Redmond Products, Inc.v.ETS, Inc.

Trademark Trial and Appeal Board

Sep 18, 1998

No. 92022285 (T.T.A.B. Sep. 18, 1998)

Hearing:
July 22, 1997
Paper No. 31
CEW
THIS DIPOSITION IS
NOT CITABLE AS PRECEDENT OF
THE TTAB 9/18/98
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
_______
Trademark Trial and Appeal Board
_______
Redmond Products, Inc.
v.
ETS, Inc.
_______
Cancellation No. 22,285
to Registration Nos. 1,046,627 and 1,637,325
_______
David R. Fairbairn of Kinney & Lange for petitioners.1
Clifford W. Browning of Woodard, Emhardt, Naughton, Moriarty
& McNett for respondent.
_______
Before Simms, Hohein and Walters, Administrative Trademark
Judges.
Opinion by Walters, Administrative Trademark Judge:
Redmond Products, Inc. filed its petition to cancel two
registrations owned by ETS, Inc. for the mark AUSTRALIAN

1 While petitioner’s attorney indicated in a telephone conversation with
the Board that counsel for petitioner had changed, no document
indicating such a change has been filed with the Board. Thus, the Board
will continue to direct its correspondence to the attorney of record
herein.
Cancellation No. 22,285
2
GOLD for, respectively, “sunscreen lotion”2 and “skin care
preparations, namely suntanning and moisturizing creams and
lotions” in International Class 3.3
As grounds for cancellation, petitioner asserts that
the nunc pro tunc assignment of Registration No. 1,046,627
by Dagar Products, Inc. (Dagar) to Dr. Graham O. Davies was
ineffective because it “was executed more than five years
after the dissolution of Dagar” and Dr. Davies “lacked
corporate authority to execute such an assignment”; and
that, therefore, respondent “acquired no right to
Registration No. 1,046,627 or the AUSTRALIAN GOLD mark by
virtue of the purported assignment from [Dr. Davies to
respondent].” Petitioner asserts, further, that the mark
has been abandoned due to its nonuse for “an extended
period” on the identified goods by the original registrant
“with an intention not to resume use and to relinquish all
rights to the mark and to Registration No. 1,046,627.”
Regarding Registration No. 1,637,325, petitioner
asserts only that respondent “claimed its ownership of

2 Registration No. 1,046,627, issued August 24, 1976, in International
Class 3, and renewed for a period of ten years from August 24, 1996.
The registration issued to Dagar Products, Inc. and the current owner of
record according to PTO records is ETS, Inc. [Sections 8 and 15
affidavits accepted and acknowledged, respectively.]
3 Registration No. 1,637,325, issued March 12, 1991, in International
Class 3. The registration issued to American Tanning Systems, Inc. and
the current owner of record according to Office is ETS, Inc. [Sections
8 and 15 affidavits accepted and acknowledged, respectively.] The
registration includes a disclaimer of AUSTRALIAN apart from the mark as
a whole.
Cancellation No. 22,285
3
Registration No. 1,046,627 as a means of obtaining
Registration No. 1,637,325.”
Respondent, in its answer, denied the salient
allegations of petitioner’s claims.
The Record
The record consists of the pleadings; the files of the
involved registrations; certified status and title copies of
numerous registrations owned by petitioner, all made of
record by petitioner’s notice of reliance; certified copies
of certain documents recorded with the PTO, made of record
by respondent’s notice of reliance; the testimony
depositions by petitioner of Graham O. Davies, the co-
developer of the product identified in Registration No.
1,046,627, and Cheryl Spaulding, an officer of petitioner,
both with accompanying exhibits; and the testimony
deposition by respondent of Edna H. Gray, an officer of
respondent, with accompanying exhibits. Both parties filed
briefs4 and were represented at the hearing held in this
case.

