William F. Wielinski

Trademark Trial and Appeal Board

Sep 24, 1998

No. 74412841 (T.T.A.B. Sep. 24, 1998)

Paper No.
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB SEPT 24, 98
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re William F. Wielinski
________
Serial Nos. 74/412,727 and 74/412,841
_______
Chad Klingbeil of Moore & Hansen for William F. Wielinski.
David Stine, Trademark Examining Attorney, Law Office 103
(Michael Szoke, Managing Attorney).
_______
Before Simms, Cissel and Hairston, Administrative Trademark
Judges.
Opinion by Cissel, Administrative Trademark Judge:
On July 15, 1993, applicant filed the above-referenced
applications to register on the Principal Register,
respectively, the mark shown below,
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for “trucks, truck parts and accessories,” in Class 12, and
the mark “DIAMOND T” for goods which, as amended in that
application, are specified as “structural parts for
trucks,” in Class 12; “printed periodical magazines,” in
Class 16; and “clothing, namely T-shirts,” in Class 25.
The basis for that application was applicant’s claim of use
of the mark in commerce since December 31, 1987 with
respect to the goods in Class 12, since January 31, 1978
with respect to the goods in Class 16, and since January
31, 1978 with respect to the goods in Class 25. The basis
for the application to register the mark combining “Diamond
T” with the diamond design was applicant’s assertion that
he possessed a bona fide intention to use the mark in
commerce in connection with the goods specified in that
application.
Both applications are now before the Board because
applicant filed timely notices of appeal from the final
refusals to register the marks under several sections of
the Lanham Act. Applicant and the Examining Attorney both
filed briefs, but applicant did not request an oral hearing
before the Board. Because both applications involve the
same issues, we have resolved them together. This one
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opinion explains our reasoning as to both appeals.
The Examining Attorney refused registration under
Sections 1, 2, 2(a), 2(e)(1) and 45 of the Act on a number
of grounds. His position is that registration is barred
under Section 2(a) because applicant’s marks falsely
suggest a connection with the now-defunct former owner of
the trademark, Diamond T Truck Company; that registration
is barred under Section 2(e)(1) because the marks are
merely descriptive of applicant’s goods; that registration
is barred under Section 2(e)(1) because the marks are
deceptively misdescriptive of the goods in Class 12; that
registration is barred under Sections 1, 2 and 45 because
neither “DIAMOND T” nor Diamond T and the diamond design
is a trademark, i.e., neither is recognized as an
indication of a single source of origin of goods in view of
their use, not just by applicant, but by a number of others
as well; and that, as applied to the goods in Class 25,
registration is barred by Sections 1, 2 and 45 of the Act
because “DIAMOND T” is merely ornamental, and therefore
does not function as a trademark for applicant’s t-shirts.
After reviewing the record in these applications and
considering the arguments of applicant and the Examining
Attorney in view of the relevant legal principles, we find
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that only the refusal based on Section 2(e)(1) with respect
to the goods in Class 16 is appropriate.
Some factual background is necessary in order to
understand the situation this case presents to us. The
specimens of record for the goods in Class 16 in
application S.N. 74/412,841, which are of record in both
applications, are copies of a 1992 edition of applicant’s
newsletter, Salmagundi, “the periodical of the Diamond T
Register.” This publication prominently states that
applicant compiles and edits it, and that “[n]either
Salmagundi nor The Diamond T Register are (sic) affiliated
with the Diamond T Motor Car Company, Diamond T Motor Truck
Company, or the Diamond T Division, White Motor Company or
their assigns.”
According to the newsletter, the Diamond T Motor Car
Company was started in Chicago, Illinois, in 1905 by C. A.
Tilt. In the beginning, the company built only
automobiles, but from 1911 on, it built only trucks. In
the late 1950s, The Diamond T Truck Company and REO,
apparently another manufacturer of trucks, were each sold
to investors, who then sold both businesses to White Motor
Company, which for a time operated them as separate
divisions. In 1965, these two divisions were merged to
form Diamond REO trucks.
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The record indicates that the “DIAMOND T” trademark
has not been used since the early sixties by Diamond REO or
White, and that the registration once held by the now-
defunct truck company expired in 1988, notwithstanding the
abandonment of the mark well prior to then.
