Sir Terence Orby Conranv.The Conran Stores, Inc.

Trademark Trial and Appeal Board

Jan 11, 2001

No. 92025165 (T.T.A.B. Jan. 11, 2001)

1/11/01
JST
Cancellation Nos. 25,165
and 22,227
Sir Terence Orby Conran
v.
The Conran Stores, Inc.1
Before Quinn, Hairston and Holtzman,
Administrative Trademark Judges.
By the Board:
The Conran Stores, Inc. owns2 two registrations for the
mark CONRAN’S for “retail department store services”3 and
1 On February 2, 2000, the Board issued an order granting the
petition to cancel U.S. Registration No. 1,681,090 (the subject
of Cancellation No. 24,417). Accordingly, Cancellation
Proceeding No. 24,417 is no longer a part of these consolidated
proceedings.
2 As indicated in the Board order issued November 29, 1999, it
is noted that The Conran Stores, Inc. was discharged in
bankruptcy in March 1997, after total liquidation. Likewise, it
is noted once again that respondent’s interrogatories have been
signed on behalf of Lazar Coporate Advisors, Inc., formerly The
Conran Stores, Inc., but no assignment of the subject
registrations has been recorded.
3 U.S. Registration No. 1,116,494 (the subject of Cancellation
No. 25,165) issued on April 10, 1979. It is noted that on August
9, 2000, this registration expired pursuant to Section 9 of the
Trademark Act for respondent’s failure to renew. In view of the
disposition herein, there is no need to issue a show cause order
pursuant to Trademark Rule 2.134(b).
UNITED STATES DEPARTMENT OF COMMERCE
Patent and Trademark Office
Trademark Trial and Appeal Board
2900 Crystal Drive
Arlington, Virginia 22202-3513
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Cancellation No. 25,165 and 25,227
2
“mail order services in the field of household furnishings
and toys.”4
On June 3, 1996, Sir Terence Conran filed petitions to
cancel these registrations on the ground that his
application for registration of the mark CONRAN for a large
variety of household products has been refused due to the
existence of respondent’s registrations; and that respondent
has abandoned all use of the CONRAN’S mark for the
identified services.
Respondent, in its answers, has denied the essential
allegations of the petitions to cancel.
This case now comes up for consideration of
petitioner’s renewed motion (filed January 31, 2000) for
summary judgment on the ground that respondent has abandoned
all use of the registered CONRAN’S mark with no intent to
resume such use.
By way of background, petitioner filed its original
motion for summary judgment on the ground of abandonment on
November 12, 1997. Petitioner based its motion on the
undisputed fact that respondent went into bankruptcy and
closed its stores on March 31, 1994, and that there had been
no use of the CONRAN’S mark in the United States since then.
Respondent objected to the entry of summary judgment,
arguing that the period of nonuse of the mark was
4 U.S. Registration No. 1,182,222 (the subject of Cancellation
Cancellation No. 25,165 and 25,227
3
insufficient to establish a prima facie case of abandonment.
Also, respondent maintained that since 1996, as evidenced by
the declaration of Kenneth Lazar, it had plans to resume use
of the mark.
In a November 29, 1999 decision, the Board found that
for purposes of the motion for summary judgment, the period
of nonuse by respondent of the CONRAN’S mark commenced on
June 24, 1995.5 Consequently, the Board denied as premature
petitioner’s original motion for summary judgment which was
based solely on the statutory presumptions of abandonment
under 15 U.S.C. § 1127, because it was filed prior to
expiration of the three-year period of continuous nonuse
which triggers such presumptions. Additionally, the Board
indicated in footnote 3 of its decision that, although it
was not necessary to reach the issue of intent not to resume
use, if it were to evaluate respondent’s evidence on this
issue, the declaration of its president, Mr. Kenneth Lazar,
alone would not be sufficient to shift the presumptive
burden back to petitioner.
Turning back to the renewed motion for summary
judgment, petitioner again contends that a presumption of
abandonment attaches under 15 U.S.C. § 1127 due to
25,227) issued on January 12, 1982.
5 In making this determination, the Board found that the mark
was viable and not abandoned until the expiration of a bankruptcy
court approved option period, which allowed respondent six months
to market a license agreement for the mark.
Cancellation No. 25,165 and 25,227
4
respondent’s more than three consecutive years of nonuse of
the mark at issue. More particularly, petitioner contends
that the three-year period of nonuse that triggers the
presumption of abandonment started on June 24, 1995 (as
already held by the Board in its November 29, 1999
decision), and elapsed on June 24, 1998 – well before the
filing date of the renewed motion for summary judgment.
Thus, petitioner maintains that this period of nonuse of the
CONRAN’S mark, coupled with respondent’s failure to
demonstrate with objective evidence an intent to resume use,
constitute abandonment.
