S Industries, Inc. and Central Mfg. Co.v.Casablanca Industries, Inc. and Hunter Fan Co.

Trademark Trial and Appeal Board

Oct 3, 2002

No. 92024330 (T.T.A.B. Oct. 3, 2002)

Mailed: October 3, 2002
Hearing: Paper No. 115
August 6, 2002 BAC
UNITED STATES PATENT AND TRADEMARK OFFICE
_____
Trademark Trial and Appeal Board
_____
S Industries, Inc., and Central Mfg. Co., joined as party
plaintiff
v.
Casablanca Industries, Inc., and Hunter Fan Company, joined
as party defendant
_____
Cancellation No. 24,330
_____
S Industries, Inc. and Central Mfg. Co., appeared without
counsel.1
Valerie Walsh Johnson of Baker, Donelson, Bearman &
Caldwell, P.C. for Casablanca Industries, Inc. and Hunter
Fan Company.
_____
Before Hanak, Chapman and Bottorff, Administrative Trademark
Judges.
Opinion by Chapman, Administrative Trademark Judge:
S Industries, Inc. (a Delaware corporation) filed a
petition to cancel a registration on the Principal Register
1 Papers filed on behalf of petitioners have been signed by Leo
Stoller, as an officer of each corporation. Corporations (and
other business entities) appear without counsel as a privilege
extended by Patent and Trademark Office Rule 10.14(e). Although
petitioner corporations appeared without counsel, they have been
party to numerous cases before this Board (as well as Courts),
and petitioners are currently involved in numerous cases now
pending before the Board. Petitioners are (or should be) fully
aware of proper Board practice and procedure, and petitioners are
well aware that all parties to Board proceedings must comply with
THIS DISPOSITION IS
NOT CITABLE AS PRECEDENT
OF THE TTAB
Cancellation No. 24330
2
issued to Casablanca Industries, Inc. (an Oregon
corporation), for the mark STEALTH for “ceiling fans” in
International Class 11.2
Petitioner, S Industries, Inc., ultimately assigned
relevant trademark rights to Central Mfg. Co. (a Delaware
corporation); and registrant, Casablanca Industries, Inc.,
ultimately assigned the subject registration to Hunter Fan
Company (a Delaware corporation). Accordingly, the assignee
entities have previously been joined as parties to this
proceeding.
Petitioners assert as grounds for cancellation3 that
they have continuously used the trademark and trade name
STEALTH since at least as early as 1981 on a broad range of
goods and services, and on fans since 1985; that “petitioner
holds rights to” nine pleaded registrations and fifteen
pleaded applications; that petitioners have an “aggressive
licensing program” (paragraph 6); that respondent’s mark,
when used on its goods, so resembles petitioners’ previously
used and registered mark and trade name, as to be likely to
the Trademark Rules of Practice, whether or not they are
represented by counsel.
2 Registration No. 1,638,283, issued March 19, 1991, Section 8
affidavit accepted. The claimed date of first use and first use
in commerce is January 15, 1990.
3 The original petition to cancel was filed on September 18,
1995. In a June 10, 1999 Board order, petitioners were ordered
to file an amended petition to cancel providing a more definite
statement of their claims. Petitioners’ filed an amended
petition to cancel and respondents filed an answer thereto.
Petitioners’ amended petition to cancel and respondents’ answer
thereto are the operative pleadings in this case.
Cancellation No. 24330
3
cause confusion, mistake, or deception;4 that respondent
obtained the registration by fraud in that respondent
knowingly asserted a false first use date of January 15,
1990; that respondent also committed fraud by signing the
declaration in the application when respondent had knowledge
that another party had a right to use the mark in commerce;
that respondent had no bona fide intent to use the mark in
commerce prior to the filing of the application5; and that
respondents’ mark is merely descriptive or deceptively
misdescriptive of the goods.6
In the answer respondents denied the salient
allegations of the amended petition to cancel, and raised
certain affirmative defenses including that petitioners have
abandoned any use of the STEALTH mark on fans and any goods
4 Petitioners’ amended pleading includes a claim that
respondents’ mark “is likely to blur the distinctiveness of the
Petitioner’s well known STEALTH trademark(s)” (paragraph 5). To
whatever extent, if any, petitioners were asserting a claim of
dilution under Sections 14 and 43(c), it cannot be entertained by
the Board. Dilution became available as a ground for
cancellation with the enactment of The Trademark Amendments Act
of 1999 (with an effective date of August 5, 1999). The 1999
amendments apply only to applications filed on or after January
16, 1996. Because respondent’s involved Registration No.
1,638,283 matured from an application filed on April 27, 1990,
there is a statutory bar to any assertion of dilution as a ground
for cancellation.
5 The application which matured into respondents’ registration
was based on a claim of actual use, and, in any event, there is
no evidence of record showing that respondents’ lacked a bona
fide intention to use this mark.
6 Petitioners also asserted claims that respondents’ mark is a
functional configuration and does not function as a trademark;
and that the mark is a mere design which does not function as a
mark separate and apart from its display. (Paragraphs 15 and
18.) These two claims were stricken by Board order dated August
31, 2000 (p. 7).
Cancellation No. 24330
4
related thereto; that petitioners failed to plead any fraud
claims with particularity as required by Fed. R. Civ. P. 9;
and that “petitioners’ claims are barred pursuant to the
doctrines of waiver, estoppel and laches.”7
The Board notes that this case is unusual in that there
are numerous motions which remain pending at this final
stage of the proceeding. We shall now determine the pending
motions. Discovery closed in this case on March 20, 2001,
and plaintiffs’ testimony period closed on June 18, 2001
pursuant to the Board order dated February 26, 2001. In an
October 25, 2001 Board order the remaining testimony dates
were reset with shortened times for both remaining dates,
and respondents’ testimony period closed on December 3,
2001,8 and rebuttal closed on December 20, 2001.
Pending Motions Filed By Petitioners
It is noted that in a Board order dated February 26,
2001, the Board sanctioned petitioners based on their
“conduct in the case” and the “inordinate number of motions
7 With one exception, specifically, petitioners’ abandonment of
the mark, respondents offered no evidence on any other
affirmative defenses and did not raise any of their other
affirmative defenses in their brief on the case. Therefore, we
consider all of respondents’ pleaded affirmative defenses, except
for abandonment, to have been waived by respondents.
Respondents did raise in their brief (p. 28) a claim that
petitioners should lose this case based on “equity.” The
abandonment and equity issues will be determined later in this
decision.
8 The closing date set for December 1, 2001 was a Saturday.
Hence, pursuant to Patent and Trademark Office Rule 1.7, the time
for taking action became December 3, 2001.
Cancellation No. 24330
5
filed by [petitioners]” and the “serious delay occasioned by
[petitioners’] aggressive motion practice”; ordering
petitioners not to “file further pretrial motions without
first obtaining leave from the Board.” (Board order, p. 8.)