4 Respondent filed a motion to strike, in whole or in part, petitioner’s
reply brief. Respondent alleges, first, that petitioner raised issues
pertaining to FDA labeling for the first time in its reply brief and
that such issues were not previously raised by either party and were not
pleaded in the petition to cancel. Respondent correctly notes that
petitioner’s argument that the involuntary corporate dissolution of
Dagar Products Inc. rendered subsequent sales of Dagar’s AUTRALIAN GOLD
sunscreen in violation of FDA regulations was made for the first time in
its reply brief. This issue pertains to lawful use in commerce and is
not pertinent to the pleaded claim of abandonment, nor was it pleaded in
the petition to cancel or previously tried or argued by either party.
Therefore, the Board has not considered petitioner’s argument pertaining
to FDA labeling. Even if we had considered this argument as part of
Cancellation No. 22,285
4
The Parties
The evidence establishes that petitioner manufactures
and distributes hair care products throughout the United
States; and that petitioner has registered and used various
marks incorporating the term AUSTRALIAN or AUSSIE in
connection with its hair care and personal care products.5
Respondent’s executive vice president, Edna H. Gray,
testified that respondent’s predecessor began its business
in 1984 as European Tanning Systems, Inc. In 1986, Ms. Gray
and her husband formed American Tanning Systems, Inc., a
sub-chapter S corporation, which took over the assets of
European Tanning Systems, Inc. and continued to do business
under the name of the first corporation. In 1990, American

petitioner’s abandonment claim, we would not reach a different result in
this case.
Additionally, in its motion to strike, respondent alleges that
petitioner refers to an “Agostinelli affidavit” which was not made of
record by either party. As petitioner concedes, and the record shows,
the Agostinelli affidavit was not made of record during either party’s
testimony period; thus, the Board has disregarded petitioner’s
discussion of that affidavit.
5 Respondent argues that petitioner has no standing herein. However,
petitioner has submitted substantial evidence regarding the nature and
extent of its hair care products business, including certified status
and title copies of its numerous pleaded trademark registrations, and
has alleged damage due to “confusion in trade” from the concurrent use
of the parties’ AUSTRALIAN marks, characterizing respondent’s goods as a
“natural product extension” of petitioner’s goods. We find petitioner’s
pleading and evidence regarding the registration and use of its marks in
connection with the identified goods sufficient to establish
petitioner’s standing. We note that petitioner did not plead, nor did
either party argue, priority and likelihood of confusion in this case.
Therefore, we have not considered Section 2(d) as a basis for the
petition to cancel and have made no determination in this regard.
Cancellation No. 22,285
5
Tanning Systems, Inc. changed its name to ETS, Inc., as
respondent is identified herein.
Respondent manufactures and distributes tanning
supplies and tanning, fitness and relaxation equipment
throughout the United States. Since 1988, respondent has
marketed and sold a line of tanning products, including
tanning oils and sunscreen lotions, under the trademark
AUSTRALIAN GOLD. In 1995, respondent sold 3.6 million
bottles of AUSTRALIAN GOLD tanning supplies, of which
approximately 920,000 bottles contained sunscreen lotions.6
Registration No. 1,637,325
Registration No. 1,637,325, which is one of
respondent’s registrations subject to this petition to
cancel, issued on March 12, 1991, to American Tanning
Systems, Inc. The records of the PTO reflect the
registrant’s change of name to ETS, Inc., the respondent
herein. The file of this registration includes the
Examining Attorney’s refusal to register under Section 2(d),
citing Registration No. 1,046,627, which PTO records at that
time indicated was owned by Dagar Products, Inc.;
applicant’s response requesting suspension in view of its
petition to cancel Dagar’s registration; and applicant’s
subsequent notification that the matter had been settled,

