This Opinion is Not a
Precedent of the TTAB
Hearing: August 16, 2016 Mailed: February 1, 2017
UNITED STATES PATENT AND TRADEMARK OFFICE
_____
Trademark Trial and Appeal Board
_____
Theatrical Stage Employees Union Local No. 2
of the International Alliance of Theatrical Stage Employees
and Moving Picture Technicians, Artists and Allied Crafts
of the United States and Canada
v.
David B. Eaves
_____
Cancellation No. 92055242
_____
Robert S. Rigg of Vedder Price PC for Theatrical Stage Employees Union Local No. 2.
Catherine Simmons-Gill and Pawel A. Fraczek of Offices of Catherine Simmons-Gill
LLC for David B. Eaves.
_____
Before Cataldo, Masiello, and Heasley, Administrative Trademark Judges.
Opinion by Masiello, Administrative Trademark Judge:
In this proceeding, Theatrical Stage Employees Union Local No. 2 of the
International Alliance of Theatrical Stage Employees and Moving Picture
Technicians, Artists and Allied Crafts of the United States and Canada (“Petitioner”)
filed a petition to cancel U.S. Reg. No. 3761918 on the Supplemental Register (the
Cancellation No. 92055242
2
“Registration”),1 owned by David B. Eaves (“Respondent”). After the case was briefed
and argued, the Registration lapsed because of Respondent’s failure to make the
maintenance filings required by Trademark Act Section 8, 15 U.S.C. § 1058. The
Director cancelled the registration on December 15, 2016, and on the same date the
Board allowed Respondent twenty days to show cause why such cancellation should
not be deemed to be the equivalent of a cancellation by request of Respondent without
the consent of Petitioner, warranting entry of judgment against Respondent.2 In
response, Respondent showed that the cancellation was inadvertent.3 The Board
discharged the order to show cause; did not enter judgment against Respondent; and
allowed Petitioner twenty days to request a determination on the merits of its claim,
failing which the claim would be deemed moot.4 Petitioner has requested a
determination on the merits and the issuance of a final decision.5 Therefore, while
the Registration stands cancelled, we proceed to consider the merits of Petitioner’s
claim.
The mark in the Registration is CHICAGO STAGEHAND in standard characters,
and it was registered for “Employment Staffing in the field of labor and technical
support in live corporate, concert and special events,” in International Class 35.
Petitioner sought cancellation of the Registration on the ground of likelihood of
1 Issued March 16, 2010, based on an application filed August 28, 2009 under Trademark Act
Section 1(a), 15 U.S.C. § 1051(a).
2 Board’s order to show cause, 113 TTABVUE.
3 114 TTABVUE.
4 115 TTABVUE.
5 116 TTABVUE.
Cancellation No. 92055242
3
confusion, under Trademark Act Section 2(d) of the Trademark Act, 15 U.S.C.
§ 1052(d). Petitioner alleged that it has used the designation CHICAGO
STAGEHANDS in connection with its labor union activities since at least as early as
1950.
In his answer, Respondent admitted “that Petitioner’s improper use of the name
CHICAGO STAGEHANDS is likely to cause confusion among consumers …,”6 but
has otherwise denied the salient allegations of the petition. Respondent asserted
affirmative defenses of lack of a continuous and commercial use; acquiescence, laches,
abandonment, and unclean hands; estoppel, use merely as a trade name, and lack of
secondary meaning.7 Respondent also pleaded hypothetically that he is entitled to
maintain his Registration if his identified services were limited to “Non Labor Union
related employment Staffing in the field of (labor and technical support in live
corporate, concert and special events” [sic].8
The case is fully briefed and oral arguments were heard at a hearing at which both
parties were represented on August 16, 2016.
6 Amended Answer ¶ 13, 13 TTABVUE 10.
7 Respondent has not addressed the defenses of acquiescence, laches, or estoppel in his brief;
accordingly, those defenses are waived. Harry Winston, Inc. v. Bruce Winston Gem Corp., 111
USPQ2d 1419, 1422 (TTAB 2014). The facts relevant to the defenses of lack of continuous or
commercial use, abandonment, use merely as a trade name, and lack of secondary meaning
are subsumed in, and addressed by, our discussion of the parties’ use of their designations
and acquired distinctiveness. Respondent has briefed his asserted defense of unclean hands,
and it will be addressed separately herein.
8 Amended Answer, Affirmative Defense Six, 13 TTABVUE 13.
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4
I. The record.9
The record includes the pleadings and, by operation of Trademark Rule 2.122,
37 C.F.R. § 2.122, the file history of the Registration and underlying application. The
parties have submitted a stipulation of facts. 78 TTABVUE (duplicate at 85
TTABVUE). In addition, the parties have made of record the following testimony and
evidence:
A. Filed by Petitioner:
- Testimony deposition of Craig Carlson, business manager of Petitioner (and
exhibits), 93 TTABVUE 103-246 (public version at 92 TTABVUE 103-246).
- Testimony deposition of Thomas L. Herrmann, member, call steward, and vice
president of Petitioner (and exhibits), 91 TTABVUE 60-125 (public version at
90 TTABVUE 60-125).
- Testimony deposition of Clarinda Corbett, office manager of Petitioner (and
exhibits), 91 TTABVUE 125-171 (public version at 90 TTABVUE 125-171).
- Declaration of Clarinda Corbett 79 TTABVUE (duplicate at 84 TTABVUE)
(admitted by stipulation).
- Testimony deposition of Mark A. Donahue, a journeyman member of Petitioner
(and exhibits), 89 TTABVUE.
- Testimony deposition of Patrick Stephen Hudson, stagehand at Goodman
Theatre and member of Petitioner (and exhibits), 95 TTABVUE 32-72 (public
version at 94 TTABVUE 32-72).
- Testimony deposition of Caitriona Laseau, a freelance production manager
(and exhibits), 91 TTABVUE 8-59 (public version at 90 TTABVUE 8-59).
9 Petitioner has moved to strike Exs. 65, 66 and 68 to the testimonial deposition of David
Eaves, and related testimony. The motion is fully briefed. Motion at 104 TTABVUE 59-62.
Exhibits at 99 TTABVUE 400-410 and 414. On this extensive record, the evidence at issue is
primarily either duplicative or merely corroborative of other evidence of record. We find the
inclusion of the subject evidence harmless and therefore deny Petitioner’s motion. The
exclusion of the evidence would not have altered our determinations herein.
Cancellation No. 92055242
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- Testimony deposition of Floyd Dillman, proprietor of Event Media, dba
Complete Crewing (and exhibits), 93 TTABVUE 8-102 (public version at 92
TTABVUE 8-102).