In a subsequent Board order dated October 4, 2001,
involving, inter alia, petitioners’ request for
reconsideration of a portion of the February 26, 2001 order
and petitioners’ motion to amend the petition to cancel, the
Board explained that the previous order had “required
petitioners to first seek Board permission before filing any
further motions...” (p. 2), and it was repeated that “in the
previous order, petitioners were “advised that they must
first seek leave to file any motion” (p. 5). Thus, the
Board made clear that the prohibition on petitioners filing
motions related to all motions, and that prior leave of the
Board was required before petitioners could file a motion on
any topic.9
9 In the Board orders dated February 26, 2001 (p. 8) and October
4, 2001 (pp. 2 and 3) petitioners were also specifically ordered
to follow Trademark Rule 2.127(a) regarding submitting papers
double spaced, and failure to do so would result in the paper not
being considered. We note that petitioners’ motions filed after
April 2, 2002, while possibly double spaced appear to be in type
smaller than that allowed by Trademark Rule 2.127(a).
Also, in the October 4, 2001 Board order (p. 3, footnote 1),
the timeliness of a motion filed by petitioners was discussed and
the Board noted that petitioners have been sanctioned in other
Board proceedings for falsification of certificates of mailing.
Moreover, in a Board order dated March 5, 2001, petitioners
were ordered to produce requested documents, warning them that
non-compliance with the Board order could result in entry of
judgment against petitioners under Trademark Rule 2.120(g).
Cancellation No. 24330
6
Petitioners thereafter captioned their motions as
“motion for leave to file a motion...” or “request for leave
to file a motion....” Petitioners have filed the following
motions:
(1) request for leave to file a motion to strike
exhibit 1 to the Pearson deposition (filed September 19,
2001—via certificate of mailing);
(2) motion for leave to suspend and re-open trial dates
(filed September 19, 2001—via certificate of mailing);
(3) request for leave to file a motion for
reconsideration of a portion of the October 4, 2001 Board
order (filed October 16, 2001—via certificate of mailing);
(4) request for leave to file a motion to amend the
record to be corrected to conform to the evidence including
all of their federal STEALTH registrations under Fed. R.
Civ. P. 15(b) (filed October 16, 2001—via certificate of
mailing);
(5) request for leave to file a request that the Board
take judicial notice of all of petitioners’ federal
registrations of the word STEALTH under Fed. R. Evid. 201
(filed November 20, 2001—via certificate of mailing);
(6) request for leave to file a motion to strike
respondents’ conditional notice of reliance (filed December
5, 2001—via certificate of mailing);
Cancellation No. 24330
7
(7) request for leave to file a motion to amend the
pleading to conform to the evidence and to accept
petitioners’ rebuttal notice of reliance (filed December 14,
2001—via certificate of mailing);
(8) request for leave to file a motion for summary
judgment and/or judgment on the pleadings (filed January 17,
2002—via certificate of mailing)10;
(9) request for leave to file a motion to strike
respondents’ conditional notice of reliance (filed January
23, 2002—via certificate of mailing);
(10) request for leave to file a motion for Fed. R. Civ.
P. 11 sanctions (filed February 14, 2002—via certificate of
mailing);
(11) request for leave to file a motion to strike
respondents’ trial brief as over the page limit and to
extend petitioners’ time to file a reply brief (filed March
28, 2002—via certificate of mailing);11 and
(12) petitioner’s motion for leave to file a cross-
motion for Rule 11 sanctions (filed July 16, 2002—via
certificate of mailing).
10 Petitioners’ trial brief was filed on the same date and was
titled “trial brief and/or request for leave to file a motion for
summary judgment and/or judgment on the pleadings and request for
leave to amend the complaint to conform to the evidence.”
11 Petitioners filed their reply brief on April 9, 2002–via
certificate of mailing.
Cancellation No. 24330
8
The previous Board orders prohibiting petitioners from
filing any motion without first obtaining permission from
the Board were clear that the permission of the Board was a
preliminary requirement. That is, it was not simply a
question of petitioners receiving permission from the Board
to file a motion, rather, petitioners were required to
obtain that permission prior to filing the motion. In order
to obtain permission from the Board to file a motion, it was
clear that petitioners first needed to establish or show why
any particular motion (e.g., to reopen, to strike, to amend)
was necessary and why the Board should grant petitioners
permission to file it. However, here petitioners have filed
twelve motions simply changing the caption thereof to read
“motion/request for leave to file...,” but including no
statement of good cause regarding any possible circumstances
that would support why the Board should grant petitioners
permission to file each involved motion.
Inasmuch as petitioners provided no statement in any of
their twelve motions for leave to file motions on various
topics justifying why the Board should allow the filing of
any of said substantive motions, all twelve motions for
leave to file motions are denied.
Informationally, the Board notes that in any event
petitioners’ motions are generally not well taken,
substantively and/or procedurally. (For example,
Cancellation No. 24330
9
petitioners did not show “excusable neglect” to justify a
re-opening of this case, petitioners did not show any error
in the October 4, 2001 Board order requiring reconsideration
thereof, the Board does not take judicial notice of
registrations in the USPTO,12 and respondent’s trial brief
consists of 5 preliminary pages and 49 numbered pages for a
total of 54 pages which does not violate Trademark Rule
2.128(b) on the length of briefs.13)
In addition, we note that petitioners filed on January
17, 2002 (via certificate of mailing) their trial brief as
“Trial brief and/or request for leave to file a motion for
summary judgment and/or judgment on the pleadings and
request for leave to amend the complaint to conform to the
evidence.” To the extent the motions for leave to file
motions contained within petitioners’ trial brief are
intended as separate requests for leave to file various
motions, these are denied for the same reasons set forth
above—petitioners’ failure to provide any reasons to justify
granting them leave to file the motions, and lack of merit
12 See Wright Line Inc. v. Data Safe Services Corporation, 229
USPQ 769, footnote 5 (TTAB 1985); In re Lar Mor International,
Inc., 221 USPQ 180, 183 (TTAB 1983); and In re Duofold Inc., 184
USPQ 638, 640 (TTAB 1974).
13 If the 12 pages of exhibits with respondents’ brief (e.g., a
comprehensive chart of respondents’ objections to petitioners’
asserted registrations and applications, photocopies of motions
filed by petitioners) are counted, then it exceeds the 55-page
limit, but we will not count such pages. Moreover, if the Board
did count all exhibit pages, then petitioners’ brief (which
includes their request to move for summary judgment, etc.) would
also violate the rule as it includes over 100 pages of exhibits.