The Salmagundi newsletter on which applicant uses the
marks sought to be registered is the house organ of The
Diamond T Register, which is apparently an organization run
by applicant. Members of the Diamond T Register are
interested in Diamond T vehicles, all of which are antiques
by now. The publication features news and information
relating to activities of interest to these people, as well
as historical information about particular Diamond T
models, other old trucks and trucking history in general.
In his publication, applicant advertises “Diamond T”
t-shirts, and other businesses advertise different products
related to Diamond T trucks, such as reproduction parts for
Diamond T trucks, copies of Diamond T manuals, Diamond T
hatpins, Diamond T vinyl logos, and parts from Diamond T
trucks. The newsletter also features advertisements
wherein people list products and information they seek.
Particular parts for specific models of Diamond T vehicles
are listed there, as well as sales literature and manuals
for Diamond T vehicles. In one instance, for example, an
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advertiser is looking for a photograph showing the details
of the hood on a 1917 Diamond T truck.
Section 2(a) of the Act requires that registration be
refused if the mark sought to be registered “consists of or
comprises matter which… may falsely suggest a connection
with persons, living or dead, institutions, beliefs, or
national symbols, or bring them into contempt, or
disrepute.”
The Examining Attorney reasons that applicant’s marks
run afoul of this provision of the statute because
the Diamond T brand is considered
likely to have generated significant
fame during its at least 54 years of
use and its products remain the focus
of significant historical and
restoration trade interest. No mark is
considered more likely to suggest a
connection with Diamond T Motor Truck
Company than the primary trademark
applied to its product line.
Furthermore, it is apparent that the
applicant has absolutely no connection
to the former Diamond T Motor Truck
Company, other than the general
interest shared by many others in the
relevant trade. Since the goods
identified in the application are
directly related to the product line
offered by the Diamond T Motor Truck
Company, prospective purchasers are
likely to assume some connection
between applicant or applicant’s goods
and the former entity. (brief, p.2)
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There are several problems with this theory. To begin
with, notwithstanding the Examining Attorney’s conclusion
that the “brand” used by the now-defunct Diamond T truck
business is “considered likely” to have acquired
“significant fame,” there is no proof in this record that
either the marks or the company are famous. This record
does not establish that a substantial number of people have
knowledge or interest in either the former company or its
abandoned trademarks.
Even if the fame of the prior trademarks were
established beyond dispute, however, the fame of the
abandoned trademarks is not the issue under Section 2(a) of
the Lanham Act. This section is not about likelihood of
confusion with trademarks. That problem is covered by
Section 2(d) of the Act. As noted by the Court in
University of Notre Dame du Lac v. J.C. Gourmet Food
Imports Co., Inc., 703 F.2d 1373, 217 USPQ 505 (Fed. Cir.
1983),
A reading of the legislative history with
respect to what became Section 2(a) shows
that the drafters were concerned with
protecting the name of an individual or
institution which was not a technical
“trademark” or “trade name” upon which
an objection could be made under Section
2(d)… Although not articulated as such, it
appears that the drafters sought by Section
2(a) to embrace the concepts of the right to
privacy, an area of the law then in an embryonic
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state…
As the Board noted in Buffett v. Chi-Chi’s, Inc., 226
USPQ 428, 429 (TTAB 1985), the portion of Section 2(a)
which refers to the “false suggestion of a connection”
evolved out of the rights of privacy and publicity.
“Because these rights protect an individual’s control over
the use of his ‘identity’ or ‘persona,’ the elements of a
claim of…’false suggestion’ have emerged as distinctly
different from the elements of a claim of trademark or
trade name infringement.” Further on in that opinion, the
Board stated that “[a] party acquires a protectible
interest in a name (or its equivalent) under Section 2(a)
where the name claimed to be appropriated points uniquely
and unmistakably to that party’s personality or ‘persona.’
A party’s interest in such a name or designation does not
depend for its existence on the adoption and use of a
technical trademark.”
In the instant case, in order for the Board to affirm
the refusals based on this part of Section 2(a) of the Act
on the ground that applicant’s marks falsely suggest a
connection with another person (including a corporation or
institution), it must be demonstrated: (1) that the marks
are the same as, or a close approximation of, the name or
identity previously used by the other person; (2) that the
Ser No. 74/412,841
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marks would be recognized as such, in that they point
uniquely and unmistakably to that person; (3) that the
person named by the marks is not connected with the
activities performed by applicant under the marks; and (4)
that the prior user’s name or identity is of sufficient
fame or reputation that a connection with such person would
be presumed when applicant’s marks are used on applicant’s
goods. In re Kayser-Roth Corp., 29 USPQ2d 1379 (TTAB
1973), and Buffett v. Chi-Chi’s Inc., supra.