- Testimony deposition of Louis Raizin, president of Broadway in Chicago (and
exhibits), 95 TTABVUE 8-32 (public version at 94 TTABVUE 8-32).
- Testimony deposition of Richard James Dowsek, retired director of finance and
administration of Lyric Opera of Chicago (and exhibits), 96 TTABVUE.
- Testimony deposition of Mario Educate, president and CEO of OSA
International (and exhibits), 97 TTABVUE.
- Petitioner’s first notice of reliance on printed publications and books, 70
TTABVUE.
- Petitioner’s second notice of reliance on third-party registrations, 71
TTABVUE.
- Petitioner’s third notice of reliance on evidence from the internet and
publications, 72 TTABVUE.
- Petitioner’s fourth notice of reliance on Respondent’s responses to
interrogatories, 74 TTABVUE 5-13; and discovery deposition of Respondent
David Eaves (and exhibits), 74 TTABVUE 15-294.
- Petitioner’s fifth notice of reliance on printed publications, 86 TTABVUE.
- Petitioner’s sixth notice of reliance on Respondent’s responses to document
requests; and printed publications. 87 TTABVUE.
B. Filed by Respondent:
- Testimony depositions of Respondent David Eaves (and exhibits), 99
TTABVUE (public version at 98 TTABVUE).
- Testimony deposition of Craig Carlson (and exhibits), 100 TTABVUE.
- Respondent’s notice of reliance on:
Discovery depositions of Craig Carlson, Rule 30(b)(6)
witness for Petitioner, 80 TTABVUE 6-497 (public version
at 81 TTABVUE 6-489).
Cancellation No. 92055242
6
Discovery deposition of Thomas Herrmann, 80 TTABVUE
498-874 (public version at 81 TTABVUE 490-854).
Petitioner’s answers to supplemental interrogatories, 80
TTABVUE 875-890).
Petitioner’s responses to requests to admit, 80 TTABVUE
892-911.
- Respondent’s notice of reliance (82-83 TTABVUE) on:
Respondent’s pending application Serial No. 86399091.
Petitioner’s pending applications Serial Nos. 86238513,
85530945, 85530942, 85530932, 85530927, and 85530919,
and related USPTO Office actions and responses.
Petitioner’s U.S. Reg. Nos. 4322950 and 4303933.
II. Standing.
Standing is a threshold issue that must be proven by a plaintiff in every inter partes
case. See Empresa Cubana Del Tabaco v. Gen. Cigar Co., 753 F.3d 1270, 111 USPQ2d
1058, 1062 (Fed. Cir. 2014), cert. denied, 135 S. Ct. 1401 (2015). The plaintiff must
show that it has a real interest in the proceeding beyond that of a mere intermeddler,
and that it has a reasonable basis for its belief of damage resulting from registration
of the subject mark. Ritchie v. Simpson, 170 F.3d 1092, 50 USPQ2d 1023, 1025 (Fed.
Cir. 1999).
The record shows that Petitioner is a labor union that represents workers in the
field of the production of live events, such as theatre, concerts, opera, conventions and
tradeshows.10 Such workers, who include carpenters, painters, electricians, lighting
10 Petitioner’s answer to Supplemental Interrogatory No. 1, 80 TTABVUE 877-8.
Cancellation No. 92055242
7
technicians and audio technicians, are sometimes called “stagehands.”11 As part of
the services that Petitioner provides to its members, Petitioner refers its members to
available stagehand jobs with companies that are preparing to produce live events.12
Respondent admits in his brief that referrals to work are a part of Petitioner’s
services,13 and at oral argument Respondent’s counsel conceded that such services
are essentially the same as the “Employment Staffing” services identified in
Respondent’s Registration. (Respondent’s staffing services involve non-union
stagehand labor, but his Registration is not limited to non-union workers.) It is
apparent on this record that Petitioner and Respondent are direct competitors and
that both focus their services on the geographic markets in the vicinity of Chicago,
Illinois. The record also shows that Petitioner has filed applications for U.S.
registration of CHICAGO STAGEHANDS as a collective membership mark “to
indicate membership in a union of stagehands” (Serial No. 86238513) and as a service
mark for various labor union services (Serial No. 85530945); and that the USPTO has
refused to register those marks on grounds of likelihood of confusion with the mark
in Respondent’s Registration.14 It is clear from the foregoing that Petitioner has a
real interest in the outcome of this proceeding and has established its standing to
seek cancellation of the Registration. Plyboo America Inc. v. Smith & Fong Co., 51
USPQ2d 1633, 1634 (TTAB 1999) (competitor has standing); Lipton Industries, Inc.
11 Id., 80 TTABVUE 878.
12 Id., 80 TTABVUE 878; Herrmann test. 142:17-18, 91 TTABVUE 70.
13 Respondent’s brief at 6, 105 TTABVUE 7.
14 Respondent’s notice of reliance, 82 TTABVUE 82-145.
Cancellation No. 92055242
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v. Ralston Purina Co., 670 F.2d 1024, 213 USPQ 185, 189 (CCPA 1982) (a cancellation
petitioner may establish its standing by proving that its pending application for
registration has been refused on the basis of the involved registration).
III. Petitioner’s claim under Section 2(d).
In this case, Petitioner challenges a registration on the Supplemental Register of a
term that is primarily geographically descriptive, and bases its challenge on its
asserted common law rights in a highly similar geographically descriptive term.
Ordinarily, where two parties vie for proprietary rights in merely descriptive
terminology, the case does not turn on who, chronologically, used the term first, but
on “the priority of acquisition of acquired distinctiveness (also commonly referred to
as secondary meaning).” Perma Ceram Enterprises Inc. v. Preco Industries Ltd., 23
USPQ2d 1134, 1136 (TTAB 1992). In this case, as we will discuss, neither party has
persuaded us that it has acquired distinctiveness in its chosen designation. The most
direct instruction as to how to address such circumstances was provided, albeit in
dicta, by our primary reviewing Court in Books on Tape Inc. v. The Booktape Corp.,
836 F2d 519, 5 USPQ2d 1301 (Fed. Cir. 1987). There, the Federal Circuit pointed out
that the owner of a registration on the Supplemental Register “has as yet no
proprietary rights in a mark …” 5 USPQ2d at 1302. Accordingly, the Court held that
the challenger need not demonstrate proprietary rights, as is usually required when
challenging a registration on the Principal Register or a distinctive unregistered
mark. See, e.g., Otto Roth & Co. v. Universal Foods Corp., 640 F.2d 1317, 209 USPQ
40, 43 (CCPA 1981). Rather, the Books on Tape Court said:
Cancellation No. 92055242
9
The statute does not require the anomalous result that a
junior user is entitled to keep its Supplemental
Registration for a descriptive term in which it has not
established secondary meaning (as evidenced by
registration on the Supplemental Register) because a prior
user cannot show secondary meaning in that term either.