6 Petitioner’s argument that the mark in Registration No 1,046,627 is
not in use because respondent does not sell products containing
sunscreen lotions, the identified goods, is not supported by the
evidence.
Cancellation No. 22,285
6
Registration No. 1,046,627 had been assigned to applicant,
and the assignment had been recorded at the PTO. Following
applicant’s notification, the mark was passed to publication
for opposition and eventually registered.
The sole basis for petitioner’s claim to cancel this
registration is its allegation that respondent “claimed its
ownership of Registration No. 1,046,627 as a means of
obtaining Registration No. 1,637,325.” There is no
allegation, or indication in this record, that such a claim
was fraudulent. The questions of whether the assignment of
Registration No. 1,046,627 to respondent was valid or
whether the mark therein had been abandoned are not relevant
to this proceeding as it pertains to Registration No.
1,637,325. Petitioner has not stated or proved a basis for
cancellation of Registration No. 1,637,325 and, therefore,
the petition to cancel Registration No. 1,637,325 is denied.
Registration No. 1,046,627
Registration No. 1,046,627 issued originally to Dagar
Products, Inc. The records of the PTO indicate an
assignment, nunc pro tunc, of the registration from Dagar to
Dr. Graham Davies, followed by an assignment of the
registration from Dr. Davies to respondent.
The record establishes, through the testimony of Dr.
Graham Davies, that during the 1970’s Dr. Davies, a dentist
and oral surgeon, enlisted the assistance of Mr. Richard
Cancellation No. 22,285
7
Agostinelli, a pharmacist, and that together they developed
a sunscreen lotion that acted as both a sunblock and a
moisturizer. Dr. Davies and Mr. Agostinelli formed a
corporation, Dagar Products, Inc., in 1975; adopted
AUSTRALIAN GOLD as the name for their product and, on
January 30, 1976, filed an application, as Dagar, for
federal trademark registration7; and ordered the production
of approximately 5,000 bottles of AUSTRALIAN GOLD sunscreen
lotion through an FDA-approved manufacturing facility,
Xitrium Pharmaceutical. This was the only production run of
the product. As Dagar, they had bottles, labels and
promotional materials designed and produced; and, in 1975,
began marketing and selling the AUSTRALIAN GOLD sunscreen
lotion. Dagar never produced or sold any other product nor
did it license anyone else to make AUSTRALIAN GOLD suncare
lotion.
Dr. Davies and Mr. Agostinelli invested equal amounts,
totaling approximately $15,000, in Dagar and each was issued
1,000 shares of common stock, which was the total number of
shares issued during the life of the corporation. Dr.
Davies testified that he was the president of Dagar; that
both he and Mr. Agostinelli retained their jobs as,
respectively, an oral surgeon and a pharmacist; that there
was no separate office or facility for Dagar’s business,

7 This application matured into subject Registration No. 1,046,627.
Cancellation No. 22,285
8
rather, Dagar maintained a separate phone line in Dr.
Davies’ oral surgery office; and that the AUSTRALIAN GOLD
inventory was stored, equally, in Dr. Davies’ and Mr.
Agostinelli’s homes.
Dr. Davies testified that once the AUSTRALIAN GOLD
product had been produced and bottled, he and Mr.
Agostinelli began marketing it to several national pharmacy
chains, including Walgreens and Dart. However, they quickly
learned that such stores would not purchase a seasonal
product such as sunscreen lotion unless it was nationally
advertised. The cost of a national advertising program was
beyond Dagar’s resources, so, instead, Dr. Davies and Mr.
Agostinelli began marketing and selling the product locally,
establishing a customer base consisting of both friends and
business associates. For example, they sold the product,
usually one to several cases at a time, to a beauty shop
frequented by Mr. Agostinelli’s wife; to Dr. Davies’ wife’s
sporting apparel store8; to the pharmacy in Dr. Davies’
office building; to several marinas and shipyards on Lake
Michigan; and to several friends. On June 16, 1976, they
sold a single order of approximately 20-24 cases to Marshall
Field, a department store in Chicago.
Dr. Davies testified that, as the product was seasonal,
most of their sales occurred during the “suntanning season.”
Cancellation No. 22,285
9
The record includes a few invoices, usually for sales of one
or two cases of the product, for various years, including
1976, 1985, 1987, 1988 and 1989. Dr. Davies explained that
the record includes copies of relatively few sales invoices
due to the fact that he and Mr. Agostinelli often made sales
without writing invoices and, further, that he had destroyed
many records of the business after he sold the mark and
registration to respondent herein. Dr. Davies stated that
their best years for sales were during the 1970’s, at which
time they may have sold as many as “a couple hundred”
bottles per year. He indicated that, while sales were
small, sales were seasonally steady until the mark was
acquired by respondent herein. He stated that sales were
made each year from 1975 through 1989, noting that in 1989
he sold approximately 150 bottles. Acknowledging that the
business was not profitable, Dr. Davies stated that during
the first few years “we were more aggressive, trying to push
this new product . . . [then] after we found out that we
couldn’t sell it by the trainload, I guess our ambition kind
of fell off.”
In December, 1984, the State of Illinois dissolved
Dagar Products, Inc. for failure “to file an annual report
and pay an annual franchise tax.” Dr. Davies testified
that, when he and Mr. Agostinelli agreed with their