Cancellation No. 24330
10
in the motions. (For example, under Trademark Rule
2.127(e)(1) a summary judgment motion is untimely if it is
filed after the opening of the plaintiff’s testimony period,
and in order to conform the pleadings to the evidence under
Fed. R. Civ. P. 15(b), the evidence must have been properly
introduced into the record, with the implied or express
consent of the adverse party.14)
Pending Motions Filed By Respondents
Respondents have filed the following motions:
(1) combined motion (filed November 5, 2001-via
certificate of mailing) to strike petitioners’ notice of
reliance and to strike petitioners’ request for leave to
file a request that the record be corrected to conform to
the evidence (both filed October 16, 2001);
(2) combined motion (filed April 17, 2002-via
certificate of mailing) to strike petitioners’ reply brief
and to strike the evidence attached thereto;
(3) motion (filed June 27, 2002-via certificate of
mailing) to strike petitioners’ request for leave to file a
motion to strike respondents’ trial brief;
14 In this case, there is little evidence submitted by petitioners
(as fully discussed later herein), and such evidence was clearly
not submitted with the express or implied consent of respondents,
in view of their motions to strike what respondents assert is
inappropriate introduction of evidence by petitioners.
Cancellation No. 24330
11
(4) motion (filed June 27, 2002-via certificate of
mailing) to strike petitioners’ request for leave to file a
motion for Rule 11 sanctions;
(5) motion (filed July 29, 2002-via certificate of
mailing) to strike petitioners’ request for leave to file a
cross-motion for Rule 11 sanctions; and
(6) motion (filed July 29, 2002-via certificate of
mailing) for Rule 11 sanctions.
In view of our decision on petitioners’
motions/requests for leave to file motions, all of
respondents’ motions to strike certain of petitioners’
motions/requests for leave to file motions are denied as
moot.
Respondents’ motion to strike petitioners’ reply brief
and an exhibit attached thereto is granted because (i) the
reply brief was due on April 5, 200215 and petitioners filed
it several days late on April 9, 2002 (via certificate of
mailing)16; (ii) the reply brief is single spaced in
violation of Trademark Rule 2.128(b) and the specific Board
orders of February 26, 2001 and October 4, 2001; and (iii)
15 The due date of petitioners’ opening trial brief fell on
February 18, 2002, which was a holiday, making all briefing due
dates one day later than that set forth by respondents in their
motion to strike.
16 We note that petitioners had filed a motion for leave to file a
motion to strike respondents’ brief and to extend petitioners’
time to file a reply brief. For the reasons explained above
petitioners’ motion for leave to file said motion was denied.
For the record, a full consideration of the reply brief would not
alter the Board’s decision herein.
Cancellation No. 24330
12
the evidence attached thereto was not properly made of
record during trial. Petitioners’ reply brief has not been
considered.
Respondents’ motion (filed November 5, 2001—via
certificate of mailing) to strike petitioners notice of
reliance (filed October 16, 2001-via certificate of mailing)
is granted because the notice of reliance was not filed in
accordance with the October 4, 2001 Board order which, inter
alia, allowed petitioners time to file proper status and
title copies of pleaded registrations. Also, the notice of
reliance includes a photocopy of an asserted assignment
document, and a photocopy of a letter from petitioners to
respondent’s attorney regarding discovery, which are not
subject to submission into the record by way of notice of
reliance.
Respondents’ motion for Fed. R. Civ. P. 11 sanctions is
denied as moot in view of our decision on the merits of
petitioners’ case.
The Record and Evidentiary Objections
The Board must clarify what is properly of record
herein. Trademark Rule 2.123(l) reads as follows: Evidence
not obtained and filed in compliance with these sections
will not be considered.
The record includes petitioners’ amended petition to
cancel, respondents’ answer thereto, and the file of
Cancellation No. 24330
13
respondent’s registration. Petitioners took no testimony,
but they submitted four notices of reliance, all of which
involve motions to strike and/or objections by respondents.
Respondents submitted the testimony, with exhibits, of
John C. Pearson, vice president of marketing of respondents’
division Casablanca Fan Company17; a notice of reliance, and
a “conditional” notice of reliance.18
The Board will first address respondents’ objections to
petitioners’ four notices of reliance. The first notice of
reliance, filed by Central Mfg. Inc. on June 7, 2001 (during
petitioners’ testimony period), consisting of Exhibits A-I,
cannot be considered in determining this case. This notice
was filed by a non-party to this case. Moreover, the
evidence is not admissible in the form presented. Exhibit A
consists of a typed list of petitioners’ asserted
registrations and applications for marks involving the word
STEALTH, a typed list of petitioners’ asserted policing
efforts and licensing material related thereto, photocopies
of assignment documents and registrations, and printouts of
17 Petitioners objected numerous times during the testimony
deposition, but there is no recognizable, coherent reiteration of
objections to respondents’ evidence in petitioners’ brief, with
the exception of a clear objection (brief, p. 14, footnote 1) to
respondents’ Exhibit 1 (five-page laser copy of respondents’
packaging). This matter will be determined later herein.
18 Respondents “conditional” notice of reliance was timely filed
during respondents’ testimony period, specifically, on December
3, 2001—via certificate of mailing, the closing day of their
testimony period.
Cancellation No. 24330
14
applications and registrations from the USPTO’s Trademark
Electronic Search System (TESS). The typed lists, the
licensing materials, and the photocopies of assignment
documents which do not indicate that the assignments have
been recorded with the Assignment Branch of this Office, are
not printed publications which are appropriate for
submission into the record by way of a notice of reliance.
See Trademark Rule 2.122(e). The TESS printouts of
applications and registrations are official publications,
but applications are of extremely limited probative value,
and the TESS records do not establish the status and title
of said claimed registrations to properly make them of
record. See Trademark Rule 2.122(d). We specifically note
that respondents had filed a motion to strike Exhibit A19
and said motion was granted by the Board on October 4, 2001,
with the Board allowing petitioners time to submit proper
status and title copies of their pleaded registrations.
Exhibit B, petitioners’ own answers to respondents’
“narrowed first set of interrogatories,” is not appropriate
for entry into the record by way of notice of reliance. See
Trademark Rule 2.120(j)(5).
Exhibit C (one invoice and a typed list of petitioners’
asserted dollar sales of fans), Exhibit D (a photocopy of a
19 Respondents noted in their motion (footnote 1) that they would
submit substantive objections to the notice of reliance in their
brief on the case.
Cancellation No. 24330
15
letter from petitioners to respondents’ attorney regarding
settlement, typed lists of petitioners’ asserted dollar
sales of air conditioners and air cleaners, and one
invoice), Exhibit E (a photocopy of a letter from
petitioners to respondents’ attorney regarding discovery and
one invoice), Exhibit F (photocopies of several asserted
invoices), Exhibit G (photocopies of several asserted
letters from petitioners to potential customers), and
Exhibit I (a photocopy of one page asserted to be
petitioners’ brochure on fans)20, are all inappropriate for
entry into the record by way of notice of reliance as they
are not printed publications available to the general public
in libraries or in general circulation among the relevant
members of the public. See Trademark Rule 2.122(e).