See Kwik-Kopy Franchise Corporation v. Dimensional
Lithographers, Inc., 165 USPQ 397, 398-99 (TTAB 1970)
(“lawful use” in Section 23 (15 U.S.C. §1091) means
“exclusive use”).
5 USPQ2d at 1302-1303.15
Practically speaking, a registration of a merely descriptive term on the
Supplemental Register, owned by a user that has not acquired distinctiveness in the
term, will impede another party that has acquired distinctiveness in a similar
descriptive term from obtaining registration on the Principal Register. The obstacle
need not be perpetual, because the party that can demonstrate acquired
distinctiveness would have grounds to cancel the registration on the Supplemental
Register, thereby clearing the way for its own efforts to obtain registration on the
Principal Register. However, the guidance of the Federal Circuit in Books on Tape,
which we accept, is that such party need not wait until it has acquired distinctiveness
in its mark before seeking to clear away the impediment.
15 We note that Books on Tape was decided before the 1988 amendments to Section 23 of the
Trademark Act, which eliminated the requirement that an applicant for registration on the
Supplemental Register have used its mark for at least the one-year period preceding the
application. The amendment did not remove the requirement that the mark be in “lawful
use.” The Senate Judiciary Report characterized the changes to Section 23 as “technical
amendments,” saying, “This revision of the Act will have no effect on the underlying rights of
the registrant.” See 7 MCCARTHY ON TRADEMARKS AND UNFAIR COMPETITION, Appendix A5
(4th ed., 2016 update), Selected Legislative History of the 1988 Trademark Law Revision Act:
Senate Judiciary Report on S. 1883.
Cancellation No. 92055242
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In this case, both parties vigorously asserted proprietary rights in their respective
designations and sought to demonstrate that their marks had acquired
distinctiveness. We treat the issue of acquired distinctiveness, on both sides, as
having been tried by implied consent. Had either party successfully demonstrated
acquired distinctiveness, we would have considered the guidance of Books on Tape to
be inapposite. However, because we find otherwise, we agree with Petitioner’s
contention that it “does not need to show that its mark has acquired distinctiveness
in the market in order to cancel the registered mark.”16 We therefore turn to consider
the parties’ arguments and evidence regarding priority, acquired distinctiveness, and
likelihood of confusion.
A. Priority.
1. Respondent.
Respondent testified that he began operating his business as Chicago Stagehand
LLC “somewhere in the winter, spring or maybe even the summer of 2009.”17 He
registered the domain name on November 14, 2008.18 The
existence of the website appears to have been first detected by the Internet Archive
Wayback Machine on March 24, 2009.19 Respondent testified that “we were capable
of providing services in the spring of 2009. Could have been summer.”20 By
16 Petitioner’s brief at 39, 104 TTABVUE 40.
17 Eaves disc. dep. 75:1-5, 74 TTABVUE.89.
18 Eaves test. 673:16 and Respondent’s Ex. 44, 99 TTABVUE 25, 257-261.
19 Respondent’s notice of reliance, 82 TTABVUE 37.
20 Eaves disc. dep. 167:8-10, 74 TTABVUE 181-183.
Cancellation No. 92055242
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approximately mid-June 2009, he had prepared various conventional forms of display
of the mark, such as business cards, stationery, and stamps, had created a press
release, and had begun work on an advertising campaign.21 The earliest marked
invoice for his services that is of record is dated May 9, 2009, but the job was cancelled
and never performed.22 When asked whether he had sent invoices to other clients in
the same format prior to that date, he replied, “I could have.”23 The record also
includes an invoice dated October 24, 2009 for services rendered October 19-24,
2009.24 That Respondent was active under the mark in 2009 does not appear to be in
dispute; Mario Educate, a staging production management executive, made use of
Respondent’s services “In about 2009 …”25 A claim for unemployment insurance filed
with the State of Illinois indicates that Respondent’s business paid an employee
wages during the third quarter of 2009.26 For purposes of our analysis, we accept that
Respondent was providing services under his mark in 2009, with use analogous to
trademark use commencing as early as March 2009.
2. Petitioner.
Petitioner contends that CHICAGO STAGEHANDS has been its trade identity for
much of the twentieth century and continuing to the time of trial. However,
21 Eaves test. 689-690; 692:15-21; 698:3-5; 701:23-24; 704:17-20; 708-722; 722:19, 99
TTABVUE 41-2, 44, 50, 53, 56, 60, 74.
22 Eaves test. 735:13-736:12, 99 TTABVUE 87-88.
23 Eaves test. 870:13, 99 TTABVUE 243.
24 Respondent’s notice of reliance, 82 TTABVUE 46.
25 Educate test. Ex. 23, ¶ 8; and 584:1-2, 97 TTABVUE 48, 12.
26 Eaves test. Ex. 70; 740:5-741:5, 99 TTABVUE 421, 92-93.
Cancellation No. 92055242
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Petitioner’s technical trademark use of CHICAGO STAGEHANDS was sporadic. In
2001, on the occasion of a strike against the Goodman Theatre, Petitioner prepared
and distributed to its members a baseball cap bearing the mark, which various
strikers wore at the site of the strike.27 At the same strike, a placard displaying a
“shield” bearing the mark was carried.28 The hats were not manufactured again, and
by 2005 there was apparently only one such cap “left over from the Goodman Strike”
in Petitioner’s possession.29 Petitioner’s business manager testified that Petitioner
gave out marked hats at golf outings in the early 1990’s, but there is no documentary
evidence of such hats.30 At some time in 2009, Petitioner undertook to produce
approximately 500 casual shirts displaying the mark.31 Approximately 20 of them
remained in inventory at the time of trial.32 Between 1995 and 2005, a union member
named Mark Donahue arranged to produce and distribute, apparently on his own
initiative, various kinds of apparel displaying the term CHICAGO STAGEHANDS;
these included baseball caps, sweatshirts, fleece jackets, shirts, and wool hats.33
These were produced in very small numbers, sometimes to the order of individual
union members. Between 1993 and 1997, Mr. Donahue’s brother Tim produced some
27 Donahue test. 20:15-17; 21:17-22:3 and Exhibit 5, 89 TTABVUE 24-26, 101-102; Hudson
test. 524ff.; 527:16-23; 529:535, 95 TTABVUE 41-44, 46-52.
28 Hudson test. 532:1-5, 95 TTABVUE 49.
29 Corbett test. 199:12-18, 91 TTABVUE 127.
30 Carlson test. 628:1-12, 100 TTABVUE 28.
31 Carlson disc., 159-160; 177:19-22, 80 TTABVUE 165-166, 183; Corbett test, Ex. 13, 91
TTABVUE 208.