This record does not establish that either “DIAMOND T”
or the Diamond T and diamond design is of sufficient fame
in the field of trucks, truck parts, magazines or t-shirts
as a name or designation that it is unmistakably associated
with, and points uniquely to, the persona of The Diamond T
Motor Truck Company or its successors in interest.
Moreover, even if “DIAMOND T” had been shown to be famous
in these fields, such that an association with the truck
company would likely be made, significant other problems,
which we will discuss below, exist with respect to the
refusal.
Applicant points out that the language used in Section
2(a) refers to “persons, living or dead,” but does not
mention corporate business entities that have ceased to
exist.
Ser No. 74/412,841
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Section 45 of the Act equates a natural person with a
juristic person. At first blush, this would appear to
favor the Examining Attorney’s contention that the defunct
truck manufacturer is entitled to protection under Section
2(a), but Section 45 goes on to define a “juristic person”
as including “a firm, corporation, union, association, or
other organization capable of suing and being sued in a
court of law.” Prior decisions have supported the statute
in requiring this capacity to participate in litigation.
See: Morehouse Mfg. Corp. v. J. Strickland & Co., 407 F.2d
881, 160 USPQ 715 (CCPA 1969); Popular Merchandise Co. v.
“21” Club, Inc., 343 F.2d 1011, 145 USPQ 203 (CCPA 1965);
John Walker & Sons, Ltd. v. American Tobacco Co., 110 USPQ
249 (Comm’r Pats. 1956); and Copacabana, Inc. v.
Breslauer, 101 USPQ 467 (Comm’r Pats. 1954).
The requirement that the juristic person possess the
ability to sue and be sued is inconsistent with the
contention of the Examining Attorney that Section 2(a)’s
protection should be extended to encompass the identity or
persona of a long-defunct business when there is no
apparent person or business entity who or which could claim
to be the successor in interest to the prior business.
The Examining Attorney dismisses as “coincidence” the
fact that all the precedents he cited in support of his
Ser No. 74/412,841
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refusal to register based on Section 2(a) involve living
individuals or active business entities, but we cannot
agree. A natural person’s right to the use of a
designation which points uniquely to his or her persona may
not be protected under Section 2(a) after his or her death
unless heirs or other successors are entitled to assert
that right. Lucien Piccard Watch Corp. v. Since 1886
Crescent Corp., 314 F.Supp. 329, 165 USPQ 459 (S.D.N.Y.
1970). The person with whom the marks are said to falsely
suggest a connection must have rights in its name or
identity which are prior to those of the applicant. Kardex
Systems, Inc. v. Sistemco N.V., 221 USPQ 149 (TTAB 1983);
In re Kayser-Roth Corp., supra. In order to posses rights,
such person, or someone to whom those rights have been
transferred, must exist.
In the instant case, although the former business was
a juristic person, it no longer exists, and we have no
basis for concluding that anyone else is entitled to assert
the right of that defunct business. In the absence of
evidence that some person or ongoing business is the
successor-in-interest to the Diamond T Motor Truck Company,
whatever rights it had under Section 2(a) were extinguished
when Diamond T Motor Truck Company ceased to exist.
There could be someone who stands in the shoes of the
Ser No. 74/412,841
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former truck company, but this record does not establish
who that might be. In any event, it is not up to the
Examining Attorney to assert whatever rights such an
unknown entity might possess. This is one of the purposes
of the opposition procedure.
Rather than demonstrating that a basis exists for
refusing registration to applicant under Section 2(a), what
the Examining Attorney has essentially done is assert that
applicant’s trademarks are likely to cause confusion with
the mark that was abandoned more than thirty years ago by
the truck company that no longer exists. This is not a
proper basis for refusing registration. Under the
Examining Attorney’s reasoning, a trademark that was once
used and recognized as such, but has since been abandoned,
could never be adopted, used and registered by another
entity until all memory of the original owner had been lost
by the relevant purchasing public. It is well settled,
however, that after a mark has become abandoned, if it is
then adopted and used by an entity unrelated to the
original owner, the rights to the mark vest with the first
to adopt and use it, providing that the new user takes
reasonable precautions to prevent confusion. This is
particularly important where the former owner of the
abandoned mark continues to market the same product or
Ser No. 74/412,841
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services under a similar name. Indianapolis Colts Inc. v.