Exhibit H, the affidavit of Ray Webber, an asserted
customer of petitioners, is inadmissible pursuant to
Trademark Rule 2.123(b).
Petitioners’ first notice of reliance was not
considered.
The second notice of reliance, filed by Central Mfg.
Inc. on August 21, 2001 (four days after the close of
20 Respondents argued that this one-page brochure appears to have
been “fabricated by cutting and pasting the letter ‘S’ onto
photographs of fans.” (Brief, p. 40.) We agree that this
document appears to have involved cutting and pasting of the
letter “S,” making the credibility of the document questionable
at best. However, we do note that there is no obvious indication
that the involved mark STEALTH has been cut and pasted; and there
is otherwise no evidence of record regarding this issue.
Cancellation No. 24330
16
respondents’ testimony period as then set) is titled
“Request for leave to file a request to amend notice of
reliance,” and consists of photocopies of several status and
title copies of registrations assertedly owned by
petitioners. This notice was filed by a non-party, and it
was untimely as it was not filed during petitioners’
testimony period. In addition, petitioners’ request for
leave to file this amended notice of reliance was held moot
in the Board order dated October 4, 2001 (p. 7) because in
that same board order, petitioners had been allowed time to
submit proper status and title copies of their pleaded
registrations.21
Petitioners’ second notice of reliance was not
considered.
Turning to petitioners’ third notice of reliance, filed
by Central Mfg. Co. on October 16, 2001 (about two weeks
after the close of petitioners’ rebuttal testimony period as
set in the February 26, 2001 Board order and about two
months prior to the opening of the rebuttal testimony period
as rescheduled in the October 4, 2001 Board order) is titled
“Notice of reliance and request for leave to file it’r [sic]
request to amend to conform to the evidence FRCP 15(b),” and
21 We note that some of these registrations included in this
notice of reliance show title to be in the name of non-parties,
e.g., Central Mfg. Inc., Cobra Electronics Corporation, and
Cheyenne Advanced Technology Limited.
Cancellation No. 24330
17
consists of photocopies of status and title copies of
registrations, a photocopy of an asserted assignment
document, and a photocopy of a letter from petitioners to
respondent’s attorney regarding discovery. Petitioners’
request for leave to file this request to amend to conform
to the evidence was denied earlier herein. Respondents’
motion to strike this notice of reliance notice of reliance
was granted earlier herein.
Petitioners’ third notice of reliance was not
considered.
Thus, petitioners did not submit any testimony or
evidence into the record in compliance with the Trademark
Rules of Practice which could be considered their testimony-
in-chief.22
However, during petitioners’ rebuttal testimony period
(as reset) Central Mfg. Co. filed petitioners’ fourth notice
of reliance, titled “motion for leave to file a motion to
amend to conform to evidence and notice of reliance,” and
22 During the cross-examination of respondents’ witness, Mr.
Pearson, petitioners introduced five exhibits, all relating to
petitioners’ business (e.g., petitioners’ document titled
“STEALTH BRAND FAN SALES”; a photocopy of an invoice (carrying a
typed date of “2/04/86” and a facsimile date at the top of the
page of “Jul 25.01”; two affidavits signed by Mr. Ray Webber, and
a photocopy of a page assertedly from petitioners’ brochure for
fans. Petitioners laid no foundation for these documents, and
the documents were not previously made of record. Inasmuch as
respondents’ witness knew nothing about the documents themselves,
they are hearsay. Thus, these documents have not been considered
in our decision. Petitioners cannot attempt to put into the
record on cross examination of respondents’ witness, what they
failed to properly submit and prove during their case-in-chief.
Cancellation No. 24330
18
consisting of Exhibits A-I. To the extent that this notice
of reliance was filed during petitioners’ rebuttal testimony
period, petitioners did not need to seek permission from the
Board to file same because timely notices of reliance need
not be filed by way of motion. To the extent petitioners
sought leave to file a motion to amend under Fed. R. Civ. P.
15(b), that motion for leave was specifically denied earlier
in this decision.
Respondents object to the fourth notice of reliance on
several bases, including essentially that all of the
material is improper rebuttal; that much is irrelevant; and
that the notice of reliance includes status and title copies
of registrations not pleaded by petitioners. Respondents
set forth (in chart form) their objections to each of the 24
registrations referenced in this fourth notice of reliance.
(Petitioners had pleaded that they “hold rights to” nine
registrations and fifteen applications.)
Exhibit A consists of (i) photocopies of status and
title copies of 17 registrations, all for marks consisting
of or including the word STEALTH, (ii) photocopies of one
registration and an assignment document relating thereto,
(iii) photocopies of TESS printouts of three registrations,
along with assignment documents relating thereto, and (v)
photocopies of the cover page and the registration page of
three registrations issued in 2001, as well as an assignment
Cancellation No. 24330
19
document relating to two of said registrations. The latter
three types of photocopied registrations are not proof of
the existence, validity or ownership of said registrations,
and are of virtually no probative value. See Trademark Rule
2.122(d). And as explained earlier herein, the photocopies
of assignment documents which have not been recorded with
the Assignment Branch of this Office, are not printed
publications or official records which are appropriate for
submission into the record by way of a notice of reliance.
See Trademark Rule 2.122(e).
Regarding the photocopies of petitioners’ asserted 17
status and title copies of registrations, all including the
word STEALTH, there can be no question but that petitioners’
pleaded registrations constitute part of petitioners’ case-
in-chief and should have been properly made of record during
petitioners’ opening testimony period. Thus, petitioners’
finally properly submitting the registrations at the
rebuttal stage constitutes improper rebuttal, as argued by
respondents. Although petitioners did submit a notice of
reliance during their opening testimony period, their copies
of registrations were stricken and the Board specifically
gave petitioners time to submit proper current status and
title copies thereof. Petitioners did not finally succeed
in doing so until rebuttal, an inappropriate time to prove
their case-in-chief. See Interstate Brands Corp. v. McKee
Cancellation No. 24330
20
Foods Corp., 53 USPQ2d 1910, footnote 4 (TTAB 2000). We
reiterate that although petitioner corporations are
appearing before this Board without counsel, as explained
previously, petitioners are (or should be) fully familiar
with Board practice and procedure.
Without setting forth here the particulars of each of
the 17 registrations individually, suffice it to say that
some are pleaded registrations, some are pleaded
applications which matured into registrations, and some were
not pleaded at all. Some show title to be in the name of
parties who are not either petitioner in this case.
