzman testified that in
1989 White Swan's product "was always being sold as PAINT
WITH FLOWERS," and that in using the words COLOR YOUR GARDEN
in 1989, White Swan was just "testing the concept." (Ruth
Saltzman deposition page 33). Mrs. Ruth Saltzman further
confirmed that at these 1989 trade shows there was nothing
Cancellation No. 21,800
15
to give to customers bearing the words COLOR YOUR GARDEN,
and that White Swan did not advertise or promote the
purported mark COLOR YOUR GARDEN during that time period
because White Swan was promoting instead its marks PAINT
WITH FLOWERS and COLOR SCHEME GARDENING. (Ruth Saltzman
depositions pages 33 and 34). Finally, Mrs. Ruth Saltzman
acknowledged that "the first actual product" bearing the
mark COLOR YOUR GARDEN did not come out from White Swan
until August 1990. (Ruth Saltzman deposition page 36).
Concluding with the deposition testimony of Deborah
Saltzman, who purportedly was at the 1989 trade shows, she
acknowledged that White Swan did not "sell any goods that
had the label COLOR YOUR GARDEN on them" and that any goods
that were shipped from the 1989 trade shows instead bore the
mark PAINT WITH FLOWERS. (Deborah Saltzman deposition pages
12 and 13). Moreover, Deborah Saltzman acknowledged that at
these 1989 trade shows, White Swan had no signs or
advertisements bearing the words COLOR YOUR GARDEN.
(Deborah Saltzman deposition page 14).
Even assuming for the sake of argument that White Swan
Exhibit 3 did appear at the January 1989 New York Gift Show
and other 1989 shows in the manner shown above, we find that
based on the totality of circumstances, any potential
customers of White Swan who saw the words COLOR YOUR GARDEN
on this very crude strip would not view the words COLOR YOUR
GARDEN as a source indicator. Stated somewhat differently,
we find that even assuming for the sake of argument that
Cancellation No. 21,800
16
White Swan Exhibit 3 was used at the 1989 trade shows, its
use would not constitute trademark use or use analogous to
trademark use. As can be seen from Exhibit 3 and as
testified to by White Swan's witnesses, the product being
sold in 1989 was PAINT WITH FLOWERS. While a product can,
of course, have more than one trademark, we find that the
use of COLOR YOUR GARDEN in the manner reflected in White
Swan Exhibit 3 would not be perceived as a trademark, but
rather would be perceived as a declaratory statement to
"COLOR YOUR GARDEN" with PAINT WITH FLOWERS flower seeds.
White Swan's witnesses have repeatedly referred to the
depiction of COLOR YOUR GARDEN in White Swan Exhibit 3 as
being a rough draft and as being but a mere test concept.
Put quite simply, even if we assume that White Swan actually
used the very rough label bearing the words COLOR YOUR
GARDEN at the 1989 trade shows, such use was not "of such a
nature and extent as to create public identification of the
target term [COLOR YOUR GARDEN] with the [registrant's]
product." T.A.B. Systems v. PacTel Teletrac, ___ F.3d ___,
37 USPQ2d 1879, 1881 (Fed. Cir. 1996). Moreover, even
assuming that White Swan made use of COLOR YOUR GARDEN in
1989, and even assuming further that such use would have
been perceived by some potential customers as a source
identifier, White Swan's employees have been totally unable
to indicate the number of potential customers who saw this
1989 use and thus we are unable to discern anything "in the
record to indicate whether this group of customers
Cancellation No. 21,800
17
constituted more than a negligible portion of the relevant
market." PacTel Teletrac, 37 USPQ2d at 1882.
Cancellation No. 21,800
18
Decision: The petition to cancel Registration No.
1,763,148 is granted.
R. F. Cissel
E. W. Hanak
P. T. Hairston
Administrative Trademark
Judges, Trademark Trial and
Appeal Board