As evidentiary support for its motion, petitioner has
submitted (1) the declaration of one of its attorneys, Peter
G. Mack, attesting that a search of the world wide web for
any mail order services rendered under the CONRAN’S mark
produced no results; (2) respondent’s responses to
petitioner’s first set of interrogatories; (3) copies of two
Dun & Bradstreet reports showing that respondent closed its
stores in April 1994; (4) copies of news articles downloaded
from the Lexis/Nexis® data base discussing respondent’s
bankruptcy and liquidation sales; (5) a copy of a letter
drafted by one of respondent’s attorneys discussing
respondent’s bankruptcy and the Bankruptcy Court’s
authorization of “going out of business sales”; and (6) a
Cancellation No. 25,165 and 25,227
5
copy of respondent’s voluntary petition for relief under
Chapter 11 of the U.S. Bankruptcy Code.
Respondent, in opposition to the motion, contends that
it has not abandoned the CONRAN’S trademark. Respondent
also argues that the evidence of record rebuts any
presumption of abandonment or intent to abandon and,
therefore, this case should move forward on the merits.
As evidentiary support for its position, respondent has
submitted the declaration of Lester Gribetz, a consulting
and purchasing agent for Zona, a retail store specializing
in home furnishings; and the declaration of Barry Grimm,
vice-president of marketing for Doran Mills and Marion
Mills, both attesting to respondent’s current use of the
CONRAN’S mark. Respondent has also requested that the
declaration of Kenneth S. Lazar, which was submitted by
respondent in connection with its brief in opposition to
petitioner’s original motion for summary judgment, be
reviewed.
In reply, petitioner contends that respondent’s
evidence shows nothing more than an attempt by respondent to
readopt the CONRAN’S mark well after the period of nonuse
had run and for a field of use (i.e., home products) that is
not covered by the two registrations remaining in these
proceedings.
Cancellation No. 25,165 and 25,227
6
The purpose of summary judgment is to avoid an
unnecessary trial where additional evidence would not
reasonably be expected to change the outcome. See
Pure Gold, Inc. v. Syntex (U.S.A.) Inc., 730 F.2d 624, 222
USPQ 741 (Fed. Cir. 1984). See also TBMP section 528.01 and
cases cited therein.
Generally, summary judgment is appropriate in cases
where the moving party establishes that there are no genuine
issues of material fact which require resolution at trial
and that it is entitled to judgment as a matter of law.
Fed. R. Civ. P. 56(c). An issue is material when its
resolution would affect the outcome of the proceeding under
governing law. See Anderson v. Liberty Lobby, Inc., 477
U.S. 242, 106 S. Ct. 2505 (1986); and Octocom Systems
Inc. v. Houston Computers Services, Inc., 918 F.2d 937, 16
USPQ2d 1783, 1786 (Fed. Cir. 1990). A fact is genuinely in
dispute if the evidence of record is such that a reasonable
factfinder could return a verdict in favor of the nonmoving
party. Id.
Based on the record now before us and for the reasons
discussed below, we conclude that summary judgment is
appropriate in this case because there are no issues of
material fact relating to abandonment and that petitioner
has shown, as a matter of law, that respondent has abandoned
the CONRAN’S mark with no intent to resume use.
Cancellation No. 25,165 and 25,227
7
Section 45 of the Trademark Act, 15 U.S.C. § 1127,
provides that a mark is abandoned when “its use has been
discontinued with intent not to resume use. … Nonuse for
three consecutive years shall be prima facie evidence of
abandonment." In order to prevail on a claim for
cancellation on the ground of abandonment, a party must
allege and prove, in addition to standing, abandonment of
the mark as the result of nonuse or other conduct by the
registrant. See Trademark Action Section 45, 15 U.S.C. §
1127; See Lipton Industries, Inc. v. Ralston Purina Co., 670
F.2d 1024, 213 USPQ 185 (CCPA 1982). Introduction of
evidence of nonuse of the mark for three consecutive years
constitutes a prima facie claim of abandonment and shifts
the burden to the party contesting abandonment to show
either: (1) evidence to disprove the underlying fact
triggering the presumption of nonuse or (2) evidence of an
intent to resume use to disprove the presumed fact of no
intent to resume use. See Trademark Act 45, 15 U.S.C. §
1127; Imperial Tobacco Ltd. v. Philip Morris Inc., 899 F.2d
1575, 14 USPQ2d 1390 (Fed. Cir. 1990); see generally 2 J.
Thomas McCarthy, McCarthy on Trademarks and Unfair
Competition, 17:18 (4th ed. 1996).
Initially, we note that although, for purposes of
petitioner’s motion for summary judgment, respondent appears
to concede that petitioner has established a prima facie
Cancellation No. 25,165 and 25,227
8
claim of abandonment (i.e., three consecutive years of
nonuse), respondent’s opposition to summary judgment is
based solely on respondent’s contention that it has
submitted evidence sufficient to rebut any “intent” to
abandon the CONRAN’S mark.
However, and contrary to respondent’s assertions, once
a prima facie case of abandonment has been made, the burden
shifts to the respondent to provide evidence of an intent to
resume use – not evidence to rebut an intent to abandon.