Finally, all but two of the seventeen status and title
copies involve applications which were filed after the
filing date of respondents’ application which matured into
the registration petitioners seek to cancel. (Petitioners
presented no case-in-chief, and there is no testimony or
evidence of any common law use by petitioners of the
registered marks on any goods, including fans.23)
Because respondents treated two of the plaintiffs’
registrations as of record, petitioners’ Registration Nos.
1,332,37824 and 1,434,64225, both for the mark STEALTH, are
23 We note that none of the status and title copies of pleaded
registrations are for “fans” or “ceiling fans.” Rather, they are
for completely unrelated goods such as, “fishing tackle floats,”
“comic book,” “metal alloys for use in sporting goods and
transportation and window locks,” and “lawn sprinklers.”
24 Registration No. 1,332,378, filed August 29, 1984, and issued
April 23, 1985 to Leo D. Stoller, Section 8 affidavit accepted,
Section 15 affidavit acknowledged. Title is currently shown to
Cancellation No. 24330
21
of record herein. (See e.g., respondents’ brief, pp. 12,
19, 47 and 48.)
Exhibit B (a “special customs invoice”), Exhibit D (a
photocopy of a letter from petitioners to respondents’
attorney regarding discovery), and Exhibit I (a typed list
of petitioner’s asserted federal applications and
registrations) are each inappropriate for entry into the
record by way of notice of reliance as explained above.
Exhibit C, petitioners’ own answers to respondents’
“narrowed first set of interrogatories,” are not appropriate
for entry into the record by way of notice of reliance under
Trademark Rule 2.120(j)(5) as explained above, and also
because these answers are unsigned.
Exhibits E and F, respondents’ responses to
petitioners’ first set of interrogatories and to
petitioners’ request for documents, respectively, are
generally appropriate for entry into the record by way of
notice of reliance as provided in Trademark Rule
2.120(j)(5). Thus, these discovery responses have been
be in Central Mfg. Co. The registration is for goods identified
as “sporting goods, specifically, tennis rackets, golf clubs,
tennis balls, basketballs, baseballs, soccer balls, golf balls,
cross bows, tennis racket strings, and shuttlecocks” in
International Class 28. The claimed date of first use is January
15, 1981.
25 Registration No. 1,434,642, filed September 8, 1986, issued
March 31, 1987 to S Industries, Inc., Section 8 affidavit
accepted. Title is currently shown to be in Central Mfg. Co.
The registration is for goods identified as “bicycles,
motorcycles and boats” in International Class 12. The claimed
date of first use is January 1982.
Cancellation No. 24330
22
considered by the Board, but only to the extent that any of
respondents’ responses to the involved discovery are proper
rebuttal to the testimony and evidence submitted by
respondents during their testimony period.
Exhibit G (a printout of two pages retrieved from an
Internet website) is inadmissible as it does not qualify as
a printed publication under Trademark Rule 2.122(e). See
Michael S. Sachs v. Cordon Art, B.V., 56 USPQ2d 1132, 1134
(TTAB 2000).
Exhibit H (a photocopy of one page from a U.S. District
Court decision in a proceeding involving S Industries, Inc.
as plaintiff) is not admissible as there is no indication
that this was a published, precedential decision of the
Court; and respondents herein were not parties to that case.
(If it were a precedential decision of the Court, it need
not be put into the record by way of notice of reliance as
the Board may take note of any precedential Court and Board
cases.)
Petitioners’ fourth notice of reliance was not
considered, with the exception of the photocopies of status
and title copies of petitioners’ pleaded Registration Nos.
1,332,378 and 1,434,642 (part of Exhibit A), and
respondents’ responses to petitioners’ first set of
interrogatories and document requests (Exhibits E and F).
Cancellation No. 24330
23
Finally, with regard to petitioners’ four notices of
reliance, each one includes a “declaration” signed by Leo
Stoller. All four declarations are stricken as they are
improper under Trademark Rule 2.123(b). The four
declarations of Leo Stoller have not been considered by the
Board.
Turning now to petitioners’ objection (reiterated in
their brief) to respondents’ Exhibit 1, petitioners argue
that this document was not produced during discovery in
response to petitioners’ document request No. 1 for all
documents showing use of respondents’ mark; and that
therefore, it must be excluded from consideration in
determining this case.
Respondents contend that they answered the involved
document request with an objection as to being overbroad and
unduly burdensome, but that respondents would make available
for inspection and copying examples of “all” documents
requested by petitioners; that examples were produced (not
including this particular item); and that petitioners never
moved to compel respondents to produce “all” documents.
Although this particular document was not produced,
representative samples are generally acceptable, and
petitioners have not shown that the documents they did
receive were not representative, and they did not move to
compel any further response of “all” documents. See TBMP
Cancellation No. 24330
24
§419(2), and cases cited therein. Accordingly, petitioners’
objection to respondents’ Exhibit 1 is overruled.
In sum, the record before the Board consists of
petitioners’ amended petition to cancel; respondents’ answer
thereto; the file of respondent’s registration; status and
title copies of petitioners’ pleaded Registration Nos.
1,332,378 and 1,434,642;26 respondents’ responses to
petitioners’ first set of interrogatories and document
requests; respondents’ testimony, with exhibits, of John C.
Pearson, vice president of marketing of respondents’
division Casablanca Fan Company; respondents’ notice of
reliance; and respondents’ conditional notice of reliance.
Both parties filed trial briefs on the case.
(Petitioners’ reply brief has been stricken as explained
above.) An oral hearing was held before the Board on August
6, 2002, with petitioners’ president and CEO, Leo Stoller,
appearing for petitioners, and Valerie Walsh Johnson,
counsel for respondents, appearing on behalf of respondents.
The Parties
The record as to petitioners consists only of the
status and title copies of two pleaded registrations, both
26 Trademark Rule 2.122(d)(1) clearly and plainly sets forth the
manner in which pleaded registrations (or pleaded applications
that mature into registrations) may be made of record. A
plaintiff cannot simply continually during the course of an inter
partes proceeding add non-pleaded registrations and or marks to
its case because that would involve a lack of notice and
prejudice to the defendant.
Cancellation No. 24330
25
currently owned by Central Mfg. Co. through assignment, both
for the mark STEALTH, and one covering bicycles,
motorcycles, and boats, and the other for various sporting
goods. Throughout their motions, responses to motions, and
in their brief after trial, petitioners make statements
about themselves and the nature of their business (e.g.,
their licensing program) and numerous products, including
fans. However, petitioners submitted no evidence during
trial that is probative of, or establishes, any of these
statements or any of the allegations made in the amended
petition to cancel.27 Petitioners did not submit testimony
or any other evidence regarding their alleged pending
application for the mark STEALTH for, inter alia, “fans.”
Respondent, Hunter Fan Company, became the owner of the
involved registration in 1995 through assignment.