8 Mrs. Davies also gave the product to her customers in connection with
Cancellation No. 22,285
10
attorney’s suggestion to dissolve the corporation to save
costs, the attorney allowed the corporation to be dissolved
by the State. Dr. Davies testified that he and Mr.
Agostinelli did not have a specific discussion about who
owned the AUSTRALIAN GOLD sunscreen formula or remaining
inventory; they simply continued their practice of selling
their inventory of the product to their existing customer
base. For some time they had not had any on-going
advertising or other expenses for the business, or any plans
for additional production runs. Between 1982 and 1984, when
Dr. Davies closed his oral surgery office, where the
AUSTRALIAN GOLD sunscreen business’ telephone line was
located, he and Mr. Agostinelli ceased to maintain a
separate phone line for their business. Dr. Davies
testified that, at some point, Mr. Agostinelli began to have
serious health problems and he told Dr. Davies to take over
the entire AUSTRALIAN GOLD sunscreen business.
Also regarding the AUSTRALIAN GOLD sunscreen business
after dissolution of the corporation, the record includes
the affidavit of Dr. Davies, executed on August 30, 1991,
wherein Dr. Davies made, inter alia, the following
statement:
Dagar Products, Inc. closed its doors as a
formally structured corporation and all of the
assets . . . were transferred to me as the owner

sales of sporting apparel.
Cancellation No. 22,285
11
of Dagar Products, Inc. and the successor-in-
interest of that entire corporate business.
While the exact time period is unclear in this record,
Dr. Davies testified that he became aware of respondent’s
use of AUSTRALIAN GOLD in connection with its sun care
products when friends reported seeing T-shirts bearing the
mark while on vacation in Florida. At his request, his
attorney sent respondent a letter dated November 1, 1989,
demanding that respondent “cease and desist the use of our
copyrighted name.”
Meanwhile, respondent had filed an application to
register its mark, AUSTRALIAN GOLD, on May 11, 1989, which
matured into Registration No. 1,637,325. During the
prosecution of the application, the Office refused
registration, under Section 2(d), in view of Registration
No. 1,046,627. At that time, the PTO records indicated that
the owner of the registration was Dagar Products, Inc. Edna
H. Gray, executive vice president of respondent, testified
that, in view of the refusal, respondent conducted an
unsuccessful search to locate Dagar Products, Inc. On
November 2, 1989, respondent filed a petition to cancel
Registration No. 1,046,627 for the mark AUSTRALIAN GOLD on
the ground of abandonment.
Ms. Gray testified that, upon receiving the
aforementioned cease and desist letter, respondent contacted
Dr. Davies’ attorney, who subsequently sent respondent a
Cancellation No. 22,285
12
copy of the registration, noting that it had been assigned
from Dagar to Graham Davies, along with photographs of the
AUSTRALIAN GOLD product and copies of several invoices
reflecting sales of the product; and that, in view of this
evidence of the existence of a product and sales activity,
respondent directed its attorneys to pursue with Dr. Davies
a settlement of the petition to cancel.
The record reflects the recordation with the PTO of the
assignment, nunc pro tunc as of July 4, 1984, of the mark
AUSTRALIAN GOLD, “together with the good will of the
business symbolized by the mark and the registration [no.
1,046,627] thereof” from Dagar Products, Inc. to Graham
Davies. The document, dated March 2, 1990, is executed by
Graham Davies, as president of Dagar. The record also
reflects the recordation with the PTO of the subsequent
assignment of the mark AUSTRALIAN GOLD, “together with the
good will of the business symbolized by the mark and the
registration [no. 1,046,627] thereof” from Graham Davies to
American Tanning Systems, Inc. The document is dated April
4, 1990.
Dr. Davies and Ms. Gray both testified that the
consideration for the assignment to respondent was $4500.
Dr. Davies testified that respondent did not want to acquire
his remaining inventory and, in fact, he agreed, as part of
the transfer, to destroy all remaining inventory of
Cancellation No. 22,285
13
AUSTRALIAN GOLD sunscreen lotion. He turned over to
respondent all invoices in his possession, but not customer
lists. However, Mr. Davies confirmed that he is no longer
in the business of manufacturing or selling sunscreen
products or any skin lotions or creams.
Issues
The three questions before us with respect to this
registration are (1) did Dagar Products Inc./Dr. Davies
abandon the AUSTRALIAN GOLD mark prior to the assignment to
respondent; (2) if the mark is not abandoned, is the nunc
pro tunc assignment of the mark and the registration from
Dagar to Dr. Davies valid; and (3) if the mark is not
abandoned and the nunc pro tunc assignment is valid, is the
assignment of the mark and registration from Dr. Davies to
respondent an assignment in gross which renders the
assignment invalid?9
Abandonment
Petitioner contends that the AUSTRALIAN GOLD mark was
abandoned by respondent’s predecessors because Dagar “never
commercialized the AUSTRALIAN GOLD mark”; that Dagar “never
sold AUSTRALIAN GOLD sunscreen other than to sporadically
dispose of very limited quantities of inventory from the one
and only small production run by ‘wholesale sale’ or