32 Corbett test. 208:22-23; 210:14, 91 TTABVUE 136, 138.
33 Donahue test. Exs. 2-4, 6-9, 89 TTABVUE 98-100, 103-106.
Cancellation No. 92055242
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such apparel.34 There is testimony that union members wore such insignia apparel
on virtually every jobsite to which union workers were dispatched.35 Petitioner’s call
steward claimed to have first worn such apparel to jobsites in the late 1970s.36
However, the insignia apparel appears to have been in such short supply that the
claim that such apparel could be seen at virtually every jobsite seems exaggerated.
On cross-examination, some witnesses admitted that the union insignia most often
in evidence on jobsites was a button, which did not include the words CHICAGO
STAGEHANDS.37 On this record, Petitioner’s technical service mark use of
CHICAGO STAGEHANDS before Respondent adopted the phrase CHICAGO
STAGEHAND was very limited and not continuous.
More significant, however, is testimony of third parties to the effect that they use
and recognize the term CHICAGO STAGEHANDS as a reference to Petitioner.
Caitriona Laseau, a freelance production manager, testified that “it was known to me
that the Chicago Stagehands was a name that referred to the Chicago Stagehands
Local 2”;38 and that she uses the term and has heard others use the term to refer to
Petitioner. She first heard of Petitioner under the name CHICAGO STAGEHANDS
while in college:
34 Donahue test 31:7-33:5, 89 TTABVUE 35.
35 Donahue test. 12:8-10; 14:2, 89 TTABVUE 16, 18; Herrmann test. 148:20-149:9; 149:17; 91
TTABVUE 76-77; Carlson test. 355:2-18, 93 TTABVUE 115.
36 Herrmann test. 151:24-152:3, 91 TTABVUE 79-80.
37 Herrmann test. 189:20-21, 91 TTABVUE 117; Donahue test. 59:24, 89 TTABVUE 63.
38 Laseau test. 106:19-23; 111:14-19; 109:4-8; 109:21, 91 TTABVUE 34, 39, 37.
Cancellation No. 92055242
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That’s what we referred to as the Union that was in
Chicago.39 …
I don’t know if it was on any paperwork, but I know they
referred to them as Chicago Stagehand when we were
talking about the Union in Chicago. I, actually, haven’t
even heard IATSE until after that, so it was Chicago
Stagehand before I heard IATSE.40
She claimed to have also heard such use from “different vendors,” and specifically
identified Gand Concert Sound as one of them.41
When I was on the phone with, say, a tour that was coming
through, and I say, “We’re a Union venue.” And they’re like,
“Oh, what Union?” And I'm like, “Oh, the Chicago
Stagehands.” And they're like, “Okay, that’s cool. Chicago
Stagehands are cool.”42
Floyd Dillman, the owner of a company that provides theatrical labor for business
meetings and other events, said of the term CHICAGO STAGEHANDS, “I typically
think that that refers to Local 2 Stagehands.”43 He suggested that this usage reflected
an industry convention:
Just as if someone said to me, “San Diego Stagehands,” I
would assume it’s IATSE Local 122 in San Diego.44 …
So if you said, lacking context, my reference is if you say,
“Chicago Stagehands,” I'd presume you’re referring to
Local 2. As the same case as I said before, if you said “San
39 Laseau test. 107:2-8, 91 TTABVUE 35.
40 Laseau test. 127:8-14, 91 TTABVUE 55.
41 Laseau test. 109:4-8; 109:14-16, 91 TTABVUE 37.
42 Laseau test. 110:14-19, 91 TTABVUE 38.
43 Dillman test. 263:18-21, 93 TTABVUE 23.
44 Id., 93 TTABVUE 23.
Cancellation No. 92055242
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Diego Stagehands,” I’d assume it was the Stagehands Local
in San Diego or whatever city you went into.45
Mario Educate, president of a staging production management company for TV,
corporate and special events, reinforced the impression of conventional usage in the
industry. He said of the term CHICAGO STAGEHANDS:
That means that you’re referring to a Local 2 member. It’s
synonymous in any city. If you were to tell me as I go into
a venue that “Who is the labor here? It’s the LA
Stagehands,” it means to me it is the LA Stagehands union.
Same thing, New York Stagehands is Local 1. Chicago
Stagehands is Local 2. It’s known with every production
manager in this business.46
[A]s every different industry has its lingo, this is -- across-
the-board in our industry, anything that refers to Chicago
Stagehands is Local 2. No doubt. I don’t even have to
explain it to someone. To them that means that “You are to
call Local 2.” So if I were to say, “Hey we’re going into
Chicago, call Chicago Stagehands,” it's Local 2.”47
It’s pretty much an industry given that when you refer to
first a city’s name and then “stagehand,” that is union. It
is our lingo.48
Louis Raizin, the president of a company that operates theaters, testified, “I think
to me, saying Stagehands, Chicago Stagehands, Local 2 are words that I see as
interchangeable.”49
They may characterize them as Local 2. They may
characterize them as IA. They may characterize them as
Chicago Stagehands. Any -- in going back to my prior
45 Dillman test. 317:4-17, 93 TTABVUE 77.
46 Educate test. 586:4-11, 97 TTABVUE 14.
47 Educate test. 587:24-588:6, 97 TTABVUE 15-16.
48 Educate test. 588:17-19, 97 TTABVUE 16.
49 Raizin test. 499:24-500:2, 95 TTABVUE 16-17.
Cancellation No. 92055242
16
statement that those types of words are common use in
terms of those kinds of conversations and interchangeable,
all meaning the same thing at the end of the day.50
James Dowsek, retired director of finance and administration of Lyric Opera of
Chicago, stated:
[C]ertainly, “Chicago Stagehands” is a term that’s used at
least in my experience to describe members of Local 2. They
are Chicago Stagehands.51
[F]or the entirety of my experience in this business, that
“Chicago Stagehands” to me translated to members of
Local 2. They were the stagehands that worked in the
Opera House.52
They were Chicago Stagehands in that they were in
Chicago, and they were members of Local 2, and they
worked at the Opera House. But as I said before, Chicago
Stagehands would be translated to Local 2 members who
worked at the Lyric or worked at the CSO or worked at
Ravinia, wherever there was covered employment.53
It wasn’t an exclusive, but it was a way to describe the folks
who commonly were covered by a CBA, entered into by,
again, any number of the employers in Chicago used them,
whether it was Goodman or CSO or Joffrey or...54
This evidence demonstrates that persons in the live event trade find CHICAGO
STAGEHANDS to be an appropriate descriptive term for unionized stagehands in
the field of live events who provide their services in the vicinity of Chicago; that such
persons have in fact used this phrase in order to describe Petitioner and its members;
50 Raizin test. 502:16-24, 95 TTABVUE 19.
51 Dowsek test. 567:3-6, 96 TTABVUE 15.
52 Dowsek test. 567:12-15, 96 TTABVUE 15.
53 Dowsek test. 568:2-10, 96 TTABVUE 16.
54 Dowsek test. 568:15-19, 96 TTABVUE 16.
Cancellation No. 92055242
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that, in their own experience, they have found this phrase to immediately convey
information about Petitioner and its members; and that they expect others to
understand them when they use the phrase to refer to Petitioner and its members.