Respondents’ mark was developed and first used by Hunter Fan
Company’s predecessor in interest. The development of the
mark started in late 1988, and is related to the “swept wing
design” of the ceiling fan, meant to look like the STEALTH
27 Statements made in pleadings cannot be considered as evidence
in behalf of the party making them; such statements must be
established by competent evidence during the time for taking
testimony. See Kellogg Co. v. Pack’Em Enterprises Inc., 14
USPQ2d 1545 (TTAB 1990), aff’d, 951 F.2d 330, 21 USPQ2d 1142
(Fed. Cir. 1991); and Times Mirror Magazines, Inc. v. Sutcliff,
205 USPQ 656 (TTAB 1979).
Factual statements made in a party’s brief on the case can be
given no consideration unless they are supported by evidence
properly introduced at trial. See BL Cars Ltd. v. Puma Industria
de Veiculos S/A, 221 USPQ 1018 (TTAB 1983); and Abbott
Laboratories v. TAC Industries, Inc., 217 USPQ 819 (TTAB 1981).
Cancellation No. 24330
26
bomber. In fact, respondents obtained a design patent, No.
323,028, issued on January 7, 1992 to Richard Holbrook
inventor, and assigned to Casablanca Industries, Inc.
(Exhibit 5, Pearson dep.)
Respondents’ first sale of ceiling fans under the
STEALTH mark occurred on January 15, 1990. This consisted
of a “pilot run” of ceiling fans sold “through dealers and
certain representatives throughout the United States.”
(Pearson, dep., p. 15.) Mr. Pearson explained that “pilot
runs” are typical when developing a new ceiling fan, and
respondent runs a limited number of fans to get the kinks
out before the fan is mass marketed. Thereafter,
respondents commenced mass marketing of their STEALTH brand
ceiling fan in February 1991 (and, in fact, royalties have
been paid to Mr. Holbrook, the inventor, continuously since
February 199128).
Respondents advertise their fans sold under the
involved mark in national magazines such as “Architectural
Digest,” “Sunset,” “Midwest Living,” and “Better Homes and
Gardens.” Their STEALTH mark is also advertised through
billboards and appearing on various point-of-purchase items
such as T-shirts. In addition, the mark appears prominently
28 Respondents pay royalties not based on the pilot runs, but
rather based on when the fan is introduced and sold to the entire
dealer base. Mr. Pearson made clear that respondents’ use of the
mark STEALTH on ceiling fans has been continuous since January
15, 1990.
Cancellation No. 24330
27
on respondents’ website, and is advertised by one of
respondents’ largest dealers (in Los Angeles) on local
television. It is also used in respondents’ co-op
advertising with dealers, and the STEALTH brand fan is
respondents’ number one fan used in such ads. Since 1991,
the STEALTH brand ceiling fan has not only been offered for
sale in the product catalog, but has frequently been on the
cover of respondents’ product catalog (Exhibits 7-9, Pearson
dep.); as well as appearing within and as the cover of
respondents’ 1996 “Sales Training Presenter Guide.”
Respondents’ total advertising costs for their products
(including the STEALTH fan) was over $2.8 million in 1990,
to a high of over $3 million in 1994, and in 1999 was over
$1.6 million. Mr. Pearson testified that he could not give
an exact number, but “a large portion” of the advertising
dollars are spent on the STEALTH trademark. The STEALTH fan
is respondents’ “number one margin producer” and is “one of
the most advertised fans” within respondents’ product lines.
(Dep., pp. 29-30.)
Respondents sell their fans throughout the United
States through premium lighting showrooms, such as Lamps
Plus, Expo Design Center stores (the high-end design
division of Home Depot) and ceiling fan specialty stores.
Respondents’ fans are sold through a distribution which
requires a knowledgeable sales force. The price of
Cancellation No. 24330
28
respondents’ STEALTH brand ceiling fans range from around
$500 to over $800. (And their general fans range from $200
to over $1000.) According to Mr. Pearson, the average
industry wide retail price of a ceiling fan is around $60.
In addition to ceiling fans, respondents also sell
ceiling fan accessories, a limited number of lighting
fixtures and one type of portable oscillating fan selling
for around $300-$400. There is no indication that
respondents offer any of these products under the STEALTH
mark. (Cross-examination, pp. 50-51, 53.)
Respondents are not aware of any instance of actual
confusion. (See respondents’ answer to petitioners’
interrogatory No. 20.)
The Burden of Proof
Preliminarily, the Board notes that petitioners appear
to believe that respondents were free to “cross-examine”
both Leo Stoller and Ray Webber by calling them as witnesses
during respondents’ testimony period. Petitioners did not
notice and take any testimony (e.g., of Leo Stoller or Ray
Webber), and therefore respondents could not cross-examine
witnesses called by petitioners. Petitioners also appear to
believe that they are allowed to rely on any marks or
registrations that petitioners decide to include at any time
during the proceeding without giving proper notice to
respondents (for example, through clearly pleading rights in
Cancellation No. 24330
29
common law marks, and/or applications and/or registrations
in the original petition to cancel, or moving to so amend
the pleadings in a timely and proper manner). Petitioners
are wrong on both matters.
In Board proceedings, our primary reviewing Court has
held that the plaintiff must establish its pleaded case
(e.g., likelihood of confusion, descriptiveness,
misdescriptiveness), as well as its standing, and must
generally do so by a preponderance of the evidence. See
Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d
1842, 1848 (Fed. Cir. 2000); Martahus v. Video Duplication
Services Inc., 3 F.3d 417, 27 USPQ2d 1846, 1850 (Fed. Cir.
1993); Magic Wand Inc. v. RDB Inc., 940 F.2d 638, 19 USPQ2d
1551, 1554 (Fed. Cir. 1991); and Cerveceria Centroamericana,
S.A. v. Cerveceria India Inc., 892 F.2d 1021, 13 USPQ2d
1307, 1309 (Fed. Cir. 1989).
The ground of fraud must also be established by the
plaintiff, but it must be in accordance with the higher
standard of clear and convincing proof. See Woodstock’s
Enterprises Inc. (California) v. Woodstock’s Enterprises
Inc. (Oregon), 43 USPQ2d 1440, 1443-1444 (TTAB 1997), aff’d
unpub’d, Appeal No. 97-1580, Fed. Cir., March 5, 1998.
Thus, it is petitioners (plaintiffs) who bear the
burden of proving by a preponderance of the evidence their
standing, and their claims that respondent’s registered mark
Cancellation No. 24330
30
is merely descriptive, is misdescriptive, and that
petitioners have priority and the use of the marks on the
respective goods would be likely to cause confusion; and
petitioners bear the burden of proving by clear and
convincing evidence their claim that respondents committed
fraud on the USPTO.