9 While this third question was not pleaded by petitioner, we find
sufficient evidence in the record addressing this particular question to
conclude that the question was tried by implicit agreement of the
parties and we have considered it in our determination.
Cancellation No. 22,285
14
giveaways to friends of the two founders”; that the business
was never profitable; and that, in 1984, the corporation was
dissolved with no intent to resume operations.
Respondent contends, on the other hand, that petitioner
has not established abandonment of the mark. In this
regard, respondent contends that sales of the product by
Dagar and, subsequently, by Dr. Davies and Mr. Agostinelli,
were continuous from 1975 to the date of the assignment to
respondent; that the nature and extent of such sales were
consistent with the nature of this small seasonal business;
that the dissolution of the corporation was “a non-event
with respect to the issue of abandonment”; and that there
was no intention to abandon the mark.
A mark is deemed to be abandoned, for purposes of the
Trademark Act, when the course of conduct of the owner of
the mark causes the mark to lose its significance as an
indication of origin. Section 45 of the Trademark Act.
This course of conduct includes acts of omission as well as
acts of commission. The prevailing view is that since
abandonment is in the nature of a complete forfeiture, it
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); Girard Polly-Pig, Inc. v. Polly-Pig by
Knapp, Inc., 217 USPQ 1338 (TTAB 1983); and The Nestle

Cancellation No. 22,285
15
Company Inc. v. Nash-Finch Co., 4 USPQ2d 1085, 1089 (TTAB
1987). Moreover, petitioner bears the ultimate burden of
proof of abandonment by a preponderance of the evidence.
See, Cerveceria Centroamericana S.A. v. Cerveceria India
Inc., 892 F.2d 1021, 13 USPQ2d 1307, 1309 (Fed. Cir. 1989).
Only upon such a showing does the burden of persuasion shift
to respondent to come forward with evidence. Id. at 1312.
Particularly relevant to the case before us is the case
of Persons Co. Ltd. v. Christman, 900 F.2d 1565, 14 USPQ2d
1477 (Fed. Cir. 1990), affirming 9 USPQ2d 1477 (TTAB 1988),
wherein the appellant argued that abandonment was
established by Christman’s intermittent sales during a four-
year period, the paucity of orders to replenish the
inventory during that period, and the lack of significant
sales to commercial outlets. However, the court found that
such circumstances do not necessarily imply abandonment and
that appellant did not establish abandonment. The court
stated (at 1477) that “there is no rule of law that the
owner of a trademark must reach a particular level of
success, measured either by the size of the market or by its
own level of sales, to avoid abandoning a mark.” See also,
Wallpaper Manufacturers Ltd. v. Crown Wallpapering Corp.,
680 F.2d 755, 759, 214 USPQ 327, 329 (CCPA 1982).
There is no question that the business involved in the
case before us was a small operation which, although
Cancellation No. 22,285
16
initially incorporated, was run by the two principal
shareholders as a sideline to their primary occupations;
that these parties commercialized their product in a manner
consistent with the nature and level of their sales; that
sales of AUSTRALIAN GOLD sunscreen lotion were seasonal and
relatively small, although the majority of such sales were
bona fide sales in the ordinary course of business; and that
the business was not profitable. The evidence also clearly
establishes that this small business was continued unchanged
by the principals after the dissolution of the corporation
and that sales were continuous over the years from 1975
through 1989, when the mark and registration were sold to
respondent and Dr. Davies ceased his sales and destroyed his
inventory. The fact that Dagar and Dr. Davies did not have
more than one production run of the product sold under the
mark is not dispositive. Due to the requirements of the
FDA-approved facility where Dagar had its product
manufactured, the minimum order was for a substantial number
of bottles of lotion. Given the steady, but small, rate of
sales of the product, it appears reasonable that no
additional production runs were necessary during Dagar and
Dr. Davies’ ownership of the business and the mark herein.
This evidence indicates an on-going, albeit small, business.
Petitioner has failed to establish that respondent’s
predecessors abandoned the mark which is the subject of
Cancellation No. 22,285
17
Registration No. 1,046,627. In particular, petitioner has
not established that Dagar “never commercialized the
AUSTRALIAN GOLD mark”; that Dagar “never sold AUSTRALIAN
GOLD sunscreen other than to sporadically dispose of very
limited quantities of inventory from the one and only small
production run by ‘wholesale sale’ or giveaways to friends
of the two founders”; or that, in 1984, the corporation was
dissolved with no intent to resume operations.
Nunc Pro Tunc Assignment
We consider, next, the validity of the nunc pro tunc
assignment from Dagar, by Dr. Davies as president thereof,
to Dr. Davies, as an individual.10 The Board, in Hotel
Corporation of America v. Inn America, Inc., 153 USPQ 574,
578 (TTAB 1967), has previously stated the following
regarding such assignments.
“Nunc pro tunc”, literally speaking, means now for
then. A nunc pro tunc assignment in practice and
as meant in law is an assignment made now of
something which was previously done, to have
effect as of the former date. The purpose of such
an assignment is to make the record show something
which actually occurred, but has been omitted from
the record through inadvertence or mistake. See:
67 Corpus Juris Secundum, pages 1 and 2; and
Black’s Law Dictionary, Third Edition (1933). . .
While these assignments were executed only nine
days before the taking of applicant’s testimony,
this is not controlling if, in fact, they reflect
what actually occurred or was intended to occur on
those past dates.