See Imperial Tobacco, supra; and Trademark Act Section 45,
15 U.S.C. § 1127. In order to establish an intent to resume
use, respondent must put forth evidence with respect to
either specific activities undertaken during the period of
nonuse or special circumstances which excuse nonuse.
(emphasis added) See Cerveceria India Inc. v. Cerveceria
Centroamerica,S.A., 10 USPQ2d 1064 (TTAB 1989), aff’d.,
Cerveceria Centroamerica S.A. v. Cerveceria India Inc., 892
F.2d 1021, 13 USPQ2d 1307(Fed. Cir. 1989).
In this case, respondent has not put forth evidence
sufficient to raise a genuine issue of material fact as to
its intent to resume use of the CONRAN’S mark and it did not
proffer any evidence of circumstances which would justify
nonuse of the mark. Specifically, Mr. Gribetz, in his
supporting declaration states, in pertinent part, that:
(c) that in the fall of 1999, I purchased
duvets, shams, pillowcases valued in excess
Cancellation No. 25,165 and 25,227
9
of $40,000 at retail, identified and
distinguished by the trademark CONRAN’s from
Registrant for sale in Zona. (emphasis
supplied)
Mr. Grimm, in his declaration executed April 5, 2000,
states, in pertinent part, that:
(b) my company is in the business of custom
designing and manufacturing fabric; and
(c) approximately 18 months ago, Registrant
requested that my company develop a line of
fabrics to be used in connection with the bed
linen line of duvets, shams and pillowcases
identified by the trademark CONRAN’S; and
(e) since that time, our company and particularly
our director of design and product development,
Jane Laug, and her staff have been working on the
fabric designs for the proposed CONRAN’S products;
and
(g) we have been contacting our customers, such as
CHF and Waverly, in an attempt to place the line
of products identified by the trademark CONRAN’S
through them with their customers. (emphasis
supplied)
It is undisputed that the relevant period of nonuse by
respondent of the CONRAN’S mark is from June 24, 1995 until
June 24, 1998. These declarations, however, reference
respondent’s activities with respect to the CONRAN’S mark,
on or after approximately October 5, 1998, almost six months
after the statutory period of nonuse had ended. There is no
evidence in the record to show that respondent took active
steps towards resuming use of the mark within the crucial
three-year period of nonuse. At best, respondent’s current
activities represent a new and separate use by respondent of
Cancellation No. 25,165 and 25,227
10
the CONRAN’S mark and cannot serve to cure respondent’s
abandonment. Abandonment of a registered mark cannot be
reversed by subsequent re-adoption of the mark or subsequent
intent to resume use. See AmBRIT Inc. v. Kraft Inc., 812
F.2d 1531, 1 USPQ 2d 1161, 1177-78 (11th Cir. 1986); Parfums
Nautee Ltd. v. American International Industries, 22 USPQ2d
1310 (TTAB 1992).6
Finally, we remain of the view that the Lazar
declaration is insufficient to show respondent’s intent to
resume use of the CONRAN’S mark during the relevant period
of non-use.7 As is explained by our reviewing court in
Imperial Tobacco v. Philip Morris, 899 F.2d at 1581; 14
USPQ2d at 1394:
[A]n affirmative desire by the registrant not to
relinquish a mark is not determinative of the
intent element of abandonment under the Lanham
Act. Nothing in the statute entitles registrant
who has formerly used a mark to overcome a
presumption of abandonment arising from subsequent
nonuse by simply averring a subjective affirmative
‘intent not to abandon.’
In all contested abandonment cases, the respondent denies an
intention to abandon its mark. Under Fed. R. Civ. P. 56,
however, one must proffer more than conclusory testimony or
6 Moreover, we note that respondent’s current use of the CONRAN’S
mark is on bed linens, and not in connection with the services
recited in the involved registrations.
7 It is noted that Mr. Lazar did not file a supplemental
declaration in support of respondent’s intent to resume use in
connection with petitioner’s renewed motion for summary judgment.
Cancellation No. 25,165 and 25,227
11
affidavits. Moreover, and as has been said in connection
with a motion for summary judgment, a conclusory statement
on the ultimate issue does not create a genuine issue of
material fact. Sweats Fashions, Inc. v. Pannill Knitting
Co., 833 F.2d 1560, 1564, 4 USPQ2d 1793, 1797 (Fed. Cir.
1987); and Johnston v. Ivac Corp., 885 F.2d 1574, 1578, 12
USPQ2d 1382,1385 (Fed. Cir. 1989). In this case, Mr.
Lazar’s statements that respondent has not abandoned the
CONRAN’S mark and that plans have been underway to resume
active use and promotion of the mark, which are unsupported
by the evidentiary record, are clearly insufficient to
preclude summary judgment on the issue of abandonment.
In view of the foregoing, petitioner’s motion for
summary judgment is granted. Judgment is hereby entered
against respondent in Cancellation No. 25,165 as to
Registration No. 1,116,494 (which registration has already
expired), and Cancellation No. 25,227 as to Registration No.
1,182,222, which will be cancelled in due course.