Respondents (defendants) bear the burden of proving by
a preponderance of the evidence their asserted affirmative
defense of abandonment and their assertion of “equity.”29
See Bridgestone/Firestone Research Inc. v. Automobile Club
de l’Quest de la France, 254 F.3d 1359, 58 USPQ2d 1460, 1462
(Fed. Cir. 2001); and A.C. Aukerman Co. v. R.L. Chaides
Construction Co., 960 F.2d 1020, 22 USPQ2d 1321, 1338 (Fed.
Cir. 1992)(en banc).
Standing
As explained in 3 J. Thomas McCarthy, McCarthy on
Trademarks and Unfair Competition, §20:7 (4th ed. 2001):
The Federal Circuit has emphasized
that there are two judicially-created
requirements for standing in inter
partes cases. The opposer or
petitioner must have: (1) a “real
interest” in the proceedings; and (2)
a reasonable basis for the belief in
damage.
The issue is not whether the opposer
[or petitioner] owns the mark or is
entitled to register it, but merely
whether it is likely that he would be
somehow damaged if a registration
were granted [or maintained] to the
29 See footnote 7, supra.
Cancellation No. 24330
31
applicant [by the registrant].
(Footnotes and citations omitted.)
See Ritchie v. Simpson, 170 F.3d 1092, 50 USPQ2d 1023 (Fed.
Cir. 1999); and Wilson v. Delaunay, 245 F.2d 877, 114 USPQ
339 (CCPA 1957).
In this case, status and title copies of two of
petitioners’ pleaded registrations for the mark STEALTH are
of record. The Board finds based on the status and title
copies of these two registrations that petitioners have
established their standing. Respondents did not contest
petitioner’s standing. Nonetheless, we want to make clear
that the evidence is hardly overwhelming proof of
petitioners’ standing, and, in fact, is very shaky evidence
thereof. Inasmuch as the two registrations or record are
for the mark STEALTH, it may be said that petitioners have a
“real interest” in this proceeding. However, due to the
differences in the involved goods (i.e., petitioners’
sporting goods, motorcycles, bicycles and boats versus
respondents’ ceiling fans), it is questionable whether
petitioners have a reasonable basis for a belief in damage.
See Cunningham v. Laser Golf Corp., 55 USPQ2d supra at 1844;
and Lipton Industries, Inc. v. Ralston Purina Co., 670 F.2d
1024, 213 USPQ 185 (CCPA 1982).
Priority
Although petitioners own two registrations, priority
must be proven in a cancellation proceeding. See Brewski
Cancellation No. 24330
32
Beer Co. v. Brewski Brothers Inc., 47 USPQ2d 1281, at 1283-
1284 (TTAB 1998). However, a petitioner relying on a
registration of its pleaded mark is entitled to rely on the
filing date of the application which matured into its
registration as evidence of use of its mark. See Henry
Siegel Co. v. M & R International Mfg. Co., 4 USPQ2d 1154,
footnote 9 (TTAB 1987). In this case petitioners are
entitled to the filing date of the applications which
matured into their two registrations, or August 29, 1984 and
September 8, 1986, respectively. Respondents have proven
their first use as of January 15, 1990. (If respondents had
not proven a date of first use, they also would have been
entitled only to the filing date of the application which
matured into their involved registration, or April 27,
1990.) Thus, petitioners have established first use of the
mark STEALTH with respect to the goods set forth in their
two registrations of record.30
Likelihood of Confusion
Our determination under Section 2(d) is based on an
analysis of all of the facts in evidence which are relevant
to the factors bearing on the issue of whether there is a
likelihood of confusion. See In re E. I. du Pont de Nemours
& Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). However, as
30 Respondents’ argument that petitioners have not demonstrated
priority on fans is unavailing.
Cancellation No. 24330
33
indicated in Federated Foods, Inc. v. Fort Howard Paper Co.,
544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976), in any
likelihood-of-confusion analysis, two key considerations are
the similarity of the marks and the similarity of the goods
and/or services.
There is no question that respondents’ registered mark
and petitioners’ registered mark are the identical term,
STEALTH. Although argued in petitioners’ brief, the record
is devoid of evidence that petitioners own a family of
STEALTH marks, or that petitioners’ mark STEALTH is famous.
Turning now to the similarity or dissimilarity and
nature of the goods as described in the parties’ respective
registrations, respondents have registered their mark for
“ceiling fans”; and petitioners own two registrations, one
registered for “sporting goods, specifically, tennis
rackets, golf clubs, tennis balls, basketballs, baseballs,
soccer balls, golf balls, cross bows, tennis racket strings,
and shuttlecocks, and one for “bicycles, motorcycles and
boats.”
These goods are clearly not related as identified in
the respective registrations. Petitioners have not
submitted any evidence (e.g., testimony or other properly
submitted evidence) to establish that the involved goods are
related in some manner or that the circumstances surrounding
their marketing are such that they would be likely to be
Cancellation No. 24330
34
encountered by the same persons in situations that would
give rise to a mistaken belief that they originate from or
are in some way associated with the same producer or that
there is an association between the producers of the goods.
See In re Opus One Inc., 60 USPQ2d 1812 (TTAB 2001). There
is no basis for the Board to conclude that consumers would
assume that respondents’ goods are in any way associated
with petitioners as the source thereof.
Petitioners have utterly failed to prove any similarity
in or relationship between the involved goods.
Likewise, petitioners, having submitted essentially no
other evidence of record, have not proven how their
identified goods -- e.g., “boats,” “bicycles,” “tennis
balls,” “cross bows,” “golf clubs” -- and respondents’
identified goods, “ceiling fans,” would travel in the same
channels of trade to similar purchasers. It is true that
there is no restriction in any of the registrations as to
channels of trade and/or purchasers, and thus, the Board
must presume that the involved identified goods would travel
in all the normal channels of trade to all the usual
purchasers. See Canadian Imperial Bank of Commerce,
National Association v. Wells Fargo Bank, 811 F.2d 1490, 1
USPQ2d 1813 (Fed. Cir. 1987). However, we do not presume
that, for example, “motorcycles” and “ceiling fans” normally
travel in the same channels of trade to the same purchasers.
Cancellation No. 24330
35
What the record here completely lacks is any evidence that
the normal channels of trade and purchasers for these
disparate goods could be the same or overlapping in any way.
We must comment at this juncture that traditionally,
identical marks owned by different parties have been able to
coexist when they are used on unrelated products (or
services). Recognizing a right in gross is contrary to the
principles of trademark law and to the concepts embodied in
Section 2(d) of the Trademark Act, 15 U.S.C. §1052(d). That
is, the owner of a trademark (or service mark) is not
entitled to preclude the same or similar mark in connection
with any and all goods and services, including those
completely unrelated to the trademark owner’s goods. See
Hanover Milling Co. v. Metcalf, 240 U.S. 403, 415 (1916);
The University of Notre Dame du Lac v. J.C. Gourmet Food
Imports Co., Inc., 703 F.2d 1372, 217 USPQ 505, 507 (Fed.