10 To consider the narrow question of the validity of the nunc pro tunc
assignment, we assume continuous use of the mark in connection with an
on-going business and consider the question of abandonment separately
herein.
Cancellation No. 22,285
18
In this case, while Dr. Davies and Mr. Agostinelli’s
sunscreen products business was organized as a corporation,
there is no question that this small business was operated
solely by these two individuals. When the corporation was
dissolved, the business, such as it was, was continued in an
unchanged manner by, at least, Dr. Davies.11 Thus, there is
nothing in the record to contradict the reasonable
conclusion that, upon dissolution of the corporation, the
assets of this on-going business, including the trademark,
in fact, devolved to Dr. Davies.
Thus, in this case, the nunc pro tunc assignment
document merely reflects what actually occurred at that
time. It is immaterial that, at the time Dr. Davies
executed the document as president of the corporation, the
corporation no longer existed.
There is no requirement that a formal assignment is
necessary to pass a trademark or trade name from a
predecessor to a successor and, when the business with which
marks and a trade name were associated is transferred, the
presumption is that rights to the marks and name were
transferred with the business. Stagecoach Properties, Inc.

11 Dr. Davies testified that no formal partnership between himself and
Mr. Agostinelli was formed upon the dissolution of the corporation.
Further, it would appear from the evidence of record that Dr. Davies
was, at all times, the principal “business manager” of their sunscreen
product business and that, at a certain point after dissolution of the
corporation, Mr. Agostinelli’s failing health removed him entirely from
the business.
Cancellation No. 22,285
19
v. Wells Fargo & Company, 199 USPQ 341, 347 (TTAB 1978), and
cases cited therein. Certainly, the execution of a nunc pro
tunc assignment was necessary to establish, in writing, a
chain of title from Dagar to respondent herein for
recordation with the PTO. While there is no requirement in
Section 10 of the Act for recordation of assignments, an
assignee cannot take action to maintain that registration or
change the records of the PTO to reflect its ownership of
that registration unless and until the assignments or
transfers of interest are duly recorded in the PTO. See,
Hotel Corp. of America, supra.
Assignment to Respondent
Having decided that the mark was not abandoned by Dagar
or Dr. Davies and that the nunc pro tunc assignment from
Dagar to Dr. Davies is valid, we address the question of
whether the assignment of the mark and registration from Dr.
Davies to respondent12 is an assignment in gross which
renders the assignment invalid. It is a well established
principle, both at common law and under Section 10 of the
Trademark Act, 15 U.S.C. 1060, that a trademark cannot be
sold or assigned apart from the good will it symbolizes.
Ph. Schneider Brewing Co. v. Century Distilling Co., 107
F.2d 699, 43 USPQ 262 (10th Cir. 1939); Warner-Lambert