Petitioner has supplemented the testimony discussed above with press notices and
publications in which CHICAGO STAGEHANDS (or a variant thereof) has been used
to describe Petitioner and its members. Salient examples from the years indicated
follow:
1923: CHI STAGEHANDS’ RAISE: Chicago stagehands’ union wa[s] awarded
a general Increase of 20 per cent, over last season’s wag[e] scale here
today.55
1939: Chicago Stagehands officers are also meeting theatre executives on
terms.56
1941: At Correa’s request, the defendant fished in his pockets and handed over
three “union cards,” one in local 2 – the Chicago stagehands – and the
other two in California movie studio locals.57
1944: George E. Browne, who rose from business manager of local 2, the
Chicago Stagehands union, to president of the IATSE & NPMO union,
with the help of Bioff and the old Capone gang, is “definitely out as even
a member of both organizations,” members of local 2 said yesterday.58
55 Variety, 77 TTABVUE 59. (This digital archive article appears to have been generated by
optical character recognition and it contains many errors.)
56 Motion Picture Herald, 77 TTABVUE 47.
57 Chicago Daily Tribune, “5 Aliases Bob Up to Haunt Bioff at Extort Trial,” 86 TTABVUE
18.
58 Chicago Daily Tribune, “Browne, Bioff, Leaders in Film Racket, Paroled,” 86 TTABVUE
13. The record shows that Mr. George E. Browne had some notoriety. Other accounts of his
deeds can be found in The Hollywood Book of Scandals: The Shocking, Often Disgraceful
Deeds and Affairs of More than 100 American Movie and TV Idols (2004) (86 TTABVUE 26);
Hot Toddy: The True Story of Hollywood’s Most Sensational Murder (1989) (86 TTABVUE
3ff.); The Hollywood Connection: The True Story of Organized Crime in Hollywood, p. 117
(1993) (87 TTABVUE 24); and Los Angeles Times, “The Mob and The Movies” (1987) (70
TTABVUE 10).
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1988: He also writes doggerel verse and enjoys exchanging it with people
ranging from pianist Rudolf Serkin to Chicago stagehands.59
1996: The Chicago mob, then under the aegis of Frank Nitti while Al Capone
was in jail, wanted the IA’s Hollywood chapter to hire Chicago
“stagehands.”60
2001: He … was a member of … IATSE (Stagehands of Chicago).61
2003: John Willard Hull became a charter member of the Chicago stagehands
union in 1893.62
2007: Even though the Chicago stagehands – members of IATSE’s Local Two,
as distinct from the striking Local One in New York – are working under
a different contract … they haven’t wanted to say anything on the record
that could be read as disloyal to their brethren in New York.63
2008: Craig Carlson of the Chicago stagehands union Local 2 has been elected
vice president of the International Alliance of Theatrical Stage
Employees.64
2009: Gene and I never met till last year at Amigos but we are both in the
entertainment industry belong to same union IATSE local #2 Chicago
Stagehands for me Local #600? Cameramen for Gene …65
2011: The march merged with the marches of other unions into the plaza,
including SEIU, Chicago Stagehands, AFT 1708, CTU, Letter Carriers,
Chicago Firefighters, IBEW, and even one sign from the past and
present, the IWW – One Big Union.66
59 Philadelphia Inquirer, 86 TTABVUE 30.
60 The Washington Post, “The Star in the Wings; Washington’s Stagehands Make Theater a
Moving Experience,” 70 TTABVUE 22.
61 Obituary, Arkansas Democrat-Gazette, 87 TTABVUE 14.
62 The Hull Family Association Journal, 86 TTABVUE 45.
63 Chicago Tribune, 70 TTABVUE 14.
64 Chicago Tribune, 70 TTABVUE 6.
65 Post on Cave Diver’s Forum blog, 77 TTABVUE 13.
66 College Union Voice, 70 TTABVUE 44.
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19
2011: Tim Bowman’s Overview: Current: Stagehand at Chicago stagehands
local 2.67
2012: He still keeps his ears tuned by occasionally mixing shows for the
Chicago Stagehands Union (local #2) at Navy Pier and other Chicago
theatres.68
2012: Locals 705 (LA Costumers), 700 (Editors Guild) and 2 (Chicago
Stagehands) are celebrating their Anniversaries.69
2015: Chicago Stagehands Local Endorses HR 676, National Single Payer
Legislation. Thomas Cleary, Secretary-Treasurer of Stagehands Local 2
in Chicago, reports that his local has wholeheartedly endorsed HR 676
…70
2015: There’s also … James Dennett, who at the start of his career as a
production manager saw the slender, thoroughly non-violent Lewis
punch out the belligerent head of Chicago’s stagehands’ union for calling
him a [expletive].71
The evidence detailed above shows that over a long period of time, and leading to
the time of trial, the expression CHICAGO STAGEHANDS has been used to describe
or refer to Petitioner and its members. Courts have, on occasion, found that even
where a company itself has not used a mark, use of the mark by the relevant public
for the purpose of referring to the company may inure to the benefit of the company,
even to the extent of resulting in a protectable property right in the term.
Moreover, even without use directly by the claimant of the
rights, the courts and the Board generally have recognized
that abbreviations and nicknames of trademarks or names
used only by the public give rise to protectable rights in the
67 Linked-In profile, 77 TTABVUE 11.
68 Online professional resume, 77 TTABVUE 9.
69 Minutes of Executive Board Meeting of IATSE Local 784, 77 TTABVUE 15.
70 Physicians for a National Health Program newsletter, 70 TTABVUE 38.
71 Online review of 2010 movie “Herschell Gordon Lewis: The Godfather of Gore,” 77
TTABVUE 38.
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20
owners of the trade name or mark which the public
modified. Such public use by others inures to the claimant’s
benefit and, where this occurs, public use can reasonably
be deemed use ‘by’ that party in the sense of a use on its
behalf.
National Cable Television Ass’n Inc. v. American Cinema Editors Inc., 937 F.2d 1572,
19 USPQ2d 1424, 1428 (Fed. Cir. 1991).
We note that the public’s adoption of ‘VDS’ to refer to
Stock’s company is enough to establish trade name and
service mark use.