Metropolitan Baltimore Football Club Limited Partnership,
34 F.3d 410, 31 USPQ2d 1811 (7th Cir. 1994). As long as the
new owner meets this requirement, (and the applicant in the
instant case appears to have done so), subsequent users
will have rights which are subordinate to the rights of the
first entity to adopt it after the abandonment. Sutton
Cosmetics (P.R.), Inc., v. Lander Co., 170 USPQ 461,
(S.D.N.Y. 1971), aff’d. 455 F.2d 285, 172 USPQ 449 (2d Cir.
1972).
One of the expressed concerns of the Examining
Attorney is that applicant will be able to use
registrations resulting from the instant applications to
stop others from marketing similar products under the
“DIAMOND T” marks. In this regard, the Examining Attorney
is correct. This is exactly what the registrations would
facilitate. Our system is designed to allow anyone with
rights superior to those of applicant eventually to
prevail, whether as a successful opposer of the instant
applications, or as the plaintiff in subsequent
cancellation proceedings, but unless another entity can
establish prior rights in connection with related goods,
this applicant is entitled to the registrations and
protection he seeks with these applications.
Ser No. 74/412,841
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The second ground on which the Examining Attorney has
refused registration is that the marks are merely
descriptive of the goods specified in the applications
under Section 2(e)(1) of the Act.
We note that this basis for refusing registration is
not grounded on the contention that “DIAMOND T” is not used
as a trademark for the magazines or the truck parts. The
Examining Attorney accepted the specimens of record as
demonstrating applicant’s use of the marks as trademarks
for these goods, and the acceptability of the specimens is
not an issue before us on appeal.
The descriptiveness refusal to register is based on
the contention that the marks only identify the fact that a
characteristic or feature of the goods is that, in the case
of the Class 12 goods, they fit, or may be used with,
Diamond T trucks. For the goods in Class 16, the Examining
Attorney contends that the mark identifies the subject
matter of applicant’s publication, and with respect to the
t-shirts in Class 25, that the mark simply tells people
that the wearer has an interest in Diamond T vehicles.
A mark is unregistrable under Section 2(e)(1) of the
Act as merely descriptive of the goods with which it is
used if it immediately and forthwith conveys information
about the characteristics, features or functions of those
Ser No. 74/412,841
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goods. In re Abcor Development Corp., 819 F.2d 1117, 2
USPQ2d 1859 (Fed. Cir. 1987). We will consider first the
goods in Class 25, next the Class 12 goods, and then the
goods in Class 16.
As is frequently the situation with trademarks
displayed on the fronts of t-shirts, “DIAMOND T” on
applicant’s t-shirts functions as a trademark for the
shirts, indicating secondary source or sponsorship in the
applicant. See In re Olin Corp., 181 USPQ 182 (TTAB 1973).
As in that case, the mark in the case before us may not
tell the purchasing public the source of the shirt’s
manufacture, but rather that the owner of the “DIAMOND T”
trademark sponsors or authorizes its use on the shirt.
Identifying the secondary source of applicant’s t-shirts
does not constitute conveying information about their
characteristics or features.
As applied to the trucks, truck parts and accessories
applicant sells and intends to sell under the marks, the
“DIAMOND T” mark identifies, and the Diamond T and design
mark will identify, the source of the goods. The use of
these marks on parts plainly does not describe the parts,
any more than the mark “CHEVROLET” describes parts for use
with Chevrolet  automobiles. The Examining Attorney has
confused the function of describing characteristics of the
Ser No. 74/412,841
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goods with identifying their source. A mark does not
become merely descriptive of the goods on which it is used
as a trademark just because the prior owner of the mark
abandoned it. This is so irrespective of whether or not
goods bearing the prior owner’s mark still exist.