12 The assignment is from Dr. Davies to American Tanning Systems, Inc.,
which is respondent prior to its change of name to ETS, Inc., as
indicated herein.
Cancellation No. 22,285
20
Pharmaceutical Co. v. General Foods Corp., 164 USPQ 532
(TTAB 1970). The sale of a trademark apart from its good
will is an “assignment in gross” and such an assignment
confers no rights on the assignee. See, McCarthy on
Trademarks and Unfair Competition (4th ed. 1997), Sections
18.2, 18.3.
In this case, petitioner complains, essentially,
that the assignment from Dr. Davies to respondent did not
involve the transfer of any assets, noting that no
advertising materials, product lists or customer lists were
transferred to respondent; that the assignment was effected
by respondent for the sole purpose of overcoming the Section
2(d) refusal in its then-pending application which matured
into Registration No. 1,637,325; and, thus, that the
assignment constitutes a “naked” transfer of the trademark
to respondent, which is invalid as an assignment in gross.
Applicant’s arguments are not well-taken. First,
it is not necessary to the continuing validity of the mark
that tangible assets of the assignor pass to the assignee.
The court stated the following in VISA, U.S.A., Inc. v.
Birmingham Trust National Bank, 696 F.2d 1371, 216 USPQ 649
(Fed. Cir. 1982), cert. denied, 464 U.S. 826, 78 L. Ed. 2d
104, 104 S. Ct. 98, 220 USPQ 385 (1983):
The key objective of the law of trademarks is
protection of the consumer against being misled or
confused as to the source of the goods or services
he acquired. The rule against assignment of a
Cancellation No. 22,285
21
mark in gross thus reflects the need, if consumers
are not to be misled from established associations
with the mark, that it continue to be associated
with the same or similar products after the
assignment. (citation omitted.)
See also, The Money Store v. Harriscorp Finance, Inc., 689
F.2d 666, 216 USPQ 11 (7th Cir. 1982), and cases cited
therein. In this case, the assignee used, and continues to
use, the assigned mark in connection with essentially the
same goods. While the goods are not identical (i.e., some
of respondent’s products identified by the mark are tanning
products rather than sunscreen products), the transfer of
good will does not require that the goods be identical. It
is only necessary that they be sufficiently similar to
prevent consumers of the goods under the mark from being
“misled from established associations with the mark.” VISA
U.S.A., Inc. v. Birmingham Trust National Bank, supra.
Further, the assignor assigned the mark along with a
recitation of goodwill and, based on the facts herein, gave
up the right to sell AUSTRALIAN GOLD sunscreen products.
This right had been a part of his business and the giving up
of this right represents a valid transfer of good will.
Second, we find no merit to petitioner’s claim that the
assignment is essentially a sham transaction initiated for
the sole purpose of obtaining registration in its pending
application. As the court pointed out in The Money Store v.
Harriscorp Finance, Inc., supra, it would be naïve to
Cancellation No. 22,285
22
conclude that respondent’s knowledge that, in this case, its
pending application was blocked by the assignor’s
registration was irrelevant to respondent’s decision to seek
an assignment of the mark and registration. The court went
on to conclude that “an assignment motivated at least in
part by sound business judgment should [not] be set aside as
a sham transaction.” Such reasoning is equally applicable
herein.
Thus, we find that the assignment from Dr. Davies to
respondent is not an assignment in gross. Rather, the
record does not establish that it is other than a valid
assignment of the trademark and the good will associated
therewith.
In conclusion with respect to Registration No.
1,046,627, neither Dagar Products Inc. nor Dr. Davies
abandoned the AUSTRALIAN GOLD mark prior to the assignment
to respondent; the nunc pro tunc assignment of the mark and
the registration from Dagar to Dr. Davies is valid; and the
assignment of the mark and registration from Dr. Davies to
respondent is not an assignment in gross which renders the
assignment invalid.
Cancellation No. 22,285
23
Decision: The petition to cancel is dismissed as to
both Registration No. 1,046,627 and Registration No.
1,637,325.
R. L. Simms
G. D. Hohein
C. E. Walters
Administrative Trademark Judges,
Trademark Trial and Appeal Board
Cancellation No. 22,285
24
AUSTRALIAN HAIR SALAD for “hair remoisturizer and