Martahus v. Video Duplication Svcs, Inc., 3 F.3d 417, 27 USPQ2d 1846, 1853 n.9 (Fed.
Cir. 1993).
In the case before us, as we have noted, Petitioner need not demonstrate a
protectable proprietary right in its asserted designation. We find that the evidence of
Petitioner’s own limited use of CHICAGO STAGEHANDS and the public’s ongoing
use of CHICAGO STAGEHANDS to describe and refer to Petitioner are, together,
sufficient to show descriptive use of the term pointing to Petitioner that is prior to
any use of the term CHICAGO STAGEHAND by Respondent.
B. Acquired distinctiveness.
As noted above, a dispute between two users of merely descriptive trademarks is
often resolved by means of a race to acquired distinctiveness. In this case, if Petitioner
can demonstrate acquired distinctiveness, that fact plus its priority of use would
entitle it to cancel Respondent’s registration. On the other hand, if only Respondent
can demonstrate acquired distinctiveness, he would be entitled to maintain his
Registration despite Petitioner’s priority of use; there would be no “anomalous
result,” as contemplated by Books on Tape, because Respondent’s showing would
Cancellation No. 92055242
21
indicate, vis-à-vis Petitioner, a superior proprietary right. Perma Ceram Enterprises
Inc. v. Preco Industries Ltd., 23 USPQ2d at 1136. However, as we have already
adumbrated, in this case neither party has demonstrated acquired distinctiveness.
Acquired distinctiveness is generally understood to mean “a mental association in
buyers’ minds between the alleged mark and a single source of the product.” 2
MCCARTHY ON TRADEMARKS AND UNFAIR COMPETITION § 15:5 (4th ed. June 2016
update). “It is only necessary that a ‘substantial part’ of the buying class make such
an association.” Id. §15:45. We will address each party’s showing in turn.
1. Respondent.
The Trademark Act is silent as to the quantum of evidence that is necessary to
establish acquired distinctiveness, except for the provision of Section 2(f) that states,
“The Director may accept as prima facie evidence that the mark has become
distinctive, as used on or in connection with the applicant’s goods in commerce, proof
of substantially exclusive and continuous use thereof as a mark by the applicant in
commerce for the five years before the date on which the claim of distinctiveness is
made.” 15 U.S.C. § 1052(f) (emphasis added). Indeed, the USPTO often allows marks
that are primarily geographically descriptive to be registered on the Principal
Register upon such a showing. In the present case, Respondent cannot make such a
showing, because he cannot viably contend that he has had five years of
“substantially exclusive” use.
Respondent has filed an application for registration of his mark on the Principal
Register on grounds of acquired distinctiveness; evidence submitted with that
Cancellation No. 92055242
22
application for purposes of showing acquired distinctiveness is of record.72
Respondent offered additional evidence of acquired distinctiveness through his
testimony deposition. Considered together, respondent’s evidence includes printouts
from his website; domain name registration documentation; Google Adwords reports
on the performance of the website at ; Google search results
for the term “chicago stagehand” (“hit lists” only); a short declaration of David Eaves,
alleging substantially exclusive and continuous use since at least November 14th,
2008 and expenditure of $25,000 in advertising and marketing; Wayback Machine
captures of portions of Respondent’s website; correspondence regarding preparation
of advertising and marketing materials; correspondence regarding placement of
advertisements; a small sample of advertisements and blog posts; email solicitations
for business; several invoices for services; a press release; several press notices; and
a vendor agreement. Respondent testified as to his 2014 gross revenues, which are
indicative of a bona fide small business.
Most of the evidence adduced by Respondent was offered for the purpose of
demonstrating that Respondent was in business as of an early date. Very little of the
evidence indicates the degree to which members of the relevant public associate the
term CHICAGO STAGEHAND with Respondent. Respondent is a very small
business; the amount of business that he has done and his efforts to advertise and
otherwise promote his business are extremely modest. Moreover, as discussed above,
the record shows that Respondent’s use of his mark has not been exclusive, even in
72 Respondent’s notice of reliance, 82 TTABVUE 5-81.
Cancellation No. 92055242
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his own geographic market, and this fact reduces the likelihood that customers would
come to associate the term CHICAGO STAGEHAND with Respondent as his
exclusive source indicator. Respondent’s mark is a highly descriptive term in the
context of stagehand services offered in the market area of Chicago. Substantially
more evidence bearing directly on the degree of public recognition of Respondent’s
mark would be required to demonstrate that it has acquired public recognition as
Respondent’s source indicator. In re Steelbuilding.com, 415 F.3d 1293, 75 USPQ2d
1420, 1424 (Fed. Cir. 2005) (“[T]he applicant’s burden of showing acquired
distinctiveness increases with the level of descriptiveness; a more descriptive term
requires more evidence of secondary meaning.”) Considering all of the evidence of
record, we find that Respondent has failed to demonstrate that his mark has become
distinctive of his services.
2. Petitioner.
Petitioner has submitted a great deal of evidence relevant to the question of
acquired distinctiveness. The strongest evidence was detailed above. Petitioner itself
has made sparse use of the expression CHICAGO STAGEHANDS as a technical
service mark. However, the record shows that third parties in the field of stagehand
labor have used this expression in order to describe and refer to Petitioner and its
members. We find the evidence bearing on the way in which the public views the term
CHICAGO STAGEHANDS to be quite mixed: while there are some clear examples of
individuals using this expression as a direct reference to Petitioner or as Petitioner’s
“nickname” (especially in the testimony), in many of the examples of record it is not
Cancellation No. 92055242
24
clear whether the speaker uses the phrase to refer to unionized stagehands and
Petitioner itself or merely to stagehands in general. Such equivocal evidence does not
support a finding of acquired distinctiveness. Although Petitioner is a large and
vigorous organization, there is very little evidence to show that Petitioner has
engaged in marketing efforts to promote itself under the name or mark CHICAGO
STAGEHANDS or to promote a public association between itself and that name.
Further, as was the case with Respondent, in the years between 2009 and the time of
trial Petitioner’s use of CHICAGO STAGEHANDS has not been exclusive, even in its
primary geographic market, due to Respondent’s ongoing use of CHICAGO
STAGEHAND. This lack of exclusivity reduces the likelihood that CHICAGO
STAGEHANDS would come to be recognized as Petitioner’s mark. The sporadic and
scant use of the term CHICAGO STAGEHANDS by Petitioner and the public’s
equivocal use of that term, either as an apt descriptor applicable to Petitioner or as a
direct reference to Petitioner, are insufficient to persuade us that CHICAGO
STAGEHANDS has acquired distinctiveness as a source indicator for Petitioner’s
services.
