Total Window, Inc.v.Arlee Home Fashions, Inc.

Trademark Trial and Appeal Board

Jun 9, 2008

No. 92046172 (T.T.A.B. Jun. 9, 2008)

Faint Mailed: June 9, 2008

Cancellation No. 92046172

Total Window, Inc.

v.

Arlee Home Fashions, Inc.

Before Quinn, Rogers and Cataldo,
Administrative Trademark Judges.

By the Board:

By its order of December 18, 2008 the Board deferred
its ruling on petitioner’s motion for summary judgment, and
allowed petitioner time in which to file a supplemental
brief on and support for its claim of priority of use of its
mark. Respondent was allowed time in which to respond to
petitioner’s filing or to file a motion under Fed. R. Civ.
P. 56(f). This case now comes up on petitioner’s
supplemental brief filed January 17, 2008. No responsive
brief or motion from respondent appears to have been filed,
as none is of record.
In its prior order the Board noted that there were no
genuine issues of material fact as to the identical nature
of the marks of petitioner and respondent, TOTAL WINDOW; as
to petitioner's use of the mark at least in relation to
UNITED STATES PATENT AND TRADEMARK OFFICE
Trademark Trial and Appeal Board
P.O. Box 1451
Alexandria, VA 22313-1451
THIS DECISION IS NOT A
PRECEDENT OF THE TTAB
Cancellation No. 92046172
2
custom window treatments; and as to petitioner's
commencement of use of the mark, at least as a trade name,
in 1993, while respondent did not begin use of the mark on
goods until November 2003. The Board also found that no
genuine issue existed regarding whether petitioner’s custom
window treatments were similar or related to respondent’s
goods, and that the evidence attached to the motion for
summary judgment clearly showed use of the mark for
petitioner's asserted services.
The Board did find, however, that the issue of
petitioner's priority of use of the mark needed to be
examined more closely, in particular as to petitioner's use
of the mark on goods. Petitioner does not own an existing
registration for the mark TOTAL WINDOW, but alleged in its
pleading that it commenced use of the mark TOTAL WINDOW on
July 19, 1993 for both custom window treatments and various
related goods.
A party seeking to cancel a registered mark may do so
by claiming prior use of a mark pursuant to Section 14 of
the Trademark Act, 15 U.S.C. § 1064. As we noted
previously, where the party seeking to establish prior use
is basing its claim on its common law rights, it may
establish prior use through use analogous to trademark use.
T.A.B. Systems v. PacTel Teletrac, 77 F.3d 1372, 37 USPQ2d
1879, 1881 (Fed. Cir. 1996). The prior use may, but need
Cancellation No. 92046172
3
not be, technical trademark use. Use analogous to trademark
use “is non-technical use of a trademark in connection with
the promotion or sale of a product under circumstances which
do not provide a basis for an application to register,
usually because the statutory requirement for use on or in
connection with the sale of goods in commerce has not been
met.” Shalom Children's Wear Inc. v. In-Wear A/S, 26 USPQ2d
1516, 1519 (TTAB 1993).
While a presumption of validity attaches to
respondent's registered mark, petitioner may rebut this
presumption by proving its priority of use by a
preponderance of the evidence. West Florida Seafood Inc. v.
Jet Restaurants Inc., 31 F.3d 1122, 31 USPQ2d 1660, 1662
(Fed. Cir. 1994); Martahus v. Video Duplication Services
Inc., 3 F.3d 417, 421, 27 USPQ2d 1846, 1850 (Fed. Cir.
1993); Cerveceria Centroamericana S.A. v. Cerveceria India,
Inc., 892 F.2d 1021, 1023, 13 USPQ2d 1307, 1309 (Fed. Cir.
1989).
To support its contention that it has priority,
petitioner attached additional evidence to its supplemental
brief.1 The declaration of Jesse Stolow, Marketing Director

1 As we noted in our previous order, petitioner attached the
declaration of Stephen Stolow, President of Total Window, Inc. to
its motion for summary judgment. In that declaration petitioner
stated that it “commenced use of the mark TOTAL WINDOW for custom
window treatments, including blinds, shades, draperies, and
shutters, and for services related to window treatment, in 1993.”

Cancellation No. 92046172
4
of Total Window, Inc., states that “Total Window has used
TOTAL WINDOW as a trademark, trade name and a service mark
(collectively, ‘mark’), continuously and without
interruption, since at least as early as 1993 in connection
with the custom manufacture of window treatments, blinds and
shades and related products.” Petitioner argues that this
shows that it has used the mark as a trademark in connection
with related products such as window coverings and window
screens continuously and without interruption since 1993,
and that petitioner has never abandoned or ceased using the
TOTAL WINDOW mark.
Petitioner also provided evidence to show that its
website has been in continuous use since January 25, 2002 to
the present, and its annual reports, filed with the Florida
Secretary of State, to show that its business has been
existing and active since 1995 to the present.
Petitioner also attached purchase orders and a warranty
to show use of the mark with goods, in addition to services.
Petitioner argues that the purchase orders show use of the
mark on goods because, "Exhibit H refers to the sale in
September 1999 of a product identified as 'TOTAL WINDOW
BLACKOUT: WHITE Clutch Roller Shade.' The use of the words
'TOTAL WINDOW' or 'TOTAL WINDOW BLACKOUT' (as an adjective)
to modify the product item (noun), 'White Clutch Roller
Shade' as a description of products sold on one of
Cancellation No. 92046172
5
Petitioner's own invoices very clearly indicate that TOTAL
WINDOW is being used as a trademark to designate the origin
of the goods."
The totality of this evidence has a cumulative effect
establishing petitioner’s claim of prior use. The items of
evidence, taken together, show that petitioner has been
using the mark on goods prior to the date of first use
claimed by respondent, and that use has been continuous and
uninterrupted. West Florida Seafood, 31 USPQ2d at 1663
(“whether a particular piece of evidence by itself
establishes prior use is not necessarily dispositive. . . .
one should look at the evidence as a whole, as if each piece
of evidence were part of a puzzle, which, when fitted
together, establishes prior use.”). Further, petitioner's
evidence is uncontroverted and has not been rebutted by
respondent. After a careful review of the record in this
case, we find that there are no genuine issues of material
fact and that petitioner is entitled to judgment as a matter
of law.
Accordingly, petitioner’s motion for summary judgment
is granted, judgment is entered against respondent, and
Registration No. 2913716 will be cancelled in due course.
***