finishing rinse” - Registration No. 1,284,879,
issued July 10, 1984. Sections 8 and 15
affidavits accepted and acknowledged,
respectively. The registration includes a
disclaimer of AUSTRALIAN and HAIR apart from the
mark as a whole.
AUSSIE MOIST for “hair shampoo” - Registration No.
1,354,878, issued August 20, 1985. Sections 8 and
15 affidavits accepted and acknowledged,
respectively. The registration includes a
disclaimer of MOIST apart from the mark as a
whole.
AUSSIE SPRUNCH SPRAY for “non-aerosol hair spray”
Registration No. 1,390,466, issued April 22, 1986.
Sections 8 and 15 affidavits accepted and
acknowledged, respectively. The registration
includes a disclaimer of AUSSIE and SPRAY apart
from the mark as a whole.
AUSSIE GOLD for “tea tree oil for use in treating
cuts, stings, burns, abrasions, toothaches, colds
and sinusitis” - Registration No. 1,440,412,
issued May 26, 1987, to Jason Natural Products,
Inc. Sections 8 and 15 affidavits accepted and
acknowledged, respectively. The registration
includes a disclaimer of AUSSIE apart from the
mark as a whole.
AUSTRALIAN HAIR CITRIFIER for “hair care
preparations, namely shampoos” - Registration No.
1,455,998, issued September 8, 1987. Section 8
affidavit accepted. The registration includes a
disclaimer of AUSTRALIAN HAIR apart from the mark
as a whole.
AUSSIE HAIR INSURANCE for “hair care preparations,
namely shampoos” - Registration No. 1,460,543,
issued October 13, 1987. Section 8 affidavit
accepted. The registration includes a disclaimer
of HAIR apart from the mark as a whole.
AUSSIE MEGA SHAMPOO for “non-medicated hair shampoo”
- Registration No. 1,664,669, issued November 19,
1991. Sections 8 and 15 affidavits accepted and
acknowledged, respectively. The registration
includes a disclaimer of SHAMPOO apart from the
mark as a whole.
Cancellation No. 22,285
25
AUSSIE INSTANT FREEZE for “non-medicated hair care
preparations, namely, hair spray” - Registration
No. 1,677,286, issued March 3, 1992. Sections 8
and 15 affidavits accepted and acknowledged,
respectively.
AUSSIE for “non-medicated hair care preparations,
namely, shampoos, conditioners, hair sprays,
styling gels, and baby shampoos” - Registration
No. 1,677,287, issued March 3, 1992. Sections 8
and 15 affidavits accepted and acknowledged,
respectively.
GRAMMA REDMOND’S AUSSIE NATURAL for “baby shampoo” -
Registration No. 1,684,988, issued May 5, 1992.
Sections 8 and 15 affidavits accepted and
acknowledged, respectively. The registration
includes a disclaimer of NATURAL apart from the
mark as a whole and a statement that Gramma
Redmond is a living individual whose consent is of
record.
AUSSIE INSTANT for “hair care preparations, namely,
hair conditioners” - Registration No. 1,685,914,
issued May 12, 1992. Sections 8 and 15 affidavits
accepted and acknowledged, respectively.
AUSSIE MANGO SHAMPOO for “non-medicated hair care
preparations, namely, shampoo” - Registration No.
1,724,892, issued October 20, 1992. The
registration includes a disclaimer of MANGO
SHAMPOO apart from the mark as a whole.
AUSSIE HOT CURING OIL TREATMENT for “non-medicated
hair care preparations, namely, hair conditioner”
- Registration No. 1,730,548, issued November 10,
1992.
AUSSIE GLOSS for “non-medicated hair care
preparations, namely, conditioning laminents” -
Registration No. 1,760,540, issued March 23, 1993.
AUSSIE CURING MUDDY for “hair conditioners” -
Registration No. 1,768,356, issued May 4, 1993.
AUSSIE NATURAL for “hair styling gel” - Registration
No. 1,796,708, issued October 5, 1993.
Cancellation No. 22,285
26
AUSSIE CITRIFIER for “non-medicated hair care
preparations, namely, hair shampoo” - Registration
No. 1,797,460, issued October 12, 1993.
AUSSIE CUSTARD APPLE for “hair shampoo” -
Registration No. 1,831,811, issued April 19, 1994.
The registration includes a disclaimer of APPLE
apart from the mark as a whole.
AUSSIE COLORWISE SHAMPOO for “non-medicated hair
care preparations, namely, hair shampoo” -
Registration No. 1,841,610, issued June 28, 1994.
The registration includes a disclaimer of SHAMPOO
apart from the mark as a whole.
AUSSIE PERMANENT WAVE INSURANCE for “hair shampoo” -
Registration No. 1,842,608, issued July 5, 1994.
The registration includes a disclaimer of
PERMANENT WAVE apart from the mark as a whole.
THE AUSTRALIAN 3 MINUTE MIRACLE for “hair
conditioner” - Registration No. 1,845,301, issued
July 19, 1994. The registration includes a
disclaimer of 3 MINUTE apart from the mark as a
whole and a claim under Section 2(f) as to
AUSTRALIAN.