C. Likelihood of confusion.
There is little dispute that the concurrent appropriation and use by the parties of
their asserted designations would be likely to cause confusion, mistake, or deception;
Respondent has come very close to admitting as much in his answer, stating that
“Petitioner’s improper use of the name CHICAGO STAGEHANDS is likely to cause
Cancellation No. 92055242
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confusion among consumers …”73 An analysis applying the factors set forth in In re
E. I. du Pont de Nemours & Co. 476 F.2d 1357, 177 USPQ 563 (CCPA 1973) leads to
the conclusion that such confusion would be likely.
The two marks are identical, except for the difference between singular and plural,
which has almost no effect on the marks’ appearance, sound, or meaning. See, e.g.,
Wilson v. Delaunay, 114 USPQ 339, 341 (CCPA 1957); In re Pix of America, Inc., 225
USPQ 691, 692 (TTAB 1985). Respondent’s mark is registered in standard
characters, is not limited to any particular form of display, Squirtco v. Tomy Corp.,
697 F.2d 1038, 216 USPQ 937, 939 (Fed. Cir. 1983), and could be displayed in
manners similar to those that Petitioner uses.
With respect to the services, even though the parties are quite different types of
businesses, in at least one important respect their services overlap: both businesses
place workers in employment positions in the field of live event production.
Respondent’s brief admits that an aspect of Petitioner’s services is providing
“referrals to work” for its members;74 this activity is squarely within the scope of
Respondent’s “Employment Staffing” services, as identified in the Registration, and
Respondent’s counsel confirmed at hearing that, in this regard, the parties’ services
are identical. As these services of the parties are identical, we presume that they
move through the same channels of trade and are marketed to the same classes of
73 Amended Answer ¶ 13, 13 TTABVUE 10 (emphasis added).
74 Respondent’s brief at 6, 105 TTABVUE 7.
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customers. See In re Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1908 (Fed. Cir.
2012).
The record contains an account of an incident of actual confusion caused by the two
designations. Mario Educate, the president of a “staging production management
company for TV, corporate and special events,” testified that he frequently uses both
union and freelance workers for his productions.75 He offered the account in a written
declaration76 and in testimony. The written account is as follows:
8. In about 2009, I became aware that one of my employees
at OSA had hired the company “Chicago Stagehand,”
owned by David Eaves, to provide employees to perform
work in my shop, preparing and maintaining equipment
used on events and productions. When I heard Chicago
Stagehand, I thought it was related to IATSE Local No. 2
and their services referring employees. I discussed it
further with my employee in order to understand that
Eaves’s company, Chicago Stagehand, was not actually
related to or authorized to use the name by IATSE Local
No. 2. Since that time, OSA has used Chicago Stagehand’s
services in the shop, but generally everyone in this
industry knows the mark CHICAGO STAGEHANDS
means and refers to IATSE Local No. 2.77
Mr. Educate’s account in testimony is as follows:
I originally saw it when I looked at some of the labor bills
of what was going on in our warehouses and at that time I
thought we were contacting Local 2. I wondered why it was
notated like that, but to me I thought we were calling the
local for some shop help, but we weren’t.
75 Educate test. 591:11-17, 97 TTABVUE 19.
76 Mr. Educate verified the content of the declaration at Educate test. 584:1-2, 97 TTABVUE
12.
77 Educate declaration, Exhibit 23 to Educate test., 97 TTABVUE 48.
Cancellation No. 92055242
27
Q. So I'm clear here, you have hired -- either you or
somebody at your company has hired Chicago Stagehand,
LLC to do work for one of your facilities?
A. Yes. Yes, our Chicago facility. I did not hire. One of my
warehouse people made the contact.
Q. And when you indicated you saw the bills for Chicago
Stagehand, LLC, did you believe that to be Local No. 2?
A. Yes, I did.
Q. Did you later learn that it’s not Local No. 2?
A. Yeah, I later asked, you know, “Who -- what is going on
with this? Why are we bringing in the local for some stuff
in the warehouse?” And that’s when I was told we weren’t
bringing in the local, that it was a company called Chicago
Stagehand that we were hiring labor to help, you know,
unload some trucks and move some stuff in our warehouse.
Q. And who did you have this conversation with?
A. With my warehouse manager in Chicago.78
On cross-examination, the following exchange took place:
Q. So you indicated that when you saw these invoices from
Chicago Stagehand that you were reviewing some of the
materials, business documents of your company, your
question in your own head was, Why are we calling Local 2
when we don’t need to have union in our own warehouse,
correct?
A. Correct.79
This testimony demonstrates that confusion is likely between two businesses that
identify themselves by the two designations at issue in an environment in which the
same event production companies hire both union and non-union workers. Although
78 Educate test. 589:18-590:22, 97 TTABVUE 17-18.
79 Educate test. 598:8-14, 97 TTABVUE 26.
Cancellation No. 92055242
28
there is no indication of untoward harm resulting from Mr. Educate’s confusion, it
occurred in a context in which the respective reputations of the parties could have
been affected. We hasten to point out that, on the present record, no opprobrium
attaches to either party in connection with this incident of confusion, because neither
party has demonstrated its proprietary right to the words involved. Parties that seek
to identify themselves by highly descriptive words run the risk that they may be
confused with others who may be aptly described by the same, or similar, words.
Milwaukee Nut Co. v. Brewster Food Svc., 277 F.2d 190, 125 USPQ 399, 401 (CCPA
1960) (“[A]ppellee, in adopting a word which is highly suggestive to the trade to which
it was catering, ran the risk of having similar merchandise sold by others for the same
purpose to the same trade….”); In re Pennington Seed Inc., 466 F.3d 1053, 80 USPQ2d
1758, 1762 (Fed. Cir. 2006) (“[M]erchants act at their peril in attempting, by
advertising, to convert common descriptive names, which belong to the public, to their
own exclusive use”) (quoting Weiss Noodle Co. v. Golden Cracknel & Specialty Co.,
290 F.2d 845, 129 USPQ 411, 414 (CCPA 1961)). Respondent argues that the
sophistication of the parties’ respective customers renders confusion unlikely,
especially among those who have a collective bargaining agreement with Petitioner,
who “know when they must hire Local 2 members, and when they are free to hire
freelance labor, even on ‘mixed jobs.’”80 Respondent points out that the cost of labor
may account for 10-12% of a production company’s budget,81 suggesting that
80 Respondent’s brief at 46, 105 TTABVUE 47.
81 Id.
Cancellation No. 92055242
29
heightened care would be applied to the selection of services. However, Mr. Educate’s
testimony reveals him to be highly sophisticated in his field. (He testified that his
company produces at least two to three shows a week in Chicago.) Yet his testimony
persuades us that he was actually confused.