The same reasoning applies to the Examining Attorney’s
contention that the marks are also unregistrable under
Section 2(e)(1) because they are or would be misdescriptive
of any trucks, parts or accessories that did not emanate
from the original owner of the mark. At the risk of being
redundant, we reiterate that when applicant uses his
trademarks, which he adopted after the prior owner had
abandoned them, the use on applicant’s products, whether
the products are trucks, truck parts, newsletters or
clothing items, serves, or will serve, to identify the
source of those goods, and it is not or would not be a
reference to the prior user, who abandoned the mark. The
marks would not, and do not, describe applicant’s trucks or
truck parts, nor do they misdescribe them.
As noted above, however, the refusal based on Section
2(e)(1) of the Act must be affirmed as to the goods in
Class 16. This case is analagous to the Board’s decision
in In re San Diego National League Baseball Club, Inc., 224
USPQ 1067 (TTAB 1983). In that case, the Board affirmed
Ser No. 74/412,841
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the refusal to register “SAN DIEGO PADRES REPORT” and “SAN
DIEGO PADRES” for newsletters which were concerned with the
San Diego Padres baseball team because the marks
immediately conveyed the fact that the periodicals dealt
with the San Diego Padres. Similarly, in the instant
application, “DIAMOND T” identifies the subject matter of
the publication, and, because this information is a key
characteristic or feature of the goods, the mark is merely
descriptive of these goods within the meaning of the Act.
We thus turn to the remaining ground of refusal, that
under Sections 1, 2 and 45 of the Act, neither “DIAMOND T”
nor the Diamond T and diamond design functions as a
trademark. The Examining Attorney’s position is that in
view of the fact that “Diamond T-related items are
currently available from a number of sources,” purchasers
of trucks, truck parts and accessories marketed under the
mark would “view product[s] bearing the instant mark merely
as a correct or authentic restoration part for use on a
Diamond T truck, rather than as goods emanating solely from
the applicant herein.” With regard to the mark as it is
applied to applicant’s newsletters, the Examining Attorney
foresees that “prospective purchasers will regard the
presence of the ‘Diamond T’ mark as merely an informational
indication of the subject matter of the publication.” In
Ser No. 74/412,841
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connection with applicant’s t-shirts, as discussed above,
he contends that “DIAMOND T” “is likely to be perceived as
a merely ornamental expression by the purchaser of an
interest in vintage ‘Diamond T’ vehicles[,] and not as an
indication of source.” (All of the above quotes are from p.
6 of his brief in the application for the “DIAMOND T”
mark.)
These arguments demonstrate further that the Examining
Attorney has confused the concepts of descriptiveness and
source identification. As with the previously discussed
basis for refusal, this one boils down to a
misunderstanding of the rights of one who adopts a
trademark that has been used previously, but then
abandoned. As applicant has repeatedly argued, under the
doctrines of “first sale” and “fair use,” the goods
produced by the prior owner are identified by the marks
used on them as emanating from that source, and it is and
always will be permissible to use those marks in reference
to such goods. In a similar sense, it will always be
permissible for sellers of duplicate or replica replacement
parts for Diamond T vehicles to state that their products
are designed for and compatible with Diamond T vehicles.
With regard to the trucks, truck parts, accessories,
magazines and t-shirts on which applicant has used, or
Ser No. 74/412,841
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intends to use, these marks following their abandonment by
the prior owner, applicant’s use has been, and will be, as
an indication of applicant as the source of the goods. As
noted above, the opposition procedure will be available if
anyone else thinks his rights are superior to those of
applicant. At this juncture, however, we have no basis for
concluding that applicant’s trademarks should not be
registered because use by others in reference to Diamond T
vehicles or any other goods has resulted in the inability
of the marks to indicate applicant as the source of the
products on which they are and will be used. See Wallpaper
Manufacturers, Ltd. v. Crown Wallcovering Corp., 680 F.2d
755, 214 USPQ 327, 333 (CCPA 1982).
In summary, except for the refusal under Section
2(e)(1) to register the mark “DIAMOND T” for “printed
periodical magazines,” in Class 16, the Examining Attorney
has not demonstrated a valid ground for refusing
registration. Accordingly, the refusal to register as to
the Class 16 goods in application S.N. 74/412,841 is
affirmed, but each of the other refusals is reversed.
R. L. Simms
R. F. Cissel
Ser No. 74/412,841
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P. T. Hairston
Administrative Trademark Judges
Trademark Trial & Appeal Board
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