Cir. 1983); Viacom International Inc. v. Komm, 46 USPQ2d
1233, 1239 (TTAB 1998); and CCI Corporation v. Continental
Communications, Inc., 184 USPQ 445, 447 (TTAB 1974). The
Board has taken the position that even the Federal Trademark
Dilution Act of 1995 (a ground not available to petitioners
in this case as explained in our footnote 4, supra) did not
create property rights in gross. See Toro Co. v. ToroHead
Inc., 61 USPQ2d 1164, 1173-1174 (TTAB 2001).
Cancellation No. 24330
36
Turning now to the remaining duPont factors relevant in
this case, we recognize that the test is likelihood of
confusion not actual confusion, but respondents’ experience
that there has been no actual confusion is not surprising in
view of the disparate nature of the involved goods of the
respective parties.
Finally, we consider the du Pont factor on the extent
of potential confusion, i.e., whether de minimis or
substantial. On this record, there is at most a de minimis
chance that consumers would confuse the source of
petitioners’ goods and respondents’ goods. There must be
shown more than a mere possibility of confusion; instead,
there must be demonstrated a probability or likelihood of
confusion. See Electronic Design & Sales Inc. v. Electronic
Data Systems Corp., 954 F.2d 713, 21 USPQ2d 1388, 1391 (Fed.
Cir. 1992), quoting from Witco Chemical Company, Inc. v.
Whitfield Chemical Company, Inc., 418 F.2d 1403, 164 USPQ 43
(CCPA 1969) as follows: “We are not concerned with mere
theoretical possibilities of confusion, deception, or
mistake or with de minimis situations but with the
practicalities of the commercial world, with which the
trademark laws deal." See also, Triumph Machinery Company
v. Kentmaster Manufacturing Company Inc., 1 USPQ2d 1826
(TTAB 1987). The Trademark Act does not speak in terms of
remote possibilities of confusion, but rather, the
Cancellation No. 24330
37
likelihood of such confusion occurring in the marketplace.
In this case, it is our belief that the possibility or
likelihood of confusion is remote.
Upon balancing all of the relevant du Pont factors in
this case, and giving each relevant factor the appropriate
weight, we firmly believe that confusion is unlikely. See
In re Mars, Inc., 741 F.2d 395, 222 USPQ 928 (Fed. Cir.
1984).
Remaining Pleaded Claims
This record does not establish by a preponderance of
the evidence that the word STEALTH is either merely
descriptive or deceptively misdescriptive of “ceiling fans.”
The record submitted by petitioners falls far short of
establishing by “clear and convincing” evidence that
respondents committed fraud in filing the application which
matured into Registration No, 1,638,283—either with regard
to the asserted date of first use or the declaration
regarding no other entity having a right to use the mark for
these goods.
Respondents’ Affirmative Defense
Respondents’ asserted the affirmative defense that
petitioners have abandoned their mark, contending in their
brief that this abandonment occurred “sometime prior to
February 17, 1994.” (Brief, p. 33.) While raising
interesting questions regarding the various business
Cancellation No. 24330
38
entities of Leo Stoller, there is simply not a preponderance
of the evidence which establishes that petitioners have
abandoned their mark.
Respondents’ Assertion of Equity
In light of our decision on the merits that there is a
failure of proof by petitioners of any of their asserted
claims, we have previously denied as moot respondents’
motion (filed July 29, 2002) for Fed. R. Civ. P. 11
sanctions.
We now consider respondents’ request contained in their
brief (pp. 28-33) that petitioners be estopped from
prevailing in this case based on equitable grounds of
“frivolous filings, delaying tactics and dishonesty.”
Respondents point to numerous and continued examples of such
inequitable behavior by petitioners herein--including
petitioners’ several references in their brief to a quote
from a previous court case, when petitioners have been
sanctioned for the misuse of that quote, filing numerous
baseless motions in this case, and having a non-party file
papers herein.
Having carefully reviewed the entire record and
procedural history of this cancellation proceeding, we are
inclined to agree with respondents, but find that there is
insufficient proof of “dishonesty” (such as fabricating
Cancellation No. 24330
39
evidence) by petitioners to enter judgment on equitable
grounds.
Although we are not entering judgment against
petitioners on equitable grounds in this case, we would be
remiss if we did not comment on this proceeding which was
commenced by petitioners in September 1995. Despite the
constant filing of papers filed in this case (amounting to
three volumes required for the Board inter partes file),
petitioners consistently failed to follow proper Board
practice and procedure at any stage this proceeding; and
they have engaged in numerous dilatory tactics to delay this
proceeding (e.g., filing numerous interlocutory motions, two
separate motions to disqualify respondents’ attorneys--both
denied, and a petition to the Director--denied.) Moreover,
petitioners’ litigation strategy of delay, harassment and
falsifying documents in other cases is well documented. See
S Industries Inc. v. Lamb-Weston Inc., 45 USPQ2d 1293 (TTAB
1997), (petitioner’s certificate of mailing on a motion to
extend found to be fraudulent). Mr. Leo Stoller,
petitioners’ officer, has also recently been sanctioned,
individually, for making material misrepresentations to the
Board regarding an applicant’s alleged consent to extensions
of time. See Central Mfg. Inc. v. Third Millennium
Technology, Inc., 61 USPQ2d 1210 (TTAB 2001). See also the
following Court cases:
Cancellation No. 24330
40
S Industries Inc. v. Centra 2000 Inc., 249 F.3d 625, 58
USPQ2d 1635 (7th Cir. 2001) (affirming award of attorney’s
fees against S Industries Inc. noting a pattern of abusive
and improper litigation, specifically citing S Industries
Inc.’s officer, Leo Stoller);
S Industries Inc. v. Stone Age Equipment Inc., 12 F.
Supp.2d 796, 49 USPQ2d 1071 (N.D. Ill. 1998) (awarding
attorneys fees and costs for oppressive suit where plaintiff
offered “highly questionable (and perhaps fabricated)
documents” and testimony from its principal that was
“inconsistent, uncorroborated, and in some cases,
demonstrably false”);
S Industries Inc. v. Diamond Multimedia Systems, Inc.,
991 F. Supp. 1012, 45 USPQ2d 1705 (N.D. Ill. 1998) (awarding
attorneys fees and costs based on plaintiff’s frivolous
claims); and
S Industries, Inc. v. Hobbico, Inc., 940 F. Supp. 210
(N.D. Ill. 1996) (directing plaintiff’s counsel “to address
some plainly questionable aspects of [S Industries, Inc.’s]
lawsuit,” and noting that “S Industries, Inc. (‘S’) appears
to have entered into a new industry – that of instituting
federal litigation. ...[A]nd this court has had occasion to
note a proliferation of other actions brought by S...”).
Decision: The petition to cancel is denied with
prejudice.