Upon consideration of all of the arguments and evidence of record, we find that
confusion is likely to arise from the concurrent use of CHICAGO STAGEHANDS and
CHICAGO STAGEHAND as source-indicating designations for the parties’ respective
services.
D. Respondent’s defense of “unclean hands.”
Respondent argues, in his brief, that “Local 2 brought this Petition to Cancel for
anticompetitive purposes with little or no basis for a claim of senior use of the mark
‘Chicago Stagehands’ …”; and that “Local 2’s goal in the litigation is to snuff out all
competitors, because its evidence of any use of the mark ‘Chicago Stagehands’ is close
to non-existent.”82 There is testimony that Craig Carlson, Petitioner’s business
manager, told Respondent that he would put Respondent out of business.83
We do not agree that Petitioner had no basis for its claim. We have found merit in
the contention that Petitioner and others have used CHICAGO STAGEHANDS in a
descriptive manner to refer to Petitioner and its members, although we have not
found a proprietary interest in Petitioner with respect to this term.
82 Respondent’s brief at 48-49, 105 TTABVUE 49-50.
83 Eaves disc. dep.207:6-7, 74 TTABVUE 221; Eaves test. 749:18-19, 99 TTABVUE 101.
Cancellation No. 92055242
30
Further, a business person’s expressed desire to prevail over a competitor does not
constitute the type of inequitable conduct that would form a basis for a defense of
unclean hands. See 6 MCCARTHY ON TRADEMARKS AND UNFAIR COMPETITION, § 31:46
(4th ed., 2016 update). We also do not agree with Respondent’s contention that
Petitioner’s institution of this proceeding constitutes an abuse of process that would
support a defense of unclean hands. “The allegedly unfair or improper filing of a
trademark infringement lawsuit cannot itself constitute a basis for an unclean hands
defense to that lawsuit.” Id. § 31:51 and cases cited therein. Accordingly, we find that
Respondent has not established a defense of unclean hands against Petitioner’s claim.
E. Proposed limitation of Respondent’s registration.84
Respondent asserted, as an affirmative defense, that likelihood of confusion would
be obviated if the identified services in his Registration were limited to “Non Labor
Union related employment Staffing in the field of (labor and technical support in live
corporate, concert and special events” [sic].85 We disagree. A number of witnesses that
hire Petitioner’s members testified that they also have occasion to hire non-unionized
84 See 37 C.F.R. § 2.133(b) (“If, in an inter partes proceeding, the Trademark Trial and Appeal
Board finds that a party whose application or registration is the subject of the proceeding is
not entitled to registration in the absence of a specified restriction to the application or
registration, the Board will allow the party time in which to file a motion that the application
or registration be amended to conform to the findings of the Board, failing which judgment
will be entered against the party.”) See also TBMP § 311.02(b) (“At the same time, the
applicant might plead alternatively that it actually uses its mark only on a specific type
(identified in the pleading) of the goods covered by the broad identification in its application;
that there is no likelihood of confusion with respect to applicant’s actual goods; and that even
if the Board ultimately finds that opposer is entitled to judgment with respect to applicant’s
goods as broadly identified, applicant would be entitled to a registration of its mark with a
restricted identification reflecting the actual nature of its goods.”)
85 Amended Answer, Affirmative Defense Six, 13 TTABVUE 13.
Cancellation No. 92055242
31
workers or that, for other reasons, unionized and non-unionized workers are often
present on a single job site. Mr. Educate, when asked how he decides whether to hire
union or non-union workers, stated:
It depends on the venue and it depends on our client. Some
of our clients are nonunion companies, some of our clients
are nonunion but choose to use union no matter where they
are, one being McDonald’s Corporation. They’re a nonunion
company, but they demand that we use union stagehands.
… Some corporate clients are nonunion and they don't
want to hear that you have union people on a show.86
Floyd Dillman, when asked where his pool of laborers came from, answered:
I would say we predominantly crew with Union labor. …
We occasionally crew with freelance or non-Union
personnel where necessary, especially for supervisory
roles.87
We do our best to respect our contract and use Local 2
wherever we can. In areas where it’s simply not feasible,
we try to give Local 2 as much of the job as possible, but
realize that there is a lot of work we just can’t turn down,
and we use our non-Union labor where needed to meet the
needs of our customers.88
Louis Raizin testified that he hires workers from six or seven unions as well as non-
union workers.89 Craig Carlson testified that Petitioner competes with non-union
providers of labor for certain jobs, and that he had solicited and gotten work from
venues that previously used non-union crews. Among these were Union Station and
certain Swank hotels (which were, according to Mr. Carlson, customers of
86 Educate test. 600:23-601:8, 97 TTABVUE 28-29.
87 Dillman test. 256:21-257:2, 93 TTABVUE 16-17.
88 Id. 259:7-13; see also id. 259:17 and 315:17-316:4, 93 TTABVUE 19, 75-76.
89 Raizin test. 493:7-20, 95 TTABVUE 10.
Cancellation No. 92055242
32
Respondent); Marriott Convention center in Schaumburg; Swisshotel; and The Drake
hotel.90 Respondent himself testified that “it was kind of public knowledge or industry
knowledge that there would be Union crew and non-Union crew as part of the
Lollapalooza build.”91
Under circumstances such as these, the fact that Petitioner’s members are
unionized workers and Respondent’s workers are non-unionized is not a sufficient
distinction to avoid confusion in the marketplace.
IV. Conclusion.
We have considered all of the arguments and evidence of record, including those not
specifically discussed herein. We find that Petitioner has demonstrated that it has
used CHICAGO STAGEHANDS to refer to itself and that members of the public have
used that term to refer to Petitioner prior to Respondent’s adoption and first use of
the term CHICAGO STAGEHAND; and that the use of these designations by the
parties as marks for their respective services is likely to cause confusion, mistake or
deception. In accordance with Books on Tape, we find that cancellation of
Respondent’s Registration on the Supplemental Register is warranted.
On the present record, neither party has demonstrated that it has a protectable
proprietary interest in its designation; indeed, at present neither is capable of
demonstrating substantially exclusive use of its designation even in its own
geographic market. We emphasize that our determination in this case does not affect
90 Carlson test. 378:14-380:3; 380:10-15. See also id. 381:3-4, 93 TTABVUE 138-140, 141.
91 Eaves disc. dep. 93:2-11, 74 TTABVUE 107.
Cancellation No. 92055242
33
either party’s right to continue use of its designation; and it does not foreclose to
either party the opportunity to demonstrate at another time and on a different record
that its mark has in fact acquired distinctiveness, for the purpose of enforcing
asserted service mark rights or obtaining registration on the Principal Register.
Decision: The petition for cancellation is granted.
